WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
JRSK, Inc. d/b/a Away v. Evgeniy Pechenkin
Case No. D2019-1379
1. The Parties
The Complainant is JRSK, Inc. d/b/a Away, United States of America (“United States”), represented by Fabio E. Tarud, United States.
The Respondent is Evgeniy Pechenkin, Russian Federation.
2. The Domain Name and Registrar
The disputed domain name <awaytravel.moscow> is registered with REG.RU LLC (the “Registrar”).
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on June 14, 2019. On June 17, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 18, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named the Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 20, 2019 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 sent an email to the Parties in English and Russian regarding the language of the proceedings. The Complainant filed an amended Complaint on June 25, 2019 and submitted a request for English to be the language of the proceeding on June 25, 2019. The Respondent did not submit any comments on the language of the proceeding.
The Center verified that the Complaint together with 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 10, 2019. In accordance with the Rules, paragraph 5, the due date for Response was July 30, 2019. On July 10 and July 11, 2019, the Respondent sent three email messages to the Center. On July 15, 2019, the Complainant submitted a request for suspension of the proceeding for 30 days. On July 16, 2019, the Center issued a Notification of Suspension of the proceeding until August 15, 2019. On August 21, 2019, the Complainant requested the re-institution of the proceeding. On August 23, 2019 the Center reinstituted the proceeding, and informed the Parties that the due date for the Response was September 6, 2019. On September 19, 2019, the Center sent an email informing parties of the commencement of the panel appointment process.
The Center appointed Assen Alexiev as the sole panelist in this matter on October 9, 2019. 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 a designer, manufacturer, and retailer of luggage, founded in 2015. It sells its luggage collections under the mark AWAY on its online store at <awaytravel.com> and at its own retail locations in New York City, Los Angeles, San Francisco, Austin, Chicago, Boston, and London.
The Complainant’s official website is located at the domain name <awaytravel.com>, registered by the Complainant on August 18, 2015.
The Complainant is the owner of the following trademark registrations for the sign AWAY (the “AWAY trademark”):
- the trademark AWAY with registration No. 5,070,269, registered in the United States on October 25, 2016 for goods in International Class 18;
- the International trademark AWAY with registration No. 1292134, registered on February 10, 2016 for goods in International Class 18 for a number of jurisdictions, including the European Union, Australia, India, Japan, etc.; and
- the trademark AWAY with registration No. 5,481,415, registered in the United States on May 29, 2018 for goods in International Class 18.
The Complainant is also the owner of the following trademark registrations for the sign AWAY TRAVEL (the “AWAY TRAVEL trademark”):
- the trademark AWAY TRAVEL with registration No. 25643967, registered in China as of August 14, 2018 for goods in International Class 18; and
- the trademark AWAY TRAVEL with registration number TMA1045784, registered in Canada on July 30, 2019 for goods in International Class 18.
The disputed domain name was registered on October 29, 2018. It resolves to a Russian language website that represents itself as the official representative of AWAY in the Russian Federation and informs visitors that “the AWAY suitcases are already in Moscow, and their sales in Russia are soon to commence”. The website also offers for sale suitcases of several other companies.
5. Parties’ Contentions
A. Complainant
The Complainant submits that the disputed domain name is confusingly similar to the AWAY trademark because it incorporates it entirely, followed by the English word “travel”. The inclusion of the word “travel” enhances the likely of confusion because “travel” relates to the Complainant’s business and makes the disputed domain name almost identical to the Complainant’s domain name <awaytravel.com>.
According to the Complainant, the Respondent has no rights or legitimate interests in the disputed domain name, as the Respondent is not commonly known by it and has not acquired any trademark rights in it, the Respondent is not associated to the Complainant, and the registration and use of the disputed domain name was not authorized by the Complainant. The Complainant adds that the Respondent is not making a legitimate commercial or fair use of the disputed domain name, but has copied a prior version of the Complainant’s official website, including images, videos, logos, layouts and color schemes. The Respondent has thus set up a competing website to impersonate the Complainant and divert consumers to its website for financial gain. The Respondent’s website also includes a section offering goods of third parties, some of which compete with the Complainant, and redirects customers to competitor sites through hyperlinks.
The Complainant contends that the disputed domain name was registered and is being used in bad faith. The Complainant’s registration of the AWAY trademark and of the domain name <awaytravel.com> predate the registration of the disputed domain name, and the Respondent was aware of the Complainant and of its AWAY trademark, since it has copied the Complainant’s website, logo and website layout. The Respondent is thus using the disputed domain name to impersonate and pass off as the Complainant, for purposes of disrupting the Complainant’s business and promoting the goods of competitors.
B. Respondent
The Respondent did not submit a formal Response in this proceeding. In its email messages to the Center of July 10 and July 11, 2019, the Respondent stated that it intended to sell the Complainant’s products in the Russian Federation, added that it was ready to transfer the disputed domain name, and asked for instructions on how to do this.
6. Discussion and Findings
6.1. Procedural issue – Language of the proceedings
In respect of the language of the proceedings, the Panel notes the following. According to the information provided by the Registrar, the language of the registration agreement for the disputed domain name is Russian. Under paragraph 11 of the Rules, unless otherwise agreed by the Parties, or specified otherwise 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.
The Complainant submitted its Complaint in the English language, and requests the proceeding to be held in English. The Complainant argues that the translation of the Complaint into Russian would unreasonably burden the Complainant and delay the proceedings, and adds that the Respondent has a knowledge of English, evident from the fact that the disputed domain name is composed of English words, and the website at the disputed domain name includes terms and reproduces videos, pictures and trademarks, all of which are in English. The Center has sent all its messages to the Respondent in both English and Russian, and has invited the Respondent to express its views on the language of the proceeding. The Respondent has not responded to this invitation and has thus not objected to the Complainant’s request that the proceedings be held in English.
Taking all the above circumstances into account, the Panel accepts that the Respondent would not be disadvantaged if the language of the proceeding is English, and is satisfied that using the English language in this proceeding would be fair and efficient.
Therefore, in exercise of its powers under paragraph 11 of the Rules, the Panel decides that the language of this administrative proceeding will be English. At the same time, the Panel will take into account all Russian language evidence in the case file.
6.2. Substantive Matters
Pursuant to the Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the disputed domain name:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the Respondent has registered and is using the disputed domain name 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.
By the Rules, paragraph 5(c)(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 …”
The Respondent has however not submitted a formal Response and has thus not disputed the Complainant’s statements and evidence in this proceeding.
A. Identical or Confusingly Similar
The Complainant has provided evidence and has thus established its rights in the AWAY trademark and in the AWAY TRAVEL trademark.
The Panel notes that a common practice has emerged under the Policy to disregard in appropriate circumstances the generic Top-Level Domain (“gTLD”) section of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i). The Panel sees no reason not to follow the same approach here, so it will disregard the “.moscow” gTLD section of the disputed domain name.
The relevant part of the disputed domain name is therefore the sequence “awaytravel”, which consists of the elements “away” and “travel”. The combination of these two elements is identical to the AWAY TRAVEL trademark and is confusingly similar to the AWAY trademark, which is fully reproduced and is easily recognized within it. The Panel also notes that the relevant part of the disputed domain name fully reproduces the relevant part of the Complainant’s domain name <awaytravel.com>, which may in itself lead to confusion.
In view of the above, the Panel finds that the disputed domain name is identical to the AWAY TRAVEL trademark and is confusingly similar to the AWAY trademark, in which the Complainant has rights.
B. Rights or Legitimate Interests
While the overall burden of proof in UDRP proceedings is on the complainant, UDRP panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often-impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. See section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name, stating that the Respondent is not commonly known by it and has not acquired any trademark rights in it and is not associated to the Complainant, and that the registration and use of the disputed domain name was not authorized by the Complainant. The Complainant adds that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, but has copied a prior version of the Complainant’s official website to impersonate the Complainant and divert consumers to its own website, which features not only the Complainant’s products, but also competing products of third parties and redirects customers to competitor websites. Thus, the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
The Respondent has not alleged that is has rights and legitimate interests in the disputed domain name and has not disputed the statements of the Complainant and the evidence provided by it. In its informal email messages to the Center, the Respondent has stated that it intended to sell the Complainant’s products in the Russian Federation and that it was ready to transfer the disputed domain name. The Respondent has not denied that the Complainant has not given consent for the registration and use of the disputed domain name and of content belonging to the Complainant on the website at the disputed domain name.
The disputed domain name is identical to the AWAY TRAVEL trademark and to the Complainant’s domain name <awaytravel.com>. As summarized in section 2.5.1 of the WIPO Overview 3.0, a domain name that is identical to a complainant’s trademark carries a high risk of implied affiliation. Previous UDRP panels have largely held that such composition cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner. The disputed domain name is also confusingly similar to the AWAY trademark. It resolves to an active website that features the Complainant’s products and copies content created by the Complainant. This increases the effect of impersonation of the Complainant and may well attract and confuse Internet users to believe they are reaching a website of the Complainant offering its products in the city of Moscow. In addition, the Respondent’s website offers products of the Complainant’s competitors.
All these circumstances satisfy the Panel that it is more likely than not that the Respondent, being aware of the goodwill of the AWAY and AWAY TRAVEL trademarks, has registered and used the disputed domain name in an attempt to exploit these trademarks’ goodwill by impersonating the Complainant or suggesting sponsorship or endorsement by the latter, and to attract Internet users to the Respondent’s website and to the products offered on it for sale (including products of the Complainant’s competitors) for commercial gain without the consent of the Complainant. Such conduct of the Respondent does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use, and therefore does not give rise to rights and legitimate interests of the Respondent in the disputed domain name.
Therefore, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:
“(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location.”
As discussed above, the disputed domain name is identical to the AWAY TRAVEL trademark and its relevant part is identical to the relevant part of the Complainants’ domain name <awaytravel.com>. The disputed domain name is also confusingly similar to the AWAY trademark. It resolves to an active website that copies content from the Complainant’s official website and features not only the Complainant’s products, but also products of its competitors. The Respondent states that its intention was to sell the Complainant’s products in the Russian Federation.
Taking the above into account, the Panel accepts that the Respondent has registered and used the disputed domain name with knowledge of the Complainant and targeting the AWAY and AWAY TRAVEL trademark. It is likely that by creating a likelihood of confusion with the Complainant’s AWAY and AWAY TRAVEL trademarks and with the Complainants’ official domain name and website, the Respondent has attempted to attract traffic to the disputed domain name and confuse Internet users that they are reaching an online location of the Complainant and then offer them products that compete with the Complainants’ products, likely for commercial gain.
Therefore, the Panel finds that the disputed domain name has been registered and used in bad faith.
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 <awaytravel.moscow> be transferred to the Complainant.
Assen Alexiev
Sole Panelist
Date: October 23, 2019
