WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

OPPO Pte. Ltd. v. Private Registration / Alexander Leonidovich Shirkov

Case No. DUA2019-0001

1. The Parties

The Complainant is OPPO Pte. Ltd., Singapore, represented by Thomsen Trampedach GmbH, Denmark.

The Respondent is Alexander Leonidovich Shirkov, Ukraine.

2. The Domain Name and Registrar

The disputed domain name <oppo.ua> is registered with Imena.ua (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 10, 2019. On April 17, 2019, the Center transmitted by email to the Registrar a request for registrant verification in connection with the disputed domain name. On April 17, 2019, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On April 24, 2019, the Center sent an email communication in English and Ukranian to the Parties indicating the registration agreement for the disputed domain name is in Ukrainian, and inviting the Parties to submit their preference as to the language of the proceeding. On April 24, 2019, the Complainant submitted its request that English be the language of the proceeding. On April 28, 2019, the Respondent submitted its request that Ukrainian be the language of the proceeding.

The Center verified that the Complaint satisfied the formal requirements of the .UA Domain Name Dispute Resolution Policy (the “.UA Policy”), the Rules for .UA Domain Name Dispute Resolution Policy (the “.UA Rules”), and the WIPO Supplemental Rules for .UA Domain Name Dispute Resolution Policy (the “WIPO Supplemental Rules”).

In accordance with the .UA Rules, paragraph 4(c), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 9, 2019. In accordance with the .UA Rules, paragraph 5(a), the due date for Response was May 29, 2019. On May 28, 2019, the Respondent requested an automatic four-day extension in which to submit a Response, pursuant to paragraph 5(b) of the .UA Rules, as well as a further extension under paragraph 5(d). The extension under paragraph 5(b) was granted and the Response due date was June 2, 2019. On May 29, 2019, the Center granted a further extension pursuant to paragraph 5(d) of the .UA Rules and the due date for Response was June 8, 2019. The Response was submitted to the Center on June 7, 2019.

The Center appointed Taras Kyslyy as the sole panelist in this matter on June 20, 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 .UA Rules, paragraph 7.

4. Factual Background

The Complainant is a private company incorporated in Singapore and acting as Chinese consumer electronics and mobile communications company, known for its smartphones, Blu-ray players and other electronic devices. In 2016, the Complainant’s brand “Oppo” was ranked as the top smartphone brand in China. In 2018, the brand “Oppo” was ranked as the number 5 smartphone brand globally.

The Complainant owns numerous OPPO trademark registrations in many jurisdictions throughout the world including:

- international registration No. 786844A registered on May 11, 2002, for goods and services of 9, 35, 37, 38, 41 and 42 Nice classes, designations include Ukraine;
- international registration No. 1259578 registered on December 31, 2014, for goods and services of 9 and 35 Nice classes, designations include Ukraine.

The Respondent is a Ukrainian individual with certain level of control over the website at “www.nis.ua” providing IT services and selling various products including smartphones. The Respondent also controls “OPPO Community Україна” (OPPO Community Ukraine) page at the Facebook social network.

According to the WhoIs, the disputed domain name was registered in the name of the Respondent on July 31, 2015. The disputed domain name resolved to a website with content that has been modified several times, including redirecting to <nis.ua>. Finally, at the date of filing of the current dispute the website provides for welcome page showing word “OppO” only, and tab tooltip “OPPO – officially in Ukraine” in Russian and Ukrainian languages.

The Respondent holds license for Ukrainian trademark registration no. 201789 for OPPO; the respective trademark application was filed on March 26, 2014 and the registration was granted on July 27, 2015 for services of 45 Nice class.

Prior to the filing of the dispute, the Complainant and the Respondent exchanged pre-Complaint correspondence.

5. Parties’ Contentions

A. Complainant

The disputed domain name is confusingly similar to the Complainant’s trademark.

The Complainant owns numerous OPPO trademark registrations in many jurisdictions throughout the world including in Ukraine. The Complainant’s trademark acquired protection significantly prior to registration of the disputed domain name. The country code Top-Level Domain (ccTLD) “.ua” does not affect the disputed domain name for the purpose of determining whether it is identical or confusingly similar.

The Respondent has no rights or legitimate interests in the disputed domain name.

Registration of the Respondent’s trademark was obtained merely for the purpose of registering the disputed domain name. The registration was not obtained for the purpose of making bona fide use of the mark in commerce in Ukraine and should as such not be determinative. The Respondent’s trademark registration was secured in bad faith, with the sole intent to exploit Complainant’s famous mark and to trade on the rights of the Complainant.

There are other famous trademarks registered in the name of the Respondent in Ukraine, such as “iTunes” and “KFC”, which demonstrates pattern of the bad faith behavior of the Respondent. The Respondent’s trademark registration necessary for the registration of the disputed domain name was not sought for a legitimate or bona fide purpose, but merely to take unfair advantage of the Complainant’s trademark rights and should as such be disregarded.

The Respondent is not a reseller nor a licensee of the Complainant, nor has he been otherwise allowed by the Complainant to make any use of its OPPO trademarks, in a domain name or otherwise.

The Respondent cannot assert that, prior to having notice of this dispute, he was using, or had made demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services. The Respondent has been using the disputed domain name for the sole purpose of creating the false impression among the public of an affiliation between his company and the Complainant’s brand in order to attract visitors originally to his web site, <nis.ua>, and then to an e-commerce platform, where Respondent promotes and sells smartphones and other products of the Complainant’s main competitors.

The Respondent cannot conceivably claim that he is commonly known by the Complainant’s trademarks, given the Complainant’s worldwide notoriety and the fact that the Respondent does not produce or sell any service in the name “Oppo”, and that he admits to have registered the mark in Ukraine solely for the purpose of registering the disputed domain name.

The Respondent cannot assert that he has made or is currently making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. The Respondent was misleadingly diverting consumers into believing that the web site at the disputed domain name is one of the Complainant’s official resellers in Ukraine, thus tarnishing the Complainant’s trademark. The disputed domain name has been used by the Respondent for a web page first redirecting to the Respondent’s company’s web site, where products competing with those of the Complainant are being promoted, then to its e-commerce store where products of the Complainant’s main competitors are being sold. It follows that the Respondent never made or intended to make legitimate noncommercial or fair use of the disputed domain name, but only to unfairly exploit the Complainant’s goodwill and reputation in its OPPO trademarks.

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

The Complainant’s trademark is highly distinctive and has been continuously and extensively used since 2001 in connection with the Complainant’s smart phones and other electronic devices in China but also in the rest of the world, soon becoming globally recognized and well known as one of the leaders in industry.

The Respondent’s company, Nis, claims to have been active since 1994, and to partner with world brands such as “Cisco, Huawei, IBM, Microsoft, Adobe, Juniper, Intel, Oracle, HP, DELL, LG, Samsung, Xerox, ASUS, APC, Apple, Epson and many others”. Given the Complainant’s renown and goodwill in the OPPO trademark in 2015, and that the Respondent is engaged in after-sale supports for other phone companies, and promoting products of Xiaomi, one of the Complainant’s main competitors, it is inconceivable that the Respondent did not have knowledge of the Complainant’s OPPO trademarks when registering the disputed domain name.

Given that the disputed domain name consists of the Complainant’s trademark in its entirety and that the Complainant’s copyrighted images and logo have been used at the website at the disputed domain name together with a false claim of affiliation on behalf of the Respondent, it is clear that the Respondent could not have chosen the domain name for any reason other than to deliberately cause confusion amongst Internet users in order to take unfair advantage of the Complainant’s goodwill and reputation in the OPPO trademarks.

The Respondent’s false claim of affiliation with the Complainant at the disputed domain name constitutes strong evidence of bad faith use.

The Respondent’s use of the disputed domain name to redirect Internet users to a web site offering or advertising products produced by the main competitors of the Complainant constitutes strong evidence of bad faith use.

By using the disputed domain name which is identical to the Complainant’s world-famous trademark OPPO, the Respondent has illegitimately traded on the Complainant’s goodwill and achieved commercial gain by creating confusion and diverting Internet users to his own website first, and then to his e-commerce store profile.

The disputed domain name attracted Internet users to the Respondent’s web site, and after the Complainant’s pre-complaint cease-and-desist notification, to an online e-commerce platform, where products of the Complainant’s main competitors were sold.

In doing so, the Respondent attempted to create the false impression among Internet users that his company was affiliated to the Complainant. Internet users who were looking for the Complainant’s goods and services were misled and deceived by the Respondent’s web page into believing that they were accessing the web site of a partner of the Complainant in Ukraine.

The Respondent therefore has used the disputed domain name for commercial gain by promoting his web site and e-commerce store, where the Complainant’s competitors’ products were advertised or sold, and has caused a likelihood of confusion by passing off the site at <nis.ua> as if it were Complainant’s official partner web site.

The Respondent’s web page at the disputed domain featured the Complainant’s products, logos and brands. This, together with the false claim of affiliation at the same web page, indicates the Respondent’s clear intention to suggest an authorization by, or an affiliation with the Complainant by creating a likelihood of confusion with the Complainant’s trademark.

B. Respondent

The disputed domain name is not identical or confusingly similar to the Complainant’s trademark.

The Respondent registered and is using the disputed domain name in good faith without intention to mislead the Internet users, since the Respondent owns Ukrainian trademark registration OPPO and the disputed domain name was registered based on this trademark registration for noncommercial use only since 2015.

In 2017, the Respondent assigned its trademark registration to HONGKONG NIS STORE THECHNOLODGY CO. LIMITED and obtained license for its use. In May 2019, assignment of the trademark registration to the Respondent was initiated and is currently pending.

The Respondent owns its OPPO trademark registration for services of 45 Nice class, in particular “personal and social services concerning fulfillment of human needs provided by a third party” and also owns the disputed domain name.

The above confirms the Respondent’s legitimate rights to use the “oppo” sign in the disputed domain name.

The disputed domain name covers “.ua” zone, which means it covers the territory of Ukraine only.

The Respondent applied for its OPPO trademark on March 26, 2014 and registered the disputed domain name on August 3, 2015, while the Complainant’s OPPO international trademark registration No. 1259578 was designated for Ukraine on August 6, 2015.

The Complainant does not own OPPO trademarks for services of 45 Nice class, while the Respondent registered the disputed domain name to provide such services.

There are other OPPO trademarks registered in Ukraine for various goods and services in the name of third parties, which confirm that Ukrainian consumers do not associate such trademark with the Complainant only.

The Respondent has rights or legitimate interests in the disputed domain name.

The Respondent conducts noncommercial and fair activities without intent to mislead consumers or harm the Complainant’s reputation, since:

- there is an OPPO trademark registered in the name of the Respondent;

- the disputed domain name was registered with the purpose to create a social network for fans of the Complainant’s “Oppo” goods;

- the Respondent reacted to the Complainant’s correspondence in good faith.

Registrations of other famous trademarks in the name of the Respondent are not relevant to evaluate whether the disputed domain name is used in good or bad faith.

The disputed domain name was not registered and is not being used in bad faith.

The disputed domain name was registered to create a social network for fans of the Complainant’s products. However, the social network was not created due to lack of costs. For this reason, the Respondent created a welcome page of the website at the disputed domain name only. Meanwhile the Respondent created a Facebook social network page and placed there news and information on the Complainant’s products. The Respondent also distributed news on the Complainant’s products in Ukraine.

The Respondent never intended commercial use of the disputed domain name and never sold the Complainant’s products, therefore the Respondent uses the disputed domain name in good faith.

The disputed domain name was not registered for sale/lease/transfer to the Complainant or its competitor. The Complainant requested the selling price of the disputed domain name and the Respondent commented it was not for sale.

The disputed domain name was not registered for the purpose of precluding the Complainant to reflect its trademark in a corresponding domain name, since in Ukraine other persons who are “Oppo” trademark owners are also entitled to register <oppo.ua> domain name.

The Respondent is not a competitor to the Complainant and/or the disputed domain name was not registered to disrupt the Complainant’s business; instead the purpose of such registration was to create social network for fans of the Complainant’s products.

By registration of the disputed domain name the Respondent did intentionally attempt to attract, for commercial gain, Internet users to its web site or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its web site or location or of a product or service on its web site or location.

The Respondent used images of the Complainant’s products on its web site at the disputed domain name not to mislead Internet users, but to illustrate the Complainant’s products and to create a social network for fans of the Complainant’s products for further discussion.

The Respondent provided the email address of Nis company at the web site at the disputed domain name not for commercial purpose, but to allow Internet users to contact the Respondent. Also, the link to <nis.ua> was indeed provided at the web site at the disputed domain name, but it was to allow Internet users to contact the Respondent only and was removed upon request of the Complainant.

The Respondent, upon Complainant’s request to remove the <nis.ua> link, replaced it with link to a page at Aliexpress web site allowing users to buy any of the Complainant’s products at different shops to demonstrate the Respondent is not using the disputed domain name for commercial gain. Having reconsidered the Complainant’s request, the Respondent removed any links from the web site at the disputed domain name.

6. Discussion and Findings

A. Language of Proceedings

The language of the Registration Agreement for the disputed domain name is Ukrainian. Paragraph 11(a) of the .UA 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, while applying the provision on the language of the proceedings the Panel considers that it should be also ensured 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.

In deciding whether to allow the proceedings to be conducted in a language other than the language of the Registration Agreement, or 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.

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) during the pre-Complaint correspondence between the parties the Respondent demonstrated advanced familiarity with the English language, (ii) the Respondent is partner of a Chinese company in Ukraine and such international business relations of the Respondent should be considered as further proof of his familiarity with the English language. The Complainant also believes that taking into consideration the Respondent’s familiarity with the English language, and that the Complainant is a Chinese company not familiar with the Ukrainian language, it would be in fairness to both Parties for the proceeding to be held in English.

The Respondent has submitted a request that the language of the proceedings be Ukrainian. The Respondent contends that language of the proceeding should be Ukrainian, since (i) he is a Ukrainian citizen, (ii) Ukrainian is an official language in Ukraine and the Respondent speaks and uses Ukrainian in his business, (iii) the Respondent is not familiar enough with the English language to handle the proceeding, apply specific legal terms and rules relevant to domain name disputes, (iv) the pre-Complaint correspondence is non-official, and legal terms and special knowledge of the domain name dispute resolution were not applied, (v) the Complainant failed to prove the Respondent is partner of a Chinese company and this is irrelevant to evaluate the Respondent’s familiarity with the English language, (vi) the disputed domain name is registered in the “.ua” zone, which proves it covers Ukraine where Ukrainian language is applied. The Respondent also believes that if the Center determines other than Ukrainian to be language of the proceeding, the Respondent will have to translate its position on the merits already filed in Ukrainian, which will involve additional time and costs.

The Panel notes that the Center has sent all of its email communications to the Parties in both languages (i.e., English and Ukrainian). In addition, the Panel notes that the Respondent has submitted a formal Response in Ukrainian and has argued his case.

The Panel finds that the pre-Complaint correspondence being handled in English by both the Complainant and the Respondent confirms that the Respondent is familiar with the English language. The Panel also agrees that the English language appears to be a rather fair choice for this proceeding involving parties not having English as their native language and one of which is not familiar with the Respondent’s native language, given that both parties demonstrate a necessary level of familiarity with the English language.

The Panel further notes that page “OPPO Community Україна” (OPPO Community Ukraine) at the Facebook page controlled by the Respondent provides mostly for English content, which also confirms the Respondent is familiar with the English language.

The Panel also finds that substantial additional expense and delay would likely be incurred if any of the Parties is ordered to further translate their respective filings.

Taking all these circumstances into account, the Panel concludes that it is not unfair to the Parties to proceed in English and finds that it is appropriate to exercise its discretion and allow the proceedings to be conducted in English. The Panel finds there is no need for the Parties to translate their respective filings, and accepts both filings as submitted.

B. Identical or Confusingly Similar

According to paragraph 4(a)(i) of the .UA Policy it should be established that the disputed domain name is identical or confusingly similar to a trademark in which the complainant has rights.

The panel finds that the Complainant has rights in its OPPO trademark.

According to section 1.11.1 of the WIPO Overview 3.0, the applicable generic Top-Level Domain (“gTLD”) in a domain name (e.g., “.com”, “.club”, “.nyc”) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test. The Panel finds that the same approach shall be applied in the present case for the applicable ccTLD “.ua”, which is a standard registration requirement for the disputed domain name and shall be disregarded for the confusing similarity test.

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 same approach shall be applied in the present case, where the disputed domain name entirely captures the Complainant’s registered trademark OPPO.

The Panel also finds that other contentions alleged by the Parties in support of their positions on the similarity issue under the first element are not relevant for the similarity analysis under the first element of the .UA Policy.

Taking into account the above, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark in which the Complainant has rights, therefore, the Complainant has established its case under paragraph 4(a)(i) of the .UA Policy.

C. Rights or Legitimate Interests

According to paragraph 4(a)(ii) of the .UA Policy it should be established that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

According to section 2.12.2 of the WIPO Overview 3.0, the existence of a respondent trademark does not automatically confer rights or legitimate interests on the respondent. For example, panels have generally declined to find respondent rights or legitimate interests in a domain name on the basis of a corresponding trademark registration where the overall circumstances demonstrate that such trademark was obtained primarily to circumvent the application of the UDRP.

In the present case the Respondent registered an OPPO trademark in Ukraine, explaining this was for the purpose of getting the disputed domain name registered and to promote the Complainant’s products and to create a social network for fans of the Complainant’s products. The Panel finds, however, that no such promotion took place with the authorization of the Complainant and no respective social network fans ever existed at the disputed domain name. Instead, the web site at the disputed domain name contained a statement that could be read as affiliation with the Complainant (when there is no such affiliation) and included links directing to other websites selling competing products. The Complainant owns international registration No. 786844A for its OPPO trademark, which obtained protection in Ukraine in 2007, which is significantly prior to the respective registration of the OPPO trademark in the name of the Respondent in 2015.

While at some point the Respondent claimed that he did not know the Complainant, the Panel notes that in the pre-Complaint correspondence the Respondent also claimed that his trademark “was registered in different class in Ukraine and only for the domain name registration for Oppo products promotion, not producing or counterfeiting etc.”

In these circumstances, it appears likely to the Panel that the Respondent has applied for and has registered its trademark in attempt to secure for himself trademark rights in the term “Oppo” and thus to legitimize his ownership of the disputed domain name and circumvent the application of the .UA Policy, while being well aware of the Complainant, its goodwill in its trademark and its established position on the international markets. In this situation, the Panel is not prepared to accept that the Respondent’s trademark nor the conduct of the Respondent gives rise to rights or legitimate interests of the Respondent in the disputed domain name under the .UA Policy.

According to paragraph 4(c)(i), rights or legitimate interests can be confirmed if before any notice of the dispute, the respondent used or demonstrated preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods and services. In the present case before notice of the dispute, the website at the disputed domain name contained a statement that could be read as affiliation with the Complainant and included links directing to other websites selling competing products, which is not bona fide offering of goods and services. Existence of a Facebook page referring to the disputed domain name and sharing several news stories, mostly on the Complainant’s products, and also promoting competitor’s products (post of March 29, 2018) is not convincing to prove respective demonstrable preparation to use the disputed domain name in a bona fide manner. After notice of the dispute the Respondent explained he had intended to create a fan web site in the format of a social network at the disputed domain name. The Panel is not convinced by such explanation made after the notice of the dispute and not confirmed by relevant evidence, and finds no respective rights or legitimate interests of the Respondent in this regard.

The Complainant did not license or otherwise agree for use of its prior registered trademark by the Respondent, thus no actual or contemplated bona fide or legitimate use of the disputed domain name could be reasonably claimed.

The Respondent is not commonly known by the disputed domain name, which could demonstrate its rights or legitimate interests.

In addition, the Panel notes that the second level of the disputed domain name is identical to the famous and prior trademark of the Complainant. The Panel finds that the nature of the disputed domain name carries a high risk of implied affiliation with the Complainant’s trademark.

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 .UA Policy.

D. Registered or Used in Bad Faith

According to paragraph 4(a)(ii) of the .UA Policy it should be established that the disputed domain name has been registered or is being used in bad faith.

The Panel finds that circumstances of the present case, including prior right of the Complainant for its famous trademark, in particular for smartphones, and Respondent’s involvement in business activity of smartphones produced by the Complainant’s competitors confirm that the Respondent knew or at least should have known of the Complainant’s prior rights when registering the disputed domain name, which confirms bad faith.

According to paragraph 4(b)(iv) of the .UA 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 modified several times. Initially the website was featuring the Complainant’s products, misleadingly appearing as the website of the Complainant’s partner in Ukraine, and included links to other websites related to the Respondent and selling products of the Complainant’s competitors. Later the website at the disputed domain name directed users to another online location also selling products of the Complainant’s competitors. Currently, the website shows only the term “OppO”, however still provides for the tab tooltip “OPPO – officially in Ukraine” in Russian and Ukrainian languages, making the false impression it is affiliated with or authorized by the Complainant. It is not convincing for the Panel that the above as explained by the Respondent was good faith use, since it was done to allow Internet users to contact the Respondent but was partially ceased later. Thus, the Panel finds such actions constituted use of the disputed domain name in bad faith.

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 .UA Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the .UA Policy and 15 of the .UA Rules, the Panel orders that the disputed domain name <oppo.ua> be transferred to the Complainant.

Taras Kyslyy
Sole Panelist
Date: July 4, 2019