ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Yandex, Limited Liability Company v. Perfect Privacy, LLC / Milen Radumilo Case No. D2022-2096 1. The Parties The Complainant is Yandex, Limited Liability Company, Russian Federation, represented by Brand Monitor Limited Liability Company, Russian Federation. The Respondent is Perfect Privacy, LLC, United States of America / Milen Radumilo, Romania. 2. The Domain Name and Registrar The disputed domain name is registered with EndeavourDomains, LLC (the "Registrar"). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 9, 2022. On June 10, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 15, 2022, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 15, 2022, 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 June 17, 2022. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed amended Complaints on June 23, and July 1, 2022. 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"). In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 5, 2022. In accordance with the Rules, paragraph 5, the due date for Response was July 25, 2022. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent's default on July 26, 2022. page 2 The Center appointed Kiyoshi Tsuru as the sole panelist in this matter on August 4, 2022. 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 the largest information technology company in the Russian Federation, which provides search engine, email, and ride hailing services, among others. The Complainant is the owner of several trademark registrations in the Russian Federation, which include the following: - Registration No. 225163 YANDEX, registered on October 17, 2002, in international class 39; - Registration No. 164 YANDEX, registered on September 17, 2021, which has been recognized as well-known by the "Rospatent" Federal Service for Intellectual Property; and - Registration No. 165 ЯНДЕКС, registered on September 17, 2021, which has been recognized as wellknown by the "Rospatent" Federal Service for Intellectual Property. The Complainant is the owner of numerous domain names that include the YANDEX trademark, among others, the following: , , and , which were registered before the date of registration of the disputed domain name. The disputed domain name was registered on October 3, 2021, and it resolves to a parked website comprising pay-per-click links. 5. Parties' Contentions A. Complainant I. Identical or Confusingly Similar That the disputed domain name is confusingly similar to the Complainant's trademark, since it includes it entirely. That the only difference is the addition of the terms "taxi" and "rabota" before and after the trademark, separated by hyphens. That the use of the Complainant's trademark in the disputed domain name may mislead consumers into believing that the disputed domain name belongs to the Complainant and that it corresponds to the official website related to the Complainant's taxi services. II. Rights or Legitimate Interests That the Respondent has not used the disputed domain name in connection to a bona fide offering of goods and services. That the Respondent has not been commonly known by the disputed domain name. That the disputed domain name bears no relationship with the Complainant or its business. page 3 That the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. That the disputed domain name does not resolve to any website and is listed for sale for USD 688. III. Registered and Used in Bad Faith That the Respondent uses the disputed domain name to create a false impression among customers of an organizational affiliation with the Complainant. That the Respondent is intentionally creating a likelihood of confusion as to the endorsement of the disputed domain name by the Complainant. That the Respondent is intentionally misleading Internet users to disrupt the Complainant's business, in order to prevent the Complainant from using the disputed domain name. That the Respondent is not affiliated in any way with, and does not have business activities with the Complainant. That, according to article 10 bis of the Paris Convention for the Protection of Industrial Property, any act contrary to honest practices in industrial or commercial matters constitutes unfair competition. That the use of the disputed domain name creates confusion and can be qualified as an act of unfair competition. B. Respondent The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings In accordance with paragraph 4(a) of the Policy, the Complainant is required to prove that each of the three following elements is satisfied: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainants has rights; and (ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name was registered and is being used in bad faith. Given the Respondent's failure to submit a formal Response, the Panel may decide this proceeding based on the Complainant's undisputed factual allegations, in accordance with paragraphs 5(f), 14(a), and 15(a) of the Rules, (see Joseph Phelps Vineyards LLC v. NOLDC, Inc., Alternative Identity, Inc., and Kentech, WIPO Case No. D2006-0292). A. Identical or Confusingly Similar The Complainant has proven to be the owner of several registrations for the YANDEX trademark in Russian Federation, where it has been declared to be well-known. The disputed domain name is confusingly similar to the Complainant's trademark YANDEX, as it incorporates said trademark entirely, with the addition of the terms "taxi" and "rabota" (which can be translated to English as "work" or "operation") before and after it, with hyphens separating them from the trademark (see sections 1.7 and 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0")). The addition of the hyphens between the trademark YANDEX and the additional terms is irrelevant for the purpose of assessing confusing similarity. page 4 The addition of the generic Top-Level Domain ("gTLD") ".com" to the disputed domain name constitutes a technical requirement of the Domain Name System. Thus, it may be disregarded in assessing identity or confusing similarity in the present case (see section 1.11 of the WIPO Overview 3.0). Therefore, the first element of the Policy has been met. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy sets forth the following examples as circumstances where a respondent may have rights to or legitimate interests in the disputed domain name: (i) before any notice to the respondent of the dispute, the use by the respondent of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or (ii) the respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name, even if it did not acquire trademark or service mark rights; or (iii) the 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 trademark or service mark at issue. The Complainant has asserted that there is no relationship or affiliation between the Complainant and the Respondent, that it has not granted any authorization to the Respondent to use its trademark, and that the Respondent has not been commonly known by the disputed domain name (see cases Beyoncé Knowles v. Sonny Ahuja, WIPO Case No. D2010-1431; and Six Continents Hotels, Inc. v. IQ Management Corporation, WIPO Case No. D2004-0272). The Respondent did not contest these allegations. The Respondent's election of the disputed domain name, which consists of the Complainant's trademark plus the addition of terms that are related to its business (conveying the concept of "YANDEX taxi operation"), effectively impersonates or suggests sponsorship or endorsement by the Complainant, and therefore cannot constitute fair use. See section 2.5.1 of the WIPO Overview 3.0. In addition, the disputed domain name resolves to a parked website comprising pay-per-click links related to the Complainant's services. Therefore, the Respondent's conduct cannot be considered to be a legitimate noncommercial or fair use of the disputed domain name (see Wachovia Corporation v. Peter Carrington, WIPO Case No. D2002-0775; and Edmunds.com, Inc. v. Digi Real Estate Foundation, WIPO Case No. D2006-1043). As mentioned, the disputed domain name resolves to a parked website comprising pay-per-click links related to the Complainant's business. Paragraph 4(c) of the Policy establishes that this cannot constitute a bona fide offering, because said links capitalize on the reputation and goodwill of the Complainant's trademark, and mislead Internet users into thinking that there is some sort of relationship or association between the Complainant and the Respondent (see section 2.9 of the WIPO Overview 3.0; see also ABSA Bank Limited v. Domain Administrator, See PrivacyGuardian.org / Sidoti Parmer, WIPO Case No. D2020-2992; ArcherDaniels-Midland Company v. Wang De Bing, WIPO Case No. D2017-0363; Fontem Holdings 4, B.V. v. J-B-, Limestar Inc., WIPO Case No. D2016-0344; Barceló Corporación Empresarial, S.A. v. Hello Domain, WIPO Case No. D2007-1380; and Merck Sharp & Dohme Corp. v. Domain Administrator, PrivacyGuardian.org / George Ring, DN Capital Inc., WIPO Case No. D2017-0302). Moreover, the Complainant contends that the disputed domain name previously did not resolve to an active website. In this case, the absence of an active website would not constitute a bona fide offering of goods or services, or a legitimate noncommercial or fair use. The Complainant has established a prima facie case asserting that the Respondent lacks rights to or legitimate interests in the disputed domain name. The Respondent did not submit any evidence or arguments to challenge the Complainant's assertions. page 5 Accordingly, the Complainant has satisfied the requirements of the second element of the Policy. C. Registered and Used in Bad Faith Bad faith under the Policy is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant's mark. According to paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, shall be evidence of registration and use 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 that complainant, for valuable consideration in excess of your 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 the respondent's website or location or of a product or service on its website or location. Given the well-known status of the trademark YANDEX and that it is a fanciful trademark that is not a dictionary word, as well as the fact that the disputed domain name incorporates the term "taxi", which refers to the Complainant's business, this Panel finds that the Respondent knew the Complainant at the time of registration of the disputed domain name, which constitutes bad faith registration under the Policy. The fact that the Respondent registered the disputed domain name which entirely reproduces the Complainant's well-known trademark YANDEX, shows that the Respondent has targeted the Complainant, which constitutes opportunistic bad faith (see section 3.2.1 of the WIPO Overview 3.0; see also L'Oréal v. Contact Privacy Inc. Customer 0149511181 / Jerry Peter, WIPO Case No. D2018-1937; Gilead Sciences Ireland UC / Gilead Sciences, Inc. v. Domain Maybe For Sale c/o Dynadot, WIPO Case No. D2019-0980; Dream Marriage Group, Inc. v. Romantic Lines LP, Vadim Parhomchuk, WIPO Case No. D2020-1344; and Valentino S.p.A. v. Qiu Yufeng, Li Lianye, WIPO Case No. D2016-1747). Previous panels appointed under the UDRP have found that the mere registration by an unauthorized party of a domain name that incorporates a well-known trademark can constitute bad faith in itself (see section 3.1.4 of the WIPO Overview 3.0, see also Toyota Jidosha Kabushiki Kaisha d/b/a Toyota Motor Corporation; Toyota Motor Sales, U.S.A., Inc., and Toyota Motor Sales De Mexico, S. De R.L. de C.V. v. Salvador Cobian, WIPO Case No. DMX2001-0006, and Ferrari S.p.A. v. Ms. Lee Joohee (or Joo-Hee), WIPO Case No. D2003-0882). This is so in the current case. Moreover, as stated in the discussion of the preceding factor of the Policy, the disputed domain name resolves to a parked website comprising pay-per-click links related to the Complainant's business. Therefore, this Panel considers that the Respondent is trying to capitalize on the reputation and goodwill of the Complainant's trademark by misleading Internet users, for commercial gain, to the disputed domain name by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the disputed domain name, which constitutes bad faith under paragraph 4(b)(iv) of the Policy (see section 3.1.4 of the Policy, see also Fontem Holdings 4, B.V. v. J- B-, Limestar Inc., WIPO Case No. D2016-0344; Archer-Daniels-Midland Company v. Wang De Bing, WIPO Case No. D2017-0363; and Merck Sharp & Dohme Corp. v. Domain Administrator, PrivacyGuardian.org / George Ring, DN Capital Inc., WIPO Case No. D2017-0302). page 6 Further, as stated in the discussion of the preceding factor of the Policy, the Complainant contends that the disputed domain name previously did not resolve to an active website. In the circumstances of the present case, the prior absence of an active website does not prevent a finding of bad faith. See section 3.3 of the WIPO Overview 3.0. Another indicator of bad faith is the pattern of cybersquatting in which the Respondent has been involved (see, e.g., Sociedad de Ahorro y Credito Credicomer, Sociedad Anonima v. Milen Radumilo, WIPO Case No. D2020-2885; Aldi GmbH & Co. KG, Aldi Stores Limited v. Milen Radumilo, WIPO Case No. D2021-0470; Oney Bank v. Milen Radumilo, WIPO Case No. D2021-1256; Vorwerk International AG v. Milen Radumilo, WIPO Case No. D2021-3194; Caisse d'épargne et de prévoyance Ile-de-France v. Perfect Privacy, LLC / Milen Radumilo, WIPO Case No. D2021-4399; Equifax Inc. v. Milen Radumilo, WIPO Case No. D2022-0780; Colibri SAS v. Milen Radumilo, WIPO Case No. D2022-1027; Andros v. Milen Radumilo, WIPO Case No. D2022-1209; and Associated Newspapers Limited v. Milen Radumilo, WIPO Case No. D2022-2094). This pattern further supports a finding of bad faith according to paragraph 4(b)(ii) of the Policy (see section 3.1.2 of the WIPO Overview 3.0). Therefore, the third element of the Policy has been proven. 7. Decision For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names be transferred to the Complainant. /Kiyoshi Tsuru/ Kiyoshi Tsuru Sole Panelist Date: August 18, 2022
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