The Complainant is Windstar Cruises Marshall Islands, LLC, United States of America, represented by Freeborn & Peters, United States of America.
The Respondent is Alexandr Frimenov, Russian Federation.
The disputed domain name <windstar.xyz> (the “Disputed Domain Name”) is registered with Registrar of Domain Names REG.RU LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 17, 2019. On July 18, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On July 19, 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 Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 19, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on July 19, 2019. Also on July 19, 2019, the Center sent an email communication to the Parties in Russian and English in regard to the language of the proceedings. The Complainant requested English to be the language of the proceedings. The Respondent did not comment on the language of the proceedings.
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 in Russian and English, and the proceedings commenced on July 25, 2019. In accordance with the Rules, paragraph 5, the due date for Response was August 14, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 22, 2019.
The Center appointed Mariya Koval as the sole panelist in this matter on September 3, 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.
The Complainant is engaged in the cruising business and is the market leader in small ship cruising with a total of 1,242 passenger berths calling on off-the-beaten-path and popular ports in over 60 countries. The Complainant has been recognized with top honors from some of the most respected leaders in the cruising industry.
The Complainant is the owner of numerous registrations for its WINDSTAR Trademark (the “WINDSTAR Trademark”) in different jurisdictions:
United States of America
January 13, 1987
December 19, 1989
August 25, 1991
October 10, 1992
February 13, 1990
December 27, 1990
December 29, 1989
April 5, 1991
November 27, 1992
December 23, 1992
June 30, 1995
November 13, 1998
August 18, 1989
January 8, 1999
1352131 (International Registration)
May 2, 2017
1352131 (International Registration)
May 2, 2017
1352131 (International Registration)
May 2, 2017
1352131 (International Registration)
May 2, 2017
The Complainant also uses its WINDSTAR Trademark in numerous domain names, under which it also promotes its service, among others:
The Disputed Domain Name <windstar.xyz> was registered on June 28, 2019. At the date of this decision, the Disputed Domain Name does not resolve to an active website.
The Complainant contends that the WINDSTAR Trademark has been used since 1987 in connection with cruise services further to an assignment to the Complainant since December 2014 (recorded at least at the USPTO from 2018). The WINDSTAR Trademark is a distinctive and well-established brand in the cruise line business, both in the United States of America and internationally. The Complainant owns numerous WINDSTAR Trademark registrations in different jurisdictions.
The Complainant further asserts that the Respondent registered the Disputed Domain Name, which includes the Complainant’s WINDSTAR Trademark in its entirety.
The Complainant also contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name in view of the Respondent has no relationship with the Complainant, the Disputed Domain Name is not linked to any server, and the Respondent is not operating a legitimate Windstar enterprise. The Complainant has not given the Respondent an authorization to use its WINDSTAR Trademark or any permutation thereof.
The Complainant asserts that the Disputed Domain Name was registered and is being used in bad faith because of the Respondent is not currently using the Disputed Domain Name for any purpose and it is not linked to any server. Accordingly, the registration of the Disputed Domain Name appears to be for the primary purpose of selling, renting, or otherwise transferring the Disputed Domain Name registration to the Complainant or a competitor for valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the Disputed Domain Name.
The Respondent did not reply to the Complainant’s contentions.
Pursuant to paragraph 4(a) of the UDRP, in order to succeed in this proceeding, the Complainant must prove each of the following elements with respect to 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 (paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name (paragraph 4(a)(ii)); and
(iii) the Disputed Domain Name has been registered and is being used in bad faith (paragraph 4(a)(iii)).
The Registrar confirmed that the language of the registration agreement for the Disputed Domain Name is Russian.
According to the 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 filed a request for the English language proceeding, grounding on the following:
- translating the complaint with all its annexes into Russian would be unduly burdensome and expensive for the Complainant;
- requiring translation into Russian would delay the proceedings and the adjudication of the current matter;
- the Disputed Domain Name uses Latin characters rather than Russian characters.
In accordance with paragraph 10(c) of the Rules the Panel shall ensure that the administrative proceeding takes place with due expedition.
The Panel notes that the Respondent, having received the Center’s communication regarding the language of the proceeding in both Russian and English, did not request the Russian be the language of the proceeding or otherwise comment on the Complainant’s request. Further, having received notice of the proceeding, also in both Russian and English, the Respondent did not file any response.
Having considered all circumstances of this case, namely taking into account the fact that the Disputed Domain Name has not been used by the Respondent and also that the Respondent did not file any response nor any submissions regarding the language of the proceeding, and also taking into account that the Complainant does not understand or speak Russian, the Panel considers that requiring the Complainant to translate the Complaint would cause unjustifiable disadvantages to the Complainant and inappropriate delays in resolving this dispute.
In light of the above, the Panel concludes in accordance with paragraph 11(a) of the Rules that English shall be the language of this proceeding.
The Panel finds that the Complainant has established its rights in the WINDSTAR Trademark due to long use and different registrations in a number of jurisdictions.
The Panel is of opinion that it is obvious that the Disputed Domain Name is identical to the Complainant’s WINDSTAR Trademark in view of it comprises the Complainant’s Trademark in its entirety as a dominant element with addition of the generic Top-Level Domain (“gTLD”) “.xyz”. The Complainant’s Trademark is clearly recognizable in the Disputed Domain Name. The gTLD is usually not taken into account for purposes of considering the first element under the Policy. In accordance with section 1.11.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) “the practice of disregarding the TLD in determining identity or confusing similarity is applied irrespective of the particular TLD (including with regard to ‘new gTLDs’)”.
In view of foregoing, the Panel concludes that the Disputed Domain Name is identical to the Complainant’s WINDSTAR Trademark, disregarding the gTLD “.xyz”. Consequently, the Panel considers the Complainant satisfied the first element of paragraph 4(a) of the Policy.
According to paragraph 4(c) of the Policy, the Respondent may establish its rights or legitimate interests in the domain name, among other circumstances, by showing any of the following elements:
(i) before any notice to the Respondent of the dispute, his use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if he has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Complainant has used its WINDSTAR Trademark for a total for more than 20 years, which is long before the Respondent registered the Disputed Domain Name in 2019.
The Complainant alleges that the Respondent has no rights or legitimate interests in the Disputed Domain Name pursuant to paragraph 4(a)(ii) of the Policy. The Complainant has never authorized in any way the Respondent to use its WINDSTAR Trademark. So, the Complainant has made a prima facie case that the Respondent does not have any rights or legitimate interests in the Disputed Domain Name.
The Disputed Domain Name is identical to the Complainant’s WINDSTAR Trademark and name of some of its website for purposes of the Policy.
As is seen from the evidence presented by the Complainant, the Respondent has not made a bona fide offering of goods or services or a noncommercial use of the Disputed Domain Name and respectively has not demonstrated any effort for legitimate use of the Disputed Domain Name. On the contrary, at the date of filing the Complaint, the Disputed Domain Name is being passively held, which suggests lack of rights or legitimate interests in the Disputed Domain Name.
Furthermore, the Panel finds that the Respondent, being a natural person, is not commonly known by the Disputed Domain Name, that demonstrates a lack of rights or legitimate interests in accordance with paragraph 4(c)(ii) of the Policy.
In view of the Respondent has not submitted any substantive arguments or evidence to negate the Complainant’s prima facie case, the Panel concludes that the Respondent does not have rights or legitimate interests in the Disputed Domain Name and that the Complainant has satisfied the second element of the Policy.
In accordance with section 3.2.2 of the WIPO Overview 3.0 noting the near instantaneous and global reach of the Internet and search engines, and particularly in circumstances where the complainant’s mark is widely known (including in its sector) or highly specific and a respondent cannot credibly claim to have been unaware of the mark (particularly in the case of domainers), panels have been prepared to infer that the respondent knew, or have found that the respondent should have known, that its registration would be identical or confusingly similar to a complainant’s mark. Further factors including the nature of the domain name, the chosen Top-Level Domain, any use of the domain name, or any respondent pattern, may obviate a respondent’s claim not to have been aware of the complainant’s mark. The Panel is of opinion that, taking into account the Complainant’s long use of the WINDSTAR Trademark and that the Disputed Domain Name completely incorporates the Complainant’s Trademark, at the time of the registration of the Disputed Domain Name the Respondent knew, or should have known about the existence of the Complainant’s Trademark.
Moreover, in the present case, none active website is associated with the Disputed Domain Name, that is an example of passive holding. Passive holding is not itself evidence of either good or bad faith, but must be considered in the context of all of the circumstances of the case, see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The Panel agrees with the Complainant that in view of the website under the Disputed Domain Name is inactive, its registration appears to be for the primary purpose of selling, renting, or otherwise transferring the Disputed Domain Name registration to the Complainant or a competitor for valuable consideration.
Also, the Respondent did not respond to the Complainant’s contentions and does not participate in this proceeding at all. Previous UDRP panels have considered that the Respondent’s failure to respond to the Complaint supports an inference of bad faith, see e.g.,Champagne Louis Roederer (CLR) v. Global Web Development, LLC, WIPO Case No. D2004-1073 “The fact that the Respondent failed to respond to the Complaint, in the Panel’s view, adds to the arguments in favour of the Respondent’s bad faith.”
Therefore, the Panel finds the Disputed Domain Name was registered and is being used in bad faith. Accordingly, the Complainant has met the requirements of paragraph 4(a)(iii) of the Policy.
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 <windstar.xyz> be transferred to the Complainant.
Date: September 16, 2019
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