WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
ZAO Kommersant Publishing House v. Stanley Tobiason
Case No. D2002-0531
1. The Parties
The Complainant is Zakrytoe aktsionernoe abshestvo "KOMMERSANT Izdatelskiy Dom" (ZAO Kommersant Publishing House), H. 11 Bld. 2, Tichvinsky per., RU-103055 Moscow, Russian Federation.
The Respondent is Stanley Tobiason, 1432 Orchard 24, Eugene, 97403, OR, United States of America.
2. The Domain Name and Registrar
The Domain Name is .
The Registrar is Melbourne IT Limited, Level 2, 120 King Street, Melbourne, Victoria 3000, Australia.
3. Procedural History
The Complaint was received by WIPO Arbitration and Mediation Center ("WIPO") by email on June 6, 2002, and in hardcopy form on June 10, 2002.
On June 11, 2002, Melbourne IT Limited confirmed that the domain name ("the Domain Name") was registered through Melbourne IT Limited and that Stanley Tobiason ("the Respondent") was the current registrant. The Registrar further confirmed that the Uniform Domain Name Dispute Resolution Policy ("the Policy") is applicable to the Domain Name and that the language of the registration agreement was English. In accordance with the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules"), paragraph 11, the language of the administrative proceeding is English.
On June 11, 2002, WIPO advised the Complainant that Complainant's Annex 7 (Certificate of Registration of the Complainant's Trademark in English and Russian) had not been submitted. On June 18, 2002, WIPO acknowledged receipt of Complainant's Annex 7 and thereafter verified that the Complaint satisfied the formal requirements of the Policy, the Rules and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("the Supplemental Rules") and that payment was properly made. The Administrative Panel ("the Panel") is satisfied that this is the case.
On June 20, 2002, WIPO notified the Respondent of the Complaint in the usual manner and informed the Respondent inter alia that the last day for sending its Response to the Complainant and to WIPO was July 10, 2002. The Complaint was properly notified in accordance with paragraph 2 (a) of the Rules.
No Response was received and WIPO issued a Response Default Notification on July 12, 2002.
The Panel was properly constituted. The undersigned Sole Panelist submitted a Statement of Acceptance and Declaration of Impartiality and Independence.
No further submissions were received by WIPO, as a consequence of which the date scheduled for the issuance of the Panel�s Decision was August 1, 2002.
4. Factual Background
The Complainant is Zakrytoe aktsionernoe obshestvo "KOMMERSANT. Izdatelskiy Dom" ("ZAO Kommersant. Publishing House") incorporated and having its principal place of business in Moscow, Russian Federation.
The Complainant is an award-winning Russian publishing house, founded in 1988. Together with other media-related activities, it distributes ten newspapers and magazines worldwide to an audience of over one million.
The Complainant is the owner of the trademark КОММЕРСАНТЪ (transliterated as and referred to hereafter as KOMMERSANT), registered on December 24, 1999, by the International Bureau of the WIPO in the International Register of Marks maintained under the Madrid Agreement and Protocol. This trademark was registered under the Madrid Agreement and the Madrid Protocol in the Russian Federation, Armenia, Azerbaijan, Belarus, Germany, Kazakhstan, Kyrgyzstan, Latvia, Republic of Moldova, Tajikistan, Ukraine, Uzbekistan, Estonia, Georgia, Lithuania.
The Complainant's KOMMERSANT trademark can be translated into English as 'Businessman'. The Complainant operates websites under the domain names , and providing news, announcements and corporate information. Between early 1996 and October 29, 2000, the Complainant had also operated the Domain Name for the same purpose. The Complainant's statistical logs for 2000 demonstrate that attracted over 46% of the Internet surfers, compared to 17% for , 28% for and 9% for .
The Complainant failed to renew the Domain Name as a result of an error caused by its hosting company.
On January 24, 2001, the Respondent registered the Domain Name.
5. Parties� Contentions
A. Complainant
The Domain Name except for the top-level ".com" extension is identical or at least confusingly similar to the English transliteration of the Complainant's registered trademark.
The Respondent can have no rights or legitimate interest in the Domain Name because he cannot demonstrate any of the circumstances disclosed in paragraph 4 (i), (ii) or (iii) of the Policy.
Since the registration of the Domain Name on January 24, 2001, up to the date the Complaint was filed, the Respondent has failed to set up a website with the corresponding domain name or to even post a welcome page.
The Respondent is not using, nor is the Respondent demonstrating preparations to use, the Domain Name in connection with a bona fide offering of goods or services.
The Respondent is not conducting any business that would be entitled to employ the Complainant's trademark "Kommersant".
The Respondent has not been known by the Domain Name, nor has the Respondent been demonstrating any use of the Domain Name other than registering it and offering it for sale to the Complainant for $5,000.
The Respondent has registered and used the Domain Name in bad faith. The fact that in 16 months after the registration of the Domain Name in question the Respondent has failed to set up a website indicates that the Domain Name was registered in order to prevent the Complainant from reflecting its trademark in a corresponding domain name. The Respondent has engaged in a pattern of such conduct which can be demonstrated by a Google search for the Respondent's email address, which shows several domain names which are stated by the Respondent to be "for sale" and some of which employ third parties' registered trademarks (i.e. ).
'Kommersant' is the exact transliteration of the Complainant's trademark and '.com' the common top level extension. Most Internet users would try to use the Domain Name to see the Complainant's website. The Complainant's statistical logs demonstrate that most Internet users have associated the Complainant with the Domain Name. Any website that could have been operating under the Domain Name would be disrupting the business of the Complainant and/or causing the Respondent to gain financially from attracting Internet users to the website by creating a likelihood of confusion with the Complainant's trademark as to the source, sponsorship, affiliation or endorsement of the Respondent's website.
The Complainant believes that the Domain Name was registered primarily for the purpose of selling, renting, or otherwise transferring the domain name to the Complainant for valuable consideration in excess of the domain name registrant's out-of-pocket costs directly related to the Domain Name. The Complainant has established communication with the Respondent by email. The Respondent made an offer to transfer the domain name under dispute to the Complainant for $5,000, which obviously is in excess of the Respondent's out-of-pocket costs directly related to the Domain Name. In several subsequent emails the Respondent confirmed that the offer was still valid. Following the Complainant's request for a draft of the contract the Respondent sent an email with the draft attached.
The Domain Name does not resolve to a website or other online presence, nor is there any evidence that such presence is in the process of being established. There is no evidence of advertising or promotion or display to the public of the Domain Name. The relevant issue is not whether the Respondent is undertaking a positive action in bad faith in relation to the Domain Name but whether, in all the circumstances of the case, it can be said that the Respondent is acting in bad faith. It is possible in certain circumstances, for inactivity by the Respondent to amount to the Domain Name being used in bad faith [Telstra Corporation Limited v Nuclear Marshmallows, WIPO Case No. D2000-0003]. In addition to the circumstances of passive holding in the present case, the Respondent has offered the Domain Name for sale and has engaged in a pattern of registering various domain names some of which are identical to registered trademarks for subsequent sale.
B. Respondent
The Respondent has not responded.
6. Discussion and Findings
General
In terms of paragraph 4(a) of the Policy, the Complainant must prove that
(i) The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith.
Paragraph 14(b) of the Rules provides that if a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate. Accordingly, the Panel is entitled to draw whatever inferences it considers appropriate where the Respondent has been properly notified of the Complaint but fails to respond.
Identical or Confusingly Similar
The issue presented by the Complaint is that the Domain Name, ignoring the generic top level domain extension '.com' is identical to the transliteration of the Complainant's trademark, rather than to the trademark itself. In this regard, the Complainant cites Kabushiki Kaisha Aleph v. D, WIPO Case No. D2000-1660 where the domain name at issue was which the panel found was identical or confusingly similar to the Complainant's Japanese equivalent BIKKURIDONKEY trademark because it was identical in transliteration.
While it might be going too far to suggest that the Domain Name is identical to the Complainant's mark, the Panel does find that the Domain Name is confusingly similar to it. The Panel notes in particular that a transliteration of the Complainant's mark required to be provided in connection with its registration under the Madrid Agreement and Protocol and that the transliteration 'kommersant' is included in both the relative English and Russian Certificate of Registration produced at Annex 7(a) and (b) to the Complaint. The Panel also gives some, albeit lesser, weight to the Complainant's uncontested statement regarding its log statistics indicating that the majority of visitors to its Russian language website in 2000 used the 'kommersant' transliteration to gain access, indicating that at least in the minds of those visitors the transliteration is synonymous with the Russian representation constituting the Complainant's mark.
Respondent�s Rights or Legitimate Interests
By the Complainant's own admission, the second level of the Domain Name means 'businessman' (if suitably transliterated) in the Russian language, a relatively generic term. However, the Complainant has produced extensive evidence of its own rights in the name and of the extent to which it is associated with the Complainant in the minds of Russian-speaking people. The Complainant further asserts that the Respondent has failed to set up any website or even to post a welcome page, that he is not using or demonstrating preparations to use the Domain Name and that he is not conducting any business which would be entitled to use the Complainant's trademark.
Of course, given the generic meaning of the word 'kommersant' in Russian there might have been some legitimate use to which the name could have been put. However, to be truly generic the name requires a Russian connection and given the fame of the Complainant's mark in Russia and amongst Russian speakers there is no legitimate use which is obvious to the Panel. What is more, there is no evidence before the Panel indicating that there has ever been any such use in the Respondent's contemplation. Accordingly, where there is no response from the Respondent, no known use of the Domain Name and no obvious reason why the Respondent could be said to have any rights or legitimate interests in respect of the Domain Name, the Panel has no alternative but to accept the Complainant�s submissions under this head. The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
Bad Faith
The Complainant makes a number of submissions concerning its assertion that the Domain Name was registered and is being used in bad faith. The Complainant states that the following circumstances, taken together constitute bad faith:- (1) the Respondent's pattern of conduct of registering domain names containing other parties' registered trademarks and listing these as 'for sale', (2) what is best described as the potential for the registration of the Domain Name to give rise to confusion or disruption to the Complainant's business if it were used, (3) the Respondent's offer to sell the Domain Name to the Complainant for $5,000, and (4) the presence of 'passive holding' of the Domain Name for 16 months.
Has the Respondent engaged in a pattern of registration of domain names in order to prevent the owner of a relative trademark or service mark from reflecting their mark in a corresponding domain name? [Policy, paragraph 4(b)(ii)] The Google search report produced by the Complainant at Annex 13 to the Complaint does not appear to disclose such a pattern, nor do the relative submissions in the Complaint. What the report indicates is merely that the Respondent has dealt in domain names in the past and offered them for sale on the Internet. Dealing in domain names is not in itself objectionable. The Complainant's submission in this regard is simply that the search shows several domain names which are stated by the Respondent to be "for sale" and some of which employ third parties' registered trademarks (i.e. ). Thus, the Complainant only mentions a single domain name which might fall within the meaning of paragraph 4(b)(ii) of the Policy but does not add further details. In the Panel's view, the Complainant's submission on a pattern of registrations does not make out a case of registration and use in bad faith under the Policy, paragraph 4(b)(ii). More would have been required in the form of evidence of domain names registered by the Respondent and the relative conflicting trademarks to allow the Panelist to discern any pattern.
The Complainant makes an unusual submission on the potential for the Domain Name's use to give rise to confusion and/or disruption to its business. It submits that most Internet users would try to use the Domain Name to see the Complainant's website. The Complainant's statistical logs are persuasive in this regard and the Panel accepts that it follows logically that a website operating under the Domain Name might have the effect of disrupting the business of the Complainant or might cause the Respondent to gain financially from attracting Internet users as a result of confusion. The problem for the Complainant, however, is that (a) the evidence shows no such actual use or confusion caused by the Respondent and (b) any resulting disruption might also be said to result from the Complainant's or its agents' failure to renew the name in the first instance.
The Complainant offers evidence concerning the proposed arrangement to sell the Domain Name for $5,000. An exchange of email is produced at Annex 14 to the Complaint between Complainant and Respondent regarding abortive attempts to reach a deal. It is important to recognise that it was the Complainant who made the initial contact with the Respondent to solicit a transfer. However, unlike many cases where complainants attempt to bring the dispute within the ambit of paragraph 4(b)(i) of the Policy by making or having third parties make anonymous unsolicited offers to purchase a domain name under some pretext independent from the complainant, in this case the Complainant's initial email contact is quite open as to (1) its identity as Kommersant Publishing House, (2) the fact that it had previously held the Domain Name and (3) its reasons for seeking a transfer of the Domain Name. Equally, the Complainant's email does not expressly make or solicit an offer of sale but merely states "we are ready to listen to your conditions".
The Respondent's reply to the Complainant's initial email states: Thank you for your e-mail regarding KOMMERSANT.COM. We will sell the domain name KOMMERSANT.COM for $5,000 USD. These are the conditions and if you would like to move forward with the transaction please call or email us. There is no expression within the terms of this reply of any legitimate right to use the Domain Name, no expression of the purpose for which the Respondent was intending to use the Domain Name or indeed anything other than a direct offer of sale. This in itself might not be conclusive but had the Respondent not registered the Domain Name for the purposes of onward sale at a price in excess of out of pocket costs the Panel would have expected him to file a response to the Complaint. The absence of such a response leads to the reasonable inference that an onward sale to the Complainant was the true purpose of the registration.
The Panel notes the citation of Telstra Corporation Limited v Nuclear Marshmallows, WIPO Case No. D2000-0003 in support of the Complainant's contention that the passive holding of the Domain Name in the present case demonstrates bad faith registration and use. Clearly a domain name registrant is not obliged to publish a website in connection with any domain name held by them over any particular period of time. But, there are cases where, taking all the circumstances together, passive holding can amount to bad faith registration and use. The Panelist in Telstra focused on five factors which may be summarised as (i) strength of trademark's reputation; (ii) no evidence by Respondent of actual or contemplated good faith use; (iii) active steps by Respondent to conceal its identity; (iv) active provision of false contact details by Respondent; and (v) lack of any plausible actual or contemplated active use of the domain name by Respondent that would not be illegitimate.
In the present case, the Panelist considers that there are circumstances disclosed by the evidence which, taken together, render this a case where passive holding can and does amount to bad faith registration and use. It is important to note in this connection that the circumstances of bad faith registration set out in paragraph 4(b)(i) to 4(b)(iv) of the Policy are expressly stated to be 'without limitation'. In other words, the Panelist is not restricted to the prescribed circumstances when considering the question of bad faith. The particular circumstances of the present case which lead to a conclusion that the Respondent has registered and is using the Domain Name in bad faith are:
(i) the Complainant's trademark has a strong reputation, having become famous in Russia and among the Russian audience worldwide (albeit obviously strongest among those people with connections to Russia and the other States which are the subject of the Complainant's Madrid Agreement and Protocol trademark registration) coupled to the Respondent's failure to explain his motivation for registering such a distinctive (at least among non-Russian speakers) and unusual domain name or to offer any kind of response to the Complainant's initial contact other than a bare offer to sell the Domain Name for a price considerably in excess of the likely out of pocket costs;
(ii) the registration 'on the rebound' of the Domain Name by the Respondent upon the Complainant's default in its registration, in circumstances where the Complainant had been actively using the Domain Name for a high traffic, highly popular website up to the time when it lost the registration, together with the Respondent's failure to provide any evidence of actual or contemplated good faith use by him of the Domain Name or any other adequate explanation for his conduct;
(iii) while it is not possible to determine conclusively whether the Respondent was aware of the existence of the Complainant and had the Complainant in mind at the time of registration, the unusual nature of the Domain Name to English speakers such as the majority of those based in the Respondent's locality tends to indicate that the Respondent may well have been aware of the Complainant or its website when he made the registration. Whether or not this is the case, the Respondent has not come forward to explain his conduct and this leads the Panel to make the reasonable inference that no adequate explanation is available; and
(iv) the fact that, on the evidence provided by the Complainant and in the absence of any enlightenment which might have been offered by the Respondent it is difficult to conceive of a use of the Domain Name for any web publishing purposes that would not be illegitimate such as by constituting passing off or alternatively infringement of the Complainant's trademark.
In light of the above the Panel is satisfied that in all the circumstances the Respondent has registered and is using the Domain Name in bad faith within the meaning of paragraphs 4(a)(iii) and 4(b) of the Policy.
7. Decision
In light of the Panel's findings, namely that the Domain Name is confusingly similar to a trademark in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Domain Name was registered and is being used in bad faith, the Panel directs that the Domain Name, be transferred to the Complainant.
Andrew D S Lothian
Sole Panelist
Dated: July 30, 2002
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