The Complainant is “Rusmedia” Ltd of Rostov-on-Don city, Russian Federation, represented by Dzhincharadze Georgy, Russian Federation.
The Respondent is Ivan Gay of Moscow, Russian Federation. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with R (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 2, 2012. On October 2, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 5, 2012, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On October 10, 2012, the Center sent an email communication to the Complainant inviting it to amend the Complaint, namely paragraph 9, where the Complainant incorrectly identified the Registrar. The Complainant filed an amendment to the Complaint on October 12, 2012.
The Center verified that the Complaint together with the amendment to 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 October 12, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was November 1, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 2, 2012.
The Center appointed Olga Zalomiy as the sole panelist in this matter on November 9, 2012. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
The Complainant is a Russian advertising company located in Rostov-on-Don. The Complainant’s business name is spelled in the Russian characters as Русмедиа that transliterates in English as Rusmedia.
The Complainant owns an application for registration of the trademark РУСМЕДИА that is currently pending with the Russian Patent and Trademark Office.
The Complainant initially registered the Domain Name on December 3, 2008 with Enom, Inc. via its agent in Russian Federation, Majordomo LLC, and paid for the ownership until 2012.
The Respondent is Ivan Gay of Moscow, Russian Federation. On or about July 14, 2012, the Respondent took control of the Domain Name without the Complainant’s knowledge or consent. About the same time the Domain Name was moved to the present Registrar. 5. Parties’ Contentions A. Complainant
The Complainant claims that the Domain Name is confusingly similar to its unregistered trademark.
The Complainant further claims that the Respondent has no rights or legitimate interests in the Domain Name.
Finally, the Complainant alleges that the Domain Name was registered and is being used in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1. Correct Respondent
Throughout the Complaint, the Complainant refers to the Respondent as “Ivan Guy”, instead of “Ivan Gay”, the name of the Domain Name owner that is indicated in the Registrar’s verification. However, because the Complainant relies on and submits into evidence the same information that was provided by the Registrar, the Panel believes that the Complainant inadvertently misspelled the Respondent’s name and that Ivan Gay is the correct Respondent in this proceeding. 6.2. Procedural Matters
According to paragraph 15(a) of the Rules, “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the UDRP, these Rules and any rules and principles of law that it deems applicable.” In case of a respondent’s default, “the respondent’s default does not automatically result in a decision in favor of the complainant.”1 The complainant must establish “each of the three elements required by paragraph 4(a) of the UDRP.”2 Thus, to succeed on its claim, the Complainant must prove that: (1) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (2) the Respondent has no “rights or legitimate interests in respect of the Domain Name”; and (3) the Domain Name “has been registered and is being used in bad faith.”3 A. Identical or Confusingly Similar
There is no doubt that the Domain Name is identical to the direct phonetic transliteration (Rusmedia) of РУСМЕДИА, the mark in the Russian characters, in which the Complainant claims common law rights.4 Both the generic top-level domain (gTLD) suffix “.biz” and a dash sign would usually be disregarded under the confusing similarity test.5
The issue is whether or not the Complainant has any protectable trademark or service mark rights in the РУСМЕДИА mark for the purposes of the UDRP. According to the Complainant, it owns only a pending application for registration of the РУСМЕДИА mark in the Russian Federation. However, for the purposes of the Policy (and in the Russian Federation), a right to a trademark arises from the trademark registration.6
Some UDRP panelists have recognized that common law or unregistered rights in trademarks may satisfy the requirements under paragraph 4(a)(i) of the UDRP.7 Even if the Panel takes the view that “the [UDRP] needs to be applied as uniformly as possible across the globe”8 and that complainants from civil law countries, which do not recognize common law trademarks, should be afforded the same protection as the one offered to complainants from the countries that do, the record in this case does not appear to show the Complainant have common law rights in the РУСМЕДИА mark.
To establish common law rights, “[t]he complainant must show that the name has become a distinctive identifier associated with the complainant or its goods or services.”9 First, the Complainant concedes that it “has been using the Company Rusmedia as the company name,” not as an identifier of its goods or services. While the Complainant submitted some evidence showing use of the РУСМЕДИА mark in the trademark sense, all of the evidence dates back to summer-fall of 2012. The Panel finds that this is an insufficient period of time for a mark to become a distinctive identifier of the goods or services.
Second, there are several companies in the Russian Federation which use РУСМЕДИА as their company names and in connection with advertising services, the same services that the Complainant offers.10 There is also an advertising company that uses the English transliteration of the purported Rusmedia11 mark. Finally, in 2007 another company in Russia registered a trademark РУМЕДИА (Rumedia) for use in connection with advertising services with the priority date of 2006.12 The trademark registration is in force until 2016.13 Taking into account the number of various legal entities using the names similar or identical to the Complaint’s purported trademark, and the existence of the registered third-party РУМЕДИА mark, the Panel concludes that she cannot find that the Complainant established common law rights in the РУСМЕДИА mark.
In the Panel’s view, the Complainant has failed to establish trademark rights for purposes of the Policy and as a result, the Complainant has failed to establish the first element of paragraph 4(a) of the UDRP. Any the issue of whether or not the Complainant has any rights in the Domain Name is better addressed by a national court. B. Rights or Legitimate Interests
In light of the Panel’s finding under Section 6A above, it is unnecessary for the Panel to address this issue. C. Registered and Used in Bad Faith
In light of the Panel’s finding under Section 6A above, it is unnecessary for the Panel to address this issue. 7. Decision
For the foregoing reasons, the Complaint is denied.
Olga Zalomiy
Sole Panelist
Dated: November 20, 2012
1 See, Paragraph 4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).
2 Id.
3 See, Paragraph 4(a) of the UDRP.
4 While the Complainant uses the English transliteration of its name throughout the Complaint, all of its evidence shows that the Complainant has used the name “ООО Русмедиа” for the last several years. The evidence also shows that the Complainant has applied for registration of the РУСМЕДИА mark.
5 See, Paragraph 1.2 of the WIPO Overview, 2.0.
6 Art. 1479 of Civil Code of the Russian Federation.
7 See, Paragraphs 1,1, and 1.7. of the WIPO Overview 2.0.
8 S.N.C. Jesta Fontainebleau v. Po Ser,WIPO Case No. D2009-1394
9 See, Paragraph 1.7 of the WIPO Overview, 2.0.
10
11
12 Trademark registration No. 326827, registered on May 23, 2007 owned by OOO Румедиа.
13 Id.
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