The Complainant is CJSC “ROUST INC.” of Moscow, Russian Federation, represented by Russian Standard Corporation, Russian Federation.
The Respondent is Russian Standard of Alpharetta, Georgia, United States of America, represented by Thompson, Slagle & Hannan, LLC, United States of America. 2. The Domain Names and Registrar
The disputed domain names, , , and (the “Domain Names”), are registered with GoD, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 30, 2011. On June 30, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On July 4, 2011, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 5, 2011 providing the registrant and contact information disclosed by the Registrar and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on July 8, 2011. The Center verified that the Complaint (as amended) 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 July 8, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was July 28, 2011. The Response was filed with the Center on July 25, 2011.
The Center appointed Tony Willoughby as the sole panelist in this matter on August 5, 2011. 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.
The Response concludes with a passage inviting the Panel to consider whether it has jurisdiction to hear this dispute. The passage reads as follows:
“Separate and apart from the foregoing, an additional ground exists for denial of Roust Inc.’s complaint. In Respondent’s view, complainant’s WIPO international trademark registration is not effective in the USA for failure to make the additional payment pursuant to Article 8(7)(a) of the Madrid Protocol. This is confirmed by the fact that the complainant felt compelled to register its trademark in the USA separately later. In light of the foregoing, respondent requests that the Panel review whether it possesses jurisdiction over this matter.”
The Panel does not understand the point. However, the Panel has not felt it necessary to explore the matter further in light of the Panel’s decision on the merits set out in section 7 below. 4. Factual Background
The Complainant is the proprietor of a number of trade mark registrations for marks comprising or including the word mark RUSSIAN STANDARD. The registrations cover a wide variety of goods and services including vodka. One of the earliest registrations is Russian Trade Mark registration no. 278280 RUSSIAN STANDARD (words) applied for on December 9, 2003 and registered on November 15, 2004.
The Complainant is also the proprietor of a number of trade mark registrations for marks comprising or including the word mark RUSSIAN STANDART. They are expressed to be defensive registrations providing a wider area of protection around the Complainant’s principal brand. One of the registrations is Russian Trade Mark registration no. 278279 RUSSIAN STANDART (words) applied for on December 9, 2003 and registered on November 15, 2004.
A trade mark registration held in the name of a Bermudan entity, which appears to be an associated company of the Complainant, is United States Trade Mark registration no. 3,345,092 applied for on July 16, 2004 and registered on November 27, 2007 RUSSIAN STANDARD (words) in class 33 for “alcoholic beverages, namely, vodka”. The registration certificate features a claim to first use dating back to September 19, 2006. The Complainant contends that this registration is owned by Russian Standard Intellectual Property Holding AG, another member of the Russian Standard Group, but nothing turns on the point as the Panel is prepared to treat all members of the Russian Standard Group as one for the purposes of this dispute.
The Domain Names were all registered on February 7, 2005. They are connected to a website, the home page of which features a “Russian Standard” logo and “Welcome to ‘Sova’ Magazine and Russian Standard, Inc.!”. The page also features the legend “Click here to continue”, a link to a page indicating that the Respondent is a publishing company and a document services agency catering for Russians living in the United States of America. The “About Us” page states that the Respondent commenced trading in 2005.
On March 28, 2011 the Complainant wrote a cease and desist letter to the Respondent drawing the latter’s attention to its trade mark rights and threatening trade mark infringement proceedings if the Respondent did not immediately cease use of the domain name.
On April 22, 2011 the Respondent’s representative responded stating that it was investigating the position, but (a) its preliminary position was that its client’s registration of the Domain Names preceded any United States-based rights of the Complainant and (b) its client was willing to consider any reasonable offer to purchase the Domain Names.
On May 13, 2011 the Complainant asked the Respondent’s representative for an indication of what the Respondent regarded as a reasonable price. Following a chaser from the Complainant the Respondent’s representative said that it was authorized to accept USD 50,000. Following a chaser from the Respondent’s representative, the Complainant said that it would be willing to compensate the Respondent for its out-of-pocket expenses relating to the domain name estimated at USD 5,000.
The email exchanges continued with the parties getting closer. On June 9, 2011 the Complainant offered USD 10,000 for all four Domain Names, but expressed the hope that the company might be prepared to go up to USD 15,000. The same day the Respondent’s representative responded with a counter-offer of USD 20,000 plus four cases of vodka. The negotiations stopped there.
On June 30, 2011 the Complainant indicated that it would be filing a UDRP complaint. 5. Parties’ Contentions A. Complainant
The Complainant contends that the Domain Names are all either identical or confusingly similar to its RUSSIAN STANDARD and RUSSIAN STANDART registered trade marks, that the Respondent has no rights or legitimate interests in respect of the Domain Names and that the Domain Names were registered and are being used in bad faith within the meaning of paragraphs 4(b)(i) and 4(b)(iv) of the Policy. B. Respondent
The Respondent does not dispute that the Domain Names are confusingly similar to the Complainant’s trade marks, but contends that confusion was an inevitability, the Complainant having chosen as its trade mark a common expression applicable to a wide range of goods and services associated with Russia.
The Respondent contends that its commercial use of the Russian Standard name for between 6 and 7 years gives it the requisite rights and legitimate interests. It points out that registration of the Domain Names preceded the registration date of the Complainant’s United States trade mark registration.
The Respondent denies that it registered the Domain Names in bad faith and contends that its use of the Domain Names over the last several years has been a good faith commercial use in the United States and pre-dating the Complainant’s use and registration of its brand in the United States. Furthermore, the use has been in a totally different field from that of the Complainant.
The Respondent contends that the launching of this Complaint is itself an abuse of the Policy designed to expropriate without compensation domain names lawfully held and used by the Respondent. 6. Discussion and Findings A. General
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Names, the Complainant must prove each of the following, namely that:
(i) The Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Names; and
(iii) The Domain Names have been registered and are being used in bad faith.
If the Complaint fails, the Panel has to have regard to paragraph 15(e) of the Rules and in particular the following sentence, namely:
“If after considering the submissions the Panel finds that the Complaint was brought in bad faith, for example in an attempt at reverse domain name hijacking or was brought primarily to harass the domain name holder, the Panel shall declare in its Decision that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.”
Reverse Domain Name Hijacking is defined in paragraph 1 of the Rules as “using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name”. B. Identical or Confusingly Similar
There is no dispute between the parties that the Domain Names are identical or confusingly similar to the Complainant’s RUSSIAN STANDARD and RUSSIAN STANDART registered trade marks and the Panel so finds. C. Rights or Legitimate Interests
The Complainant contends that the Respondent registered the Domain Names with knowledge of the Complainant’s world famous brand and with intent to sell the Domain Names to the Complainant at a profit (paragraph 4(b)(i) of the Policy) and to exploit the Complainant’s trade mark for commercial gain as described in paragraph 4(b)(iv) of the Policy. The Complainant contends that in such circumstances neither the Respondent’s commercial use of the Domain Names, nor its adoption of its name Russian Standard Inc. can give rise to relevant rights or legitimate interests for the purposes of paragraph 4(a)(ii) of the Policy.
The Panel agrees that if the Complainant’s contentions as to the Respondent’s intentions behind registration of the Domain Names are well-placed, the Respondent cannot be said to have any relevant rights or legitimate interests.
However, for the reasons set out below, the Panel is not persuaded that the Respondent does not have rights or legitimate interests in respect of the Domain Names. D. Registered and Used in Bad Faith
The Respondent contends that it selected the name “Russian Standard” for its corporate name and two of the Domain Names, because it has for decades been a commonly used Russian expression apt for use in relation to a wide variety of Russian-related goods and services including the AK-47, the space program and the Respondent’s Sova monthly magazine. It would have been helpful if the Respondent had produced some evidence of other uses of the “Russian Standard” expression, but it did not do so and the Panel makes no finding in relation thereto. No explanation has been given for the selection of the “Russian Standart” Domain Names, but it may be an obvious alternative for Russian speakers.
The Complainant’s contentions under this head are two-fold, first, that the Respondent registered the Domain Names with a view to selling them to the Complainant at a profit (paragraph 4(b)(i) of the Policy) and, secondly, that the Respondent registered the Domain Names for commercial gain with the intention of deceiving Internet users as described in paragraph 4(b)(iv) of the Policy.
Both contentions presuppose that the Respondent was aware of the Complainant’s RUSSIAN STANDARD trade mark at date of registration of the Domain Names. The Complainant contends that the Respondent must have known of the brand given its worldwide fame. The Complainant contends that its use of the RUSSIAN STANDARD brand commenced over 10 years ago, but provides no evidence in support of that contention. The Panel is prepared nonetheless to accept the claim, but when did the brand achieve worldwide fame? Was it before or after registration of the Domain Names? No information is provided save for some spectacular sales information relating to 2010, which is 5 years too late. This is to be contrasted with 4 UDRP decisions cited by the Complainant in all of which the panels were able to make findings as to the fame and reputation of the complainants’ trade marks as at the date of registration of the domain names in dispute.
The Response does not address the point directly. It does, however, contain an observation in relation to the date of registration of the Domain Names to the effect that it was well over 2 years “before anyone in the USA ever heard of this vodka”. The nature of the Respondent’s Russia-related services are such that the Panel would be surprised if the Respondent was not aware of the fame of the brand in Russia as at February 7, 2005 (date of registration of the Domain Names), if the brand had achieved a reasonable level of fame by that time. As indicated, there is nothing before the Panel to indicate the fame of the brand at that time.
Another possibility is that the Respondent became aware of the Complainant’s first United States trade mark application filed on July 16, 2004, but no allegation to that effect is made, nor is there any evidence to support it.
The Complainant’s contentions under paragraph 4(b)(i) of the Policy rely solely upon an exchange of emails with the Respondent’s representative following the Complainant’s cease and desist letter dated March 28, 2011. The nature of the exchange is outlined in section 4 above, but in essence it was the Complainant’s cease and desist letter which provoked the suggestion that the Respondent might be prepared to sell the Domain Names to the Complainant if the price was right and the Respondent only proffered a price following the Complainant’s request for one. In the course of the negotiations the Respondent’s price came down from USD 50,000 to USD 20,000 plus 4 cases of vodka. The Complainant for its part was prepared to pay USD 10,000 with the expressed hope that it might be prepared to go up to USD 15,000.
There are two possibilities. One is that, as contended for by the Complainant, this was the Respondent’s intention all along and the Respondent had patiently waited for 6 years for an appropriate opening initiated by the Complainant. The other possibility is that the Domain Names are of commercial value to the Respondent’s bona fide business and this was the price that the Respondent was prepared to accept for transferring the Domain Names.
Is the Respondent’s business a genuine, bona fide offering of goods and services? The Domain Names are connected to a website, the home page of which features a “Russian Standard” logo and “Welcome to ‘Sova’ Magazine and Russian Standard, Inc.!”. The page also features the legend “Click here to continue”, a link to a page indicating that the Respondent is a publishing company and a document services agency catering for Russians living in the United States. The “About Us” page states that the Respondent commenced trading in 2005.
The Response contains no information on the Respondent’s business beyond what is apparent from the Respondent’s website and it is possible that the website is all an elaborate sham, but there is nothing before the Panel to enable the Panel to come to that conclusion. The Complainant accepts that the Respondent is conducting business under and by reference to the Domain Names and there is nothing before the Panel to suggest that the Respondent’s business is anything other than as described on the Respondent’s website.
In support of its contention that paragraph 4(b)(i) is applicable to this case the Complainant cites Süd-Chemie AG v. S,WIPO Case No. D2002-0970. True it is that that decision contains the following sentence:
“Respondent’s offer for sale of the domain name for USD 1750 demonstrates that the Respondent registered the domain name primarily for the purpose of selling the domain name to Complainant for valuable consideration in excess of out-of-pocket costs.”
However, selling domain names for profit is not of itself objectionable under the Policy. Much depends upon the nature of the domain name in issue and the surrounding circumstances. In the cited case, for example, there was no response, there was evidence that the respondent might have been engaged in a pattern of such conduct and there was also evidence that the respondent had supplied to the registrar a false address. This case is a very different case on the facts before the Panel.
The Complainant’s Complaint under paragraph 4(b)(iv) of the Policy is that the Respondent’s business is a genuine commercial operation, save for the fact that is promoted on the back of the fame of the Complainant’s brand. The Complainant contends that Internet users are attracted to the Respondent’s website by the fame of the Complainant’s brand and are then exposed to the Respondent’s commercial operation with its magazine and various document services including translation services and assistance with immigration documentation.
There is nothing about the goods and services offered on the Respondent’s website which can be said to be offensive to the Complainant. There is no apparent overlap with the Complainant’s goods and services. The sole question in relation to paragraph 4(b)(iv) of the Policy is whether the selection and use of the Domain Names was intended to promote the Respondent’s business on the back of the fame of the Complainant’s brand.
The Complainant cites four other cases in support of its contentions as to bad faith registration and use. They all appear to the Panel to be very different cases from the present case, albeit very similar to each other in various respects and not least that they all relate to beauty contests. The Panel deals with them as follows:
Certamen Miss España, S.L. v. P1ESOFT.COM,WIPO Case No. D2006-0679. In this case, the complainant’s mark was well-known at date of registration of the domain name, the respondent was not making any use of the domain name in dispute and the respondent did not reply.
Norma Kristie Inc. v. Kevin Neaves,WIPO Case No. D2004-0196. In this case, the respondent knew of the complainant’s rights in the trade mark at date of registration of the domain name, the respondent was using the complainant’s design mark on his website and the respondent was in competition with the complainant.
Miss Universe L.P., LLLP v. Oliya Productions,WIPO Case No. D2002-0765. In this case there was no response, the complainant’s mark was a famous mark at date of registration of the domain name and the domain name was not in active use.
Miss World Limited v. Mr Ashot Khachatryan, WIPO Case No. D2008-0178. In this case the Respondent knew of the complainant’s trade mark, a famous trade mark, at date of registration of the domain name and the respondent was engaged in a similar line of business as the complainant (beauty pageants).
In summary, the possibilities are that as at February, 2005, the date of registration of the Domain Names:
(i) the Respondent was aware of the Complainant’s brand in Russia and intended to exploit it commercially by adopting it as a corporate name for both its business in the United States and the Domain Names and/or with a view to selling the Domain Names to the Complainant;
(ii) the Respondent was aware of the Complainant’s pending United States trade mark application or was otherwise aware of the impending launch of the Complainant’s brand in the United States and intended to capitalize on the anticipated success of the brand (the registration, when it came through in November, 2007, contained a first use claim only dating back to September 2006);
(iii) the Respondent was unaware of the Complainant’s brand and selected the name as being apt for its Russia-related magazine and documentary services;
(iv) the Respondent was aware of the Complainant’s brand outside the United States, but concluded that use of the name for its business in the United States was a legitimate use of the name. Mere knowledge of a third party’s brand name in use elsewhere and in relation to a totally different business is rarely likely to be objectionable under the Policy absent bad faith intent.
While there are aspects of the Respondent’s position in this matter, which have given the Panel some cause for concern, it is for the Complainant to prove its case to the satisfaction of the Panel and the Panel is unable to conclude on the evidence before him that one or other of possibilities (iii) and (iv) above may not be applicable. However, and particularly in light of the Respondent’s contention that this Complaint was launched in bad faith, it is appropriate that the Panel should mention the aspects of the Respondent’s position, which have caused him concern. The Respondent failed to produce any evidence in support of its contention that “Russian Standard” is a common expression, which has allegedly been in use for decades in a wide variety of contexts (other than vodka). The Panel was not given any detail about the Respondent’s
business, not even a certificate of incorporation showing the authenticity of the Respondent’s claimed corporate name. Finally, while there was an explanation for the selection of the ”russianstandard” names, there was no explanation for the selection of the ”russianstandart” names and there did not appear to be any use of “Russian Standart” on the Respondent’s website. It could be, of course, that the Respondent’s reason was the same as that provided by the Complainant, namely as a protective device, or it could be an obvious alternative to “Russian Standard” for Russian speakers, but it raised a question in the Panel’s mind, which was not answered in the papers before him.
For completeness, the Panel should mention that at date of filing of the original Complaint the Domain Names were held in the name of a privacy service. The Complainant does not make any specific allegation based on this, but the Panel observes that if the objective was, as the Complainant surmises, to conceal the Respondent’s personal information, it was a flawed plan. As the Complainant immediately discovered, all the necessary information on the Respondent was to be found on the website to which the Domain Names were connected.
The Panel is not persuaded that the Respondent registered the Domain Names in bad faith and is using the Domain Names in bad faith. E. Reverse Domain Name Hijacking
The Respondent contends that the launching of this Complaint is itself an abuse of the Policy designed to expropriate without compensation domain names lawfully held and used by the Respondent. The Respondent points to the fact that the Domain Names were registered before the date of the Complainant’s launch of its brand in the United States and before the Complainant’s first United States trade mark registration came through.
While the Panel has dismissed the Complaint, the Panel has no reason to suspect that the Complainant launched this Complaint in bad faith. As indicated above, there are gaps in the evidence before the Panel, which, if filled, might have led to a different conclusion.
The Panel finds that the Complaint, although unsuccessful, was lodged in good faith. 7. Decision
For all the foregoing reasons, the Complaint is denied.
Tony Willoughby
Sole Panelist
Dated: August 16, 2011
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