1. The Parties The Complainant is DoubleGIS LLC of Novosibirsk, Russian Federation.
The Respondent is Theo Daglas of Melbourne, Victoria, Australia, represented by UDRP POLICE DBS, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar The disputed domain name is registered with eNom (the “Registrar”).
3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 7, 2015. On September 7, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 8, 2015, 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.
The Center verified that 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 September 15, 2015. In accordance with the Rules, paragraph 5, the due date for Response was October 5, 2015. The Response was filed with the Center on September 30, 2015.
The Center appointed Assen Alexiev as the sole panelist in this matter on October 14, 2015. 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 developer and distributor of electronic business listings and maps of cities. It is present in most of the large and medium cities of the Russian Federation, the Commonwealth of Independent States, Europe, South America, and the United Arab Emirates. The business listings and maps of cities are issued under the 2GIS trademark, registered in the Russian Federation and worldwide. In May 2011, the Complainant launched its Flamp project – an online platform service located at “www.flamp.ru”, filled with and based on user-generated content and associated with the 2GIS business listings and maps. Flamp works on the basis of a 2GIS API, and all companies included in the 2GIS business listings of organizations are automatically shown in Flamp. In Flamp, users can share reviews about and evaluate products and services of companies contained in the 2GIS business listings. Initially launched in Novosibirsk, Flamp gradually covered all major cities of the Russian Federation. Currently, Flamp is present in 91 cities in the Russian Federation, and in April 2015, the number of comments in all cities exceeded 1 million. Flamp has 3 million unique visitors and about 20 million page views per month. As the 2GIS project went beyond the Russian Federation and is already present in Kazakhstan, Ukraine, Chile, the United Arab Emirates, the Czech Republic, Cyprus, and Italy, the Complainant is planning to launch the Flamp project internationally as well.
The Complainant is the holder of the following trademark registrations (the “FLAMP trademark”):
- The word trademark ФЛАМП (transliterated in Latin letters as “FLAMP”) with registration No.447813, registered on November 23, 2011 in the Russian Federation for goods and services in International Classes 09, 16, 35, 38, 41, and 42; and
- The word trademark FLAMP with registration No.447814, registered on November 23, 2011 in the Russian Federation for goods and services in International Classes 09, 16, 35, 38, 41, and 42.
The disputed domain name was registered on October 19, 2004.
5. Parties’ Contentions A. Complainant The Complainant submits that the disputed domain name is identical to its FLAMP trademark.
According to the Complainant, the Respondent has no rights or legitimate interests in respect of the disputed domain name. Before the notice to the Respondent of the dispute, the Respondent had not used or made preparations to use the disputed domain name in connection with a bona fide offering of goods or services. The website at the disputed domain name contains links to popular hotel reservation websites and no original content. According to the Complainant, such information cannot be considered valuable or unique. The Complainant submits that the Respondent owns about 2,236 other domains which may indicate that it has no intention to use them for offering goods or services but buys them for further reselling with a view to profit. The Complainant also points out that the Respondent is not commonly known by the disputed domain name, that it has no trademark or service mark similar to the disputed domain name, and that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name.
The Complainant contends that the disputed domain name was registered and is being used in bad faith. It points to several facts that allegedly indicate that the disputed domain name was acquired primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to the owner of the trademark for valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the disputed domain name. Intending to purchase the disputed domain name, on July 3, 2015 the Complainant sent a message using a link posted on the website at the disputed domain name next to the published offer to sell the disputed domain name. On July 13, 2015, the Complainant received an email from Mr. [R], a domain broker at DomainNameSales.com, with a proposal to sell the disputed domain name to the Complainant for USD 24,500. After short negotiations the price was reduced by the seller to USD 10,000, and payment through escrow.com was offered. Afterwards, Mr. [R] made several phone calls to the Complainant aiming to incline the Complainant to make a deal. In the end the Complainant did not agree on it. In the Complainant’s opinion, these facts together show that the business of the Respondent is essentially to purchase at a low price as many different domain names as available with the aim to sell them further at a substantial profit to owners of relevant trademarks or trade names.
B. Respondent The Respondent does not contest that the disputed domain name is identical to the Complainant’s FLAMP trademark, but questions the Complainant’s alleged superior right to the disputed domain name when this trademark post-dates the registration of the disputed domain name. The Respondent points out that the Complainant alleges that the FLAMP trademark is well known in the Russian Federation with 3 million unique visitors each month but fails to provide any evidence to support this fact or that its rights extend beyond the launch of its “project” in May 2011.
The Respondent disputes all allegations made by the Complainant and submits that the Respondent has a legitimate interest in respect of the disputed domain name. It submits that its portfolio of domain names is made up of generic, descriptive, and abbreviated non-infringing phrases. The Respondent contends that it legitimately uses these domain names for the purpose of providing keyword advertising in relation to the words in the domain names. In like manner, the Respondent acquired the disputed domain name, as it is the abbreviated version of “Fluorescent Lamps” and such intention is shown from the banner and links displayed on the archive screenshot provided by the Complainant.
The Respondent also acknowledges that the disputed domain name was available for sale like many of the domain names within its portfolio, and disputes that this is not a legitimate use of a domain name. According to the Respondent, the acquisition and subsequent resale of a domain name is perfectly legitimate where the domain name was not registered to take advantage of the trademark of another. The Complainant has not shown how the Respondent could have come to know about the FLAMP trademark and concedes that the links on the website at the disputed domain name are unrelated to the services offered by the Complainant. The Complainant submits that these links are neither “valuable nor unique”, but the Respondent maintains that the consumer value of its offering is irrelevant. The Complainant has failed to make out a case that the Respondent has not made a legitimate bona fide offering and to make a prima facie showing that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent maintains that there is nothing that would suggest unfair business practices or deception being carried out in association with the disputed domain name.
The Respondent points out that the Complainant’s argument for bad faith is solely based on its failed attempt to purchase the disputed domain name from the Respondent, which was a consequence of the Complainant’s own actions. The Complainant has omitted vital correspondence from its Complaint that offers a different picture to the one it seeks to present to the Panel. Both parties in these proceedings agree that the Complainant initiated the negotiations for the disputed domain name when it inquired about its sale through DomainNameSales.com on July 3, 2015. The broker Mr. [R] responded to the inquiry on July 13, 2015 stating that the disputed domain name could be purchased for the price of USD 24,500. Contrary to the Complainant’s allegation that “the price was reduced by the seller”, the Complainant itself then made a counter offer of USD 10,000, which was accepted by the Respondent on July 16, 2015. At no time during this exchange did the Complainant assert rights in a trademark or impute any bad motive to the Respondent. As a formal agreement had been made between the parties, the broker opened an escrow transaction to organize the purchase of the disputed domain name. Although expressing to the broker that it intended to honor the agreement sometime in September, the Complainant instead filed the current Complaint against the Respondent. The Complainant provides no explanation in its Complaint as to why it failed to honor its agreement to purchase the disputed domain name. It can only be inferred that it initiated negotiations in an attempt to satisfy paragraph 4(i) of the Policy. In these circumstances, the Complainant cannot rely on the Respondent’s willingness to sell and on the negotiation correspondence as evidence of bad faith.
The Respondent maintains that the Complainant cannot demonstrate that the Respondent targeted the Complainant and its FLAMP trademark, and the Complainant’s failure to put forward any evidence of targeting creates a significant lacuna where the benefit of the doubt favors the Respondent. Without the requisite knowledge, there can be no bad faith intention and hence no bad faith registration. It is not enough for the Complainant to simply state that its mark is well known without providing evidence which would suggest that the Respondent was aware of this fame at the time of registration. The Complainant in this case is based in the Russian Federation and the Respondent in Australia. Although it claims to be present in 91 cities in Russia, the Complainant has not submitted evidence about this. The Complainant admits that it is “planning” to launch its “Flamp project” internationally, which shows that the Respondent, an Australian resident, would not have been aware of the Complainant at the time of registration.
The Respondent submits that the Complainant’s allegation that the Respondent is in the business of selling domain names to owners of relevant trademarks or trade names for profit is unfounded. The Complainant has provided no evidence of a pattern of conduct under Paragraph 4(b)(ii), and the evidence submitted by the Respondent shows that its portfolio is made up of generic, descriptive, and abbreviated phrases.
The Respondent requests a finding of Reverse Domain Name Hijacking (“RDNH”) against the Complainant, stating that the Complainant has brought this proceeding with “unclean hands”. Although represented by legal counsel, it has sought to deceive the Panel by not properly disclosing all circumstances regarding its purchase offer and the reasons for the failed negotiation. The correspondence reveals that a binding contract between a buyer and seller was created when the Respondent accepted the Complainant’s counter offer, and that the Complainant is currently in breach of this contract. Had the Respondent failed to respond to this Complaint, there would have been a risk that the Panel would have relied upon the Complainant’s distorted version of events.
6. Discussion and Findings Pursuant to Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the disputed domain name:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the Respondent has registered and is using the disputed domain name in bad faith.
A. Identical or Confusingly Similar
The Complainant has provided evidence and has thus established its rights in the FLAMP trademark.
The disputed domain name consists of the element “flamp”, which is identical to the Complainant’s FLAMP trademark written in Latin letters and confusingly similar to the Complainant’s ФЛАМП trademark written in Cyrillic letters. The Respondent does not dispute the identity or confusing similarity between the disputed domain name and the FLAMP trademark.
As summarized in paragraph 1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), the applicable generic Top-Level Domain (“gTLD”) would usually be disregarded under the confusing similarity test, except in certain cases where the applicable gTLD may itself form part of the relevant trademark. In this case, the Panel will disregard the “.com” gTLD in the disputed domain name.
Taking all this into account, the Panel finds that the disputed domain name is confusingly similar to the FLAMP trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Complainant contends that the Respondent is not commonly known by the name “Flamp”, that it has not obtained any trademark registrations for such name and has not used or made preparations to use the disputed domain name in connection with a bona fide offering of goods or services or made a legitimate noncommercial or fair use of the disputed domain name.
The Respondent submits that it has a legitimate interest in respect of the disputed domain name. Its portfolio of domain names is made up of generic, descriptive, and abbreviated phrases. The Respondent contends that it legitimately uses the disputed domain name for providing keyword advertising in relation to the words in the domain name and has acquired the disputed domain name as it is the abbreviated version of “Fluorescent Lamps”, which is confirmed by the banner and links displayed on the associated website. The Respondent points out that it was not aware of the FLAMP trademark when it registered the disputed domain name. The Respondent also submits that the acquisition and subsequent resale of a domain name is legitimate where the domain name was not registered to take advantage of the trademark of another.
The Panel has reviewed the evidence in the case file and the content of the website to which the disputed domain name resolves. As correctly pointed out by the Complainant, this website contains no original content; rather it only features links to third party websites that do not appear to be related to the Complainant or to its services. A banner on the website includes lamps, but the majority of links on the website are not related to lamps, but are also not related to the Complainant’s services. The list of domain names registered by the Respondent indeed appears as containing generic, descriptive, and abbreviated phrases and not trademarks of others.
In these circumstances, the Panel is not satisfied that a conclusive finding on the issue of rights and legitimate interests can be made on the basis of the evidence in the case file. However, in view of its finding on the issue of bad faith, the Panel does not need to determine whether the Respondent has rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists four illustrative circumstances that shall each be evidence of the registration and use of a domain name in bad faith by a respondent, namely:
(i) circumstances indicating that a respondent has registered or has acquired a 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 your documented out of pocket costs directly related to the domain name; or
(ii) that a respondent registered the 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) that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent intentionally attempted to attract, for commercial gain, Internet users to its web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location.
In the present case, the disputed domain name was registered in 2004 – seven years before the Complainant started its Flamp project and registered its FLAMP trademark. The Complainant has not provided any evidence and does not claim to have started using the FLAMP trademark before 2011, and has provided no evidence of the popularity of its trademark either in the Russian Federation or in other territories such as Australia where the Respondent is located. The Respondent has explained its choice of the disputed domain name as being an abbreviation of “Fluorescent Lamp”, and this explanation is not contradicted by the evidence in the case file.
In these circumstances, the Panel finds that the Complainant has not demonstrated that the Respondent was aware of the Complainant and that the aim of the registration of the disputed domain name was to take advantage of the confusion between it and any potential rights of the Complainant. As discussed in Paragraph 3.1 of the WIPO Overview 2.0, when a domain name is registered by the respondent before the complainant’s relied-upon trademark right is shown to have been first established, the registration of the domain name would not have been in bad faith because the registrant could not have contemplated the complainant’s then non-existent right.
The Complainant refers to the negotiations between the Parties for the transfer of the disputed domain name. As discussed by the panel in Barlow Lyde & Gilbert v. The Business Law Group, WIPO Case No. D2005 0493: “Standing alone, there is nothing wrong with offering to sell a domain name at a high price. It is a very common business practice. Respondent did not initiate contact with Complainant. It responded to contact from Complainant concerning the domain name. There is nothing here to show that Respondent took any interest in Complainant prior to being contacted by it. The Panel finds that Complainant has failed to establish that Respondent registered the disputed domain name with the intention to sell it to Complainant.” The Panel sees no reasons not to follow the same reasoning and reach the same conclusions here.
On the basis of the above, the Panel finds that the Complainant has not established that the disputed domain name was registered and used in bad faith.
7. Reverse Domain Name Hijacking The Respondent has requested a finding of RDNH, which is defined as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.” A finding of RDNH would be appropriate “if Complainant knew of Respondent’s unassailable right or legitimate interest in the disputed domain name or the clear lack of bad faith registration and use and nevertheless brought the Complaint in bad faith.” Futureworld Consultancy (Pty) Ltd. v. Online advice, WIPO Case No. D2003-0297. That standard is not met in this case.
In this case, the Complainant has valid rights in the FLAMP trademark, and the Respondent has no trademark rights in a designation resembling the disputed domain name and does not appear to actively use the website at the disputed domain name. The Respondent has put on its website an offer to the general public inviting interested parties to enquire for the purchase of the disputed domain name, and has requested a substantial amount of money for the transfer of the disputed domain name, which perhaps may have appeared suspicious to the Complainant. The Complainant has indeed not accurately described all circumstances of the negotiations between the Parties for the transfer of the disputed domain name, but has submitted printouts of the relevant correspondence. Moreover, the conflicting descriptions of the Parties of these events have not influenced the ultimate decision of the Panel on the substance of the dispute.
On the basis of the evidence the Panel has determined that the Complainant has failed to prove the third element of the Policy, but the Panel is not satisfied that the Complainant’s conduct in filing the Complaint justifies a finding of RDNH. Accordingly, the Panel denies the Respondent’s request for the finding of RDNH by the Complainant.
8. Decision For the foregoing reasons, the Complaint is denied.