WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Center of Navigation Technologies JSC and Navitel s.r.o. v. Privacy protection service - whoisproxy.ru / Sergey Boldinov
Case No. D2014-2275
1. The Parties
The Complainants are Center of Navigation Technologies JSC of Moscow, the Russian Federation, and Navitel s.r.o. of Prague, Czech Republic, represented by Anton Sergo, the Russian Federation.
The Respondent is Privacy protection service - whoisproxy.ru of Moscow, the Russian Federation / Sergey Boldinov of Moscow, the Russian Federation.
2. The Domain Names and Registrar
The domain names <navitel.moscow> and <навител.москва> [xn--80aejlqh2b.xn--80adxhks] (“Disputed Domain Names”) are registered with Regional Network Information Center, JSC dba RU-CENTER (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 29, 2014. On December 30, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On December 31, 2014, the Registrar transmitted by email to the Center its verification response disclosing the registrant and contact information for the Disputed Domain Names, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant Center of Navigation Technologies JSC on January 12, 2015 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On the same date, the Center transmitted to the Complainant Center of Navigation Technologies JSC the language of the proceedings document and invited the Complainant to state its position on this issue. The Complainant Center of Navigation Technologies JSC filed an amended Complaint on January 15, 2015. On January 14, 2015, the Complainant Center of Navigation Technologies JSC requested that the proceedings be held in the English language. On January 14, 2015, the Respondent submitted an email communication to the Center in English, by which it confirmed that it was familiar with both the English and the Russian languages and stated that it had no preference as to the language of the proceedings.
The Center verified that the amended 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 January 27, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was February 16, 2015. The Respondent did not file a Response. Accordingly, the Center notified the Respondent’s default on February 20, 2015.
The Center appointed Gabriela Kennedy and Irina Savelieva as Panelists and Assen Alexiev as Presiding Panelist in this matter on March 27, 2015. 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. Language of Proceedings
In respect of the language of the proceedings, the Panel notes the following: i) according to the information provided by the Registrar, the language of the registration agreement for the Disputed Domain Names is Russian. Under paragraph 11 of the Rules, unless otherwise agreed by the Parties, or otherwise specified in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding; ii) the 1st Complainant, Center of Navigation Technologies JSC, has submitted its Complaint in the English language, and has requested that the proceedings be held in English, arguing that the websites to which the Disputed Domain Names resolve are in English and that the cost for these proceedings will increase if an order is made by the Panel requesting them to re-submit the complaint in Russian; iii) the 1st Complainant has also requested the consent of the Respondent for the proceeding to be held in the English language and the Respondent has confirmed its knowledge of English and Russian and has expressed no preference as to the language of the proceeding (thus, the Respondent has not objected to the proceedings being held in English); and iv) the Center has sent all its messages to the Respondent in both English and Russian and has informed the Parties that it will accept a Response in either English or Russian.
In these circumstances, it appears to the Panel that using the English language in this proceeding will be fair and efficient and will not put either of the parties at a disadvantage. Therefore, in exercise of its powers under paragraph 11 of the Rules, the Panel decides that the language of this administrative proceeding be English. At the same time, the Panel will review and take into account the relevant evidence that is available in this case in either Russian or the English language.
5. Procedural Orders
On April 15, 2015, the Panel issued its Procedural Order No.1, by which it invited the 1st Complainant, Center of Navigation Technologies JSC, to submit evidence that it has rights in the trademarks listed in the Complaint. On April 17, 2015, the 1st Complainant submitted a statement by Navitel s.r.o. which confirmed that it is a related party to the Complainant and which expressed support for the 1st Complainant, Center of Navigation Technologies JSC, in its pursuit of the relief requested within the Complaint.
On May 11, 2015, the Panel issued its Procedural Order No. 2, by which it invited the 1st Complainant, Center of Navigation Technologies JSC, to amend the Complaint to reflect the current situation regarding the ownership of the trademarks referred to in the Complaint, and invited Navitel s.r.o. to join as a Co-Complainant in this proceeding. On May 20, 2015, the two Complainants submitted a second amended Complaint that reflected the current situation regarding the ownership of the trademarks referred to in the Complaint and included Navitel s.r.o. as Co-Complainant. The Panel considers that under the circumstances the consolidation of the Complainants in this proceeding to be proper. See paragraph 4.16, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0").
6. Factual Background
The 1st Complainant, Center of Navigation Technologies JSC, was established in 2001 and is now a key player in the car navigation systems business, active in Europe, the Middle East and Africa. The company produces and distributes navigation software and digital maps for various territories around the world under the trademarks NAVITEL and НАВИТЕЛ (“NAVITEL” in Cyrillic). At present, there are more than 1,800,000 end users of the goods and services of the 1st Complainant, Center of Navigation Technologies JSC, and its global market share for personal navigation devices is at least 80%.
The 2nd Complainant, Navitel s.r.o., is a company incorporated in the Czech Republic that is a related party to the 1st Complainant, Center of Navigation Technologies JSC.
The 1st Complainant, Center of Navigation Technologies JSC, has registered the following trademarks in the Latin and Cyrillic alphabet (the “NAVITEL Trademarks”):
- the combined trademark НАВИТЕЛ (“NAVITEL” in Cyrillic) with registration No. 357369, registered in the Russian Federation on August 14, 2008 for goods and services in International Class 42;
- the combined trademark NAVITEL with registration No 381025, registered in the Russian Federation on June 5, 2009 for goods and services in International Classes 09, 35, 42;
- the combined International trademark NAVITEL with registration No.1034001, registered on June 5, 2009 for goods and services in International Classes 09, 35, 42.
On November 13, 2014, the 1st Complainant, Center of Navigation Technologies JSC, transferred the NAVITEL Trademarks to the 2nd Complainant, Navitel s.r.o.
The 1st Complainant, Center of Navigation Technologies JSC, uses for its online business the domain names <navitel.ru>, <navitel.su>, <navitel.in>, <navitel.cz>, <navitel.jp>, <navitel.kr>, <navitel.my>, <navitel.hk>, <navitel.by>, <navitel.ua>, and <navitel.md>.
The Respondent registered the Disputed Domain Names on December 3, 2014.
7. Parties’ Contentions
A. Complainants
The Complainants submit that the 1st Complainant, Center of Navigation Technologies JSC, is widely known in the Russian market as the leading supplier of navigation software, and has received many awards for its products.
The Complainants assert that the Disputed Domain Names are identical or confusingly similar to the NAVITEL Trademarks, as the use of the “moscow” and “москва” suffixes does not serve to distinguish the disputed domain names from these trademarks.
According to the Complainants, the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names. The Complainants point out that the Disputed Domain Names do not reflect the Respondent’s company name; the Complainants have not authorized the Respondent to use the NAVITEL trademarks, and there is no affiliation between the parties. The Disputed Domain Names do not consist of common terms or ordinary words in the Russian language or in other languages, and at the moment of their registration the NAVITEL trademarks had already gained popularity in the Russian Federation. The Respondent has not used the Disputed Domain Names in connection with a bona fide offering of goods or services as the websites associated with them offer goods of the Complainant and of its competitors and display an offer for sale of the Disputed Domain Names. According to the Complainants, these circumstances show that the Respondent's choice of the Disputed Domain Names was aimed at the Complainants, and that the Respondent’s intent was to extract benefit from the goodwill in the NAVITEL trademarks.
The Respondent uses the Disputed Domain Names to resolve to websites that offer goods competing with the Complainants’ goods; or in order to increase the number of visitors to the site by using the Disputed Domain Names and divert traffic from the Complainants’ website to the Respondent’s or in order to sell the Disputed Domain Names.
The Complainants assert that the Disputed Domain Names were registered and are being used in bad faith. When the Respondent registered the Disputed Domain Names, the Complainants and the NAVITEL Trademarks had already become popular in the Russian Federation so the Respondent must have been aware of the Complainants and of their products bearing the NAVITEL Trademarks. The Disputed Domain Names are confusingly similar to the NAVITEL Trademarks and may lead Internet users to mistakenly believe that there is an affiliation between the Complainants and the Respondent. According to the Complainants, this shows that the Respondent has intentionally chosen to register domain names that reproduce the NAVITEL Trademarks in an attempt to attract, for commercial gain, Internet users to the websites to which the Disputed Domain Names resolve by creating a likelihood of confusion with the NAVITEL Trademarks.
The Complainants submit that it is difficult to imagine any active use by the Respondent of the Disputed Domain Names that would not be illegitimate without permission from the holder of the NAVITEL Trademarks. The Complainants refer in this regard to the actual use of the Disputed Domain Names by the Respondent for websites that offer goods of the Complainants and of its competitors, and display an offer for sale of the disputed domain names, such use according to the Complainants was made in bad faith.
B. Respondent
The Respondent did not reply to the Complainants’ contentions. The only statement that the Respondent chose to make in the course of this proceeding included a confirmation that it did not intend to transfer the Disputed Domain Names to the Complainants.
8. Discussion and Findings
Pursuant to Policy, paragraph 4(a), the Complainants must prove each of the following to justify the transfer of the Disputed Domain Names:
(i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and
(iii) the Respondent has registered and is using the Disputed Domain Names in bad faith.
In this case, the Center has employed the required measures to achieve actual notice of the Complaint to the Respondent, in compliance with the Rules, paragraph 2(a), and the Respondent was given a fair opportunity to present its case.
Pursuant to the Rules, at paragraph 5(b)(i), it is expected of a respondent to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name…”. In the event of a default, under the Rules, at paragraph 14(b): “…the Panel shall draw such inferences therefrom as it considers appropriate.”
As stated by the panel in Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy’s Antiques,
WIPO Case No. D2000-0004: “Here, the potential evidence of good faith registration and use was in respondent’s control. Respondent’s failure to present any such evidence or to deny the complainant’s allegations allows an inference that the evidence would not have been favorable to respondent.” As stated by the panel in Viacom International Inc. v. Ir Suryani,
WIPO Case No. D2001-1443: “Since the Respondent has not submitted any evidence and has not contested the contentions made by the Complainant, this Panel is left to render its decision on the basis of the uncontroverted contentions made, and the evidence supplied, by the Complainant […]. In the absence of any evidence to the contrary submitted by the Respondent, this Panel accepts in large measure (but not wholly) the submitted evidence and the contended for factual and legal conclusions as proven by such evidence.”
In this administrative proceeding, the Respondent’s failure to substantively respond to the Complaint entitles the Panel to conclude that the Respondent has no arguments or evidence to rebut the assertions of the Complainants. The Panel has to take its decision on the basis of the statements and documents submitted by the Complainants and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.
A. Identical or Confusingly Similar
In the present case, the Complainants have provided evidence relating to the registrations of the NAVITEL Trademarks on which the Complainants rely in this proceeding.
The Disputed Domain Name <navitel.moscow> consists of the elements “navitel” and “moscow”, separated by a dot. The “navitel” element is identical to the word element of the NAVITEL trademark in Latin script, and is confusingly similar to the НАВИТЕЛ trademarks in Cyrillic script. The extension “moscow” coincides with the name of the city of Moscow where the 1st Complainant, Center of Navigation Technologies JSC, and the Respondent are located and which is the capital of the Russian Federation – one of the most important markets for the Complainants’ products.
The Disputed Domain Name <навител.москва> consists of the word “навител” and the “москва” generic top level extension. The “навител” element is identical to the word element of the НАВИТЕЛ trademarks in Cyrillic script, and is confusingly similar to the NAVITEL trademark in Latin script. The “москва” extension is the name of the city of Moscow in the Russian language.
In the Panel’s view, the “moscow” and “москва” extensions do nothing to detract from the confusing similarity between the Disputed Domain Names and the NAVITEL Trademarks. These suffixes merely indicate the location of Internet resources, and make it likely that Internet users would associate the Disputed Domain Names with the Complainants and their NAVITEL products and would suggest that the Disputed Domain Names represent official online locations of the Complainants dedicated to the Russian market and to the capital of the Russian Federation in particular. As described by the Foundation for Assistance for Internet Technologies and Infrastructure Development (“FAITID”) (the sponsoring organization for the “.moscow” and “.москва” extensions), these extensions are intended for the capital of the Russian Federation and “are aimed at (sic) the enhancement Moscow visibility on the Internet, creation of its online brand, attraction of additional audience to the websites related to the city”.[1] This impression would be only further strengthened by the content of the websites to which the Disputed Domain Names resolve.
Given all this, the Panel finds that the Disputed Domain Names are confusingly similar to the NAVITEL Trademarks in which the Complainants have rights, and that the Complainants have established the first element of paragraph 4(a) of the Policy in relation to the Disputed Domain Names.
B. Rights or Legitimate Interests
The Policy requires the Complainants to make at least a prima facie showing that the Respondent has no rights or legitimate interests in the Disputed Domain Names. Once the Complainants make such a showing, the Respondent may provide evidence to demonstrate that it has rights or legitimate interests in the Disputed Domain Names. The burden of proof, however, always remains on the Complainants to establish that the Respondent lacks rights or legitimate interests in the disputed domain names. See paragraph 2.1 of the WIPO Overview 2.0.
The Complainants have contended that the Respondent has no rights or legitimate interests in the Disputed Domain Names, stating that the Respondent is not commonly known by the name “Navitel”, nor is it affiliated to the Complainants, and that it was not authorized or licensed to use the NAVITEL Trademarks. Thus, the Complainants have established a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Names.
The Respondent, although given a fair opportunity to do so, chose not to present to the Panel a formal Response in accordance with the Rules, paragraph 5(b)(i) and 5(b)(ix), despite the consequences that the Panel may extract from the fact of a default (Rules, paragraph 14). If the Respondent had any legitimate reasons for the registration and use of the Disputed Domain Names, it could have brought them to the attention of the Panel. In particular, the Respondent has failed to deny the contentions of the Complainants and to contend that any of the circumstances described in Policy, paragraph 4(c), is present in its favor.
Apart from the factual contentions of the Complainants, the only other sources of information about the Respondent are the WhoIs information, provided by the Registrar, and the content of the websites to which the Disputed Domain Names resolve. The WhoIs information contains no evidence that the Respondent is commonly known by either of the Disputed Domain Names. The Disputed Domain Names are confusingly similar to the NAVITEL Trademarks, which are coined terms and were registered long before the registration of the Disputed Domain Names. There is no evidence that the Complainants have licensed or authorised the Respondent’s use of the NAVITEL Trademarks in the Disputed Domain Names. As contended by the Complainants, the websites to which the Disputed Domain Names resolve offer products of the Complainants and/or of their competitors, contain no disclaimer for the lack of affiliation between the Respondent and the Complainants, and offer the Disputed Domain Names for sale. These websites may well lead Internet users to wrongly believe that they are official websites of the Complainants’ for the Russian market.
In the Panel’s view, in these circumstances it is highly unlikely that the registration of the Disputed Domain Names was coincidental. The Respondent must have been well aware of the NAVITEL Trademarks when it registered the Disputed Domain Names, and their registration and use was made without the consent of the Complainants in an attempt to take advantage of the goodwill of the Complainants in the NAVITEL Trademarks by attracting Internet traffic to the Respondent’s websites. The Panel is of the opinion that such conduct cannot give rise to rights and legitimate interests in the Disputed Domain Names, and finds that the Complainants’ prima facie case has not been rebutted.
Consequently, the Panel finds that the Complainants have satisfied paragraph 4(a)(ii) of the Policy in respect of the Disputed Domain Names and the Respondent has failed to show that they have rights or legitimate interests in respect of the Disputed Domain Names.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists four illustrative circumstances that shall each be evidence of the registration and use of a domain name in bad faith by a respondent, namely:
(i) circumstances indicating that a respondent has registered or has acquired a 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 your documented out of pocket costs directly related to the domain name; or
(ii) that a respondent 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 respondent has engaged in a pattern of such conduct; or
(iii) that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the repsondent intentionally attempted to attract, for commercial gain, Internet users to its web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location.
As discussed above in relation to the issue of rights and legitimate interests, the Respondent is likely to have known of the existence of at least the 1st Complainant and of its products prior to the registration of the Disputed Domain Names, which are confusingly similar to the NAVITEL Trademarks. The Disputed Domain Names were registered in December 2014 - nearly six years after the НАВИТЕЛ trademark was first registered in Russia and five years after the International trademark NAVITEL was registered. The Respondent has not established that it has any rights or legitimate interests in the Disputed Domain Names. The evidence provided by the 1st Complainant shows that its business was launched in 2001 and now has a large operation with an 80% market share for personal navigation devices, that it has a global presence and an impressive reputation illustrated by its long list of awards. In the Panel’s view, these circumstances support a finding that the Respondent has chosen and registered the Disputed Domain Name in bad faith in view of their attractiveness to consumers stemming from the goodwill in the NAVITEL Trademarks. The Respondent has not denied that the commercial websites linked to the Disputed Domain Names offer products of the Complainants and/or of their competitors.
Taken together, and in the absence of any evidence or allegation to the contrary, the circumstances of this case satisfy the Panel that the Respondent, by registering and using the Disputed Domain Names, has intentionally attempted to attract for commercial gain Internet users to the websites at the Disputed Domain Names by creating a likelihood of confusion with the NAVITEL Trademarks as to the source, sponsorship, affiliation, or endorsement of the same websites and of the products offered there. This supports a finding of bad faith registration and use of the Disputed Domain Names under Policy, paragraph 4(b)(iv).
Therefore, the Panel finds that the Respondent has registered and used the Disputed Domain Names in bad faith.
9. 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 Names <navitel.moscow> and <навител.москва> [xn--80aejlqh2b.xn--80adxhks] be transferred to the Complainants.
Gabriela Kennedy
Panelist
Irina Savelieva
Panelist
Assen Alexiev
Presiding Panelist
Date: June 1, 2015
