WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Kartina Digital GmbH v. Mykola Kizilov

Case No. D2020-3137

1. The Parties

The Complainant is Kartina Digital GmbH, Germany, represented by lexTM Rechtsanwaelte, Germany.

The Respondent is Mykola Kizilov, United States of America.

2. The Domain Name and Registrar

The disputed domain name <kartinatv.net> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 23, 2020. On November 23, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 24, 2020, 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 December 1, 2020 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 amendment to the Complaint on December 10, 2020.

The Center verified that the Complaint together with the amendment to 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 14, 2020. In accordance with the Rules, paragraph 5, the due date for Response was January 3, 2021. The Respondent submitted an informal email to the Center on January 14, 2021.

The Center appointed Luca Barbero as the sole panelist in this matter on February 8, 2021. 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 video service provider for Russian-speaking TV viewers abroad and provides its Over-The-Top /Internet Protocol Television (“ОТТ/IРТV”) services worldwide under the trademark KARTINA TV.

The Complainant is the exclusive licensee of the following trademark KARTINA TV, registered in the name of the Complainant’s managing director Andreas Reich, as per trademark certificates submitted as Annex 4 to the Complaint:

- International Trademark Registration No. 1080931 for KARTINA TV (word mark), registered on May 4, 2011 in International classes 9, 35 and 38;

- European Union Trademark Registration No. 009842394 for KARTINA TV (word mark), filed on March 25, 2011 and registered on August 30, 2011 in International classes 9, 35 and 38;

- European Union Trademark Registration No. 009842361 for KARTINA TV (figurative mark), filed on March 25, 2011 and registered on September 22, 2011, in International classes 9, 35 and 38;

- Germany Trademark Registration n. 302009004778 for KARTINA TV (figurative mark), filed on January 24, 2009 and registered on July 29, 2009 in International classes 9, 35 and 38;

- Germany Trademark Registration n. 302009004779 for KARTINA TV (word mark), filed on January 24, 2009 and registered on March 24, 2009 in International classes 9, 35 and 38.

The Complainant provides its broadcasting services under the trademark KARTINA TV at the domain name <kartina.tv>, which was registered on November 6, 2007.

The disputed domain name <kartinatv.net> was registered on July 29, 2017 and is pointed to the website of a Complainant’s competitor, “www.telecolatv.com”, providing а competing OTT/IPTVservice.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is confusingly similar to the trademark KARTINA TV in which the Complainant has rights as it reproduces the trademark in its entirety with the mere addition of the generic Top-Level Domain (“gTLD”) “.net”.

With reference to rights or legitimate interests in respect of the disputed domain name, the Complainant states that there is no evidence of the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or а name corresponding to the disputed domain name in connection with а bona fide offering of goods or services.

The Complainant contends that the Respondent is not commonly known bу the disputed domain name and that he is not making а legitimate non-commercial or fair use of the disputed domain name, without intent for commercial gain misleadingly to divert consumers or to tarnish the trademark or service mark at issue. The Complainant highlights that the Respondent uses the Complainant’s trademark to advertise the services of a Complainant’s competitor and concludes that, bу using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to a competitor’s website, bу creating а likelihood of confusion with the Complainant’s trademark.

The Complainant informs the Panel that the Respondent was a former sales representative of the Complainant who, in the course of the cooperation, was authorized to sell the Complainant’s products. However, the Complainant states that, since the Respondent no longer works for the Complainant, he cannot claim rights or legitimate interests in the disputed domain name.

With reference to the circumstances evidencing bad faith, the Complainant indicates that the Respondent was in no way authorized to register or use the disputed domain name and/or the Complainant’s trademarks and that the Respondent did not inform the Complainant prior to the registration of the disputed domain name, nor did he ask permission to use the disputed domain name.

The Complainant further contends that the Respondent called one of the Complainant’s employees and attempted to sell the disputed domain name to the Complainant for USD12,000 - USD13,000 stating that he did not need it and did not want to use it.

The Complainant emphasizes that, upon ending their cooperation, the Respondent started working with one of the Complainant’s main competitors, the international broadcasting company TelecolaTv, based in Cyprus. The Complainant states that, in the context of this cooperation, the Complainant’s trademark KARTINA TV, which was known to the Russian public, was used to generate attention and customer contacts for TelecolaTV. The Complainant also submits that the Respondent used the disputed domain name both as web address as email address, in a purposeful manner, in order to win customers for TelecolaTv.

The Complainant indicates that, since the Respondent did not reply to a Complainant’s warning letter, the Complainant obtained a Preliminary Injunction before the Frankfurt Regional Court on November 20, 2020 stating that the Respondent was forbidden to give the impression to be a representative of the Complainant, by using the Complainant’s trademark KARTINA TV. However, despite the Court Order, the Respondent continued to use the disputed domain name to redirect customers looking for the Complainant’s website to a competitor’s website.

B. Respondent

The Respondent did not submit a formal Response. On January 14, 2021, the Respondent sent an informal email to the Center, expressing no intent to participate in the proceeding and willingness to cancel the disputed domain name.

6. Discussion and Findings

According to paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

(i) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) that the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

As highlighted above, the Complainant relies on trademark registrations for KARTINA TV which are registered in the name of the Complainant’s managing director Andreas Reich (as per Annex 4 to the Complaint) and on which the Complainant claims trademark rights as exclusive licensee.

Although the Complainant has not provided evidence of such exclusive license agreement or further arguments to support its allegation, the Panel notes that the Complainant has submitted, as Annex 5 to the Complaint, copy of a Preliminary Injunction issued by a German Court, obtained by the Complainant against the Respondent, in which it was confirmed that Mr. Reich was the Complainant’s managing director and the Respondent was ordered to immediately cease any use of the figurative trademark KARTINA TV in European Union for broadcasting programs on the Internet.

In view of the above and of the fact that the Complainant operates the website “www.kartina.tv” - as shown by the contact details published on the website -, through which the KARTINA TV services are provided on the Internet, the Panel deems appropriate to accept the Complainant’s submission and finds that the Complainant has rights in the trademark KARTINA TV for purposes of standing to file a UDRP complaint.

As stated in section 1.4.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), “a trademark owner’s affiliate such as a subsidiary of a parent or of a holding company, or an exclusive trademark licensee, is considered to have rights in a trademark under the UDRP for purposes of standing to file a complaint”.

Moreover, it is well accepted that the first element functions primarily as a standing requirement, and that the threshold test for confusing similarity involves a reasoned but relatively straightforward comparison between a complainant’s trademark and the disputed domain names to assess whether the trademark is recognizable within the disputed domain name (section 1.7 of the WIPO Overview 3.0).

In the case at hand, the Complainant’s trademark KARTINA TV is entirely reproduced in the disputed domain name, with the mere deletion of a space between the two terms of the trademark and the addition of the gTLD “.net”, which are not significant and create any meaningful distinction between the disputed domain name and the trademark. See Dr. Rebecca Parsons, ThoughtWorks, Inc. v. Perfect Privacy, LLC / This Domain May be for Sale at https://www.networksolutions.com, New Ventures Services, Corp, WIPOCase No. D2019-0866 and section 1.11 of the WIPO Overview 3.0.

Therefore, the Panel finds that the Complainant has proven that the disputed domain name is identical to a trademark in which the Complainant has established rights according to paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent may establish a right or legitimate interest in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:

“(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate non-commercial 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 Panel finds that the Complainant has made a prima facie case and that the Respondent has failed to invoke any circumstance that could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain name.

Based on the Complainant’s submissions, which have not been challenged by the Respondent, the Respondent was a former sales representative of the Complainant who was originally authorized to sell the Complainant’s products. However, the Respondent was never granted any authorization from the Complainant to register or use the disputed domain name.

Moreover, there is no indication before the Panel that the Respondent is commonly known by the disputed domain name and the Respondent’s redirection of the disputed domain name, identical to the Complainant’s trademark, to a website of a Complainant’s competitor, certainly does not amount to a bona fide offering of goods or services or a legitimate non-commercial or fair use without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant’s trademark.

Therefore, the Panel finds that the Complainant has proven that the Respondent has no rights or legitimate interests in the disputed domain name according to paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy requires that the Complainant prove that the disputed domain name was registered and is being used by the Respondent in bad faith.

The Panel finds that, in light of the prior registration and use of the Complainant’s trademark KARTINA TV in connection with the Complainant’s broadcasting services and the identity of the disputed domain name with the Complainant’s trademark, the Respondent was or ought to be aware of the Complainant’s trademark when it registered the disputed domain name.

Furthermore, the circumstance that the Respondent was a former sales representative of the Complainant and that he pointed the disputed domain name to a website promoting а competing OTT/IPTV service, demonstrates that the Respondent was indeed well aware of the Complainant and its trademark.

In view of the use of the disputed domain name to redirect users to a website providing broadcasting services which directly compete with the ones offered by the Complainant, the Panel finds that the Respondent intentionally attempted to attract, for commercial gain, Internet users to the competing website to which it currently still resolves, by causing a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the website and the services provided therein, according to paragraph 4(b)(iv) of the Policy.

Moreover, the Panel finds that also paragraph 4(b)(iii) of the Policy is applicable in this case since the Respondent’s use of the disputed domain name is certainly apt to disrupt the Complainant’s business. Indeed, as indicated in section 3.1.3 of the WIPO Overview 3.0., “the notion of a “competitor” beyond the concept of an ordinary commercial or business competitor to also include the concept of “a person who acts in opposition to another” for some means of commercial gain, direct or otherwise” and “this may include prior customers or business partners of the complainant”.

Therefore, the Panel finds that the Complainant has also proven that the Respondent registered and has been using the disputed domain name in bad faith according to paragraph 4(a)(iii) of the Policy.

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 <kartinatv.net> be transferred to the Complainant.

Luca Barbero
Sole Panelist
Date: February 24, 2021