CustVox AG v. Zina Kheilik
Claim Number: FA1306001506113
Complainant is CustVox AG (“Complainant”), Switzerland, represented by Daniel Greenberg of Lexsynergy Limited, United Kingdom. Respondent is Zina Kheilik (“Respondent”), Italy, represented by Viktor Sizonenko, Ukraine.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <custvox.net> and <custvox.com>, registered with GoDaddy.com, 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.
Richard DiSalle as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 21, 2013; the National Arbitration Forum received payment on June 21, 2013.
On June 24, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <custvox.net> and <custvox.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 June 24, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 29, 2013 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@custvox.net, postmaster@custvox.com. Also on June 24, 2013, 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 July 16, 2013.
Complainant submitted an Additional Submission on July 19, 2013, that was received and determined to be compliant that same day.
On July 23, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Richard DiSalle as Panelist.
Respondent submitted Additional Submissions on July 24, 2013, and on July 31, 2013, all of which were considered by the Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. COMPLAINANT
Confusing Similarity
Complainant is a Swiss company specializing in providing services to businesses that improve a business’s ability to engage its customers through e-mail, social media, the Internet, etc. Complainant used the <custvox.com> domain name to market its services, and has trademark registrations to the CUSTVOX mark.
Complainant has used the CUSTVOX mark to brand its business operations since February 2009. Its clients include FIAT, Sky, British Telecom, Orange UPC, Banca Intesa, Swisscom, and Sunrise. The mark has been used in a Twitter account that has 4,852 followers, a Facebook page with 7,426 likes, and in YouTube videos that have been viewed over 25,919 times.
Respondent’s <custvox.net> and <custvox.com> domain names are identical to the Complainant’s mark. The generic top-level domains (“gTLDs”) “.net” and “.com” are not relevant to avoid the similarity.
Respondent Lacks Rights & Legitimate Interests
Respondent is not commonly known by these domain names. Respondent has no association with Complainant, and Respondent has no existing licenses or authorizations to the CUSTVOX mark.
Respondent is the wife of a former Chief Technology Officer (“CTO”) of Complainant, and the CTO was tasked with maintaining the <custvox.net> and <custvox.com> domain names. Respondent’s husband failed to show up at a meeting, and was terminated due to this failure, as well as other actions that Complainant believes may rise to the level of criminal behavior. Respondent had her son transfer the domain names to another registrar, and made Respondent the exclusive registrant of the names after the termination of Respondent’s husband. Respondent has since had her son deactivate all the content on the domain name’s websites, where she had no right to keep control of the domain names.
Respondent’s Bad Faith Use & Registration
Complainant need not show the elements of Policy ¶ 4(b), but may show bad faith through the totality of the circumstances. Respondent is taking revenge against the termination of Respondent’s husband. Respondent has no use for the domain name other than to exploit Complainant’s decision to entrust its IT executive with the ability to manage these domain names. Respondent’s decision to have these domain names registered exclusively in her own name suggests bad faith on her part.
B. RESPONDENT
Respondent suggests that Complainant elected the Forum over WIPO, as WIPO is also located in Switzerland and would more easily identify the weaknesses presented in Complainant’s case.
Respondent’s husband is the major shareholder of Complainant’s holding company, and thus is essentially the owner of Complainant. Due to the ongoing struggle over ownership of Complainant, the individuals who submitted this Complaint are not clearly the owners of the trademark.
Complainant is fabricating common law rights. The content viewable on Twitter is clearly different from the content that Complainant claims exists. Complainant does not even have the Facebook groups that it purports to control. Complainant’s current business on the <custvox.org> domain name is a budget site that uses WordPress. No serious company with clients as substantial as Complainant suggests would ever settle with such a low quality Internet presence.
Respondent’s Rights And Legitimate Interests
Respondent is using the domain names to promote goods developed by her son. Complainant is currently in the midst of a hostile takeover by the corporate raiders Federico Cesconi and Frank Warnsing.
Respondent has legitimately used the CUSTVOX mark in trade prior to the existence of Complainant.
Complainant Has Not Shown Bad Faith
Respondent could not have registered the domain names in bad faith when they were registered initially by her son to help her husband’s business.
C. ADDITIONAL SUBMISSIONS
Complainant
Complainant requests that the Panel separate Respondent (the wife of a former employee) from her husband and son. Respondent is the registrant of these names and thus it is her interest and rights in the domain name that are at issue. Respondent cannot use the activities of her son or husband to rationalize her holding of these domain names—the dispute here concerns only Respondent.
The processes taken by Respondent in seeking its time extension are not compliant with the Forum’s Supplemental Rules. Complainant believes Respondent is deceiving the Panel by using Guido Malcangi, a non-party, as a basis for Respondent’s necessity for an extension.
Respondent confuses the development of computer software with the rights of ownership.
Respondent avoids showing any right or legitimate interest, and instead attempts to turn the case into one in which Respondent invokes sympathy for herself and her family, while painting Complainant as scheming or nefarious.
Respondent
The Respondent filed an additional submission on July 23, 2013, which was considered by the Panel. It claims that the Response was filed timely, within the 20-day term provided for the response according to the timezone of Minneapolis(CDT). The statement of the Complainant related to his request to Alexander Kheylik (hereinafter AK) or to OK to acquire disputed domain names is unfounded and is not based on proper evidences. Therefore the statement that FC was the owner of the company, as well as other annexes submitted by the Complainant, is false. In regard to the submitted SS-4 form application and invoice, Respondent claims that these documents have no probative power, as they do not contain filled details, date and signature and were not submitted. It is obvious that this dispute became a consequence of a corporate conflict of the shareholders of ProVox Group AG that has arisen as a result of raider seizure of FC and Mr. Frank Wamsing. Complainant did not prove the use of the disputed domain names by the Respondent in bad faith, as well as the fact that the Respondent should be considered as having no rights or legitimate interests in respect of the domain names that are the subject of the Complaint.
By Respondent’s submission dated July 24, 2013, Zina Kheilik stated “FC and FW are not experts in the IT business. They are as good experts in IT as I’m (I’m not an expert at all). They try to capture IT business using a trapping algorithm which maybe could work for industrial factory. AK always complained that FC and FW believe that developers are just factory machines.”
By Respondent’s submission dated July 24, 2013, Oleg Kheilik stated “I do not control the domain name, I’m the owner of the disputed domain name since the date I have registered the disputed domain names in May 28, 2008. I have chosen ProVox Group AG, who have created Custvox AG on January 20, 2010, as reseller and promoter of my products, with the task to do sales and customer support. This conflict shows me that Complainant has failed this task, trying to steal my business and copy my business idea. Trademark “Custvox” has been registered without notification and without the consent of at least 40% of the shareholders.”
By
Respondent’s submission dated July 24, 2013, Alexander Kheylik stated “In 2008
OK bought the custvox.com domain name for selling our CEM products. In 2010 we
(the group of private shareholders: AK, AS, SL, SK, JH, DG, FC, FW, DW, SF and
others) bought (registered) the new company CustVox AG for the same purpose-
for selling CEM products, which we have produced. FC and FW are focusing all
of their activity to the new direction – SandSIV. All of corporate emails are
on @sandsiv.com now (Annexure AF); corporate site has the web-address – www.sandsiv.com;
the main Facebook corporate page has address facebook.com/sandsivgroup (Annexure
AS3 of Complainant).”
(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.
The Panel has discretion to determine whether or not it has jurisdiction over this dispute. If the Panel finds that there is sufficient evidence for it to properly decide the dispute under the UDRP, it will proceed with the case and consider the contentions of Complainant and Respondent as outlined below. See Weber-Stephen Prod. Co. v. Armitage Hardware, D2000-0187 (WIPO May 11, 2000) (“Like any other tribunal, however, this Panel can determine whether it has jurisdiction only from the facts and arguments presented to it. In this case, Complainant did allege bad-faith use and registration of the domain name at issue. Had Complainant proved those allegations, there would be no proper question as to this Panel’s jurisdiction.”); see also Draw-Tite, Inc. v. Plattsburgh Spring Inc., D2000-0017 (WIPO Mar. 14, 2000) (“This Panel well recognizes that its jurisdiction is limited to providing a remedy in cases of ‘the abusive registration of domain names,’ or ‘Cybersquatting’ ... Like any other tribunal, however, this Panel can determine whether it has jurisdiction only from the facts and arguments presented to it. In this case, Complainant did allege bad-faith use and registration of the domain name at issue. Had Complainant proved those allegations, there would be no proper question as to this Panel’s jurisdiction.”). The Panel concludes that it does have jurisdiction over this dispute.
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:
(4) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(5) Respondent has no rights or legitimate interests in respect of the domain name; and
(6) the domain name has been registered and is being used in bad faith.
Complainant claims that it has trademark registrations to the CUSTVOX mark, used to help businesses reach out to their clients and customers through various media. See Swiss Reg. No. 616,672 registered on June 28, 2011 (filed May 13, 2011). The Panel finds that Complainant’s Swiss registration dates its rights in the mark back to the June 28, 2011 filing date of the mark, regardless of whether Respondent resides in Switzerland, Italy, or elsewhere. See Covidien AG v. zhaozhongli zhaozhongli c/o zhaozhongli, FA 1231649 (Nat. Arb. Forum Dec. 22, 2008) (“Complainant has provided evidence of trademark registrations for the COVIDIEN mark with numerous jurisdictions across the world, including with the Swiss Federal Institute of Intellectual Property. . . The Panel finds these trademark registrations establish Complainant’s rights in the COVIDIEN mark pursuant to Policy ¶ 4(a)(i).”); Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction).
Complainant has used the CUSTVOX mark to brand its business operations since February 2009. Complainant’s clients include FIAT, Sky, British Telecom, Orange UPC, Banca Intesa, Swisscom, and Sunrise. Complainant’s mark has been used in a Twitter account that has 4,852 followers, a Facebook page with 7,426 likes, and in YouTube videos that have been viewed over 25,919 times. Complainant previously used the <custvox.com> domain name to market its services. Complaint provides an invoice from the Orange telecommunication company for 22,500.00 CHF pre-tax. The Panel believes that Complainant does have a common law right in the CUSTVOX mark through usage of the mark since 2009, and finds it has Policy ¶ 4(a)(i) rights. See Congregation Shuvah Yisrael, Inc. v. Neckonoff, FA 1043126 (Nat. Arb. Forum Sept. 7, 2007) (finding that a complainant’s mark had established secondary meaning where the complainant had previously held the registration for a domain name identical to the mark); Cybertania, Inc. v. Right Mobile, Inc. Domain Manager, FA 1015411 (Nat. Arb. Forum Aug. 6, 2007) (finding that a complainant had acquired secondary meaning sufficient to establish common law rights in a mark pursuant to Policy ¶ 4(a)(i) where the complainant had invested “enormous resources” in promoting the goods and services available under the complainant’s mark).
Complainant also argues that Respondent’s <custvox.net> and <custvox.com> domain names are identical to the Complainant’s mark. Complainant states that the gTLDs “.net” and “.com” are not relevant. The Panel agrees that both of the domain names are identical to the CUSTVOX mark. See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant).
The Panel understands that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant claims that Respondent is not commonly known by these domain names. Complainant asserts that Respondent has no association with Complainant, and Respondent has no existing licenses or authorizations to the CUSTVOX mark. The Panel notes that Respondent claims her son and husband do business as CUSTVOX, but she does not explain her own connection to the mark. The Panel agrees that Respondent has failed to meet its burden to show it is commonly known by the <custvox.net> and <custvox.com> domain names. See Bluegreen Corp. v. eGo, FA 128793 (Nat. Arb. Forum Dec. 16, 2002) (finding that the respondent was not commonly known by the disputed domain names where it maintained the domain name registrations on the complainant’s behalf and then appropriated the disputed domain names for itself, without permission from the complainant).
Complainant alleges that the <custvox.net> and <custvox.com> domain names are purportedly being used to redirect to the domain name of Respondent’s son—<croessuslink.com>. See Complainant’s Ex. 5. The Panel notes that the domain name is being used to sell servers and various IT services. See id. The Panel agrees that Respondent’s registration of identical domain names to send Internet users to independent business websites constitutes neither a Policy ¶ 4(c)(i) bona fide offering of goods or services, nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See Seiko Kabushiki Kaisha v. CS into Tech, FA 198795 (Nat. Arb. Forum Dec. 6, 2003) (“Diverting customers, who are looking for products relating to the famous SEIKO mark, to a website unrelated to the mark is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor does it represent a noncommercial or fair use under Policy ¶ 4(c)(iii).”).
Complainant claims that Respondent is the wife of former Chief Technology Officer (“CTO”) of Complainant, and the CTO was thus faced with maintaining the <custvox.net> and <custvox.com> domain names. Complainant claims that Respondent’s husband failed to show up at a meeting, and was terminated due to this failure, as well as other actions that Complainant believes may rise to the level of criminal behavior. Complainant argues that Respondent had her son transfer the domain names to another registrar, and made Respondent the exclusive registrant of the names after the termination of Respondent’s husband. Complainant claims that Respondent has since had her son deactivate all the content on the domain name’s websites, and Respondent had no right to keep control of the domain names. Previous panels have found that when it seems clear that a former employee has no rights to continue its use of the former employer’s domain names, there can be no Policy ¶ 4(a)(ii) rights in the domain name. See Nasaco Elecs. Pte Ltd. v. A&O Computer AG, D2000-0374 (WIPO July 14, 2000) (finding that the respondent has no rights or legitimate interests in the domain name where the respondent’s former employee registered the domain name and transferred it to the respondent, who has since made no use of the domain name). This line of reasoning is on all-fours with the facts of this case, and the Panel determines that Respondent lacks a Policy ¶ 4(a)(ii) right or legitimate interest in the domain names.
Complainant argues that it need not show the elements of Policy ¶ 4(b), but may show bad faith through the totality of the circumstances. The Panel agrees that Policy ¶ 4(b) merely outlines examples of bad faith, and is not an exclusive list of bad faith under the Policy. See Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (“The requirement in the ICANN Policy that a complainant prove that domain names are being used in bad faith does not require that it prove in every instance that a respondent is taking positive action. Use in bad faith can be inferred from the totality of the circumstances even when the registrant has done nothing more than register the names.”).
Complainant also argues that Respondent is taking revenge against the termination of Respondent’s husband. Complainant claims that Respondent has no use for the domain name other than to exploit Complainant’s decision to entrust its IT executive with the ability to manage these domain names. Complainant further argues that Respondent’s decision to have these domain names registered exclusively to herself is evidence of bad faith. Previous panels have found that in instances where a former employee retains registration to a domain name, and does not allow the employer access to the domain name, there is sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith use and registration. See Anbex Inc. v. WEB-Comm Techs. Group, FA 780236 (Nat. Arb. Forum Sept. 19, 2006) (finding bad faith registration and use where the complainant hired the respondent to register the disputed domain name and the respondent later re-registered the disputed domain name on its own behalf and refused to transfer it to the complainant once their business relationship ended). The Panel likewise agrees that Respondent’s holding onto this domain name, when the rather unclear record suggests that both her husband and son were formerly associated with Complainant, that there exists sufficient evidence under Policy ¶ 4(a)(iii).
The Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <custvox.net> and <custvox.com> domain names be TRANSFERRED from Respondent to Complainant.
Richard DiSalle, Panelist
Dated: August 2, 2013
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