UDRP has been denied.
Domaining is alive and well in Russia, where the medical term domain, Osteohondrosy.net was registered at.
Apparently, its medical services provider registrant failed to renew it; the new registrant used someone else’s information in the WHOIS.
The term OSTEOHONDROSY is a common law mark used by the Complainant in this UDRP, and in particular for osteochondrosis.
The Complainant stated they have receive 5 million visitors, but the WIPO panelist disputed the number, based on Google AdSense data that was presented as evidence.
The complainant claims that more than 5 million visitors visited the website to which the Domain Name refers. However, the evidence does not support this assertion. According to the evidence provided, pages with Google ads were viewed at 3,410,192 for four and a half years. This circumstance in itself is not a proof of the existence of a service mark.
The Respondent, on the other hand, claimed that they aren’t the ones who registered the domain. They also offered to transfer the domain to the Complainant, which makes little sense, if they don’t control it.
The sole panelist at the WIPO, Olga Zalomiy, denied the transfer of the domain from the Respondent to the Complainant, finding no rights to the mark and pointing out the element of identity theft.
Full details on the decision for Osteohondrosy.net follow, translated into English:
WIPO Arbitration and Mediation Center
DECISION OF THE ADMINISTRATIVE COMMISSION
Dmitriy Pecherkin v. Name Excluded
Case No. D2018-01441. Parties
The applicant in the present case is Dmitri Pecherkin, the city of Sverdlovsk, the city of Aramil, the Russian Federation. The applicant is represented by Yevgeny Berlin, Moscow, Russian Federation.
The defendant in the present case is excluded. 1
2. Domain Name and Registrar
The controversial domain name is <osteohondrosy.net> (“Domain Name”). The registrar of the domain name is REG.RU (“Registrar”).
3. Procedural grounds
This Complaint was filed by the Applicant to the WIPO Arbitration and Mediation Center (“the Center”) on January 22, 2018. On January 23, 2018, the Center sent an e-mail to the Registrar a request for confirmation in connection with the Domain Name. On January 24, 2018, the Registrar transmitted his response via e-mail to the Center, confirming that the Respondent is a registrant of the Domain Name, and provided contact information.
The Center confirmed that the Complaint complies with the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplementary Rules to the Policy (“Additional Rules” ).
In accordance with paragraphs 2 (a) and 4 (a) of the Rules, the Center formally notified the Respondent of the Complaint and the proceedings commenced on January 26, 2018. In accordance with paragraph 5 (a) of the Rules, the deadline for submission of the Response was February 15, 2018. submitted a response on February 12, 2018. Accordingly, the Center notified the Respondent of the receipt of a reply on February 16, 2018.
On February 26, 2017, the Center appointed Olga Zalomiy as Administrative Commission. The Administrative Commission considers this appointment to be legitimate. The Administrative Commission has provided the Declaration of Consent and the Declaration on Impartiality and Independence, as required by the Center in accordance with paragraph 7 of the Rules.
4. Actual grounds
The applicant was the owner of the Domain Name <osteohondrosy.net>. December 2, 2017 Domain Name was re-registered in the name of the Respondent.
The domain name <osteohondrosy.net> was registered by the Claimant on July 24, 2013 and since then refers to the blog of Alexandra Bonina, dedicated to diseases of the joints and spine, and in particular, osteochondrosis. On the website “www. Osteohondrosy.net” it is also possible to purchase video courses by Alexandra Bonina on the treatment and rehabilitation of people with various diseases of the joints and spine, as well as to leave applications for personal consultations of Alexandra Bonina.
On December 2, 2017, the Domain Name was re-registered in the name of the Respondent without the consent of the Applicant.
5. The parties’ submissions
A. The applicant
The applicant claims that he is registered with the Domain Name <osteohondrosy.net> on July 24, 2013 at the ENOM registrar, INC. and transferred the Domain Name to the registrar REG.RU LLC on July 9, 2017. The applicant claims that on December 2, 2017 he received a message from the Registrar about the transfer of the Domain Name to the full management of the user: ***@mail.ru, as a result of which he lost access to the website and lost the ability to administer the Domain Name. The applicant states that he did not take any action to transfer the Domain Name to the said person. The applicant also claims that on 2 December 2017 he wrote to the new owner of the Domain Name by e-mail “*****@mail.ru” to find out the possibility of returning the Domain Estate, which he received an offer to pay 700,000 rubles for the return of the Domain Name.
The applicant claims that he has an unregistered trademark on the basis of common law. In support of the existence of the right to an unregistered sign, the Claimant declares that he has been the administrator of the domain name <osteohondrosy.net> for more than four years. According to the Applicant, a large number of Internet users were familiar with its website and associated the designation OSTEOHONDROSY.NET and “hosted content” with the Applicant, since more than 5 million users visited the “www.osteohondrosy.net” website during the domain name applicant’s possession . In the Applicant’s opinion, the popularity of the unregistered trademark OSTEOHONDROSY.NET is confirmed by the fact that on request <osteohondrosy.net> the Google search engine produces approximately 36,800 sites. The applicant claims that the website to which the Domain Name sends out was used by the Applicant for commercial activities when placing Adwords ad units, as evidenced by the Wayback Machine Internet archive data, where ad units can be seen in the text of the page. The applicant states that he received USD 2583.66 between July 2013 and December 15, 2017. In the Applicant’s opinion, the word “osteohondrosy” is not descriptive in relation to the advertising services provided by the Applicant, and the word “.net” is a designation domain zone and has no descriptive character.
The claimant states that while he used the Domain Name for more than 4 years, there is no evidence to support the Respondent’s conduct of a similar activity using the identical or similar name before acquiring the right to the domain. According to the Applicant, the Respondent makes full use of the content of the Applicant’s website, as evidenced by the data of the Internet archive and the state of the website after the transfer of rights to the Respondent. Also, according to the Applicant’s statement, the Respondent plans to use the Domain Name and the content of the Applicant’s website for illegal profit, since from the moment of obtaining the right to the Domain Name, the Respondent has not made any significant additions or corrections to the content of the website. In addition, the Applicant asserts that the Respondent by e-mail required him 700,000 rubles for the return of the Domain Name.
The Applicant considers that the Domain Name was registered by the Respondent in bad faith, since prior to the registration of the Domain Name the Respondent did not engage in activities similar to the Applicant’s activity and did not use a designation identical or similar to the Domain Name. The Applicant asserts that the Respondent fully uses the content of the Applicant’s website without having any right or authorization from the Applicant. The Applicant declares that after receiving the right to administer the Domain Name, the Respondent has not published information about the change of the Domain Name Administrator and that such actions mislead users with respect to the website owner associated with the Domain Name. The applicant claims that he did not conclude any transactions with the Respondent to transfer the Domain Name to the Respondent, and had no relations with him.
B. Defendant
The essence of the Respondent’s answer is as follows: The Respondent announced his intention to participate in this administrative proceeding. The respondent also said that he had no relation to the registration of the Domain Name and that his personal data had been illegally used for his registration, which the Respondent had informed the Registrar. The defendant also reported that he supports the Applicant’s demands for the transfer of the Domain Name to the Applicant.
6. Discussions and Conclusions
6. 1. Exclusion of the name of the Respondent from this decision
The defendant claims to be a victim of identity theft and is not related to the Domain Name. The Respondent shall attach a letter to the Registrar of the Domain Name with the same statements. No other evidence of identity theft was found by the Respondent.
The Administrative Commission concludes that most likely the person indicated in the Complaint as the Respondent is the person listed in the WhoIs database as the Domain Name Registrant, as confirmed by the Registrar. Accordingly, the Administrative Commission considers that the Respondent, “the holder of the domain name registration against which the complaint is filed”, that falls within the definition of “defendant” referred to in Section 1 (“Definitions”) of the Rules. The Commission also concludes that, most likely, the Respondent is a victim of identity theft, because the e-mail of the new owner of the Domain Name contains a name different from the Respondent’s name, which is probably the name of the actual Respondent. In addition, the index of the city indicated in the registration information of the Domain Name refers to the city of Aramil, Sverdlovsk region, and not to Novosibirsk, where the Respondent resides. The respondent’s phone number listed in the registration information contains 9 digits of 10 and can not be identified. In this case, the registration information contains the correct postal address of the Respondent.
Due to the fact that the person mentioned in the Complaint is most likely a victim of identity theft, and because the decision of the Administrative Commission will be opened to the general access on the Internet, the Commission considers it necessary to exclude the name of the Respondent from the decision in the present case.
6.2. Consideration of the case in the presence of the Respondent’s consent to the transfer of the Domain Name
In cases where the respondent gives his consent to the transfer of the Domain Name to the Applicant, the administrative commissions usually rule in favor of the Applicant on the basis of such consent. 2 In this case, although the Respondent has expressed his consent to participate in this administrative proceeding and to transfer the Domain Name to the Applicant, the Respondent also reported that he is not the proper Respondent in the present case. According to the Respondent, his personal data was used to register the Domain Name without his knowledge and permission. Due to the lack of consent to transfer the Domain Name from the real owner of the Domain Name, the Administrative Commission considers it necessary to consider the merits of the case.
6.3. Discussion and Conclusions
In order to satisfy the Complaint and transmit to the Applicant the Domain Name, he must prove the following (paragraph 4 (a) (i-iii) of the Policy):
– Domain Name is identical or similar to the degree of confusion with the trademark or service mark, the rights to which belong to the Applicant; and
– The defendant has no rights or legitimate interests with respect to the Domain Name; and
– The domain name was registered and used in bad faith.
A. Identity or similarity to a degree of confusion
Since, in accordance with paragraph 4 (a) (i) of the Policy, the identity or similarity is to be found, to the extent of confusion, between the Domain Name and the trademark or service mark, the rights to which belong to the Applicant, it is first necessary to determine the applicant’s ownership of the trademark rights.
In his complaint, the Applicant relies on the possession of the unregistered trademark OSTEOHONDROSY.NET. In accordance with Section 1.3. Review of WIPO Practice 3.0, the rights to unregistered trademarks owned by persons in countries of continental law may be sufficient to establish the standing of such persons, allowing them to apply to the Center for the protection of their violated rights. Accordingly, in order to establish the legal capacity of the Applicant, it is necessary to establish whether the Applicant has rights to an unregistered trademark or service mark.
In order to establish rights to an unregistered trademark for the purposes of the Policy, the Applicant must prove that its mark has acquired the distinctive ability of the designation that consumers associate with the goods or services of the applicant. 3 Evidence demonstrating such acquired distinctiveness (also called secondary value) includes a number of factors, such as (i) the period and nature of the use of the mark, (ii) the amount of sales of goods under this sign, (iii) the nature and scale of the advertisement, (iv) the degree of actual population recognition, (v) the sociological survey of consumers. To justify these factors, the applicant must provide concrete evidence. 4 In cases involving unregistered signs, which consist exclusively of descriptive terms that are not distinctive in nature, there is an applicant’s obligation to provide evidence of the acquired distinctiveness / secondary meaning.
The applicant claims that he has an unregistered trademark OSTEOHONDROSY.NET because of its use to indicate the activities for placing advertising. In the Applicant’s opinion, the word “osteohondrosy” is not descriptive in respect of advertising services, and the word “.net” is a domain zone designation and has no descriptive character. According to the Applicant, a large number of Internet users were familiar with its website and associated the designation OSTEOHONDROSY.NET and “hosted content” with the Applicant, since more than 5 million users visited the website “www.osteohondrosy.net” during the domain name applicant’s possession “. In the Applicant’s opinion, the popularity of the unregistered trademark OSTEOHONDROSY.NET is confirmed by the fact that on request <osteohondrosy.net> the Google search engine produces approximately 36,800 sites. The applicant states that he received USD 2583.66 between July 2013 and December 15, 2017.
The prints from the Internet archive submitted by the Applicant show that the Domain Name is used to refer to Alexandra Bonina’s blog on joint and spinal diseases, in particular, osteochondrosis. On the website “www.osteohondrosy.net” you can also purchase video courses by Alexandra Bonina on the treatment and recovery of people with various diseases of the joints and spine, as well as leave applications for personal consultations of Alexandra Bonina. The contents of the website to which the Domain Name sends out does not contain any mention of the Domain Name, except for its use in the address bar of the browser and on the photo of boxes with video courses on the treatment of spinal osteochondrosis.
The first page of the listing of the Domain Name search in the Google search engine submitted by the Applicant contains:
– links to free videos of Alexandra Boninoy on treatment of thoracic and cervical osteochondrosis;
– a link to her page in VKontakte;
– a link to the website about the affiliate program “osteohondrosy.net”;
– A link to an article about Alexander Bonina, who created a project for the treatment of osteochondrosis of the spine “osteohondrosy.net”;
– video courses on the treatment of osteochondrosis of the cervical, thoracic and lumbar spine;
– Alexandra Bonina’s page on the website “www.odnoklassniki.ru”, also dedicated to physical therapy, link to the page on the website “www.pintrest.com”, dedicated to fitness online video and health book.The above evidence does not demonstrate the use of the Domain Name as a distinctive designation for advertising services allegedly provided by the Applicant. The domain name <osteohondrosy.net> is used only as a method of addressing a website dedicated to joint and spinal diseases, and in particular to osteochondrosis. On the basis of the presented evidence, it can be concluded that the Domain Name is not a means of individualizing the services of the Applicant, but, above all, it fulfills the function of addressing the “www.oseohondrosy.net” website and serves to individualize the amount of information.
As for the number of search results for <osteohondrosy.net> in the Google search engine submitted by the Applicant, the search was conducted by the Applicant without quotes, and accordingly contained not only websites with information mentioning the Domain Name, but also any websites mentioned the word “osteohondros” and its variations. In addition, the term “osteohondrosy” is a transliteration of the term osteochondrosis (in the plural), which is the name of the spine disease, 5 of which nearly 5 million websites in Russian are devoted to treatment. The number of search results in the Google search engine also does not demonstrate the popularity of the Domain Name as a means of identifying advertising services.
The applicant also submitted a report on the contextual advertising service Google AdSense, showing income in the amount of USD 2583.66 received from advertising on the website “www.osteohondrosy.net” from July 1, 2013 to December 15, 2017 Google AdSense is a program of Google, Inc., which allows web site owners on the network to advertise, contextual advertising from Google 6, and receive revenue from third-party advertising. However, participation by the Applicant in the Google AdSense program does not prove that the Domain Name has acquired the distinctive ability of the designation for advertising services. The report only shows that the Applicant has earned a certain amount from advertising on the website associated with the Domain Name.
The complainant claims that more than 5 million visitors visited the website to which the Domain Name refers. However, the evidence does not support this assertion. According to the evidence provided, pages with Google ads were viewed at 3,410,192 for four and a half years. This circumstance in itself is not a proof of the existence of a service mark.
Based on the evidence presented and in the absence of information on the number of services provided under the OSTEOHONDROSY.NET service mark, as well as on the means spent advertising this sign and the population survey data on the recognizability of this designation, the Administrative Commission concludes that the Applicant does not have unregistered rights to OSTEOHONDROSY.NET service mark.
Accordingly, the Administrative Commission concludes that the Applicant was unable to satisfy the requirements of paragraph 4 (a) (i) of the Policy.
B. Rights or lawful interests
The applicant must provide sufficient evidence that the Respondent has no rights or legal interests with respect to the Domain Name. After the Applicant has fulfilled his obligation to provide sufficient evidence, the burden of proof passes to the Respondent and he must provide evidence of the possession of rights and legitimate interests with respect to the Domain Name. If the Respondent breaches his obligation to provide evidence, the Applicant is deemed to have satisfied the requirements of paragraph 4 (a) of the Policy.
Due to the fact that the Claimant was unable to prove the first element of the Policy, the Administrative Commission does not need to consider the issue of lack of rights and legitimate interests in the Domain Name of the Respondent.
C. Unfair registration and use
Taking into account the conclusion that the Applicant does not have the rights to a trademark or service mark, there is no need to consider the issue of the unfair registration and use of the Domain Name.
Nevertheless, the Administrative Commission considers it necessary to add that the evidence submitted and the Applicant’s contention not contested by the Respondent allow us to conclude that, most likely, the Domain Name was stolen from the Applicant. In addition, when registering a Domain Name, the Respondent most likely used the stolen third party identification information. Such actions are evidence of unfair registration and use of the Domain Name.
Despite the fact that the Commission sympathizes with the Applicant, three basic elements of the Policy must be proved in this administrative proceeding. In the event that the applicant can not prove one of the elements of the Policy, the complaint must be rejected.
7. The solution
For the above reasons, the Complaint is denied.
Olga Zalomiy
Administrative Commission
Date: March 11, 20181 According to the circumstances of the case, the Respondent used the name and contact details of the third party when registering the disputed domain name. In the light of the potential identity theft, the Commission excluded the name of the Respondent from this Decision.
2 Section 4.10 Review of Views of WIPO Independent Experts on Certain UDRP Issues, Third Edition (Review of WIPO Practices 3.0).
3 Section 1.3 of the WIPO Practice Review 3.0.
4 Ibid.
5 http://mz-clinic.ru/bolezni/spine/osteohondroz.html.
6 https://support.google.com/adsense/answer/1269077?hl=en.
