Western Bridge (Shipping) Limited v Alexei Cebotari /

WIPO Case No. D2024-4580

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Western Bridge (Shipping) Limited v. Alexei Cebotari /
Western Bridge Shipping

Case No. D2024-4580

1. The Parties

1.1 The Complainant is Western Bridge (Shipping) Limited, United Kingdom, represented by

DLA Piper Middle East LLP, United Arab Emirates.

1.2 The Respondents are Alexei Cebotari and Western Bridge Shipping, United Kingdom.

2. The Domain Names and Registrars

2.1 The disputed domain names <westernbridgeship.co> and <westernbridgeship.net> are registered with

PDR Ltd. d/b/a PublicDomainRegistry.com and the disputed domain names <westernbridgeshipping.com>,
<westernbridgeshipping.org> and <westernbridshipping.com> are registered with Registrar of Domain
Names REG.RU LLC (together the “Domain Names” and the “Registrars”).

3. Procedural History

3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 7, 2024. The Complaint was at that time limited to <westernbridgeship.net>, <westernbridgeshipping.com>, <westernbridgeshipping.org> and <westernbridshipping.com>. At that time publicly available WhoIs details did not identify the registrant of these domain names, but the Complainant named “Boris Blaus” as the

Respondent.

3.2	On November 7, 2024, the Center transmitted by email to the Registrars requests for registrar
the Registrars transmitted by email to the Center their verification responses disclosing the underlying registrant and contact information for the Domain Names. The Center sent an email to the Complainant on	verification in connection with the Domain Names then identified in the Complaint. On November 8, 2024, Complainant to either file separate complaints for the Domain Names associated with different underlying registrants or alternatively, demonstrate that the underlying registrants were in fact the same entity and/or that all of those Domain Names were under common control.

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3.3 By that email the Center also informed the parties in Russian and English, that the language of the

registration agreement for the Domain Names <westernbridgeshipping.com>, <westernbridshipping.com>,

and <westernbridgeshipping.org> was Russian.

3.4 On November 19, 2024, the Complainant requested that English be the language of the proceeding.

The Respondent did not submit any comment on the Complainant’s submission. The Complainant also filed an amended Complaint on November 19, 2024, and requested the addition of <westernbridgeship.co> to the Complaint.

3.5 On November 20, 2024, the Center transmitted by email to the registrar for the

<westernbridgeship.co> Domain Name a request for registrar verification. On November 20, 2024, the contact information for this Domain Name.

3.6 On November 21, 2024, the Center sent a further email to the Complainant with the additional

registrant and contact information revealed by the relevant registrar, requesting the Complainant to either file
a separate complaint in respect of the different underlying registration information provided or alternatively,
demonstrate that the underlying registrants were in fact the same entity and/or that all of the Domain Names

were under common control. The Complainant filed a further amended Complaint on November 22, 2024.

3.7 The Center verified that the Complaint together with the amended Complaints 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”).

3.8 In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the

Complaint in both English and Russian, and the proceedings commenced on November 22, 2024. In
accordance with the Rules, paragraph 5, the due date for Response was December 12, 2024. The
Respondent did not submit any response. Accordingly, the Center notified the Respondents’ default on
December 13, 2024.

3.9 The Center appointed Matthew S. Harris as the sole panelist in this matter on December 20, 2024.

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.

3.10 On January 6, 2025 the Panel issued a procedural order (“Procedural Order No, 1”) in which the Panel sought further clarification from the Complainant as to its claim of unregistered trade mark rights. Procedural Order 1 also provided for the Respondents to file a further submission in respect of this issue and also the

time for provision of a decision in this case to January 21, 2025.

3.11 The Complainant filed a further submission in this respect on January 14, 2025. On January 17, 2025

the Panel issued a further procedural order (“Procedural Order No. 2”) extending the time for compliance
with Procedural Order No. 1 to January 22, 2025 and providing the Complainant with an opportunity to file
amended submission in this respect. The Complainant filed an amended submission in this respect on
January 22, 2025.

3.12 Procedural Order No. 2 recorded the Panel’s determination that the case can proceed in English, for reasons that it stated would be set out in its decision.

3.13 Procedural Order No.1 as amended by Procedural Order No. 2 provided the Respondent with an

opportunity to file a further submission in relation to the issue of the Complainant unregistered rights. The
Respondent did not do so.

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3.14 In light of the amended submission filed by the Complainant on January 22, 2025 the Panel hereby further extends the time for provision of a decision in this case to January 23, 2025.

4. Factual Background

4.1 The Complainant is a company incorporated in England and Wales in May 2002. It changed its name

to its present name in August 2002. According to accounts filed for that company for the year ended turnover of that year of over EUR 12 million.

4.2 The Domain Names were registered on the following dates:

<westernbridgeshipping.com> (Domain Name 1) on June 23, 2024
<westernbridgeship.net> (Domain Name 2) on June 21, 2024
<westernbridshipping.com> (Domain Name 3) on June 23, 2024
<westernbridgeshipping.org> (Domain Name 4) on July 26, 2024
<westernbridgeship.co> (Domain Name 5) on May 19, 2024

4.3 The underlying registration data provided by one of the Registrars in respect of Domain Names 1, 3

and 4 record the registrant to be “Western Bridge Shipping”. They have common email, telephone and
physical address contact details, with a physical address in London.

4.4 The underlying registration data provided by the other Registrar in respect of Domain Names 2 and 5

record the registrant to be “Alexei Cebotari”, with common email, telephone and physical address contact
details. The physical address provided also refers to same address in London.

4.5 At least Domain Names 1, 2 and 4 have been used for emails purporting to come from a “Boris Blaus”

who describes himself as the “European Logistics Coordinator” for “Western Bridge Shipping Ltd” and
“Western Bridge (Shipping) Ltd”. A number of those emails also use the Complainant’s VAT number and
registered address. It would appear that the person controlling these Domain Names has fraudulently
obtained goods and/or services from third parties.

4.6 As a result of that fraudulent activity the Complainant has received multiple threats of legal action from

entities claiming to have supplied goods or services to the Complainant but which have not been paid in
respect of the same. Those entities include businesses located in the Netherlands (Kingdom of the), Poland,
Spain and England.

4.7 Domain Names 1, 3, 4 have also been used for a website that falsely claims to be that of the

Complainant displaying the Complainant’s corporate name and the Complainant’s registered office. That website describes the operator of that website as a “UK-based freight forwarder and customs clearance specialist, helping customers import and export Worldwide consignments especially from Europe, Turkey and China”.

4.8 On September 25, 2024, the Complainant’s solicitors sent a letter before action to the email address

that incorporated Domain Name 1 and which had been used in connection with the fraudulent activity described above. That letter alleged infringement of the Complainant’s intellectual property rights and demanded transfer of that domain name. The Respondent did not respond to that letter.

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5. Parties’ Contentions

A. Complainant

5.1 The Complainant contends that it has satisfied each of the elements required under the Policy for a

mark rights in the term “Western Bridge”, and that this term is confusingly similar to each of the Domain

transfer of the Domain Names. Notably, the Complainant contends that it is the owner of unregistered trade that the Respondent has no legitimate rights or interests in the Domain Names and that the Domain Names were registered and have been used in bad faith.

5.2 The Complainant also made various additional submissions in relation to its claim of unregistered

trade mark rights in accordance with Procedural Order No.1 and Procedural Order No.2. These submissions are addressed in greater detail in the context of the assessment of whether the Complainant holds rights in a trade mark that is identical or confusingly similar to the Domain Names later on in this decision.

B. Respondent

5.3 The Respondent did not reply to the Complainant’s contentions. It also did not file a submission in

response to Procedural Order No. 1 and Procedural Order No. 2.

6. Discussion and Findings

A. Procedural Issues

6.1 Before addressing the substance of the Complainant’s Complaint, it is necessary to address two

notwithstanding that the registrar verification information provided by the Registrars in this case, on its face
record two different registrants, and (ii) the Complainant’s request that these proceedings take place in

procedural matters; i.e. (i) the issue of whether the proceedings can continue as “consolidated proceedings” agreement, and, therefore, (as set out in paragraph 11 of the Rules) the prima facie language of proceedings in relation to those Domain Names, is Russian.

6.2 Paragraph 3(c) of the UDRP Rules, states that a complaint may relate to more than one domain name,

provided that the domain names are registered by the same domain-name holder. The general consensus
among panels is that if the relevant domain names are subject to common control, that is sufficient to satisfy
the requirements of paragraph 3(c) of the Rules, and a panel will allow the proceedings if that would be fair
and equitable to all the parties; see section 4.11.2 WIPO Overview of WIPO Panel Views on Selected UDRP
Questions, Third Edition (“WIPO Overview 3.0”),

6.3 The Panel is satisfied that the Domain Names are under common control notwithstanding that Domain Names 1, 3 and 4 are registered in the name of “Western Bridge Shipping” and Domain Names 2 and 5 are registered in the name of “Alexei Cebotari”. The timing of the registrations, which took place within an approximate two month period in 2024, and the fact that all the Domain Names take the form “western bridge shipping” (albeit with the words “bridge” and “shipping” being shortened in the case of three of the Domain Names), combined with a generic Top Level Domain (albeit in one case a country code Top Level Domain), obviously suggests that these registrations are connected. However, even more compelling is that the Complainant has provided evidence that a number of the Domain Names registered in the name of “Western Bridge Shipping” and at least one of the Domain Names registered in the name of “Alexei Cebotari” have been used in email addresses by someone using the name “Boris Blaus” in furtherance of the same fraudulent activity.

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6.4 There is also no reason why allowing the proceedings to continue as a single set of proceedings in respect of all of the Domain Names would be unfair or inequitable to any Party.

6.5 So far as language is concerned, English has been extensively used in these fraudulent emails, and on the websites operating from a number of the Domain Names. It is, therefore, clear that the person who controls the Domain Names is familiar with the English language. For these reasons the Panel determines that the proceedings in respect of all of the Domain Names can and should proceed in English (see

section 2.5.1, WIPO Overview 3.0.)

B. Identical or Confusingly Similar

6.6 It is generally 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 trade mark and the disputed domain names. WIPO Overview 3.0, section 1.7.

6.7 Nevertheless, the existence of rights in a trade mark remains an essential part of the UDRP. The

UDRP is not designed to provide a remedy in call cases of wrongdoing on the Internet, and a complainant is required to show an unfair taking advantage of its trade mark rights. So, for example, it is not sufficient for a complainant merely to demonstrate that a domain name has been used to perpetuate a fraud, if it cannot

show that it has rights in a trade mark that is similar to that domain name.

6.8 It has long been the case that unregistered trade mark rights can constitute relevant rights for the

purposes of the Policy. But a mere assertion as to the existence of those rights or even a claim that the term
in which those rights are claimed is not enough. Detailed guidance of what a complainant and its advisers

should do in such a case is also provided in section 1.3 of the WIPO Overview 3.0. This states:

“To establish unregistered or common law trademark rights for purposes of the UDRP, the complainant must
show that its mark has become a distinctive identifier which consumers associate with the complainant’s
goods and/or services.

Relevant evidence demonstrating such acquired distinctiveness (also referred to as secondary meaning) includes a range of factors such as (i) the duration and nature of use of the mark, (ii) the amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public (e.g.,

consumer, industry, media) recognition, and (v) consumer surveys.

…

Specific evidence supporting assertions of acquired distinctiveness should be included in the complaint; conclusory allegations of unregistered or common law rights, even if undisputed in the particular UDRP case, would not normally suffice to show secondary meaning. In cases involving unregistered or common law marks that are comprised solely of descriptive terms which are not inherently distinctive, there is a greater onus on the complainant to present evidence of acquired distinctiveness/secondary meaning.”

6.9 It has long been established that rights under the English law of passing off can provide unregistered rights for the purposes of the Policy (see, for example, Margaret Drabble v. Old Barn Studios Limited, WIPO Case No. D2001-0209). Section 1.3 of the WIPO Overview 3.0 also goes on to explain how panels have

also been prepared to recognise the existence of unregistered trade marks even where a complainant is
based in or conducts business in a civil law jurisdiction. So, for example, panels have deemed “trademark-
like protection under certain national legal doctrines” such as national laws of unfair competition, may provide
relevant rights for the purposes of Policy on grounds “of parity”.

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6.10 The Complainant’s case as originally articulated, unhelpfully made no attempt to identify, explain or evidence the unregistered rights relied upon. The assumption appeared to be that the mere fact that the Respondent was using its name to perpetuate a fraud was sufficient, with no attempt to identify the business

in which the Complainant was engaged or the nature of the Complainant’s unregistered rights.

6.11 However, in its subsequent submissions in response to Procedural Orders No. 1 and 2, the

Complainant confirmed the business activity in which it was engaged, the extent of that activity and also of that name by the Respondent that was said to constitute passing off and what it claimed to be its proactive actions in protecting its “unregistered trade mark rights in the United Kingdom and outside of the United Kingdom” by the sending of letters to the Respondent.

confirmed that the Complainant was claiming that it held unregistered rights in the name “Western Bridge
Shipping” under the English law of passing off. In this respect it also relied upon the fact that the name of the

6.12 The United Kingdom Supreme Court in Starbucks (HK) Limited & Anor v British Sky Broadcasting

Group Plc & Ors [2015] UKSC31 held that, in order to bring a successful passing off case, a claimant needs to have actual goodwill, in the sense of a customer base, in the United Kingdom. Activities such as advertising to a potential customer base before actually commercial activity, may be sufficient to generate such goodwill (although the court declined to decide this point), but mere reputation in the United Kingdom is not enough. It follows, the facts that a company may be registered in a part of the United Kingdom under a certain name and its accounts show trading activity, may not be sufficient to generate the relevant goodwill, if all the trading activities of that company take place outside of the United Kingdom.

6.13 That said the English Courts have been prepared to accept that even a very modest business might

possess sufficient goodwill that the use of its name by a third party might found a claim for passing off (see the discussion in paragraphs 3-31 to 3-38 of Wadlow on The Law of Passing-Off 6th Ed.). Further, where a defendant has deliberately sought to take the benefit of the goodwill of another for himself, the courts will not ‘be astute to say that he cannot succeed in doing that which he is straining every nerve to do’ (see Harrods

Ltd v Harrodian School Ltd [1996] EWCA Civ 1315 and the cases referred to therein). Although that case law appears to be directed to the question of whether there was a misrepresentation designed to take advantage of goodwill rather than the existence of goodwill, the Panel is prepared to accept that if an entity acts in a way designed to take advantage of goodwill in England and Wales, it should similarly not be astute to say that no such goodwill exists.

6.14 In the present case the Complainant, notwithstanding being given an opportunity to do so, has failed to describe the extent of its business activities in the United Kingdom that might generate at least some degree of goodwill, at times appearing to assume that reference to its registered company name is good enough.

Further, its references to the sending of letters to protect its rights takes matters little further, since the letter relied upon merely includes conclusionary statements as to those rights without setting out the basis upon which rights are alleged to exist. The accounts of the Complainant although they do show not insignificant trade activities, are also expressed in Euros and do not record where the relevant trading activities of the Complainant take place.

6.15 However, ultimately the Panel (just) accepts that the Complainant is more likely than not to have the unregistered rights claimed. First, there is the fact that the Complainant being based in England and Wales and given the extent of its business, is likely to be involved in at least some sort of activity in that jurisdiction. Second, the name “Western Bridge Shipping” is not obviously wholly descriptive of the activities that the

Complainant is engaged in. Third, the evidence provided as to the Respondent’s fraudulent activity includes at least one example of a target of that fraud being located in England. In so doing, the Respondent has sought to engage in activity that on its face seeks to take advantage of at least the reputation and probably the goodwill of the Complainant in its name in England. As a result, the Panel will not be astute, absent argument or evidence to the contrary, to say that relevant goodwill in England does not exist.

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6.16 Given this finding, the Complainant has shown rights in respect of a trade mark or service mark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1.

6.17 Further, the entirety of the Complainant’s “Western Bridge Shipping” unregistered mark are

reproduced within two of the five Domain Names. In the case of the remaining three domain names, either
the word “shipping” has been shortened to “ship” or the word “bridge” to “brid”. Accordingly, the Complainant
mark is recognisable in each of the Domain Names and each of the Domain Name is confusingly similar to

that mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.

6.18 The Panel, therefore, finds the first element of the Policy to have been established.

C. Rights or Legitimate Interests and Registered and Used in Bad Faith

6.19 It is usual for panels under the Policy to consider the issues of rights or legitimate interests and

registration and use in bad faith in turn. However, in this case it is more convenient to consider those issues together. WIPO Overview 3.0, section 2.15. Also, these issues can be determined far more succinctly than is the case so far as the first element of the Policy is concerned.

6.20 The Panel accepts the Complainant’s contentions that the Domain Names has been deliberately

registered in order to falsely impersonate the Complainant, in furtherance of a fraud whereby the person or using the Domain Names, which claim to come from the Complainant when they do not, and the setting up of websites from some of the Domain Names, which purports to be a website operated by the Complainant when it is not.

persons that control the Domain Names seeks goods or services from third parties pretending to be the

6.21 There is obviously no right or legitimate interest in holding a domain name for the purpose of

WIPO Overview 3.0

furtherance of a fraud through impersonation (see section 2.13 of the ), and the fact that of circumstances evidencing bad faith registration set out in paragraph 4(b)(iv) of the Policy.

a domain name is or has been used for such a purpose is evidence that no such right or legitimate interest
exists. Further, the registration and use of a domain name for such a purpose involves registration and use
in bad faith (see section 3.4 of the WIPO Overview 3.0). Further, the operation of websites from the Domain

6.22 In the circumstances, the Panel finds that the second and third elements of the Policy have been

established.

7. Decision

7.1 For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the

Panel orders that the Domain Names <westernbridgeshipping.com>, <westernbridgeship.net>,
<westernbridshipping.com>, <westernbridgeshipping.org> and <westernbridgeship.co> be transferred to the
Complainant.

/Matthew S. Harris/
Matthew S. Harris
Sole Panelist
Date: January 23, 2025