Phoenix Contact GmbH & Co. KG. v Igor Kolesnikov

WIPO Case No. D2025-1035

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Phoenix Contact GmbH & Co. KG. v. Igor Kolesnikov

Case No. D2025-1035

1. The Parties

The Complainant is Phoenix Contact GmbH & Co. KG., Germany, represented by SafeBrands, France.

The Respondent is Igor Kolesnikov, Russian Federation.

2. The Domain Name and Registrar

The disputed domain name <phoenixcontact-ru.com> (the “Disputed Domain Name”) is registered with

REG.RU LLC. (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on March 13, 2025. On March 13, 2025, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On March 14, 2025, 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 (Unknown / Personal data, can not be publicly disclosed according to applicable laws.) and contact information in the Complaint. The Center sent an email communication to the Complainant on March 14, 2025, providing the contact information disclosed by the Registrar and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on March 18, 2025.

On March 14, 2025, the Center informed the parties in English and Russian, that the language of the Registration Agreement for the Disputed Domain Name is Russian. On March 18, 2025, the Complainant requested English to be the language of the proceeding. The Respondent did not submit any comments on the Complainant’s submission.

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”).

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In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the
Complaint, and the proceedings commenced on March 24, 2025. In accordance with the Rules, paragraph
5, the due date for Response was April 13, 2025. The Respondent did not submit any response.
Accordingly, the Center notified the Respondent’s default on April 14, 2025.

The Center appointed Pham Nghiem Xuan Bac as the sole panelist in this matter on April 18, 2025. 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 German company operating in the field of electrical engineering, electronics and automation. The Complainant operates in more than 100 countries worldwide with nearly 21,000 employees and annual sales ranging at EUR 3.5 billion in 2023, reflecting its significant presence in the electrical engineering market.

The Complainant’s PHOENIX CONTACT trademark has been used substantially since 1982 in Germany and also worldwide. The brand has a long history over 90 years and is widely recognized in the industry.

The Complainant owns numerous PHOENIX CONTACT trademark registrations, including but not limited to jurisdictions, including the Russian Federation, where the Respondent resides.

The Complainant is also the owner of the domain name <phoenixcontact.com>, registered on February 20,

1996.

The Disputed Domain Name was registered on February 24, 2025. As the date of this Decision, the
Disputed Domain Name resolves to an active website offering products bearing the Complainant’s PHOENIX

CONTACT trademark.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the Disputed Domain Name, as follows:

(i) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark, in which the
Complainant has rights.

The Complainant contends that the Disputed Domain Name is confusingly similar to its PHOENIX CONTACT trademark, because the PHOENIX CONTACT trademark is included in its entirety, being the most distinctive element in the Disputed Domain Name. The addition of the suffix “-ru” only creates the impression that this

is the “official” Russian website of the Complainant or one of the official homepages of the Complainant.

The Respondent also included the registered company logo of the Complainant with the intention of causing confusion.

(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.

First, the Complainant’s trademark is a worldwide brand with high market recognition; therefore, the the well-known trademark. This is further evidenced by the Respondent’s unauthorized use of the Disputed

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Domain Name in connection with a website offering a range of purported PHOENIX CONTACT products, thereby creating a likelihood of confusion with the Complainant’s well-known trademark.

Second, the Respondent is not an authorized reseller of the Complainant’s products and does not meet criteria established in the Oki Data case for legitimate use by a reseller. Specifically, the exceptions that justify bona fide use apply only to domain names that combine the trademark with additional descriptive terms. The use of a domain name that is identical to a third-party trademark, as is the case here with the

mere addition of “-ru”, does not fall within the scope of legitimate interest under the criteria established by Oki
Data.

Furthermore, the Respondent’s use of an identical Disputed Domain Name strongly implies unauthorized affiliation or endorsement by the trademark owner. UDRP panels consistently hold that domain names identical to a third-party well-known trademark inherently carry a high risk of confusion, and such use cannot constitute fair or legitimate use.

(iii) The Disputed Domain Name was registered and is being used in bad faith.

First, it is evident that the Respondent had prior knowledge of the Complainant and its trademarks at the time of registration.

Second, it is reasonably inferred that the Respondent sought to divert traffic by leveraging the Complainant’s trademark to promote grey market or counterfeit goods as the Complainant withdrew from the Russian market after 2022, thereby seeking to unjustly profit from the Complainant’s trademark rights.

Therefore, the Complainant considers that the Respondent registered and is using the Disputed Domain

Name in bad faith under the Policy paragraph 4(b)(iii).

With the said arguments, the Complainant requests that the Disputed Domain Name be transferred to the

Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Language of the Proceeding

The language of the Registration Agreement for the Disputed Domain Name is Russian. Pursuant to the Rules, paragraph 11(a), in the absence of an agreement between the parties, or unless specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement.

The Complaint was filed in English with a computer-aided Russian translation. The Complainant requested that the language of the proceeding be English by the fact that the Disputed Domain Name contains English terms “phoenix” and “contact”, therefore, the Respondent is able to communicate in English.

The Respondent did not make any specific submissions with respect to the language of the proceeding.

In exercising its discretion to use a language other than that of the registration agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties’ ability to understand and use the proposed language, time and costs (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.5.1).

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Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that the language of the proceeding shall be in English.

A. Identical or Confusingly Similar

It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the Disputed Domain Name. WIPO Overview 3.0, section 1.7.

The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy.

WIPO Overview 3.0, section 1.2.1.

The Panel finds that the Complainant has evidenced that it has rights in and to the PHOENIX CONTACT
trademark, which was registered in several jurisdictions before the registration of the Disputed Domain

Name.

The entirety of the mark is reproduced within the Disputed Domain Name. Accordingly, the Disputed Domain

Name is identical to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.

Although the addition of other terms, here “-ru”, may bear on assessment of the second and third elements,
the Panel finds the addition of such term does not prevent a finding of confusing similarity between the

Disputed Domain Name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8.

In addition, the Panel finds, similarly to other UDRP panels, that the addition of the generic Top Level similarity test because it is viewed as a standard registration requirement. WIPO Overview 3.0, section 1.11.

The Panel finds the first element of the Policy has been established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.

Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1.

Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the Disputed Domain Name such as those enumerated in the Policy or otherwise.

Paragraph 4(c) of the Policy lists circumstances, in particular but without limitation, which, if found by the Panel to be proved, demonstrate the Respondent’s rights or legitimate interests in the Disputed Domain Name for the purposes of paragraph 4(a)(ii) of the Policy, including:

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“(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 noncommercial 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.”

Regarding paragraph 4(c)(i) of the Policy, the Panel finds, in light of the Complainant’s asserted facts, that no license, permission or authorization in any kind to use the Complainant’s PHOENIX CONTACT trademark has been granted to the Respondent. There is no evidence available that the Respondent holds any registered or unregistered trademark rights in any jurisdiction related to “Phoenix Contact”. Thus, the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name.

A reseller or distributor may be making a bona fide offering of goods and services and thus have rights or legitimate interests in a domain name if its use meets certain requirements, which are described in the decision Oki Data Americas, Inc. v. ASD, Inc., supra (“Oki Data”), including:

- the Respondent must actually be offering the goods or services at issue;

- the Respondent must use the site to sell only the trademarked goods or services (otherwise, there is the
possibility that the Respondent is using the trademark in a domain name to bait consumers and then switch

them to other goods or services);

- the site itself must accurately and prominently disclose the Respondent’s relationship with the trademark

owner; and

- the Respondent must not try to “corner the market” in domain names that reflect the trademark, thus

depriving the trademark owner of the ability to reflect its own mark in a domain name.

In this particular case, the Disputed Domain Name resolves to a website featuring the Complainant’s
trademark, and offering discounted products bearing the Complainant’s PHOENIX CONTACT trademark.
On such website, the Panel finds that the Respondent falsely announced itself as an official dealer of the
Complainant. Despite the Complainant’s effort to warn their business cease in Russian Federation to the
public, these indications may mislead consumers into believing in a connection or association between the
Respondent and the Complainant, where such connection or association does not exist in reality.

With such a view, the Panel finds that the use of the Disputed Domain Name does not meet the Oki Data criteria and thus, does not constitute a bona fide use within paragraph 4(c)(i) of the Policy.

Regarding paragraphs 4(c)(ii) and 4(c)(iii) of the Policy, the Panel finds that there is no evidence that would suggest that the Respondent, as an individual, business, or other organization, has been commonly known by the Disputed Domain Name, or that the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name. In fact, as it appears following the Complainant’s assertions and evidence with

regard to the Respondent’s registration of the Disputed Domain Name, the Respondent had full knowledge
of the PHOENIX CONTACT trademark and had an intention to gain profit by riding on the goodwill and

reputation of the Complainant.

Based on the foregoing findings, the Panel finds the second element of the Policy has been established.

C. Registered and Used in Bad Faith

The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith, including:

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“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from
reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such
conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a
competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet
users to your website or other online location, by creating a likelihood of confusion with the Complainant’s
mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or

service on your website or location.”

In the present case, the Panel finds that the Complainant has put forth evidence that the Respondent has
registered and used the Disputed Domain Name in bad faith. The Respondent did not formally reply to the

Complainant’s contentions and, therefore, did not refute the Complainant’s contentions.

The Panel has considered the Complainant’s assertions and evidence relating to the Respondent’s
registration and use of the Disputed Domain Name. In this regard, the Panel finds that the Complainant’s
PHOENIX CONTACT trademark has been registered and put in use in, among other countries, Russian
Federation where the Respondent resides. These trademark registrations well predate the registration of the

Disputed Domain Name.

The Disputed Domain Name comprises the Complainant’s PHOENIX CONTACT trademark in its entirety, advantage of the reputation and goodwill of the Complainant’s trademark.

adding only the geographical indication “-ru” at the end. Given the extensive use of the PHOENIX
CONTACT trademark for electronic and automation devices by the Complainant, which occurs in numerous
countries, including in Russian Federation, where the Respondent resides, it is very unlikely that the
Respondent registered the Disputed Domain Name in a fortuity. Also, in consideration of the use of the
Disputed Domain Name and the content of the associated website, the Panel is of the view that the
Respondent obviously knew the Complainant and its PHOENIX CONTACT trademark when it registered the

On the date of this Decision, the Panel accesses the Disputed Domain Name and finds that it resolves to an active website offering products bearing the Complainant’s PHOENIX CONTACT trademark. In addition to the adoption of the Complainant’s PHOENIX CONTACT trademark as a uniquely distinctive part of the Disputed Domain Name, the Respondent uses the Complainant’s trademark, logo, advertisement materials and copyrighted images on the website, which falsely represents itself as the Complainant or Complainant’s associated entity.

The Panel takes the view that any Internet users seeking the Complainant’s PHOENIX CONTACT goods would very likely mistakenly believe that the Respondent is either the Complainant or associated with the Complainant, while no such connection exists in fact. The Panel, therefore, finds that by using the Disputed

Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of its website on its website, which is indicative of bad faith within the meaning of paragraph 4(b)(iv) of the Policy.

Based on the foregoing findings, the Panel finds that the Complainant has established the third element of the Policy.

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7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name <phoenixcontact-ru.com> be transferred to the Complainant.

/Pham Nghiem Xuan Bac/
Pham Nghiem Xuan Bac
Sole Panelist
Date: May 2, 2025