Reverb.com, LLC v. Elena Trofimova
Claim Number: FA2202001984343
Complainant is Reverb.com, LLC (“Complainant”), represented by David A. W. Wong of Barnes & Thornburg LLP, Indiana, USA. Respondent is Elena Trofimova (“Respondent”), Russia.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <reverbpayments.com>, <reverbpayments.online> and <reverbpayments.site>, registered with Registrar of Domain Names REG.RU LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 14, 2022; the Forum received payment on February 14, 2022. The Complaint was received in English.
On February 16, 2022, Registrar of Domain Names REG.RU LLC confirmed by e-mail to the Forum that the <reverbpayments.com>, <reverbpayments.online>, and <reverbpayments.site> domain names are registered with Registrar of Domain Names REG.RU LLC and that Respondent is the current registrant of the names. Registrar of Domain Names REG.RU LLC has verified that Respondent is bound by the Registrar of Domain Names REG.RU LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On February 16, 2022, the Forum served the English language Complaint and all Annexes, including a Russian and English language Written Notice of the Complaint, setting a deadline of March 8, 2022 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@reverbpayments.com, postmaster@reverbpayments.online, postmaster@reverbpayments.site. Also on February 16, 2022, the Russian and English language Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On March 10, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
Preliminary PROCEDURAL Issue: Language of Proceeding
The Panel notes the Russian language Registration Agreement. Under Rule 11(a) the language of these proceedings is therefore Russian. Nevertheless, Complainant requests that the proceedings continue in the English language and under the Rules the Panel has discretion to allow that request.
In considering similar requests, UDRP panels have taken account of factors which indicate a respondent’s proficiency with the English language[i]. Here, Complainant submits that Respondent is capable of understanding English because “the [domain names] consist of English terms” and “Respondent uses the domains to promote goods in English.”
The Panel finds no evidence in the Complaint as to how two of the disputed domain names are used, a matter which critically influences the outcome of this matter, but it notes that Complainant provides evidence that <reverbpayments.com> resolves to a website which appears to mimic Complainant’s website, a sophisticated English language marketplace for musical instruments and equipment.
The Panel finds that Respondent could not mimic that website without a level of skill in the English language such that Respondent was also capable of reading and understanding the Complaint and capable of filing a Response in English. In the circumstances the Panel determines that the proceedings should continue in English.
A. Complainant
Complainant asserts trademark rights in REVERB and REVERB PAYMENTS. It holds a national registration for those trademarks. Complainant submits that the domain names are confusingly similar to its trademarks.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant alleges that Respondent registered the disputed domain names in bad faith having targeted Complainant.
A. Respondent
Respondent failed to submit a formal Response in this proceeding.
The factual findings pertinent to the decision in this case are that:
1. Complainant provides an online marketplace for the sale of musical instruments and equipment by reference to the registered trademark, REVERB;
2. In addition to the REVERB trademark, Complainant has registered with the United States Patent & Trademark Office (“USPTO”) Reg. No. 780,529, registered June 18, 2019, for the mark, REVERB PAYMENTS;
3. the disputed domain names were registered in December 2021 and January 2022; and
4. as stated above, the domain name, <reverbpayments.com>, resolves to a website which appears to mimic Complainant’s website; there is no evidence as to how the domain names, <reverbpayments.online> and <reverbpayments.site>, have been used, if at all.
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Notwithstanding the absence of a Response, paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry—a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights. It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights[ii]. Complainant provides evidence of its USPTO registrations for the trademarks REVERB and REVERB PAYMENTS and so the Panel finds that Complainant has rights in those trademarks.
For the purposes of comparison, the gTLD can generally be disregarded as having no impact on the assessment of identicality or confusing similarity. The Panel finds the domain names are legally identical to the trademark, REVERB PAYMENTS[iii].
The Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved, based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests[iv].
The domain name holder in each case is “Elena Trofimova” which does not indicate that Respondent might be commonly known by any of the disputed domain names. There is no evidence that Respondent has any trademark rights of its own and Complainant has stated that it has not permitted Respondent to use its trademark.
Complainant states that “Respondent uses the disputed domain names to pass off as Complainant and defraud customers, both in emails and with a resolving website.” It states, further, that “Respondent sent email messages impersonating Complainant and directing Complainant’s customers to the Disputed Domain Names requesting that payment be made to Respondent for services offered by Complainant.” Finally, that Respondent assumed “the identity of Complainant … in order to confuse Internet users and perpetrate its fraudulent behavior of likely providing counterfeit goods and services and obtaining sensitive financial information by impersonating the Complainant.”
Exhibit D to the Complaint is a screenshot resolving from the domain name, <reverbpayments.com>, which appears to mimic Complainant’s website. Exhibit E to the Complaint is a screenshot resolving from that same domain name at a later date. It appears to the Panel that <reverbpayments.com> redirected Internet users to Complainant’s actual website at that later time; certainly, at the time of writing this decision, <reverbpayments.com> redirects to www.reverb.com, Complainant’s website.
As stated, there is no evidence as to how the domain names, <reverbpayments.online> and <reverbpayments.site>, may have been used and, at the time of writing this decision, those names do not resolve to any website(s).
Exhibit F to the Complaint is relied upon in support of the assertion that Respondent sent email messages impersonating Complainant, directing Complainant’s customers to the disputed domain names and requesting payment.
Exhibit F appears to be a screenshot of a promotional offer of free shipping on the sale of a certain electric guitar. It appears to be directed to an individual who had kept watch of that guitar for sale. It can’t be determined from Exhibit F whether the screenshot resolved from any of the disputed domain names.
That is the totality of the evidence. It does not show use of either <reverbpayments.online> or <reverbpayments.site> in connection with a website or email messages. Bearing in mind what has been said above concerning Complainant’s obligation to make a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names, the Panel can draw inferences it considers appropriate pursuant to paragraph 14(b) of the Rules and is entitled to accept reasonable allegations in the Complaint as true unless the evidence is contradictory[v]. That said, the evidence is in these proceedings lacking altogether as to whether <reverbpayments.online> and <reverbpayments.site> have been used at all, let alone in the manner asserted by Complainant.
On balance, the Panel finds that those two domain names have not been used. What follows is that there is no prima facie evidence of rights or legitimate interest in those names under paragraph 4(c) of the Policy. By contrast, the Panel accepts Complainant’s evidence of diversionary misuse of the <reverbpayments.com> domain name and clearly finds no prima facie right or legitimate interest in that name. In the result, the Panel finds that in all three cases a prima facie case exists that Respondent has no rights or legitimate interests in the disputed domain name.
The onus shifts to Respondent to establish a legitimate interest. Absent any Response the Panel finds that Respondent has no rights or interests and so finds that Complainant has satisfied this second limb of the Policy.
Complainant must prove on the balance of probabilities both that the disputed domain names were registered and used in bad faith.
The requirement of proof of use in bad faith presents an immediate problem in the cases of the two domain names which the Panel has already found were not used, a problem not resolved by resort to paragraph 4(b) of the Policy which sets out four scenarios understood to be evidence of the registration and use of a domain name in bad faith. All that may have conceivably assisted Complainant had the evidence shown that its trademarks were very well-known was an argument of so-called “passive holding” in bad faith, but the Panel takes the view that this cannot be sustained on the information provided.
It follows that the Complainant is unable to establish the requirement of use in bad faith in respect of the <reverbpayments.online> and <reverbpayments.site> domain names and so is unable to satisfy the third limb of the Policy in respect of those names.
The Panel finds that paragraph 4(b)(iv) of the Policy has direct application to the <reverbpayments.com> domain name. Paragraph 4(b)(iv) states that the domain name will be considered registered and used in bad if the evidence shows that:
“… by using the domain name, respondent has intentionally attempted to attract, for commercial gain, Internet users to respondent’s website 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 the respondent’s website or location or of a product or service on the site or location.”
The Panel has already found the disputed domain name to be confusingly similar to the trademark. In terms of the Policy, the Panel finds that Respondent has intentionally used the <reverbpayments.com> domain name to attract, for commercial gain, Internet users to the resolving webpage by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of that webpage. The Panel finds registration and use in bad faith and so finds that Complainant has satisfied the third and final element of the Policy in respect of that domain name[vi].
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED in respect of the <reverbpayments.com> domain name. Accordingly, it is Ordered that the <reverbpayments.com> domain name be TRANSFERRED from Respondent to Complainant.
Having failed to establish one of the three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED in respect of the <reverbpayments.site> and <reverbpayments.online> domain names. Accordingly, it is Ordered that the <reverbpayments.site> and <reverbpayments.online> domain names REMAIN WITH Respondent.
Debrett G. Lyons, Panelist
Dated: March 14, 2022
[i] See, for example, The Argento Wine Company Limited v. Argento Beijing Trading Company, D2009-0610 (WIPO July 1, 2009); see also Finter Bank Zurich v. Shumin Peng, D2006-0432 (WIPO June 12, 2006).
[ii] See, for example, State Farm Mut. Auto. Ins. Co. v. Periasami Malain, FA 705262 (Forum June 19, 2006) (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”)
[iii] See, for example, Marquette Golf Club v. Al Perkins, FA 1738263 (Forum July 27, 2017) (“When a respondent’s domain name incorporates a mark in its entirety and merely adds a generic top-level domain (gTLD), “.com”, then the Panel may find that the disputed domain name is identical to Complainant’s mark.”); Abt Elecs., Inc. v. Ricks, FA 904239 (Forum Mar. 27, 2007) (“The Panel also finds that Respondent’s <abt.com> domain name is identical to Complainant’s ABT mark since addition of a generic top-level domain (“gTLD”) is irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”). The Panel notes that Reg. No. 5,780,529 for REVERB PAYMENTS carries a disclaimer to exclusivity in the descriptive word, “payments”, but reasons that the same outcome would follow were reliance placed, instead, on the REVERB registration and recognition made of the purely descriptive character of the word, “payments”.
[iv] See, for example, Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000).
[v] See, for example, Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true.
[vi] See, for example, Microsoft Corporation v. Story Remix / Inofficial, FA 1734934 (Forum July 10, 2017) finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting.
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