WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Rivian IP Holdings, LLC v. Denis A. Minkin

Case No. D2020-3341

1. The Parties

The Complainant is Rivian IP Holdings, LLC, United States of America (“US” or “United States”), represented by Coates IP, U.S.

The Respondent is Denis A. Minkin, Russian Federation.

2. The Domain Name and Registrar

The disputed domain name <rivian.moscow> is registered with RU-CENTER-MSK (Regional Network Information Center, JSC dba RU-CENTER) (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on December 9, 2020. On December 9, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 10, 2020, the Registrar transmitted by email to the Center its verification response disclosing 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 on December 23, 2021, 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 December 28, 2021.

On December 23, 2020, the Center sent an email to the Parties in English and Russian regarding the language of the proceedings. On December 28, 2020, the Complainant requested that English be the language of the proceedings and provided respective arguments in support of its request. The Respondent did not provide any comments regarding 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, and the proceedings commenced on January 6, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 26, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 3, 2021.

The Center appointed Taras Kyslyy as the sole panelist in this matter on February 22, 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 US-based electric automobile manufacturer and technology company founded in 2009 that offers various goods and services related to sustainable transportation and delivery under the RIVIAN trademark. The Complainant owns multiple US trademark registrations for its RIVIAN Mark, including US registration No. 6,075,546, filed on April 20, 2018, registered on June 9, 2020 and first used in commerce on November 30, 2018. The Complainant has also been advertising its products and services under the RIVIAN trademark through the website located at the <rivian.com> domain name since 2011.

The disputed domain name was registered on September 5, 2019 and resolved to a webpage in Russian language, featuring the Complainant’s trademark, copying prior design of the Complainant’s website and offering investment services. At the time of the decision, the disputed domain name resolves to an inactive webpage.

5. Parties’ Contentions

A. Complainant

The disputed domain name is identical and confusingly similar to the Complainant’s trademark. The Respondent’s choice in adopting the disputed domain name was for purposes of deception and fraud. The content of the Respondent’s website is identical to a prior version of the Complainant’s website, which includes the Complainant’s copyrighted imagery, video, typeface and its company logo.

The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not commonly known by the disputed domain name, and has acquired no trademark or service mark rights in the term. The Respondent makes no legitimate noncommercial or fair use of the disputed domain name. There are no disclaimers noting that the Respondent is not the Complainant. The Respondent is not a licensee of the Complainant. The Respondent fails to pass the test set forth in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (the “Oki Data test”). The term “Rivian” is a coined term by the Complainant with no meaning other than to identify the Complainant’s company and brand. The Respondent has no rights in the Complainant’s trademark, prior or subsequent, and provides no bona fide goods or services under the RIVIAN mark in commerce. The disputed domain name resolves to a landing page that is nearly identical to the Complainant’s, but with a different contact email and phone number, presumably with the intention to divert consumers to the Respondent for fraudulent purposes. Social media icons on the Respondent’s website link to the Complainant’s owned and operated social media channels at Facebook, Twitter, LinkedIn, Instagram and YouTube. The attribution at the bottom of the Respondent’s website states: “Copyright 2019 Rivian All Rights Reserved.”

The disputed domain name was registered and is being used in bad faith. The Respondent is hosting a copycat website on the disputed domain name that is identical to the Complainant’s website in an attempt to deceive customers into contacting the Respondent through a Gmail email address or a United Kingdom-based phone number, presumably for fraudulent purposes. The Respondent uses the Complainant’s identical logo and font with the Complainant’s trademark. The disputed domain name was registered to prevent the Complainant from registering it.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Language of Proceedings

The language of the Registration Agreement for the disputed domain name is Russian. Paragraph 11(a) of the Rules provides that “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 Panel may also order that any documents submitted in a language other than that of the proceeding be translated.

However, as noted by previous UDRP panels, paragraph 11 of the Rules must be applied in accordance with the overriding requirements of paragraphs 10(b) and 10(c) of the Rules that the parties are treated equally, that each party is given a fair opportunity to present its case and that the proceeding takes place with due expedition (see, e.g., General Electric Company v. Edison Electric Corp. a/k/a Edison Electric Corp. General Energy, Edison GE, Edison-GE and EEEGE.COM, WIPO Case No. D2006-0334).

In deciding whether to allow the proceedings to be conducted in a language other than the language of the Registration Agreement, and to require the Complainant in an appropriate case to translate the Complaint into the language of that agreement, the Panel must have regard to all “the relevant circumstances” of the case. The factors that the Panel should take into consideration include whether the Respondent is able to understand and effectively communicate in the language in which the Complaint has been made and would suffer no real prejudice, and whether the expenses of requiring translation and the delay in the proceedings can be avoided without at the same time causing injustice to the Parties.

According to section 4.5.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) previous UDRP panels have found that certain scenarios may warrant proceeding in a language other than that of the registration agreement. Such scenarios include (i) evidence showing that the respondent can understand the language of the complaint, (ii) the language/script of the domain name particularly where the same as that of the complainant’s mark, (iii) any content on the webpage under the disputed domain name, (iv) prior cases involving the respondent in a particular language, (v) prior correspondence between the parties, (vi) potential unfairness or unwarranted delay in ordering the complainant to translate the complaint, (vii) evidence of other respondent-controlled domain names registered, used, or corresponding to a particular language, (viii) in cases involving multiple domain names, the use of a particular language agreement for some (but not all) of the disputed domain names, (ix) currencies accepted on the webpage under the disputed domain name, or (x) other indicia tending to show that it would not be unfair to proceed in a language other than that of the registration agreement.

The Complainant has submitted a request that the language of the proceedings be English. The Complainant contends that the Respondent must be familiar with the English language since (i) the Registrar communicates in English and the Registrar’s Registration Agreement is in English on its website, (ii) the Complainant is based in the US, and does not have a presence in Russian Federation, (iii) the Respondent is familiar with English, as indicated by his translation of the Complainant’s website into Russian and hosting the website on the disputed domain name, (iv) the disputed domain name solely consists of the Complainant’s trademark, which is a brand in the English language demonstrating Respondent’s understanding in the English language. The Complainant also believes that the language of the proceedings shall be English, otherwise due to additional costs and undue delay the Complainant would be unfairly disadvantaged by being forced to translate the Complaint to Russian.

The Panel further notes that no objection was made by the Respondent to the proceeding being in English nor any request made that the proceedings be conducted in Russian, the language of the Registration Agreement. This was despite the Center notifying the Respondent in Russian and English that the Respondent is invited to present its objection to the proceedings being held in English and if the Center did not hear from the Respondent by a certain date, the Center would proceed on the basis that the Respondent had no objection to the Complainant’s request that English be the language of the proceedings. The Respondent had the opportunity to raise objections or make known its preference but did not do so.

The Panel also finds that substantial additional expense and delay would likely be incurred if the Complaint had to be translated into Russian.

Taking all these circumstances into account, the Panel finds that it is appropriate to exercise its discretion and allow the proceedings to be conducted in English.

B. Identical or Confusingly Similar

The Panel finds that the Complainant has rights in its registered trademark.

The generic Top-Level Domain “.moscow” in the disputed domain name is viewed as a standard registration requirement and may be disregarded for the purposes of the confusing similarity test (see, e.g., Rexel Developpements SAS v. Zhan Yequn, WIPO Case No. D2017-0275).

According to section 1.7 of the WIPO Overview 3.0 in cases where a domain name incorporates the entirety of a trademark the domain name will normally be considered identical or confusingly similar to that mark for purposes of UDRP standing. The Panel finds that the disputed domain name incorporates the entirety of the Complainant’s trademark.

Considering the above, the Panel finds the disputed domain name is identical to the Complainant’s trademark, therefore, the Complainant has established its case under paragraph 4(a)(i) of the Policy.

C. Rights or Legitimate Interests

Noting the facts and arguments set out above, the Panel finds that the Complainant has established prima facie that the Respondent has no rights or legitimate interests in the disputed domain name.

Furthermore, the Respondent provided no evidence that it holds a right or legitimate interest in the disputed domain name.

The Respondent is not commonly known by the disputed domain name, which could demonstrate its right or legitimate interest (see, e.g., World Natural Bodybuilding Federation, Inc. v. Daniel Jones TheDotCafe, WIPO Case No. D2008-0642).

The Complainant did not license or otherwise agree for use of its prior registered trademarks by the Respondent, thus no actual or contemplated bona fide or legitimate use of the disputed domain name could be reasonably claimed (see, e.g.,Sportswear Company S.P.A. v. Tang Hong, WIPOCase No. D2014-1875).

The disputed domain name used to redirect Internet users to a website with a logo similar to the Complainant’s and designed similarly to the Complainant’s website to make the Internet users believe that they actually access the Complainant’s website. Past UDRP panels confirmed that such actions prove registrant has no rights or legitimate interests in a disputed domain name (see Daniel C. Marino, Jr. a/k/a Dan Marino v. Edgar Carrillo/ Greg Rice/ Video Images Productions, et al., WIPO Case No. D2000-0598, Houghton Mifflin Company v. Weatherman, Inc., WIPO Case No. D2001-0211).

According to section 2.8.2 of the WIPO Overview 3.0, previous UDRP panels applying the Oki Data test usually involve a domain name comprising a trademark plus a descriptive term (e.g., “parts”, “repairs”, or “location”), whether at the second level or the top level of the domain name. At the same time, the risk of misrepresentation has led UDRP panels to find that a respondent lacks rights or legitimate interests in cases involving a domain name identical to the complainant’s trademark. The Panel finds that, since in the present case the disputed domain name is identical to the Complainant’s trademark, the Respondent lacks any rights or legitimate interests as the disputed domain name carries a high risk of implied affiliation.

The disputed domain name incorporates the RIVIAN trademark of the Complainant in its entirety and it is its distinctive element. Since RIVIAN is widely known trademark, and the disputed domain name is associated with the website referring to RIVIAN products, the Panel finds that the Respondent must have been aware of the RIVIAN trademark when it registered the disputed domain name, and that it chose to target the RIVIAN trademark because of the likelihood that it will attract traffic to the Respondent’s website. In the Panel’s view, such conduct cannot be regarded as giving rise to rights or legitimate interests on the part of the Respondent to register and use the disputed domain name (see, e.g., LEGO Juris A/S v. Andrei Novakovich, WIPO Case No. D2016-1513).

The Respondent has no rights or legitimate interests in the disputed domain name resolving to an inactive website at the time of the decision (see, e.g., Philip Morris USA Inc. v. Daniele Tornatore, WIPO Case No. D2016-1302).

Considering the above, the Panel finds the Respondent does not have rights or legitimate interests in the disputed domain name. Therefore, the Complainant has established its case under paragraph 4(a)(ii) of the Policy.

D. Registered and Used in Bad Faith

The Panel finds the disputed domain name was registered and is being used in bad faith.

According to section 3.2.2 of the WIPO Overview 3.0 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. In the present case the Respondent shortly after registration of the disputed domain name incorporating the Complainant’s trademark placed a website being merely a Russian copy of the respective Complainant’s website. The Panel finds that the nature of the disputed domain name and its use confirms the Respondent knew or should have known of the Complainant’s prior trademark rights, which confirms the bad faith.

According to section 3.1.4 of the WIPO Overview 3.0 the mere registration of a domain name that is identical or confusingly similar to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith. The Panel is convinced that the Complainant’s trademark is well established through long and widespread use and the Complainant has acquired a significant reputation and level of goodwill in its trademark both in the United States and internationally prior to the registration of the disputed domain name. Thus, the Panel finds that the disputed domain name identical to the Complainant’s trademark was registered in bad faith.

According to paragraph 4(b)(iv) of the Policy the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith: 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. In this case, the disputed domain name was resolving to a website featuring the Complainant’s trademark and falsely pretended to be the official Complainant’s local website to intentionally attract Internet users by creating likelihood of confusion with the Complainant’s trademark as to the source of the website and its products. The Panel finds the above confirms the disputed domain name was registered and used in bad faith.

Although at the time of this decision the disputed domain name resolves to an inactive webpage, its previous bad faith use and lack of explanation of possible good faith use from the Respondent makes any good faith use of the disputed domain name implausible. Thus, the current passive holding of the disputed domain name does not prevent a finding of bad faith and in fact further supports such a finding (see, e.g., Abbott Diabetes Care Inc. v. Privacy Protection, Hosting Ukraaine LLC / Виталий Броцман (Vitalii Brocman), WIPO Case No. DPW2017-0003).

The Respondent ignored its possibility to comment on the contrary and provide any good explanations to prove its good faith while registering and using the disputed domain name.

Considering the above, the Panel finds the disputed domain name was registered and is being used in bad faith. Therefore, the Complainant has established its case under 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<rivian.moscow> be transferred to the Complainant.

Taras Kyslyy
Sole Panelist
Date: March 2, 2021