DECISION

 

Raidofinance OU v. Domain Admin / Whois Privacy Corp.

Claim Number: FA2111001972094

 

PARTIES

Complainant is Raidofinance OU (“Complainant”), represented by David Paytyan, Estonia pst 5.  Respondent is Domain Admin / Whois Privacy Corp. (“Respondent”), represented by Kęstutis Virbickas, International.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <raidopay.com>, registered with Internet Domain Service BS Corp.

 

PANEL

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.

 

Richard Hill as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on November 5, 2021; the Forum received payment on November 5, 2021.

 

On November 8, 2021, Internet Domain Service BS Corp confirmed by e-mail to the Forum that the <raidopay.com> domain name is registered with Internet Domain Service BS Corp and that Respondent is the current registrant of the name.  Internet Domain Service BS Corp has verified that Respondent is bound by the Internet Domain Service BS Corp 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 November 11, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 6, 2021 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@raidopay.com.  Also on November 11, 2021, the 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.

 

A timely Response was received and determined to be complete on December 6, 2021.

 

Complainant submitted an Additional Submission on December 9, 2021.

 

Respondent submitted an Additional Submission on December 14, 2021.

 

On 15 December, 20201, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant states that it provides a variety of services, including financial services. Complainant asserts rights in the RAIDO mark. The mark is actually a figurative mark with a word element: [IMAGE OF COMPLAINANT’S MARK OMITTED], shown as R RAIDO on the trademark registration. The mark was registered in Estonia on December 3, 2020, the application date being June 6, 2019.

 

Complainant alleges that the disputed domain name is identical to its mark.

 

According to Complainant, Respondent has no rights or legitimate interests in the disputed domain name. Complainant has not permitted Respondent to use its mark. Further, Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services or legitimate noncommercial or fair use as the resolving website displays Complainant’s logo and offers similar services. The logo displayed on the resolving website is [IMAGE OMITTED].

 

Respondent registered and uses the disputed domain name in bad faith because Respondent violates Complainant’s trademark rights and the resolving website can mislead customers by offering competing financial services.

 

B. Respondent

Respondent alleges that Complainant attempted to mislead the panel by stating that its mark is RAIDO when in fact it is R RAIDO. Respondent disputes Complainant’s assertions that the disputed domain name is confusingly similar to Complainant’s mark “R RAIDO” marks as the significant term “R” is not present in the disputed domain name and the word “raido” is a general and common word accessible to everyone: it refers to the reconstructed Proto-Germanic name of the r- rune of the Elder Futhark ᚱ[i].

 

Respondent alleges that it has rights and legitimate interests in the disputed domain name. The disputed domain name was registered on May 21, 2017 and it was used to promote software solutions (only examples of software, not working platform). On April 15, 2021, the registrant transferred all his rights to the domain registration and website (everything it included) to Adara Invest s.r.o.. Respondent attaches evidence of this transfer. On November 3, 2021, Adara Invest s.r.o. sold its rights to the disputed name domain and website (everything it included) to Respondent, whose actual name is RO SERVICE Co. LTD, Thailand. Respondent attaches evidence of this transfer. Respondent intends to improve the software solutions offered on the resolving website. Respondent filed a trademark application in Thailand on November 29, 2021, for the mark RAIDO. Respondent attaches evidence of this application, alleging that the application was prepared on November 3, 2021.

 

Further, says Respondent, it did not register and has not used the disputed domain name in bad faith. Respondent states that Complainant has not alleged any specific ground of bad faith under the Policy. Further, the registration of the disputed domain name predates the creation of Complainant’s business and Complainant’s trademark rights. Respondent uses the disputed domain name to provide legitimate services. Complainant’s Estonian trademark does not create worldwide rights. Respondent does not offer services that compete with Complainant’s business.

 

C. Additional Submissions

In its Additional Submission, Complainant alleges that RO SERVICE Co. LTD should not be considered to be Respondent, as the documents attached to the Response contain signs of falsification and forgery. Specifically, the first website transfer agreement is dated April 15, 2020, whereas the buyer was registered only on December 31, 2020; further, the agreement is not a valid contract. Consequently, the second transfer agreement is also invalid. Complainant also contests the validity of the Thai trademark application submitted by Respondent.

 

Further, Complainant provides evidence showing that on August 7, 2020 the resolving website contained information and details about “MONTENEX Group OU”; and on December 1, 2021, the resolving website contained information about “Adara Invest s.r.o.” and it displayed Complainant’s mark and distinctive logo: the logo displayed on the resolving website is shown above under section A.

 

In its Additional Submission, Respondent states that there may have been a typographical error in the date of the first transfer agreement: the actual date may have been April 15, 2021. Be that as it may, it is not illegal if a legal entity made some agreement before the date it was officially registered. Further, the second transfer agreement is in any case valid, because Adara Invest s.r.o. owned the disputed domain name when Respondent acquired it, as evidenced by Adara Invest s.r.o. having all the connections, passwords, email addresses and other attributes of the disputed domain name.

 

Respondent notes that a notary authenticated the Thai trademark application that it submitted.

 

Respondent states that the resolving website still contains information about Adara Invest s.r.o. only because of lack of time to modify the website. Respondent became the rightful owner of the website and the disputed domain name on November 3, 2021. On November 12, 2021, Respondent received written notice of the complaint and commencement of the administrative proceeding, and the website was locked. There was simply no time to make any technical changes to the website prior to its being locked pending the instant proceedings.

 

Respondent reiterates arguments set forth in its Response and concludes by noting that only the registrant could have received the Complaint and Complainant’s additional submission, so Respondent is indeed the registrant and owns the disputed domain name. Respondent states that it stands ready to provide to the Panel the connections, passwords, email addresses and other attributes of the disputed domain name which can be known only by its owner.

 

FINDINGS

Complainant has rights in the figurative mark R RAIDO dating back to June 6, 2019 and uses it to market financial services. Specifically, its website at <raidofinancial.eu> offers to buy and sell cryptocurrencies.

 

Complainant’s logo, and the logo on the resolving website, both contain the runic letter “ᚱ”, however they differ significantly in terms of color, shape of the circle enclosing the letter “ᚱ”, and background color within the circle.

 

The disputed domain name was registered on May 21, 2017 and acquired by Respondent on November 3, 2021. The transfer agreements submitted by Respondent relate to both the disputed domain name and the content of the resolving website, including logos. The first transfer agreement, dated April 15, 2020, relates also to customer lists and agreements.

 

The resolving website, which has remained essentially unchanged since its initial registration, offers services related to cryptocurrencies, including buying and selling.

 

Respondent is the registrant of the disputed domain name.

 

DISCUSSION

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."

 

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.

 

PRELIMINARY ISSUE: MATTERS OUTSIDE THE SCOPE OF THE POLICY

As a preliminary matter, the Panel notes that Complainant’s allegations that Respondent has submitted fraudulent documents cannot be resolved by the Panel, since there is no prima facie evidence of fraud. Further, it is not within the scope of the Panel to determine whether the first transfer agreement is a valid contract (as it appears to be at first sight), or whether it is not valid (as Complainant alleges). Indeed, determination of complex factual issues, such as the validity of a contract, or the authenticity of a document, are outside the scope of the UDRP. See Borderfree Ltd. v. Atlantic Management and Developments ltd. c/o Heidi Radford-Legg, FA0311000211961 (Forum Jan. 12, 2004) (finding that examination of several complex factual and legal issues is outside the scope of the UDRP; issue such as interpretation contracts may be best determined by a forum of broader jurisdiction); see also AmeriPlan Corporation v. Shane Gilbert d/b/a NewWave Solutions, Inc., FA0203000105737 (Forum Apr. 22, 2002) (interpretation of contracts and resolution of evidentiary issues are outside the scope of the UDRP).

 

PRELIMINARY ISSUE: INDEPENDENT RESEARCH

According to paragraph 4.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Jurisprudential Overview 3.0”), a Panel may conduct limited factual research regarding disputed domain names:

 

Noting in particular the general powers of a panel articulated inter alia in paragraphs 10 and 12 of the UDRP Rules, it has been accepted that a panel may undertake limited factual research into matters of public record if it would consider such information useful to assessing the case merits and reaching a decision.

 

This may include visiting the website linked to the disputed domain name in order to obtain more information about the respondent or its use of the domain name, consulting historical resources such as the Internet Archive (www.archive.org) in order to obtain an indication of how a domain name may have been used in the relevant past, reviewing dictionaries or encyclopedias (e.g., Wikipedia), or accessing trademark registration databases.

 

A search in the Internet Archive indicates that the disputed domain name has been used to promote services related to cryptocurrencies since at least January 2018, using a favicon[ii] (the logo shown next to a domain name in a browser) that is identical to the logo displayed on the resolving website (see under Parties’ Contentions, Section A above). That logo contains the Unicode Runic representation of the ancient letter “raida”[iii], as does Complainant’s logo.

 

The search shows that the physical address displayed at the resolving website has changed over time. In August 7, 2019 it was Vector Securities Limited; in October 25, 2020 and January 15, 2021 it was MONTENEX Group OÜ. At present it is Adara Invest s.r.o.

 

A search using Google on the term “raido” produces results that are not associated with either party. A search on “r raido” produces results not related to either party. A search on “raido cryptocurrency” produces several results related to Complainant, and also <radiospare.com”, which is essentially identical to the resolving website in the instant case, except that the physical address is “Vector Securities Limited”.

 

A search using Bing on the term “raido” produces results that are not associated with either party. A search on “r raido” produces results not related to either party, including <raido.one> which apparently legitimately promotes a universal charging station; the logo at <raido.one> includes the runic letter “ᚱ”. A search on “raido cryptocurrency” produces results that are not associated with either party.

 

Identical and/or Confusingly Similar

The disputed domain name incorporates the dominant portion RAIDO of Complainant’s mark, merely adding the descriptive term “pay”. The relevant date for the mark is the filing date, see Lenovo (Beijing) Limited Corporation China v. jeonggon seo, FA 1591638 (Forum Jan. 16, 2015) (finding Complainant has rights in the LENOVO mark dating back to the February 20, 2003 filing date with the USPTO as the trademark application was ultimately successful); see also Hershey Co. v. Reaves, FA 967818 (Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”).

 

Incorporating only part of a complainant’s mark in a disputed domain name does not necessarily negate a finding of confusing similarity. See Sterling Jewelers Inc. v. KAY KAY YAN, FA 1542616 (Forum Mar. 17, 2014) (finding that Respondent’s <kisskay.com> domain name is confusingly similar to Complainant’s KAY and EVERY KISS BEGINS WITH KAY marks at it constitutes a mere abbreviation.); see also Morgan Stanley v. Domain Admin / Whois Privacy Corp., FA 1783121 (Forum June 1, 2018) (“Respondent’s <morganstanle.com> domain name is confusingly similar to Complainant’s MORGAN STANLEY mark as it wholly incorporates the mark, but for the omission of the letter ‘y’ and spacing within the mark, and appends the ‘.com’ gTLD.”).

 

The inclusion of the descriptive term “pay” is insufficient to distinguish the domain name from the mark under Policy ¶ 4(a)(i) analysis for confusing similarity. See Google Inc. v. signupgoogleadsense, FA1474818 (Forum Jan. 22, 2013) (“The addition of a generic term does not adequately distinguish Respondent’s domain name from Complainant’s  marks under Policy ¶ 4(a)(i).”); see also MTD Products Inc. v. J Randall Shank, FA 1783050 (Forum June 27, 2018) (“The disputed domain name is confusingly similar to Complainant’s mark as it wholly incorporates the CUB CADET mark before appending the generic terms ‘genuine’ and ‘parts’ as well as the ‘.com’ gTLD.”); see also Dell Inc. v. pushpender chauhan, FA 1784548 (Forum June 11, 2018) (“Respondent merely adds the term ‘supports’ and a ‘.org’ gTLD to the DELL mark. Thus, the Panel Respondent’s disputed domain name is confusingly similar to Complainant’s DELL mark per Policy ¶ 4(a)(i).”).

 

Respondent contends that the dominant portion of Complainant’s mark is a common and generic term. This is not relevant for the purposes of Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See Precious Puppies of Florida, Inc. v. kc, FA 1028247 (Forum Aug. 10, 2007) (examining Respondent’s generic terms arguments only under Policy ¶ 4(a)(ii) and Policy ¶ 4(a)(iii) and not under Policy ¶ 4(a)(i)); see also Vitello v. Castello, FA 159460 (Forum July 1, 2003) (finding that the respondent’s disputed domain name was identical to complainant’s mark under Policy ¶ 4(a)(i), but later determining the issue of whether the disputed domain name was comprised of generic terms under Policy ¶¶ 4(a)(ii) and 4(a)(iii)).

 

For all the above reasons, the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).

 

Respondent alleges that Complainant attempted to mislead the panel by stating that its mark is RAIDO when in fact it is R RAIDO. It is true that Complainant should have specified in its Complaint that the mark is R RAIDO. However, Complainant attached to the Complaint the relevant trademark registration, from which the Panel could easily see that the mark is R RAIDO. Since the Panel can be expected to look at the attachments to the Complaint, the Panel finds that Complainant did not attempt to mislead the Panel regarding its trademark.

 

Rights or Legitimate Interests

Respondent argues that its registering a trademark in Thailand for the RAIDO mark indicates that it has right and legitimate interests in the disputed domain name. However, the registration was submitted on November 29, 2021, after Respondent was notified of the instant proceedings. Respondent alleges that it prepared the registration request earlier, prior to the filing of the Complaint. Since, as already noted, resolution of evidentiary disputes is outside the scope of the UDRP, the Panel will not take into account the Thai trademark registration.

 

Respondent produces evidence showing that the term RAIDO appears in a variety of trademark registrations in various jurisdictions. However, that is the case for many trademarked terms: they can be registered by different companies in different jurisdictions, and by different companies for different business lines in the same jurisdiction. Thus the Panel finds that the other trademarks containing the term RAIDO are not relevant for the instant proceedings.

 

Complainant alleges that Respondent’s use of the disputed domain name is not a bona fide offering of goods or services because it infringes Complainant’s trademark. Respondent denies infringing Complainant’s trademark.

 

The Panel finds that the question of whether nor not Respondent’s use of Complainant’s mark is legitimate with respect to trademark law falls outside of the scope of the present proceedings, and is best resolved in national courts. See Happy State Bank d/b/a GoldStar Trust Company v. Ronny Yakov / CrowdPay.us, Inc. FA 1802648 (Forum Sept. 27, 2018); see also Abbott Labs. v. Patel, FA 740337 (Forum Aug. 15, 2006) (holding that assertions of trademark infringement are “entirely misplaced and totally inappropriate for resolution” in a domain name dispute proceeding because the UDRP Policy applies only to abusive cybersquatting and nothing else); see also Stevenson Indus., Inc. v. CPAP-PRO Online, FA 105778 (Forum Apr. 25, 2002) (“If the existence of [rights or legitimate interests] turns on resolution of a legitimate trademark dispute, then Respondent must prevail, because such disputes are beyond the scope of this proceeding.”).

 

Pursuant to Policy 4(b)(c), Respondent can establish rights or legitimate interests in the disputed domain name by showing: “before any notice to [it] of the dispute, [its] 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.”

 

Respondent argues the disputed domain name and resolving website are in preparation of being used for a bona fide offering of goods and services and that it could not update the resolving website due to its being locked pursuant to the instant proceedings. Preparations to use the disputed domain name and resolving website may indicate a respondent has rights or legitimate interests in the disputed domain name. See SPS Commerce, Inc. v. Registration Private / Domains By Proxy, LLC, FA 1724583 (Forum May 24, 2017) (“Indeed, much of Respondent’s evidence goes beyond demonstrable preparation and establishes actual use of the Domain Name in connection with a bona fide offering of e-commerce services.  In addition to the branding focus groups, marketing expenditure, and developing case studies and other digital content, Respondent actually offered e-commerce services via the Domain Name website… The Panel thus finds that Respondent has rights and legitimate interests in the Domain Name.”); see also AutoNation Holding Corp. v. Alawneh, D2002-0058 (WIPO May 1, 2002) (finding that, prior to having received notice of the dispute, the respondent had made demonstrable preparations to use the disputed domain name by submitted “substantial, overwhelming and undisputed evidence” of those preparations).

 

In the instant case, the resolving website has been used for essentially the same purpose, which appears legitimate, ever since the disputed domain name was first registered. Respondent alleges that it intends to continue a related activity. Complainant does not provide any proof to the contrary. The Panel finds that Complainant has failed to discharge its burden of proof under the Policy for this element.

 

An indication of the legitimacy of Respondent’s use of the disputed domain name is that it allegedly acquired the disputed domain on November 3, 2021, prior to the Complaint. Complainant alleges that the documents presented by Respondent are forgeries; however, as noted above, resolution of evidentiary disputes is outside the scope of the UDRP.

 

Additionally, the disputed domain name consists of common and generic terms. Specifically, as noted above, “raido” does have a common meaning. It is also a first name in Estonian[iv], corresponding to the English name Raymond[v]. Past panels have found that using generic terms in the disputed domain name may show the respondent has legitimate interests in the disputed domain name. See Kaleidoscope Imaging, Inc. v. V Entm’t, FA 203207 (Forum Jan. 5, 2004) (finding that the respondent was using the <kaleidoscope.com> domain name for a bona fide offering of goods or services because the term was “generic” and respondent was using the disputed domain name as a search tool for Internet users interested in kaleidoscopes).

 

For all the reasons given above the Panel finds, as already stated, that Complainant has failed to satisfy its burden of proof for this element of the Policy.

 

Registration and Use in Bad Faith

As noted above, the Panel finds that Complainant has failed to satisfy its burden of proving that Respondent has no rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). Consequently, the issue of bad faith registration and use is moot. See Record Connect, Inc. v. Chung Kit Lam / La-Fame Corporation, FA 1693876 (Forum Nov. 3, 2016) (finding that the issue of bad faith registration and use was moot once the panel found the respondent had rights or legitimate interests in the disputed domain name). Therefore the Panel will not rule on this issue.

 

Nevertheless, the Panel will make the following observations, obiter dictum.

 

According to 3.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Jurisprudential Overview 3.0”), in general, 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.

 

In the instant case, the disputed domain name has been transferred at least twice to third parties, after the Complainant acquired trademark rights.

 

According to 3.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Jurisprudential Overview 3.0”): “Where the respondent provides satisfactory evidence of an unbroken chain of possession, panels typically would not treat merely ‘formal’ changes or updates to registrant contact information as a new registration.” In particular, renewals by the same registrant is not considered to be a new registration.

 

However, as noted above, in the instant case there are actual transfers, not mere renewals, so there isn’t an unbroken chain of possession.

 

However, the evidence collected by the Panel shows that the resolving website has remained essentially unchanged since the original registration, which predates Complainant’s trademarks, including use of a favicon which contains the runic letter “ᚱ”. As already noted, Complainant’s logo, and the logo displayed on the resolving website, differ significantly in terms of color, shape of the circle enclosing the letter “ᚱ”, and background color within the circle. As noted above, the resolving website appears to promote legitimate services. This can result in a finding that registration and use are not in bad faith under the Policy. See Intellogy Solutions, LLC v. Craig Schmidt and IntelliGolf, Inc., D2009-1244 (WIPO, November 24, 2009) (finding that Respondent had not acted in bad faith when it acquired the disputed domain name after Complainant has established trademark rights because it believed that it had the right to continue to use the domain name for the purposes for which it had been used by the previous registrant). While the facts of the cited case are different from the facts of the instant case, there are sufficient analogies that may have prevented a finding of bad faith registration and use.

 

Complainant alleges that the resolving website may mislead potential customers. But the logo displayed on the resolving website is visually different from Complainant’s mark and from the logo displayed on Complainant’s website:

 

Complainant’s mark and logo	Resolving website
[IMAGE OF COMPLAINANT’S MARK OMITTED]	[IMAGE OF VISUALLY DISSIMILAR MARK OMITTED]

 

Complainant has not presented any evidence of actual consumer confusion.

 

Finally, as noted above, search results are not likely to lead to confusion: they either produce results unrelated to either party, or results related to Complainant.

 

DECISION

Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

 

Accordingly, it is Ordered that the <raidopay.com> domain name REMAIN WITH Respondent.

 

 

Richard Hill, Panelist

Dated:  December 16, 2021