Zakrytoe aktsionernoe obshestvo SU-155 v. Kate Shumilova
Case No. D2008-1734
1. The Parties
The Complainant is Zakrytoe aktsionernoe obshestvo SU-155, of Moscow, Russian Federation, represented by Anton Sergo, of Russian Federation.
The Respondent is Kate Shumilova, of Kent, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <su155.net> (the “Domain Name”) is registered with Melbourne IT Ltd., Australia (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 11, 2008. On November 12, 2008, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 13, 2008, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a complaint deficiency notification, Complainant submitted the Complaint in electronic format and in the required number of hard copies. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 17, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was January 6, 2009. The Response was filed with the Center on January 5, 2009.
The Center appointed Assen Alexiev as the sole panelist in this matter on January 14, 2008. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
Complainant was established in 1954 under the name Stroymontazhtrest No. 3, and shortly thereafter was renamed to “Stroitelnoe upravlenie №155” (SU-155)”. In 1993, Complainant was reorganized as a private joint stock company and received its current name. It is worth noting that the trade name of Complainant in Latin transcription is “SU-155”, as “Zakrytoe aktsionernoe obshestvo” only denotes the type of its corporate entity a closed joint stock company. Complainant's official website is located at the domain name <www.su155.com>.
Complainant, a large construction company, is the owner of the combined trademark “СУ155 ГРУППА КОМПАНИЙ” (in Latin transcription “SU155 GRUPA KOMPANIY”) registered on the territory of the Russian Federation under No 312949 for goods and services in International Classes 6, 16, 19, 35, 36, 37, and 41.
Respondent registered the Domain Name on May 22, 2006.
5. Parties' Contentions
A. Complainant
Complainant is a large construction company in Russia, with a market share of more than twenty percent in the housing construction in Moscow. In 2007, Complainant was rated by Forbes as the ninth biggest Russian private company, and in 2008 - as the twenty-ninth.
Complainant has carried out numerous complicated construction projects, such as the library complex of the Moscow State University (the largest library complex in Russia), the Laboratory building for the Russian University of Chemical Technology, buildings of the Higher School of Economics, the Academy of the Ministry for Internal Affairs, and other construction projects in Moscow and Moscow Region, St. Petersburg, and a number of other cities.
According to Complainant, the Domain Name is confusingly similar to Complainant's trademark. The Domain Name consists of the distinctive part of Complainant's trademark and misses only the secondary element of the trademark (“ГРУППА КОМПАНИЙ”, which means “Group of companies” in Russian) which is disclaimed in the trade mark registration and, therefore, may be disregarded. See MarthaA. Gottfried, Inc. v. Martin I. Klein,
WIPO Case No. D2003-0059.
The difference between Complainant's trademark and the Domain Name is the generic top level domain denominator “.net”. As previous panels have decided under the Policy, the top level domain denominator is irrelevant when determining whether a domain name is confusingly similar to a protected trademark.
Complainant contends that Respondent lacks rights or legitimate interests in the Domain Name. Complainant has not licensed or otherwise permitted Respondent to use its trademark or to apply for any domain name incorporating such mark. Respondent has not been commonly known by the Domain Name. The website at the Domain name provides no information as to the identity of the person responsible for it.
The content of the website indicates that Respondent is using the website to criticize the Complainant and its services. However, the majority of decisions under the Policy do not accept free speech as a justification for the use of a domain name containing the complainant's trademark. As mentioned in Melaleuca, Inc. v. Domains by Proxy, Inc./ Evon Smith,
WIPO Case No. 2008-0305: “Because the principle of free speech does not justify misleadingly diverting Complainant's consumers, Respondent does not present a noncommercial fair use of the domain name.”
In Complainant's submission, Respondent has registered and used the Domain Name in bad faith. At the time of registration of the Domain Name by Respondent, Complainant and its services were well-known in Russia under relevant trademark and company name. Respondent tried to use the prominence of this name to attract visitors to its website. Respondent has tried to increase confusion by indicating “SU-155” as its “Organization Name” for the purposes of the registration of the Domain Name. It tried, therefore, to make impression that the Domain Name is owned by Complainant and thus mislead the customers. False identification information may also be evidence that the Domain Name is registered and used in bad faith.
Respondent has used the Domain Name in order to attract the attention of potential clients of Complainant. This may be evidence that the Domain Name was registered in bad faith. See 1066 Housing Association Ltd. v. Mr. D. Morgan,
WIPO Case No. D2007-1461: “A respondent can always choose a domain name that does not carry with it the perception of being authorized by the trademark owner. It is also an approach that involves no judgment being made on the content of the criticism site. Of course, it may be that as a consequence of using a different domain name less people will see the criticisms that the registrant wants to make public. However, if this is true, this of itself is evidence of the fact that the misrepresentation inherent in the domain name is the thing that draws people to the site.”
Complainant submits that Respondent has tried to imitate a “critic website” by placing misleading and false publications regarding Complainant on its website. A substantial part of the publications in the “Articles on SU-155” section of the website have no references to any real newspapers, magazines, websites or even authors; it appears that Respondent has tried to make false impression of broad-based criticism of Complainant in the mass media. The Domain Name was registered in 2006, but only two materials in the “News” section of the website have publication dates between 2006 and 2008; most of the materials were placed on the website only after the commencement of the present dispute. The website at the Domain Name contains information about co-investors which are competitors of Complainant.
B. Respondent
Respondent has advanced the following arguments in her defense:
The Domain Name and the website associated to it were created in May 2006 as an online forum by and for people who invested their money in Complainant. The name of the website at the Domain Name is “SU-155 Myths and Reality”, and was properly selected to reflect the website's purpose, just as the Domain Name itself. At the time of registration of the Domain Name, a full search showed no evidence that the Domain Name was in use, so it is not true that Complainant has used the Domain Name since 2003.
During the two and a half years of existence of the website at the Domain Name, Complainant has never contacted Respondent. For Respondent, this meant that Complainant had no objections against the existence of the Domain Name and the website associated to it. Respondent suggests that Complainant has even benefited of the website in some way, as information which could not be given officially was possible to be obtained through this website with the help of investors or from co-investors.
Respondent states that it is normal for a person who has invested his or her money to explore the market and to read all information available. Complainant's administration did not provide enough information to satisfy its investors. Deficiency in information created a lot of frustration and anxiety among people who had committed their savings to Complainant. In such a situation, there was a necessity for a website where investors can share their knowledge and experience and give advice and support each other.
In Respondent's submission, the website at the Domain Name is noncommercial, non-profitable and non-promotional. Since its creation, there has been no income whatsoever, including donations of any type or any exchange link business. The administration of the website is voluntary. The website gets 2,772 (713) requests per day and is very popular among customers/clients of Complainant. As it is a noncommercial project, there is no point in attracting people to the website. Originally it was planned to be self-administered, but due to high amount of spam this appeared to be impossible.
The information on the website is mainly not critical of Complainant, but consists of quotations and advice on what to do in different situations caused by long delays in investments in Complainant. The large part of the articles was taken from mass media including Russian Federal Agency and Independent Newspaper. Respondent claims that until now, Complainant has not refuted these articles and has accepted liability. Complainant's allegation that there were no references in support of the articles and other material on the website is incorrect.
The information about co-investors is put on the website in order to provide free and full information about Complainant and not to mislead people. The co-investors websites also have online forums about Complainant.
Respondent rejects Complainant's allegation that except for two materials dated between 2006 and 2008, all other materials were placed on the website only after the beginning of the conflict between the parties. The website is based on the Joomla engine, and all outdated articles are “self deleting” from the main page and are now located in the archive.
Respondent has never put on the website its own opinion or attitude towards Complainant. All information was posted on the website by investors who shared their own experience investing money in Complainant, or posted articles from different newspapers. Respondent has not had the intention to create a bad image of Complainant. It has only reflected opinions, based on real facts, of Complainant's clients, who had already signed contracts with Complainant and had waited for their property to be built.
The forum section of the website contains also recommendations to use the services of Complainant. There is also an independent poll on the website which contains both negative and positive opinions. There are thousands of users on the website's forum. The website is so popular among people that many other forums and websites have independent links to it.
6. Discussion and Findings
Pursuant to paragraph 4(a) of the Policy, Complainant must prove each of the following to justify the transfer of the Domain Name:
(i) That the Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) That Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) That Respondent has registered and is using the Domain Name in bad faith.
In this case, the Center has employed the required measures to achieve actual notice of Complaint to Respondent, in compliance with Rules, paragraph 2(a), and Respondent was given a fair opportunity to present its case.
A. Identical or Confusingly Similar
Complainant has provided evidence and has thus established its rights in the combined trademark “СУ155 ГРУППА КОМПАНИЙ” in the Cyrillic alphabet, registered in the Russian Federation. The distinctive part of this trademark is its “СУ155” element, and the other part “ГРУППА КОМПАНИЙ” is expressly disclaimed as unprotected. The “СУ155” element is transcribed in Latin letters as “SU155”.
It is a common practice under the Policy to disregard gTLDs such as the “.net” section of domain names for the purposes of the comparison under Policy, paragraph 4(a)(i). Therefore, the relevant part of the Domain Name is the “su155” element, which is identical to the Latin transcription “SU155” of the distinctive part of Complainant's trademark.
On these grounds, the Panel finds that the Domain Name is confusingly similar to a trademark in which Complainant has rights.
B. Rights or Legitimate Interests
Complainant claims that Respondent has no rights or legitimate interests in the Domain Name, stating various arguments in this regard - that Respondent is not permitted to use Complainant's trademark or to register a domain name incorporating it; that Respondent has not been commonly known by the Domain Name; and that the purported free speech content of Respondent's website is not a noncommercial fair use
of the Domain Name giving rise to rights or legitimate interests of Respondent in it.
Thus, Complainant has established a prima facie case that Respondent lacks rights or legitimate interests in the Domain Name.
It is well established that once a complainant makes out a prima facie case under Policy, paragraph 4(a)(ii), the burden shifts to respondent to rebut the showing by providing evidence of its rights or legitimate interests in the domain name.
Respondent does not contest that it has not been authorized by Complainant to use its trademark, and that it has not been commonly known by the Domain Name. In order to justify her claimed rights and legitimate interests in the domain name, Respondent relies on her right to freedom of speech and the use of the Domain Name for a criticism website in the Russian language.
It is clear from the statements of the parties and the evidence before the Panel that Complainant and its trademark are known in the Russian Federation, and that Respondent has selected the Domain Name precisely with a view of Complainant, and with the intent to post information and opinions about it. A key issue here is whether Panel is persuaded on the provided materials that the Respondent is making a genuine noncommercial the use of the Domain Name for a website criticising the Complainant capable of giving rise to rights or legitimate interests if the Domain Name that is confusingly similar to Complainant's trademark.
In the present case, Respondent is using a domain name which suggests an association with Complainant. This is apparent from the confusing similarity between the Domain Name on one side, and Complainant's trademark, trade name and official website. There is no disclaimer or other similar statement on Respondent's website, so Internet users visiting it cannot immediately understand that it is not connected or associated with Complainant. Neither is there any link to Complainant's website, to help Internet users find it easily. Respondent has not in this Panel's view shown that the Domain Name has been used genuinely for the purpose of criticizing Complainant without any intent for commercial gain. The website at the Domain Name contains information and links to other investors and co-investors (which for all the Panel knows may also be competitors of Complainant). On one view, it could be said that Respondent is thus illegitimately misrepresenting herself as Complainant and is attracting visitors to her site by trading off Complainant's goodwill in its trademark and trade name, and this conduct cannot be counterbalanced by the reference to the right of free speech. Here the Panel joins the first alternative view expressed in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, in that the right to criticize does not extend to registering a domain name that is identical or confusingly similar to the owner's registered trademark. As stated in Monty & Pat Roberts Inc. v. J.Bartell,
WIPO Case No. D2000-0300: “Respondent's claim to use of Complainant's mark for legitimate news dissemination purposes is a serious one, since the Panel is greatly concerned to assure that rights of the public to freely communicate their views on the Internet are protected and preserved. However, in balancing the rights of Complainant in its mark, and the rights of Respondent to freely express its views about Complainant's services, the Panel concludes that Respondent has impermissibly taken advantage of Complainant's commercial interests in the mark. The right to express one's views is not the same as the right to use another's name to identify one's self as the source of those views. One may be perfectly free to express his or her views about the quality or characteristics of the reporting of the New York Times or Time Magazine. That does not, however, translate into a right to identify one's self as the New York Times or Time Magazine.”
Therefore, the Panel finds in the present case that Respondent has not succeeded on the provided materials in persuading the Panel that she has rights and legitimate interests in the Domain Name, and Complainant prevails on this issue.
C. Registered and Used in Bad Faith
For the purposes of paragraph 4(a) (iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the holder has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of the holder's documented out-of-pocket costs directly related to the domain name; or
(ii) the holder has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the holder has engaged in a pattern of such conduct; or
(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder's website or other online location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on the holder's website or location.
The circumstances listed above are not exhaustive. The Panel may find bad faith in other circumstances as well, and in assessing them for the purpose of the Policy, the motivation of Respondent plays a central role. In the present case, Respondent expressly admits that the Domain Name was registered with Complainant and its trade name in mind. This Domain Name is confusingly similar to Complainant's trademark, and actually identical to its trade name and official website, and Respondent has registered it without having any rights or legitimate interests in it. Respondent's website does not provide any information about its owner per se, does not disclaim any relation or endorsement by Complainant and does not provide a link to Complainant's official website. Respondent has failed to provide dispositive evidence that her website contains genuine postings about Complainant made by registered users of the website, or indeed citations or links to the sources of information for the materials there. Respondent's website contains links to third parties which Respondent does not deny to be Complainant's competitors.
Taken together, all these circumstances lead to the conclusion that Respondent has registered and used the Domain Name in bad faith, disregarding Complainant's trademark rights and illegitimately taking advantage of Complainant's goodwill to misleadingly divert Internet users to its website.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <su155.net> be transferred to Complainant.
Assen Alexiev Sole Panelist
Dated: January 29, 2009
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