Alvaline.com: #Belarus attacked #Russia in #UDRP at the WIPO; who won?

A company from Belarus sent its Russian lawyers to battle; the domain in question was Alvaline.com.

Dmitry Platonov, operator of the domain, is in Russia. The Complainant is a Belarusian manufacturer of kitchen furniture founded in 1996.

According to the UDRP filed at the WIPO, the domain was in the possession of the Complainant since its registration in 2002 but then something happened:

Around 2015, the use of the disputed domain name was seized by the Respondent, who might have kept administrator access to the disputed domain name. The disputed domain name started to be used for advertising of kitchen furniture under the ALVALINE brand in the Russian language, specified a Russian phone number in the contact section, and indicated the address of a store in Moscow, Russian Federation, as the store of ALVALINE kitchen furniture.

That’s not what happened, said the Respondent, painting a different picture of the domain’s history and control:

In late 2000, the Respondent ordered the development of a corporate identity for his company from a Polish advertising agency. In February 2001, the ALVALINE logo was developed, and in April 2001, the Respondent opened his own ALVALINE store in Moscow. In July 2001, he registered the domain name <alvaline.ru>, and then ordered furniture from the Complainant under the Respondent’s own brand ALVALINE. In October 2002, the Respondent registered the disputed domain name, which hosted his second website for the Russian Federation. From 2002 to 2015, the Respondent was the owner and CEO of Alva Studio LLC, and was engaged in the sale of furniture, which the Complainant produced according to the Respondent’s orders and in accordance with his sketches.

According to the Respondent, in 2003, the Complainant took advantage of his trust and registered the ALVALINE trademark, hiding this from the Respondent. In 2008, the Complainant claimed its rights to the ALVALINE brand, as a result of which the Respondent rebranded and began selling furniture under the ALVAKITCHEN brand that the Respondent created himself.

Assen Alexiev, sole panelist at the WIPO delivered a decision favoring the Respondent:

The record in this case thus does not allow an answer to the question of whether the Respondent registered the disputed domain name for his own purposes or for the purposes of the Complainant and whether the Respondent thereby attempted to unfairly capitalize on the Complainant’s yet unregistered trademark rights.

Therefore, the Panel finds that the Complainant has not established that the Respondent has registered the disputed domain name in bad faith.

Final decision: Deny transfer of Alvaline.com to the Complainant; final score: Belarus 0 – Russia 1.

WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
BelGro, IOOO v. DMITRY P PLATONOV
Case No. D2021-4275

1. The Parties

The Complainant is BelGro, IOOO, Belarus, represented by Ivanov, Makarov & Partners, Russian Federation.

The Respondent is DMITRY P PLATONOV, Russian Federation.

2. The Domain Name and Registrar

The disputed domain name is registered with DomainPeople, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 17, 2021. On December 20, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 27, 2021, the Center sent a formal reminder concerning the registrar verification. On January 3, January 4 and January 5, 2022, 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 5, 2022 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, 2022.

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 13, 2022. In accordance with the Rules, paragraph 5, the due date for Response was February 2, 2022. On January 14 and 20, 2022, the Respondent sent informal communications in Russian to the Center. The Response was filed with the Center on February 1, 2022 in Russian.

The Center appointed Assen Alexiev as the sole panelist in this matter on February 8, 2022. 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 Belarusian manufacturer of kitchen furniture. It was founded in 1996.

The Complainant is the owner of the following trademark registrations for the sign “ALVALINE” (the “ALVALINE trademark”):

− the Belarusian trademark ALVALINE with registration No. 18062, registered on November 12, 2003 for goods in International Class 20; and
− the International trademark ALVALINE with registration No. 1003119, registered on March 9, 2009 for goods in International Class 20.

The disputed domain name was registered on October 25, 2002. It is currently inactive.

5. Parties’ Contentions

A. Complainant

The Complainant makes the following statements:

The disputed domain name was initially intended to promote the Complainant’s products in the United States of America (“United States”), and was registered on behalf of and under the instruction of the Complainant by the Respondent in his own name. Four months later, the Complainant filed the application for the ALVALINE trademark in Belarus. Initially, no information was posted on the website at the disputed domain name. At the end of 2004, the Complainant posted on the website at the disputed domain name an offer of ALVALINE brand furniture to American consumers. In March 2005, the Complainant concluded an agreement with ALVA LINE USA, LLC, for the sale of goods to this company. On December 10, 2007, the Respondent resigned from the position of Deputy Director for Commercial Affairs of the Complainant. In November 2009, the Complainant concluded a supply agreement with Alco Construction and Development, Inc. for the supply of kitchen furniture under the ALVALINE trademark to the United States, and in November 2011, the Complainant concluded a similar supply agreement with another American company – Alva Kitchens LLC. In the same year, the information on the disputed domain name was updated, and the address of the office of Alva Kitchens LLC was listed on it.

Around 2015, the use of the disputed domain name was seized by the Respondent, who might have kept administrator access to the disputed domain name. The disputed domain name started to be used for advertising of kitchen furniture under the ALVALINE brand in the Russian language, specified a Russian phone number in the contact section, and indicated the address of a store in Moscow, Russian Federation, as the store of ALVALINE kitchen furniture. These contact details were not related to the Complainant and its affiliates. According to the Complainant, the website at the disputed domain name was misleading and suggested that it belonged to the Complainant itself or was associated to it, because it used the Complainant’s ALVALINE trademark, a similar color scheme in orange tones and the ALVA logo that were used on the website at the disputed domain name before the Complainant lost control over it, and as currently used by the Complainant on its other websites. Subsequently, the disputed domain name started redirecting to the website at the domain name and to other websites. The domain name was registered by the Respondent and used for many years for the Complainant’s business in Belarus and the Russian Federation, but after the Respondent left the Complainant, it was used for a competing business. As a result of a trademark infringement lawsuit of the Complainant against the Respondent, filed with the Russian courts, the domain name was transferred to the Complainant in 2021.

The Complainant maintains that the disputed domain name is identical to the ALVALINE trademark.

According to the Complainant, the Respondent has no rights or legitimate interests in respect of the disputed domain name because the Complainant has not permitted it to use the ALVALINE trademark or the disputed domain name, including after the Respondent’s resignation as an employee of the Complainant. The Complainant maintains that the Respondent is not making a bona fide offering of goods or carrying out a legitimate noncommercial or fair use of the disputed domain name. Rather, it presents the website at the disputed domain name as the website of the Complainant itself or as a website that is associated to the Complainant and thus attracts the attention of consumers with a well-known brand and redirects them to another website that is not related to the Complainant. The Complainant states that the Respondent is not commonly known by the disputed domain name, as it was registered and used in the interests of the Complainant and the Respondent was one of its employees. The Complainant notes that there is no evidence of the Respondent using the ALVALINE brand before the registration of the disputed domain name and before this brand was developed by the Complainant.

The Complainant contends that the disputed domain name was registered and is being used in bad faith. According to it, the Respondent’s use of the disputed domain name shows that the Respondent knew of the Complainant’s intention to use the ALVALINE brand for furniture when registering the disputed domain name, as it was registered on behalf of and under the instruction of the Complainant by the Respondent who was its employee at the time. The Complainant submits that the Respondent’s use of the disputed domain name also shows that the Respondent seized and used it with the intention to attract, for commercial gain, Internet users to the website by creating a likelihood of confusion with the Complainant’s ALVALINE trademark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location. The Complainant states that the Respondent’s website creates the impression that it belongs to or is endorsed by the Complainant, as it does not provide any information on the identity of the website provider, and through it the Respondent intentionally creates the impression that the products offered on its website are provided by the Complainant or that it is an official dealer of the Complainant. At the same time, the website at the disputed domain name contains links to a third party website and indicates phone numbers, email addresses, and store addresses that are not related to the Complainant.

According to the Complainant, the Respondent admits that it causes confusion in consumers, because the “News” section of its website at the domain name , to which the disputed domain name currently redirects, contained a notice that stores operating in the Russian Federation under the brands ALVALINE and VOGELBAUM had certain logistical problems which did not affect the customers of this website, since it imported all furniture directly and use only its warehouses, and which notice recommended to consumers to directly contact the store where they had made their orders. According to the Complainant, the Respondent thus admitted that there were many cases of consumer confusion due the Respondent’s use of the ALVALINE brand, and that it is not the original ALVALINE brand and is using the disputed domain name in bad faith.

B. Respondent

The Respondent provides the following description of events related to the disputed domain name.

In late 2000, the Respondent ordered the development of a corporate identity for his company from a Polish advertising agency. In February 2001, the ALVALINE logo was developed, and in April 2001, the Respondent opened his own ALVALINE store in Moscow. In July 2001, he registered the domain name , and then ordered furniture from the Complainant under the Respondent’s own brand ALVALINE. In October 2002, the Respondent registered the disputed domain name, which hosted his second website for the Russian Federation. From 2002 to 2015, the Respondent was the owner and CEO of Alva Studio LLC, and was engaged in the sale of furniture, which the Complainant produced according to the Respondent’s orders and in accordance with his sketches.

According to the Respondent, in 2003, the Complainant took advantage of his trust and registered the ALVALINE trademark, hiding this from the Respondent. In 2008, the Complainant claimed its rights to the ALVALINE brand, as a result of which the Respondent rebranded and began selling furniture under the ALVAKITCHEN brand that the Respondent created himself.

The Respondent further states that in the spring of 2010, the Complainant asked the Respondent to make a website for the Complainant and place it on the disputed domain name, promising to pay later. The Respondent developed this website and supported it for several years. As the Respondent never received payment for the use of the website, he began to use it at his own discretion. The Respondent adds that in 2015 he became seriously ill and closed his business. One year ago, the Respondent began to use it for personal purposes in relation to online courses for interior designers, and contained only the Respondent’s contact details. The website contained a message that it provided interior design services and was in no way connected with furniture.

The Respondent denies that he has been an employee of the Complainant at any point in time, and maintains that the resignation document submitted by the Complainant is not signed by him.

6. Discussion and Findings

6.1. Procedural issues

The Respondent requests that the present dispute be transferred to the courts at his place of residence, alleging that he cannot travel outside the Russian Federation. No legal arguments are provided in support of this request. As confirmed by the Registrar, the Policy applies to the present dispute, and it has to be resolved before the Provider and by the Panel. This proceeding does not require the Parties to travel in order to participate in it, and both Parties have made their submissions and have thus stated their cases. The Panel is not aware of any reason that may justify a deviation from this procedure, and denies the request of the Respondent as moot.

The Respondent also requests that all correspondence in this proceeding be translated into Russian, on the basis that his English is allegedly not perfect enough to accurately understand the nuances of the case. The Respondent has however submitted several lengthy communications and a Response in English, and it appears from these documents that the Respondent has good command of English and has understood the contentions of the Complainant without the need of a Russian translation. Therefore, the Panel denies the request of the Respondent.

6.2. Substantive issues

Pursuant to the 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; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has provided evidence that it is the owner of the ALVAALINE trademark. In view of this, the Panel accepts that the Complainant has established its rights in this trademark for the purposes of the present proceeding.

The Panel notes that a common practice has emerged under the Policy to disregard in appropriate circumstances the generic Top-Level Domain (“gTLD”) section of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i). See section 1.11.1 of the WIPO Overview 3.0. The Panel sees no reason not to follow the same approach here, and will disregard the “.com” gTLD of the disputed domain name.

The disputed domain name incorporates the ALVALINE trademark entirely without the addition of any other elements. This is sufficient for the Panel to conclude that this disputed domain name is identical to the ALVALINE trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

Since the Complainant has failed to establish that the Respondent has registered the disputed domain name in bad faith, it is not necessary for the Panel to take a decision on the issue of whether the Respondent has rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

As discussed in sections 3.8.1 and 3.8.2 of the WIPO Overview 3.0, where a respondent registers a domain name before the complainant’s trademark rights accrue, panels will not normally find bad faith on the part of the respondent. As an exception to this general proposition, 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, panels have been prepared to find that the respondent has acted in bad faith. Such scenarios may include registration of a domain name further to the respondent’s insider knowledge, e.g., being an employee of the complainant.

In the present case, the disputed domain name was registered before the filing of the application for registration of the ALVALINE trademark. This would be sufficient to exclude a finding that the disputed domain name was registered in bad faith by the Respondent, unless the Complainant establishes that the Respondent’s intent in registering the disputed domain name was to unfairly capitalize on the Complainant’s yet unregistered trademark. The Complainant submits in this regard that the Respondent was an employee of the Complainant when he registered the disputed domain name, and did this on behalf of the Complainant but in his own name. These allegations are disputed by the Respondent, and he submits that he has never been an employee of the Complainant, and registered the disputed domain name for his own business, and then the Complainant covertly registered the ALVALINE trademark without informing the Respondent, although they had a business relationship.

The competing evidence presented by the Parties is scarce and does not allow the Panel to reach a conclusion on the above allegations of the Parties. No documents have been submitted by either Party to clarify the nature of their relationship, and there is only an order for the resignation of the Respondent as an employee of the Complainant. The Respondent denies the authenticity of this document, and submits a copy of his employment record showing that it worked in other businesses during the relevant period. If the Respondent was indeed an employee of the Complainant at the time when the disputed domain name was registered, one would expect the Complainant to have provided documents showing this, such as his employment contract, payment slips and internal correspondence between the Parties in relation to the registration of the disputed domain name, and other company matters. The Complainant also refers to a court litigation between the Parties in respect of the domain name , but has not submitted a copy of the respective judgment, which may have probably contained relevant information about the relations between the Parties. On the other side, if the Respondent had a separate business and partnered with the Complainant for the trade with furniture under the ALVALINE brand, that again would have led to the generation of a certain volume of contractual documents and correspondence between the Parties, which should be available with the Respondent. None of this has been submitted in this case, and the Panel is left with almost bare allegations of the Parties. The record in this case thus does not allow an answer to the question of whether the Respondent registered the disputed domain name for his own purposes or for the purposes of the Complainant and whether the Respondent thereby attempted to unfairly capitalize on the Complainant’s yet unregistered trademark rights.

Therefore, the Panel finds that the Complainant has not established that the Respondent has registered the disputed domain name in bad faith. As the Policy requires the Complainant to establish that the Respondent has registered and used the disputed domain name in bad faith, this means that the Complaint must fail, and it is not necessary to make a finding as to whether the disputed domain name has been used in bad faith.

7. Decision

For the foregoing reasons, the Complaint is denied.

Assen Alexiev
Sole Panelist
Date: February 28, 2022

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