WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Vinted Limited v. Владимир Степанович Глусь

Case No. DUA2020-0020

1. The Parties

The Complainant is Vinted Limited, of United Kingdom, represented by Baker & McKenzie, Ukraine.

The Respondent is Владимир Степанович Глусь, Ukraine.

2. The Domain Name and Registrar

The disputed domain name <vinted.ua> (the “Disputed Domain Name”) is registered with Imena.ua (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 7, 2020. On July 7, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On July 8, 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 July 16, 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 July 20, 2020.

The Registrar confirmed that the language of the Registration Agreement for the Disputed Domain Name is Russian. On July 16, 2020, the Center sent an email communication in both English and in Russian to the Parties regarding the language of the proceeding. On July 20, 2020, the Complainant confirmed the language of the proceeding to be English. The Respondent did not submit any comments on the language of the proceeding.

The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of .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, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint in both English and Russian, and the proceedings commenced on July 29, 2020. In accordance with the .UA Rules, paragraph 5(a), the due date for Response was August 18, 2020. The Respondent submitted its Response on August 18, 2020.

The Center appointed Mariya Koval as the sole panelist in this matter on August 26, 2020. 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 an online marketplace, it operates an online international consumer-to-consumer marketplace in Europe dedicated to second-hand fashion with a growing member base of 30 million users. The Complainant was established in 2008 with offices in Vilnius, Berlin, Warsaw, and Prague and now more than 450 employees. Since November 2019, the Complainant becomes a “Unicorn” startup meaning that the Complainant’s value is now over USD1 billion.

The Complainant is the owner of numerous VINTED trademark registrations (the “Complainant’s Trademark” or “Trademark”) around the world, including Ukraine, among which are:

- International Trademark No. 1194860, registered on July 15, 2013, in respect of services in classes 35, 38, and 45 designating Ukraine;

- European Union Trademark Registration No. 11678431 registered on September 4, 2013 in respect of services in classes 35, 38, and 45;

- European Union Trademark Registration No. 017630146 registered on May 31, 2018 in respect of services in classes 35, 38, 42, and 45;

- European Union Trademark Registration No. 016440877, registered on June 20, 2017 in respect of goods in class 25.

The Complainant operates numerous domain names, such as <vinted.com> (registered on June 25, 1999), <vinted.fr>, <vinted.es>, <vinted.be>, <vinted.nl>, <vinted.lu>, <vinted.co.uk>, <vinted.pl>, <vinted.cz> for promoting its products on the Internet.

The Disputed Domain Name was registered on February 26, 2016. At the date of this Decision, the Disputed Domain Name does not resolve to any active website and contains an indication “registered by imena.ua Internet service on errand and in behalf of client”. The Complainant states that on the date of filling of the Complaint the website under the Disputed Domain Name redirected traffic to another website “www.revint.ua” where a second-hand fashion items resale platform is located. The Respondent does not contest this fact.

The Respondent has registered the VINTED trademark Ukrainian registration No. 209249 (the “Respondent’s Trademark”), registered on February 25, 2016 in respect of goods in class 25.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it does business exclusively under the Complainant’s VINTED Trademark in all markets by providing customers with a platform to sell their clothing and accessories, purchase or swap from other users, and communicate with members using the forums. The Complainant has acquired substantial reputation in this area.

The Complainant spends significant budget (several millions of EUR every year) for TV ads and digital marketing in order to advertise its VINTED Trademark. The Complainant notes that the website “www.vinted.com” is also popular in Ukraine. Many Ukrainian customers use it to sell or purchase items via the Complainant’s online platform taking advantage of simplicity of buying with high level of buyer protection provided by the Complainant.

The Complainant alleges that the Disputed Domain Name is confusingly similar to the Complainant’s distinctive VINTED Trademark. The Disputed Domain Name incorporates the Complainant’s Trademark in its entirety, and the country code Top-Level Domain (“ccTLD”) “.ua” does nothing to differentiate the Disputed Domain Name from the Complainant’s Trademark.

The Complainant further claims that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name in view of the following:

- it appears likely that the Respondent’s Trademark was registered in Ukraine for the purpose of getting the Disputed Domain Name;

- the website under the Disputed Domain Name automatically redirects to another website “www.revint.ua” providing competing services;

- the Respondent’s Trademark was not used with respect to goods in class 25 in respect of which it was registered;

- the Respondent does not make a legitimate noncommercial or fair use of the Disputed Domain Name without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant’s Trademark. Quite the opposite, the Disputed Domain Name was opportunistically registered and is used for purposes other than to host a website, namely - for merely redirecting Internet users who are searching for the Complainant’s platform and in order to redirect them in their own second-hand fashion item resale platform in order to benefit from the Complainant’s reputation;

- the Respondent is not affiliated with nor authorized by the Complainant to use its prior registered Trademark, including in the Disputed Domain Name, or to offer the Complainant’s services, thus no actual or contemplated bona fide or legitimate use of the Disputed Domain Name could be reasonably claimed;

- the Respondent has not been commonly known by the Disputed Domain Name.

The Complainant also asserts that the Disputed Domain Name was registered and is being used in bad faith in view of it has as solely been registered in order to redirect Internet users, who are seeking to reach the Complainant’s resale platform. The Respondent intentionally registered and is using the Disputed Domain Name, without consent from the Complainant, to confuse and to mislead Internet users. Furthermore, the Respondent has registered the Disputed Domain Name with the use of a privacy shield in order to redirect Internet users to the Complainant’s competitors

The Complainant states that the Respondent operates a website under the Disputed Domain Name which is being used to redirect Internet users to the website “www.revint.ua”, where consumers can sell and buy second-hand fashion.

The Complainant contends that it began use of its VINTED Trademark in 2013, and the global reputation of the brand quickly grew, as described above. The Disputed Domain Name was registered on February 26, 2016, when the VINTED Trademark was already well known globally and in Ukraine.

Finally, the Complainant notes that the Disputed Domain Name is being used to mislead Internet users. Consumers are likely to search for domain names incorporating the Complainant’s Trademark when searching for the Complainant’s services. Especially in the case where the trademark owner already operates websites incorporating its trademark and generic Top-Level Domain (“gTLD”) “.com”, for example the website “www.vinted.com”. It is respectfully submitted that Internet users would be confused if the Disputed Domain Name did not link to an official website “www.vinted.com” owned and operated by the Complainant.

B. Respondent

The Respondent submitted his Response in Russian in which he asserts that he chose the word “Vinted” for its Ukrainian trademark registration No. 209249 independently, not being aware of the Complainant’s Trademark and without any intention to use the Complainant’s Trademark.

The Respondent states that he did not and could not know about the Complainant’s Trademark at the time when he obtained the Ukrainian trademark registration No. 209249 and registered the Disputed Domain Name.

The Respondents further contends that his trademark covers goods in class 25 while the Complainant’s Trademark is registered in respect of services in classes 35, 38, 45. The Respondent is going to use the Disputed Domain Name in respect of unique self-made clothes.

The Respondent claims that the Ukrainian consumers do not associate the word “vinted” with the Complainant’s products and services.

The Complainant has failed to prove that it has been using its Trademark since 2013 all over the world. The Complainant has not presented any evidence of the Ukrainian consumer’s familiarity with the Complainant’s services under the VINTED Trademark.

The Respondent states that he has rights or legitimate interests in the Disputed Domain Name.

The Respondent further asserts that before a notice of this dispute he was making intensive demonstrable preparations to use the Disputed Domain Name in connection with a bona fide offering of goods and services. Since the Disputed Domain Name registration date he has developed his own business-project on manufacturing of t-shirts under the Respondent’s Trademark. The Respondent is involved in the business-project as an investor in cooperation with another legal entity, having invested in the project near USD 106,000.

In 2016, the Respondent began the negotiations with web-studio for website under the Disputed Domain Name development. In 2017-2018, the Respondent attended International exhibitions and negotiated with the proper textiles producers (Annexes 17-22 to the Response). In 2019, the logo and the brand book (Annex 1 to the Response) were also developed for Respondent’s business; the Respondent rented and equipped an atelier for t-shirts manufacturing (Annexes 23-30 to the Response).

The Respondent further contends that in 2020, he received first fabrics delivery; the labels bearing the Respondent’s trademark for t-shirts were developed and produced (Annexes 58-59 to the Response); the first products under the “Vinted” brand and packaging were produced (Annexes 31, 60 to the Response).

The Respondent states that he has registered and is using the Disputed Domain Name in good faith, he does not use the Complainant’s reputation and does not confuse Internet users, his business does not interfere with the Complainant’s business, in respect of that he presented the proper evidence..

6. Discussion and Findings

Paragraph 4(a) of the .UA Policy binds the Complainant to prove each of the following three elements to succeed:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) the respondent has no rights or legitimate interests in the disputed domain name; and

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

Taking into consideration the many similarities between the .UA Policy and the Uniform Domain Name Dispute Resolution Policy (“UDRP”), the Panel has taken note of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) and, where appropriate, will decide consistent with the consensus views captured therein.

6.1. Preliminary Issue: Language of Proceedings

The Registrar confirmed that the language of the registration agreement for the Disputed Domain Name is Russian.

In accordance with paragraph 11 of the .UA 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, submitting the following arguments:

- The Respondent operates a website “www.vinted.ua” which redirects to the website “www.revint.ua”: where consumers can sell and buy second-hand fashion. The Complainant believes that the Respondent is familiar with the English language as there are a lot of words and phrases (for instance, “are you ready”, “revint summer sale outlet”, “fast fashion”, “luxury” etc.) in the content of the website “www.revint.ua” which appear only in the English language.

- The Complainant is a British company not familiar neither with the Ukrainian nor with Russian language, it would not be fair or equitable to require the Complainant to go to the unnecessary time and expense of translating its pleadings into another language.

- Choosing the English language in this proceeding will encourage fair and expeditious resolution of this dispute. Moreover, eliminating translation of the Complaint to Russian or Ukrainian in the situation where the Respondent understands English will conserve resources of the Parties.

The Respondent did not submit any comments on the language of the proceeding.

Forcing the Complainant to translate the Complaint and annexes thereto, would result in unfair additional expenses for the Complainant and would delay this proceeding.

The Disputed Domain Name and ccTLD is comprised of Latin script.

The Respondent submitted its Response to the Complainant in Russian. The website “www.revint.ua” to which the Disputed Domain Name previously redirected traffic, contains numerous English words and phrases. Moreover, in accordance with some evidence of demonstrable preparations to use of the Disputed Domain Name presented by the Respondent there is an email correspondence with foreign counterparties, which are in English.

Based on these circumstances the Panel infers that the Respondent is able to understand English.

Furthermore, the Respondent, having received the Center’s communication regarding the language of the proceeding, also in both English and Russian, did not make any submissions regarding the language of the proceeding in his response.

Paragraph 10(c) of the .UA Rules sets out that the Panel shall ensure that the administrative proceeding takes place with due expedition.

Having considered all circumstances of this case, the Panel concludes under paragraph 11(a) of the .UA Rules that English shall be the language of the proceeding.

6.2. Substantive Issues

A. 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 mark in which the Complainant has rights.

The Panel finds that the Complainant has rights in its VINTED Trademark, which predates the registration of the Respondent’s Ukrainian Trademark and of the Disputed Domain Name.

The applicable 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 (See LEGO Juris A/S v. Anton Obrezkov, WIPO Case No. DUA2020-0001).

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, the Panel finds that in the present case the Disputed Domain Name contains the Complainant’s registered VINTED Trademark in its entirety.

The Panel also finds that other contentions alleged by the Parties under the first element are not relevant for the analysis under the first element of the .UA Policy.

Accordingly, the Panel finds that the Disputed Domain Name is identical 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.

B. Rights or Legitimate Interests

In accordance with 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.

As a preliminary basis, the Panel notes that .UA second level domain registration requires a trademark registered in Ukraine, and it appears from the circumstances of this case that the Respondent registered the VINTED trademark in Ukraine in order to meet the eligibility criteria to register the Disputed Domain Name.

The existence of a respondent trademark does not automatically confer rights or legitimate interests on the respondent (See OPPO Pte. Ltd. v. Private Registration / Alexander Leonidovich Shirkov, WIPO Case No. DUA2019-0001). 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 .UA Policy.

According to paragraph 4(c)(i) of the .UA Policy, 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 accordance with section 2.2 of the WIPO Overview 3.0, non-exhaustive examples of prior use, or demonstrable preparations to use the domain name, in connection with a bona fide offering of goods or services may include: (i) evidence of business formation-related due diligence/legal advice/correspondence, (ii) evidence of credible investment in website development or promotional materials such as advertising, letterhead, or business cards (iii) proof of a genuine (i.e., not pretextual) business plan utilizing the domain name, and credible signs of pursuit of the business plan, (iv) bona fide registration and use of related domain names, and (v) other evidence generally pointing to a lack of indicia of cybersquatting intent. While such indicia are assessed pragmatically in light of the case circumstances, clear contemporaneous evidence of bona fide pre-complaint preparations is required.

The Complainant was founded in 2008. The Complainant owns numerous VINTED Trademark registrations around the world, including Ukraine. The Complainant asserts that the Respondent is not affiliated with nor authorized by the Complainant to use its prior registered Trademark. The Complainant also contends that the Respondent has not been commonly known under the Disputed Domain Name; the Respondent is the Complainant’s competitor on a niche market, and because of that the Respondent must be fully aware of the Complainant’ Trademark.

On the date of this decision, the Disputed Domain Name resolves to Registrar’s parking page.

The Complainant contends (without presenting of any evidence) that on the date of filling of the Complaint the Disputed Domain Name redirected to the website “www.revint.ua” providing competing services. The Respondent does not contest this fact and states that such redirection was not intentional.

The Respondent argues that the Complainant’s Trademark was not well-known at the time of the registration of the Disputed Domain Name in 2016, that the Complainant failed to present any evidence of the Ukrainian Internet users familiarity with its Trademark or its online platform. The Respondent also asserts that he was not and could not be aware of the Complainant when he registered the Disputed Domain Name. The Panel finds that such assertion is unfounded. The Complainant’s Trademark is widely used and known, and was registered well before the Respondent’s Trademark and the Disputed Domain Name. Moreover, the Complainant has registered several domain names, which include its VINTED Trademark in different ccTLDs. The Complainant’s mobile application has millions of downloads on Google Apps and App Store; the Complainant has more than 1 million followers on Facebook (Annex 7 to the Complaint). The Complainant’s VINTED Trademark is also a subject of many media publications (Annex 8 to the Complaint).

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 “Vinted” 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.

The Respondent also claims that his rights and legitimate interests in the Disputed Domain Name is confirmed by his Ukrainian Trademark registration No. 209249, which is a requirement for the registration of the Disputed Domain Name in ccTLD “.ua”.

The Panel notes that the existence of intellectual property rights in a particular territory does not automatically presume rights and legitimate interests in a domain name under the .UA Policy.

When examining whether the registration of a trademark indicates a legitimate interest, the following circumstances should be taken into account (see Fonbet Corp.v. Геннадія П. Пастушенка, WIPO Case No. DUA2020-0020)

(i) when considering the question of “rights or legitimate interests” under paragraph 4(a)(ii), a panel can, in an appropriate case, question the legitimacy of a trademark relied upon by a respondent. The mere fact that a trademark has been applied for or obtained by a respondent is not an absolute bar to a complainant succeeding under the UDRP. In a case where, in the opinion of the panel, a trademark has not been sought or obtained for a legitimate or bona fide purpose, but merely in order to bolster a domain name registration, the trademark can be disregarded.

(ii) the chronology of events is an important factor in determining whether the application is bona fide or merely a way of bolstering the respondent’s domain name registration. A trademark application made subsequent to notice of a dispute or the domain name registration may indicate a lack of legitimate interest.

(iii) the knowledge and intention of the respondent at the time the disputed domain name is registered is highly relevant, but knowledge of the complainant’s rights does not, in itself, preclude the respondent from having a right or legitimate interest in the domain name.

(iv) the connection, or lack of it, between the respondent and the jurisdiction in which it is seeking a trademark registration may indicate whether the trademark application or registration is “legitimate”.

In this case, the Complainant’s Trademark was registered under International registration No. 1194860 on July 15, 2013, in respect of services in classes 35 (Providing online marketplaces for sellers and buyers of goods and services; providing evaluative feedback and ratings of sellers’ goods and services, the value and prices of sellers’ goods, buyers’ and sellers’ performance, delivery, and overall experience in connection therewith; providing a searchable online evaluation database for buyers and sellers; advertising and advertisement services; customer loyalty services and customer club services for commercial, promotional and advertising purposes; promoting the goods and services of others; retail services, interchange services of clothing, footwear, headgear, leather goods, haberdashery, accessories, provided also by means of interactive website, online service platform; business management, business administration of interactive web site for users applying a software application to search, review and rate internet content, people, companies, products, to order and purchase products, to award, buy, sell and exchange between users points, promotional items including coupons, rebates, discounts, gift certificates or special offerings on goods, buy products on a website; arranging and conducting of flea markets, clothing swap events, fashion shows and events, stage events for commercial, promotional or advertising purposes), 38 (Providing an online, interactive and electronic platforms for communication and exchange of data and information, especially contact information; online services, namely, providing access to information and messages on computer networks, especially on mobile devices; providing platforms, portals, chat rooms, chatlines and electronic forums on the Internet; providing a contact management and communication platform on the Internet for the exchange of information about people as well as to build and maintain friendships and acquaintances; email services, collecting, delivering and forwarding messages to Internet addresses (web messaging), and providing access to electronic transmission of photos, pictures and other information over the Internet; providing access to computer programs on data networks.), and 45 (Online social networking services; providing social networking services for purposes of commentary, comparison, collaboration, consultation, evaluation, advice, discussion, research, notification, reporting, identification, information sharing, indexing, information location, entertainment, pleasure, or general interest; Internet-based social networking services; Personal and social services rendered by others to meet the needs of individuals; online social networking services).

On March 2, 2015, the Complainant’s Trademark has been granted in Ukraine.

The Complainant registered numerous domain names incorporating its VINTED Trademark with different ccTLDs (<vinted.fr>, <vinted.es>, <vinted.be>, <vinted.nl>, <vinted.lu>, <vinted.co.uk>, <vinted.pl>, <vinted.cz>) prior to the registration date of the Disputed Domain Name.

The Respondent’s Trademark No. 209249 was registered in Ukraine on February 25, 2016, in class 25.

In accordance with section 4.2 of the WIPO Overview 3.0 the applicable standard of proof is the “balance of probabilities” or “preponderance of the evidence”; some panels have also expressed this as an “on balance” standard. Under this standard, a party should demonstrate to a panel’s satisfaction that it is more likely than not that a claimed fact is true.

The Respondent provided a number of documents in support of his demonstrable intensive preparations to use the Disputed Domain Name in connection with a bona fide offering of goods and services. However, the Panel considers that the Respondent did not provide relevant evidence for the purpose of the .UA Policy:

- confirmation of the Respondent’s realization of the business-project as an investor in cooperation with another legal entity exactly in respect of manufacture of clothes under the Ukrainian trademark registration No. 209249;

- connection between the fabrics supplies and the Respondent in email correspondence in which the Respondent relies on as an evidence of fabrics purchase to manufacture t-shirts under the Ukrainian registration No. 209249.

- confirmed dates of labels, t-shirts and packaging manufacturing; the invoice for packaging is dated after the commencement of the administrative proceeding;

- evidence supporting negotiations and/or order of website development. Even though the Respondent states that he negotiated with website developers, created and launched demo version of the website for Internet-shop of t-shirts under the Ukrainian trademark registration No. 209249.

The Panel takes into account the fact that the Complainant’s Trademark is highly distinctive and has been continuously and extensively used since 2008 in connection with second-hand fashion and that the Respondent has not use its Trademark in other way except for registration of the Disputed Domain Name, website under which, in its turn, has been also inactive since registration date and it redirected Internet users to a competing website.

In this situation, the Panel is not prepared to accept that existence of the Respondent’s Trademark and the way of his use of the Disputed Domain Name gives rise to rights or legitimate interests of the Respondent in the Disputed Domain Name under the .UA Policy.

Furthermore, taking into consideration the reputation of the Complainant’s Trademark and the fact that the Disputed Domain Name previously redirected traffic to a website with links to Complainant’s competitors, it is obvious that the Respondent was well aware of the Complainant’s Trademark and its business at the time of registration of the Disputed Domain Name.

The Panel also notes that .UA decisions are based on the filings of the Parties. The Panel is not authorized to collect evidence on its own. A number of inaccuracies in the statement of facts provided by the Respondent in his Response, as well as the incompleteness of the evidence provided by the Respondent, make it impossible for the Panel to establish any factual circumstances relevant to the finding rights and legitimate interests in the Disputed Domain Name.

In view of the above, and taking into account that paragraph 4(c) of the .UA Policy contains a non-exclusive list of circumstances that may indicate that the Respondent has a right or legitimate interest in the Disputed Domain Name, the Panel concludes that, taking into account existence of the Respondent’s Trademark, registration of which was six months later than granting of legal protection to the Complainant’s Trademark in the territory of Ukraine and the way in which the Disputed Domain Name was used by the Respondent, the Panel is not prepared to accept that the Respondent’s Trademark and the subsequent use of the Disputed Domain Name gives rise to rights or legitimate interests of the Respondent in the Disputed Domain Name under the .UA Policy.

Furthermore, the Panel finds that there is no evidence in this case that the Respondent is commonly known by the Disputed Domain Name, which could demonstrate its rights or legitimate interests.

In addition, the Panel notes that the Disputed Domain Name is identical to the famous and prior Complainant’s Trademark. The Panel finds that the nature of the Disputed Domain Name carries a high risk of implied affiliation with the Complainant’s VINTED Trademark.

In light of the above, the Panel concludes that the Complainant succeeded on the second element of the Policy.

C. Registered or Used in Bad Faith

Paragraph 4(b) of the .UA Policy sets out a non-exhaustive list of circumstances that indicate bad faith conduct on the part of the respondent, namely:

(i) circumstances indicating that the respondent has registered or has acquired the disputed 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 the respondent’s documented out-of-pocket costs directly related to the disputed domain name; or

(ii) the respondent has registered the disputed 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 the respondent has engaged in a pattern of such conduct; or

(iii) the respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the disputed domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s 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 the respondent’s website or location or of a product or service on the respondent’s website or location.

The Panel notes that there is no evidence or circumstances in this case to suggest that the Respondent registered the Disputed Domain Name primarily for the purpose of selling it to the Complainant.

However, in the Panel’s view, the fact that the Respondent knew about the Complainant’s Trademark at the time of the registration of the Disputed Domain Name is undisputable in view of that the Ukrainian trademark registration No. 209249 and the Disputed Domain Name completely reproduce the Complainant’s Trademark and they were registered in 2016 well after the first Complainant’s Trademark in 2013. Furthermore, the Respondent was using the Disputed Domain Name for a website, which redirected traffic to another website where the competitive services were offered. As a result, the Panel finds that the Respondent had the Complainant’s Trademark in mind and intentionally targeted the Complainant when he registered and used the Disputed Domain Name.

The Panel finds that the Complainant’s first registration for its Trademark predates the registration of the Disputed Domain Name and the registration of the Respondent’s Trademark and therefore the Disputed Domain Name was registered in bad faith. Moreover, redirection of Internet users to links to the Complainant’s competitors is evidence of bad faith under paragraph 4(b)(iv) of the .UA Policy.

Based on the above, the Panel concludes that the registration and use of the Disputed Domain Name was in bad faith.

Therefore, the Panel finds that the paragraph 4(a)(iii) of the Policy has been satisfied by the Complainant and accordingly, the Disputed Domain Name has been registered and is being used in bad faith.

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 <vinted.ua> be transferred to the Complainant.

Mariya Koval
Sole Panelist
Date: September 19, 2020