Westmore · UDRP DecisionScanfert.com
The Panel ordered transfer of <scanfert.com>. Although the domain name was registered before the Complainant obtained its registered SCANFERT trademark, the Panel found the domain identical to that mark, found no rights or legitimate interests based on the Complainant’s unrebutted prima facie case, and found bad-faith registration and use based on the totality of the circumstances, including the alleged insider relationship, use of the Complainant’s branding, diversion toward another fertility clinic, and the absence of a formal Response.
The timeline behind scanfert.com
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This decision illustrates how a complainant may establish bad-faith registration even when its registered trademark postdates the domain name. The result depended not merely on later trademark registration, but on the Panel’s assessment of alleged insider knowledge, the relationship between the registrant information and the Complainant’s Russian affiliate, prior use of the Complainant’s branding, commercial diversion, and the lack of rebuttal. It also demonstrates that later inactivity does not neutralize evidence of earlier targeting and commercial use.
Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.
WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Scanfert Oy v. Private Registrant, Digital Privacy Corporation / Scanfert Clinic Case No. D2019-0006 1. The Parties The Complainant is Scanfert Oy of Tampere, Finland, represented by Eversheds Attorneys Ltd., Finland. The Respondent is Private Registrant, Digital Privacy Corporation of Vista, California, United States of America (“United States”) / Scanfert Clinic of St. Petersburg, Russian Federation. 2. The Domain Name and Registrar The disputed domain name <scanfert.com> is registered with 101domain GRS Limited (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 2, 2019. On January 2, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 3, 2019, 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 January 4, 2019 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 January 9, 2019. 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 10, 2019. In accordance with the Rules, paragraph 5, the due date for Response was January 30, 2019. On January 16, 2019, someone connected to the Respondent (a Dr. Zaytseff) sent an email to the Center stating that the disputed domain name was registered for the Russian company Scanfert LLC (OOO Scanfert), and has never been used for private purposes. Dr. Zaytseff offered to transfer access to the disputed domain name to the Complainant. The Center sent the possible settlement email to the Parties, to which the Complainant did not reply. The Respondent did not submit any formal response. Accordingly, the Center notified the Commencement of Panel Appointment Process on February 1, 2019. The Center appointed Tobias Zuberbühler as the sole panelist in this matter on February 6, 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 Rules, paragraph 7. 4. Factual Background The Complainant is a provider of infertility treatments based in Finland. While the Complainant’s trade name Scanfert Oy was registered in Finland on February 10, 1993, the Complainant’s European Union trademark SCANFERT No. 017871377 was only registered on July 3, 2018. The Complainant argues that it has been using the symbol SCANFERT in its business since the early 1990s and has presented evidence that it has expanded its activities to the Russian Federation and Portugal around the beginning of the 2000s. A company partially owned by the Complainant has been registered in the Russian Federation under the trade name Scanfert LLC (OOO Scanfert) on April 27, 2017. The Respondent Scanfert Clinic is listed in the WhoIs data with the same address in St. Petersburg, Russian Federation as the Complainant’s Russian company Scanfert LLC. The disputed domain name was registered on June 6, 2017 and is currently inactive. The Complainant has submitted evidence that the disputed domain name was resolving in October 2018 to a website promoting “AVA Clinic Scanfert” and displaying a Scanfert logo. In January 2019, the disputed domain name was apparently redirected to the website “www.fertility-guarantee.com”, which copied the AVA Clinic Scanfert website previously displayed under the disputed domain name. 5. Parties’ Contentions A. Complainant The Complainant alleges that it has satisfied all elements of the Policy, paragraph 4. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar The Complainant has presented evidence of registered trade names in Finland (February 10, 1993; Scanfert Oy) and the Russian Federation (April 27, 2017; Scanfert LLC). The Complainant’s first trademark registration, on the other hand, dates from July 3, 2018, while the disputed domain name was registered on June 6, 2017. In other words, the registration of the disputed domain name predates the Complainant’s trademark registration. In the view of UDRP panels, the fact that a domain name may have been registered before a complainant has acquired trademark rights does not by itself preclude a complainant’s standing to file a UDRP case, nor a panel’s finding of identity or confusing similarity under the first element. In exceptional cases, a complainant may be able to prove a respondent’s bad faith (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.1.3 ). Whether the Complainant has demonstrated the Respondent’s bad faith when registering and using the disputed domain name will be examined in more detail below (section 6.C). For purposes of the first element, the Complainant has established registered trademark rights which prima facie satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case. Moreover, the Panel finds that the disputed domain name is identical to the Complainant’s SCANFERT trademark. Accordingly, the Complainant has fulfilled the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests In connection with the second element of the Policy, the Complainant has contended that: (i) according to the Complainant’s searches in the Russian registry of legal entities, there is no such company as Scanfert Clinic; (ii) the address of the Russian company Scanfert LLC (OOO Scanfert), in which the Complainant is a shareholder, is identical to the address listed for Scanfert Clinic in the WhoIs data of the disputed domain name; (iii) the incorrect registrant information has been submitted to the Registrar by Dr. Zaytseff, a shareholder in and employee of Scanfert LLC (OOO Scanfert), who has been absent from work without any explanation since July 2018; (iv) the telephone contact number provided by the Registrar for the disputed domain name matches a telephone number of Dr. Zaytseff disclosed in the registrant information of another domain name. Based on the Complainant’s credible contentions, the Panel finds that the Respondent is not making any bona fide use of the disputed domain name or a legitimate noncommercial use of the domain name. Accordingly, as the Complainant has made out a prima facie case which remains unrebutted by the Respondent, the Panel finds that the Complainant has fulfilled the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith As mentioned above, the Complainant has submitted evidence that the disputed domain name was resolving in the past to a website of “AVA Clinic Scanfert” and displaying a Scanfert logo. In January 2019, the disputed domain name was apparently redirected to the website “www.fertility-guarantee.com”, which copied the AVA Clinic Scanfert website previously displayed under the disputed domain name. As of the issuance of this decision, the disputed domain name appears to be inactive. In certain limited circumstances where the facts of the case establish that the respondent’s intent in registering the domain name was to unfairly capitalize on the complainant’s nascent (typically as yet unregistered) trademark rights, UDRP panels have been prepared to find that the respondent has acted in bad faith ( WIPO Overview 3.0 , section 3.8.2 ). Such scenarios include registration of a domain name: (i) shortly before or after announcement of a corporate merger, (ii) further to the respondent’s insider knowledge ( e.g ., a former employee), (iii) further to significant media attention ( e.g ., in connection with a product launch or prominent event), or (iv) following the complainant’s filing of a trademark application. Based on the record, taking into account the factual background and unrebutted allegations, including the fact that the disputed domain name registration details use Dr. Zaytseff’s personal address and phone number, and the Respondent’s email in which an offer to transfer access to the disputed domain name to the Complainant was made, the Panel finds it plausible that Dr. Zaytseff, a former employee and shareholder of Scanfert LLC (OOO Scanfert) co-founded by the Complainant and Dr. Zaytseff, has attempted to capitalize on the Complainant’s reputation and brand for financial gain. It is telling in this regard that the domain name <fertility-guarantee.com> used by the Respondent to pretend to represent the Complainant’s business in the Russian Federation is currently redirected to “www.olgafertilityclinic.com”, a website used to promote this person’s own fertility clinic. The fact that the disputed domain name is currently inactive has no impact in this regard. From the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding ( WIPO Overview 3.0 , section 3.3 ). While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, and (iii) the implausibility of any good faith use to which the domain name may be put. The Panel is satisfied that the above-mentioned factors are fulfilled in the case at hand. Against this background, the Panel finds that the disputed domain name has been registered and is being used in bad faith by the Respondent for commercial gain (in the sense in paragraph 4(b)(iv) of the Policy). Accordingly, the Complainant has also fulfilled 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 <scanfert.com> be transferred to the Complainant. Tobias Zuberbühler Sole Panelist Date: February 18, 2019
Source of record: WIPO . Reproduced for research; WIPO is the authoritative source.
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