WIPO Arbitration and Mediation Center Issues First Decision under UA-DRP

Sep 3 2019 - 14:39

Following the entry into force of the .UA Domain-Name Dispute-Resolution Policy (UA-DRP) on March 19, 2019, the WIPO Arbitration and Mediation Center, which administers the UA-DRP proceedings, recently issued its first Administrative Panel decision on a .UA domain name. A complaint was filed with the Center on April 10, 2019, and the Administrative Panel decision is dated July 7, 2019.

The Parties

The complainant was OPPO Pte. Ltd, a Chinese consumer electronics and mobile communications company. According to recent ratings, OPPO is one of the top smartphone brands in China and worldwide. The complainant owns numerous OPPO trademark registrations around the world, including international registrations valid in Ukraine.

The respondent is a Ukrainian citizen Alexander Leonidovich Shirkov, who has a certain level of control over the website www.nis.ua providing IT services and selling various products, including smartphones. Moreover, the respondent also administered the “OPPO Community Ukraine” Facebook page.

The Background

The case relates to the second-level domain name <oppo.ua>, registered by the respondent on July 31, 2015 based on his license for the Ukrainian trademark registration no. 201789 for OPPO, owned by a Hong Kong company, related to the respondent. The respondent claimed that the trademark was registered in order to register the corresponding domain name to promote the complainant’s products and create an online forum for OPPO fans.

The disputed domain name led to a website the content of which was modified several times. At one point, it redirected to www.nis.ua. Finally, on the date the complaint was filed, the website’s home page only showed the word “OppO” and the tooltip included the words “OPPO – officially in Ukraine” in the Russian and Ukrainian languages.

The Panel concluded that the respondent’s promotional activities were unauthorized and that the OPPO fan forum never existed at the disputed domain name. Instead, the website showed the name and the tooltip affiliated with the complainant, as well as links directing to other websites selling similar products.

The Decision and Current Domain Name Status

The Panel’s decision affirmed that:

  • The disputed domain name is confusingly similar to the complainant’s trademark (paragraph 4 (a) (i) of the UA-DRP);
  • The respondent does not have legitimate interests or rights to the disputed domain name (paragraph 4 (a) (ii) of the UA-DRP); and
  • The disputed domain name was registered and used in bad faith (paragraph 4 (a) (iii) of the UA-DRP).

The Panel therefore ordered the transfer of the <oppo.ua> domain name to the complainant.

On this article’s publication date, <oppo.ua> still led to the home page containing the word “OppO”, while the domain name’s WHOIS information still includes respondent’s details.

The eligibility criteria for registration of second-level .UA domains that complainants must meet significantly limits the number of potential disputes, and make it obvious why only one case was considered under the UA-DRP, after almost six months since the policy entered into force. At the same time, a significant rise in the number of disputes is expected when the extension of the UA-DRP to third-level .UA domain names is approved, which is expected by the end of 2019.

By: Igor Alfiorov

For more information, please contact Igor Alfiorov at our Ukrainian office.

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