WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Anglotopia, LLC v. Artem Bezshapochny

Case No. D2013-0168

1. The Parties

The Complainant is Anglotopia, LLC of Valparaiso, Indiana, United States of America (“US”), represented by Tucker Arensberg, P.C., US.

The Respondent is Artem Bezshapochny of Lviv, Oblast, Ukraine, self-represented.

2. The Domain Name and Registrar

The disputed domain name <anglotopia.net> (the “Disputed Domain Name”) is registered with Ekados, Inc., d/b/a groundregistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 25, 2013. On January 25, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On February 2, 2013, 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.

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 February 5, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was February 25, 2013. The Response was filed with the Center on February 17, 2013.

The Center appointed John Swinson as the sole panelist in this matter on March 4, 2013. 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

The Complainant is Anglotopia, LLC, a limited liability US company, registered in 2011. The Complainant provides goods and services which primarily relate to travel and travel-related information. The Complainant’s business began in 2007. The Complainant registered the Disputed Domain Name on May 26, 2007 and owned it until in or around September 2012. The Complainant has also registered other domain names relating to travel (e.g. <londontopia.net> and <japantopia.net>).

The Respondent is Artem Bezshapochny, an individual residing in the Ukraine.

The Disputed Domain Name was registered by the Respondent on December 5, 2012.

5. Parties’ Contentions

A. Complainant

The Complainant’s contentions are as follows.

Domain name hijacking

The Complainant registered the Disputed Domain Name on May 26, 2007 and owned it until in or around September 2012. Around this time, an unknown person gained access to the Complainant’s account with the registrar GoDaddy.com, LLC and without the Complainant’s consent or knowledge, transferred the registration of the Disputed Domain Name to the Respondent. Some of the Complainant’s other domain name registrations were also transferred (without the Complainant’s authorization) around this time.

Since becoming registrant of the Disputed Domain Name, the Respondent has not changed the DNS server or removed the Complainant’s original content from the website.

Common Law Trademark Rights

The Complainant has developed significant unregistered common law trade mark rights and goodwill in the Disputed Domain Name and in the ANGLOTOPIA trade mark (the “Trade Mark”).

The Complainant owns and uses a family of similar trade marks incorporating the “topia” suffix (e.g. LONDONTOPIA and JAPANTOPIA). These trade marks are used on websites registered and operated by the Complainant. This family of websites offers travel advice, cultural information, news and other resources about the country or region which is the focus of each website. Until the Respondent obtained the registration for the Disputed Domain Name, the Complainant used the website at the Disputed Domain Name to provide information about the United Kingdom of Great Britain and Northern Ireland. The Complainant also sold electronic and hard-copy travel guides using the Trade Mark. The Complainant generated advertising revenue from the website.

The Complainant’s common law trade mark in ANGLOTOPIA is evidenced by the Complainant’s use of that trade mark since May 26, 2007. Since that time, the Complainant’s website has received more than 4,000,000 visitors. Of those visitors, approximately 25% come from outside the US, demonstrating that Complainant has used the Trade Mark worldwide.

The Complainant’s registered business entity is Anglotopia, LLC (prior to forming that business entity in 2011, the Complainant’s owners used the Trade Mark in their individual capacities). The Complainant is also the registrant of multiple domain names featuring the Trade Mark, which all automatically redirect to the Disputed Domain Name.

The Trade Mark is arbitrary, fanciful, distinctive, and has acquired a secondary meaning associated exclusively with the Complainant. Through extensive use of the Trade Mark (and the related TOPIA family of marks), the Complainant has developed a reputation directly associated with the Trade Mark.

Identical or Confusingly Similar

The Disputed Domain Name incorporates the Trade Mark in its entirety.

Rights or Legitimate Interests

The Respondent does not use the Disputed Domain Name in connection with a bona fide offering of goods or services. The Respondent has merely retained the Complainant’s website content.

The Respondent is not commonly known by the Trade Mark or any similar trade name, or by the Disputed Domain Name.

The Respondent’s use of the Disputed Domain Name is not a legitimate noncommercial or fair use. The Respondent currently uses the Disputed Domain Name to mislead visitors into believing they have arrived at a website operated or sanctioned by the Complainant.

As the Respondent has hijacked the Disputed Domain Name by fraudulently obtaining the registration, he cannot demonstrate that he has rights or legitimate interests in the Disputed Domain Name.

Registered and Used in Bad Faith

The registration of the Disputed Domain Name was obtained without the consent or authorization of the rightful domain name registrant.

The Respondent participated in or had actual knowledge of the fraudulent activity surrounding the unauthorized transfer of the Disputed Domain Name. Even if the Respondent did not participate in the conduct which led to the unauthorized transfer of the Disputed Domain Name, he would have been aware that the Complainant was the legitimate registrant of the Disputed Domain Name and had rights in the Trade Mark.

The Respondent has not attempted to make any legitimate use of the Disputed Domain Name and is obtaining an improper benefit by generating traffic to the website using the Trade Mark and the Complainant’s content.

B. Respondent

The Respondent’s contentions are as follows.

Suitability of Policy

The Policy is not designed to deal with allegations of fraud or theft.

Identical or Confusingly Similar

The Respondent does not contest this point.

Rights or Legitimate Interests

The Respondent was contacted by “Denis Zolkin” on about November 27, 2012. Mr. Zolkin offered to sell the Disputed Domain Name to the Respondent for USD 6,000. The Respondent did not have any knowledge of the Disputed Domain Name prior to this date.

The Respondent purchased the Disputed Domain Name with the intention of making an English learning blog for Russian speakers.

Registered and Used in Bad Faith

The Respondent received an email on January 16, 2013, which he believes was from the Complainant, asking for him to sell the Disputed Domain Name. The Respondent did not reply.

The Respondent has not modified the content on the website at the Disputed Domain Name or changed the DNS server address, as the Registrar put a lock on the Disputed Domain Name shortly after it was transferred.

The Complainant has not provided evidence of any fraudulent activity on the part of the Respondent.

6. Discussion and Findings

To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:

(i) the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and

(iii) the Disputed Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to the Trade Mark.

The Complainant submits that it has been using the ANGLOTOPIA Trade Mark since 2007 and has extensive common law rights in the Trade Mark. In order to successfully assert common law or unregistered trade mark rights the Complainant must show that the Trade Mark has become a distinctive identifier associated with the Complainant or its goods or services (i.e. that the Trade Mark has acquired a “secondary meaning”). The Complainant made submissions regarding of the length and nature of its use of the Trade Mark, the number of visits to the website at the Disputed Domain Name (while the registration was held by the Complainant), the advertising revenue generated by the website and the use of the Trade Mark on social media. However, the Complainant did not provide any evidence in support of these submissions. The Panel has conducted independent research, as it is entitled to pursuant to paragraph 10 of the Rules, and confirms that the Trade Mark is being used by the Complainant on various social media platforms, including Facebook and YouTube. The Panel also located copies of the Complainant’s publications, which use the Trade Mark. Following its independent research, the Panel is satisfied that that Complainant has acquired the requisite common law or unregistered trade mark rights for the purpose of the Policy.

The Panel finds that the Disputed Domain Name is identical or confusingly similar to the Trade Mark in which the Complainant has common law or unregistered trade mark rights.

The Respondent does not contest this point.

The Complainant succeeds on the first element of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests.

The Panel finds that the Complainant has made out a prima facie case. This finding is based upon the following:

- there is no evidence that the Respondent is commonly known by the Disputed Domain Name;

- there is no evidence that the Respondent has any connection with the Trade Mark and the Complainant has not given the Respondent any permission to use the Trade Mark; and

- the Respondent is not using the Disputed Domain Name in connection with a bona fide offering of goods or services and is not making a legitimate noncommercial or fair use of the Disputed Domain Name. It has merely retained the Complainant’s website content. The Respondent has provided no tangible evidence to demonstrate its preparations to use the disputed domain name in a bona fide way.

It is well established by previous UDRP decisions that once the complainant makes a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP. (See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1)

The Respondent argues he purchased the Disputed Domain Name from a third party “Denis Zolkin” with USD 6,000, with the intention of making an English learning blog for Russian speakers. However, the Respondent failed to support the above arguments with any convincing evidence.

In light of the above, the Complainant succeeds on the second element of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Name in bad faith.

The transfer of a domain name amounts to a new registration (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 3.7). It appears that the Disputed Domain Name was registered or acquired by the Respondent onDecember 5, 2012. Any changes to the registrars and registrants of the Disputed Domain Name occurred without the knowledge or consent of the Complainant. It is well-settled that the unauthorized transfer of a domain name (“hijacking”) is of itself evidence of the bad faith registration and use of a domain name (see e.g.Worldcom Exchange, Inc. v. Wei.com, Inc., WIPO Case No. D2004-0955 and United Computer Products, Co Inc. v. Domain Name Proxy, Inc Domain Name Proxy, Inc Domain Name Proxy, Inc Domain Name Proxy, Inc, WIPO Case No. D2008-0017 and cases cited therein).

Regardless of whether the Respondent played a part in the unauthorized transfer of the Disputed Domain Name, the Panel finds that the following facts are sufficient to establish bad faith registration and use:

- Due to the widespread use of Trade Mark, and the Complainant’s family of TOPIA trade marks, the Respondent knew, or ought to have known that the Disputed Domain Name was in use and had been used for a number of years in relation to an active website.

- The Respondent has disrupted the legitimate business activities of the Complainant, and will receive pecuniary gain from advertising revenue associated with the website at the Disputed Domain Name.

- The Respondent is not making any legitimate use of the Disputed Domain Name and did not provide any tangible evidence that he intends to do so in the future.

The Respondent has submitted that the Policy is not designed to deal with allegations of fraud or theft. The Panel acknowledges that in some circumstances, such as where a complainant does not have trade mark rights and is seeking to recapture a hijacked domain name, a complaint will fall outside the Policy (see eg. Lawrence Gurreri v. To Thai Ninh, NAF Claim No. FA1006001328554 (Nat. Arb. Forum July 12, 2010)).

The Policy is not limited to the four examples of bad faith set out in paragraph 4(b). Theft or fraudulent transfer or hijacking may fall within the scope of the Policy. In Worldcom Exchange, Inc. v. Wei.com, Inc., WIPO Case No. D2004-0955, the Panel noted:

Given the human capacity for mischief in all its forms, the Policy sensibly takes an open-ended approach to bad faith, listing some examples without attempting to exhaustively enumerate all its varieties. The Complainant seeks to expand the territory of bad faith, presenting a new type of abusive conduct on the part of the Respondent, one that on its face cries out for relief: the hijacking of a domain name through the manipulation of password access. Equitable considerations aside, the Panel must determine whether the unusual facts of this matter bring the Complaint within the framework of the Policy.

Here, if the Respondent’s submissions are accepted, any claim of theft or fraudulent transfer or hijacking would be against a third person (i.e. Mr Zolkin as stated in the Response). Applying the nemo dat principle, this Panel finds that the Respondent has no right to claim ownership of the Disputed Domain Name (because purchase of a possession from someone who has no ownership right to it also denies the purchaser any ownership title). If the Respondent has a claim for loss resulting from fraud of theft, it is against Mr. Zolkin. Under the circumstances of this case, such a claim against a third party does not deprive the Complainant of its rights to recover the Disputed Domain Name pursuant to the Policy.

The Panel finds, taking account of all of the circumstances of the case, the Respondent has registered and is using the Disputed Domain Name in bad faith. The third element of the Policy is satisfied.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name <anglotopia.net> be transferred to the Complainant.

John Swinson
Sole Panelist
Date: March 13, 2013