WIPO Domain Name Decision D2010-0424 for sberbank.biz, sberbank.org

WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Savings Bank of the Russian Federation (Open Joint-Stock Company) v. Dmitry Donetskov Case No. D2010-0424 1. The Parties

The Complainant is Savings Bank of the Russian Federation (Open Joint-Stock Company), Sberbank OAO of Moscow, Russian Federation, represented by Anna Sharafieva, Russian Federation.

The Respondent is Dmitry Donetskov of Moscow, Russian Federation, appearing pro se. 2. The Domain Names and Registrar

The disputed domain names and are registered with GoD, Inc. 3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 19, 2010. On March 19, 2010, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain names. On March 19, 2010, GoD, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the 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”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 24, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was April 13, 2010. The Response was filed with the Center on April 13, 2010.

The Center appointed Irina V. Savelieva as the sole panelist in this matter on April 26, 2010. 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.

Both the Complainant and the Respondent submitted Supplemental Filings. The Complainant submitted a Petition for correction of a clerical error for a misprint in the Complaint on April 26, 2010. The Complainant also submitted a Reply to the Respondent's Response on April 27, 2010.

The Respondent submitted a Reply to the Complainant's Reply by way of Supplemental Filing on May 5, 2010.

According with the Rules, paragraph 10(d) it is at the discretion of the Panel to consider any Supplemental Filings.

The Panel takes a view that the Supplemental Filings, whilst not containing new arguments of significance to the Complaint, provide further evidence to the arguments in the Complaint and the Response and will therefore consider the Supplemental Filings. 4. Factual Background

The Complainant is the largest bank in the Russian Federation and in Central and Eastern Europe and has been in existence since 1841. This fact is reflected in its trademark. The Complainant obtained its current legal status on 1991. The incorporator and the main shareholder of the Complainant is the Central Bank of the Russian Federation.

The Complainant presently has 748 branches in all regions of the Russian Federation and the total number of supplementary offices and cash offices through which the Complainant carries out its activity is over 19,050.

The Complainant is the owner of trademark SBERBANK OF RUSSIA (СБЕРБАНК РОССИИ), registration certificate No. 209662 and valid from June 3, 1999.

The Complainant is also the owner of the international trademark SBERBANK OF RUSSIA (СБЕРБАНК РОСИИ) registered on August 10, 2007 by the International Bureau of the World Intellectual Property Organization in the International Register of Marks (Certificate of Registration No. 949 899 issued on February 7, 2008).

The disputed domain name was registered on October 29, 2005 and was registered on February 15, 2005 by Dmitry Donetskov of Moscow, Russia. Both disputed domain names were registered for a term of 5 years. 5. Parties' Contentions A. Complainant

(a) The disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

- The disputed domain names are identical or at least confusingly similar to the Complainant's trademark as they contain the transliteration of the main (distinctive) part of the Complainant's trademark SBERBANK (СБЕРБАНК). This approach is confirmed in Finter Bank Zürich v. Charles Osabor,WIPO Case No. D2005-1142.

- The Complainant is widely known under this name as the largest bank of Russia. This fact is confirmed in Yandex Technologies Ltd (1), Comptek International Ltd (2), Yandex Inc (3) v. Law Bureau of Moscow City Collegium of Advocates,WIPO Case No. D2001-1486.

- Based on previous decisions panels have construed confusingly similar to mean that the domain name in question by reason of similarity to the Complainant's trademark is likely to lead to a substantial level of confusion amongst Internet users.

- The Respondent's aim to cause confusion is confirmed by the fact that the Respondent does not indicate on the website that the site belongs to the Respondent and not to the Complainant. The website is further developed in such a way that a website user may not understand that the website belongs to a third party and not the Complainant. Both disputed domain names point to the same website.

- The fact that the Respondent transliterated the Russian trademark is not sufficient to prove dissimilarity. The Certificate of Registration No. 949 899 issued on February 7, 2008 for Complainant's international trademark includes the transliterated SBERBANK part of the trademark.

(b) The Respondent has no rights or legitimate interests in respect of the disputed domain names.

- The Respondent has not used the disputed domain names in connection with a bona fide offering of goods or services, nor did the Respondent make any preparations for such use.

- The Respondent provides information on the website about the Complainant, but the main purpose is not to provide information on Complainant's activity, but to obtain commission fees from the sponsored links which users of the website that have been diverted to the Respondent's website through confusion with the Complainant's trademark may click on.

- The Respondent's website contains numerous links that are related to banking, including links to websites of other large banks which are Complainant's competitors.

- All such links are at the same time advertisements (located under tagging ‘Advertorial') and are evidence of the Respondent's aim to get financial profit from advertising using the reputation of the Complainant, its name and the distinctive SBERBANK part of trademark. Such actions do not constitute a bona fide offering of goods or services.

- The Respondent is an individual person who has never been known and could not be known under the disputed domain names. The disputed domain names contain the work ‘bank' which means an organization for carrying out various banking activity and the Respondent is not recorded as such organization or has any right to carry out and has not carried out any such activity.

- The Complainant's trademark has been registered and widely known long before the registration of the disputed domain names by the Respondent.

- The website contains information on how to place advertising on it on both commercial and noncommercial basis and this confirms that the Respondent is not using the disputed domain names legally, bona fide or without profit.

(c) The disputed domain names were registered and are being used in bad faith.

- It is obvious that the disputed domain names were registered in order to prevent the Complainant as the owner of the trademark from reflecting its mark in corresponding domain names. The Respondent alongside the disputed domain names also registered domain name , which is not subject of this dispute. This domain name also forwards Internet users to the website of the Respondent. This is further evidence that the Respondent does this in order to divert the maximum amount of users to its website.

- The Complainant through its representative addressed a request to the Respondent to transfer the disputed domain names without administrative proceedings. The Respondent did not agree and also stated that the website is one of the most popular banking sites on the Internet, its ranking and number of visitors constantly increasing. This proves that the Respondent was aware of the Complainant's trademark and registered the disputed domain names and created the website with a view to attracting website traffic to the website in order to profit from it. The Respondent does not wish to transfer the disputed domain names to the Complainant.

- The Respondent used the disputed domain names for the purpose of creating a website and to attract users to it for the purpose of commercial gain in the form of click-through commissions on sponsored links and this constitutes evidence of bad faith registration.

- The Respondent intentionally attempted to attract for commercial gain Internet users to the Respondent's website by creating a likelihood of confusion with the Complainant's mark with regard to source, sponsorship, affiliation or endorsement of the website. This is confirmed by the presence of advertisements on the website of the Respondent. The Respondent registered the disputed domain names using the distinctive SBERBANK part of the Complainant's trademark. The Respondent does not indicate that the website was developed by the Respondent and not the Complainant. By placing a lot of information about the Complainant the Respondent creates the impression that the website belongs to the Complainant.

- The website further contains information on contact details of Complainant giving an impression this is a Complainant's website, or a website developed on behalf of the Complainant.

- The Respondent attracts Internet users to the Respondent's website by using Complainant's popularity amongst the public and its reputation for commercial gain. The right to criticize or give information about another person does no extend to registering a domain name that is identical or confusingly similar to the domain name of the person, information about whom is given.

- The Respondent has no connections or affiliations with the Complainant, not did the Complainant give any endorsements, conclude any agreements to place information about the Complainant on the website. The Complainant did not authorize the Respondent to use the Complainant's trademark.

- Attracting for commercial gain from advertising users to the Respondent's website using reputation of the Complainant, its name and the distinctive SBERBANK part of the trademark does not constitute a bona fide offering of goods or services and may constitute a misleading diversion. B. Respondent

(a) The disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

- The Complainant for many years has used a website located at the domain name , which reflects the full name of the entity of the Complainant (Savings Bank of the Russian federation).

- The Complainant has a registered trademark SBERBANK ROSSII (СБЕРБАНК РОССИИ). This is the registered trademark used by the Complainant, not SBERBANK. There are numerous daughter banks registered on the territory of the Russian Federation and these al employ “Sberbank Rossii” in their title. “Sberbank” is therefore simply a generic term in Russian, an abbreviation for “Savings bank”.

- There are other Russian banks that employ the term “sberbank” in their title (for example Promsberbank). Furthermore certain countries (primarily those which used to be a part of the USSR) have banks with similar names (for example, Narodny Sberbank Kazakhstana in Kazakhstan).

- Some people from those countries will think of their local savings back (office) when they hear the generic word “sberbank”. In each country referring to the equivalent bank of that country and not to Sberbank of Russia.

(b) The Respondent has no rights or legitimate interests in respect of the disputed domain names.

- The disputed domain names were acquired using GoDaddy's BackOrder Service. The Respondent spent time waiting for these domain names to become available in order to be able to publish the project. The website is about savings banks (“Sberbank of the USSR” and banks that acquired its assets). There is a clear difference between the Respondent's website and the website of the Complainant.

- The website has information on many banks and in various countries, not just the Complainant. There are pages on the website with no advertising at all and advertising links are only provided at the bottom of some pages. The website is one of the most popular websites about banks and finance in post-Soviet countries. The website has become popular due to various interactive services, such as calculators, forms, tests and other analytical information. There is also further economic data provided on the website.

(c) The disputed domain names were registered and are being used in bad faith.

- The Respondent registered the disputed domain names 3 years prior to the Complainant registering its domain name and 4 years prior to the rebranding of the Complainant (including the change of words from “Sberbank Rossii” to “Sberbank”. The disputed domain names have been in use for almost 5 years prior to this Complaint.

- The Respondent was not trying to sell the disputed domain names (and rejected the offer from the Complainant to buy the disputer domain names from the Respondent). The disputed domain names were not registered with a view on capitalizing on the Complainant's trademark or selling them, they merely were used to reflect the Respondent's website of financial analysis.

- The Respondent is not a bank and the Respondent's website does not operate in the same business fields as those that the Complainant has trademark protection for.

- There is no regulation for the use of the word “bank” in Russia and there are numerous examples of websites that offer information on banks that incorporate the word “bank”.

- The Complainant can register other domain names that fully reflect its trademark, such as , etc.

- “Sberbank” is a short form of “sberegatelnyi bank”, or savings bank. This is simply descriptive of the type of bank that it is. “Sberbank” is therefore a generic and descriptive terms which means savings bank. Therefore the Respondent has the right to use the term in a domain name on equal rights as the Complainant and third parties.

- The Respondent asserts that he was of course aware of existence of a bank under the name of Sberbank of Russia, but at the time of the registration of the disputed domain names, the Complainant used the SBERBANK ROSSII trademark and domain name . The purpose of registering the disputed domain names was in order to create a project dealing with, as Respondent identified it, - “Sberbank of the USSR” and other countries, hence the Respondent specifically registered in gTLD and not the domain name.

- The website of the Respondent provides information on 17 different banks and not just on the Complainant. There is not a lot of advertising and it is discretely placed at the very bottom of some of the pages on the website.

- There are also links to the website of the Complainant displayed on the pages of the website with a mouse over hint over the link displaying: “Link to the official website of Sberbank of Russia”.

- Further the Respondent believes that the Complainant has not actual intention of seriously using the disputed domain names as there are other domain names either registered by third persons or still available that contains the word “sberbank”.

- The Respondent also submits that there are future plans for further development of this project. These facts all point to the fact that the Respondent is using the disputed domain names in good faith.

- In communicating with the Respondent, the Complainant used “Sberbank” as generic words, while indication the Complainant was Sberbank of Russia.

- The Respondent finally submits in Supplemental Filing that these proceedings are an attempt at reverse domain hijacking and that the Complainant brought these proceedings in bad faith, which constitutes an abuse of the administrative proceedings. 6. Discussion and Findings

The Respondent was given notice of this proceeding in accordance with the Rules. The Panel finds that both the Complainant and the Respondent have been given a fair opportunity to present their cases.

The Complainant must still prove the elements required by the Policy. In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the disputed domain names, the Complainants must prove that each of the three following elements are satisfied:

(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainants have rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the domain names; and

(iii) the disputed domain names have been registered and are being used in bad faith.

Pursuant to paragraph 15(a) of the Rules the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. A. Identical or Confusingly Similar

The Complainant has registered the trademark SBERBANK ROSSII. This mark is subject to a number of registrations, including international marks and registrations worldwide. The Complainant submits that the disputed domain names and are identical or confusingly similar to the trademark of the Complainant as the domain names incorporate the registered trademark.

The Panel refers to a number of past UDRP decisions, which confirm that incorporating a trademark in its entirety can be sufficient to establish that a domain name is identical or confusingly similar to a registered trademark. However the Respondent argues that the disputed domain names only incorporate the first part of the Complainant's trademark and not the whole of it.

The Panel refers to Yandex Technologies Ltd (1), Comptek International Ltd (2), Yandex Inc (3) v. Law Bureau of Moscow City Collegium of Advocates,WIPO Case No. D2001-1486. In that case the panel had to consider the domain name, even though it was not the disputed domain name in those proceedings. The panel came to the following conclusion: “As to Sberbank, it is one of the largest Russian Banks and is commonly known under that name.”

The Panel agrees with the previous decision that Sberbank of Russia is commonly known under the Sberbank name in Russia. However this is true for other countries and there it is no longer the reference to Sberbank of Russia but to local national ‘savings banks' or to the Sberbank that previously existed.

The Panel, however finds that the disputed domain names are confusingly similar to the Complainant's trademark SBERBANK ROSSII due to the incorporation of a distinctive part of the trademark of the Complainant, by which it is commonly known on the territory of the Russian Federation.

Further the Panel finds that the disputed domain names may be directly associated in the minds of the consumers with the Complainant's trademark.

The Panel finds that the Complainants have satisfied their burden of proof under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests

The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain names.

It is up to the Panel to consider whether the Respondent's use of the disputed domain names demonstrates rights or legitimate interests in the domain names.

According to paragraph 4(c) of the Policy the following circumstances, if proved, demonstrate a respondent's rights or legitimate interests in a domain name:

(i) respondent used or demonstrably prepared to use the domain name or corresponding name in connection with a bona fide offering of goods or services prior to notice of the dispute; or

(ii) respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if it has not acquired trademark rights; or

(iii) respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the complainant's marks.

A respondent may elect to show rights and legitimate interests, non-exhaustively, by producing proof under paragraphs 4(c)(i)-(iii) of the Policy.

The Panel finds satisfactory the evidence provided by the Respondent that he has indeed used the disputed domain names in connection of a bona fide offering of goods and services. The website of the Respondent provides information on savings banks, analytical data and various other useful tools and information associated with banking and in particular in connection with the banks that have acquired assets previously owned by Sberbank. This has been checked by independent Panel verification of the website.

Further the Panel finds that the Respondent is making fair use of the disputed domain name. The Respondent provides information and links to various sources, including other banks, however, there is no evidence of the Respondent misleading the Internet users for commercial gain, diverting them from the Complainant's websites or tarnishing the Complainant's trademark. The Respondent also provides ample information on the Complainant's bank with links to its websites. The Respondent further showed evidence that he was prepared to take information down or change it at the request of the Complainant, which for this Panel appears to indicate a lack of bad faith on the part of the Respondent in this particular circumstance. The presence of limited amount of advertising on the website, which appears at the bottom of some pages, do not appear to this Panel to be trading off the value of the Complainant's mark and are in line with the descriptive nature of the domain name.

The Panel finds that the Respondent has successfully demonstrated rights and legitimate interests in the disputed domain names under paragraphs 4(c)(i) and 4(c)(iii) of the Policy.

The Respondent sought not to argue rights and legitimate interests under paragraph 4(c)(ii) of the Policy as he has never been personally commonly known by the domain names.

The Panel finds that the Respondent was using, is using and intending to use in the future the disputed domain names for a legitimate offering of goods and services.

The Panel finds that the Complainant has failed to establish the second criterion that the Respondent has no rights or legitimate interests in the disputed domain names. C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that the following circumstances are deemed to be evidence that a respondent has registered and is using a domain name in bad faith:

(i) circumstances indicating that the respondent has registered or has 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 the complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or

(ii) the respondent has 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 the respondent has engaged in a pattern of such conduct; or

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 its website or location or of a product or service on its website or location.

Based on the Complainant's submission the Panel finds that there is no evidence that the Respondent has registered or acquired the disputed domain names for the purposes of selling, renting or otherwise transferring them to the Complainant or competitor of the Complainant for valuable consideration. In fact the Respondent was contacted by Complainant's representatives with the offer to transfer the domain names to the Complainant for some consideration. The Respondent refused the offer outlining the purpose of his website located at the disputed domain names and outlining that he has to plans to sell the disputed domain names to anyone.

The Respondent thus successfully showed lack of bad faith under paragraph 4(b)(i) of the Policy.

The Complaint also fails to prove bad faith as to paragraph 4(b)(ii) of the Policy as there is no evidence that the Respondent has engaged in a pattern of conduct of registering domain names in order to prevent mark owners from their mark being reflected in corresponding domain names.

The Complaint further fails to prove bad faith as the Respondent does not appear to have registered the disputed domain names for the purpose of disrupting the business of a competitor under paragraph 4(b)(iii) of the Policy.

Having reviewed the arguments of the Complainant and the Respondent's Response the Panel finds that the bad faith requirements are not satisfied under paragraph 4(b)(iv) of the Policy either. The Complainant failed to show that there was likelihood of confusion with its mark as to the source, sponsorship, affiliation or endorsement of the website. The website features a completely different design and it is clearly indicated in a number of places that it is not affiliated with the Complainant any other bank.

Provision of advertising links, which are clearly marked and are provided on the bottom of some pages cannot be seen to be in bad faith under these circumstances.

The Panel finds that the Complainant has failed to demonstrate that the Respondent registered and used the disputed domain names in bad faith. 7. Decision

For all the foregoing reasons, the Complaint is denied.

Irina V. Savelieva
Sole Panelist

Dated: May 14, 2010

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