ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Yandex, Limited Liability Company v. Idris Sharibzhanov Case No. D2022-2097 1. The Parties The Complainant is Yandex, Limited Liability Company, Russian Federation, represented by Brand Monitor Legal Limited Liability Company, Russian Federation. The Respondent is Idris Sharibzhanov, Russian Federation. 2. The Domain Name and Registrar The disputed domain name (the "Domain Name") is registered with Key-Systems GmbH (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 Domain Name. On June 15, 2022, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the 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 16, 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, and a second amended Complaint on June 24, 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 June 27, 2022. In accordance with the Rules, paragraph 5, the due date for Response was July 17, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 18, 2022. page 2 The Center appointed Olga Zalomiy as the sole panelist in this matter on July 22, 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 one the largest Russian IT-companies, which provides search engine, e-mail, ride hailing and other services in the Russian Federation. The Complainant owns numerous trademark registrations for its YANDEX and ЯНДЕКС1 trademarks, such as: - Russian Federation registration No.164 for the word mark YANDEX registered on February 20, 2016. On February 20, 2016, the mark was recognized as well-known by the Federal Service for Intellectual Property (Rospatent) since January 1, 2012; - Russian Federation registration No.165 for the word mark ЯНДЕКС registered on February 20, 2016. On February 20, 2016, the mark was recognized as well-known by the Federal Service for Intellectual Property (Rospatent) since January 1, 2012; - Russian Federation registration No. 225163 for the word mark YANDEX registered on October 17, 2002. The Respondent registered the Domain Name on September 13, 2018. The Domain Name used to point to a website in Russian that offered Yandex taxi driver jobs in various towns in the Russian Federation. Currently, the Domain Name does not point to an active website. 5. Parties' Contentions A. Complainant The Complainant contends that it is the largest and most prominent Russian IT-company which provides search engine, e-mail, ride hailing services as well other services. The Complainant submits that it owns several trademark registrations for its YANDEX and ЯНДЕКС trademarks in the Russian Federation, which are recognized as well known in the Russian Federation since January 1, 2012. The Complainant alleges that it is widely known on the Russian market under the name "YANDEX" as a search engine, under the name "YANDEX.TAXI" as a ride hailing service and is the administrator of and domain names. The Complainant argues that the Domain Name is confusingly similar to the Complainant's trademarks because the second-level domain consists solely of the "Yandextaxi" designation, which is confusingly similar to the Complainant's YANDEX trademark and identical to Complainant's own widely known domain names at its official websites. The Complainant claims that the Respondent has no rights or legitimate interests in respect of the Domain Name because the Respondent has not used the Domain Name in connection with a bona fide offering of goods or services; it has not been known by the Domain Name, the Respondent is not making a legitimate non-commercial or fair use of the Domain Name and the Complainant did not authorize the Respondent to use its trademarks in connection with the Domain Name. The Complainant argues that the Domain Name was registered and is being used in bad faith because the Respondent has been using the Domain Name, which is strongly associated with the Complainant's trademarks, to create a false impression among customers of an organizational affiliation with the Complainant. The Complainant also contends that the Respondent that is not affiliated with the Complainant, must have been aware of the Complainant's trademarks at the time of the Domain Name 1 Яндекс is YANDEX in Cyrillic. page 3 registration because the Domain Name was registered by the Respondent six years after the Complainant's trademarks were recognized as well-known. B. Respondent The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings Pursuant to paragraph 4(a) of the UDRP, to succeed in this proceeding, the Complainant must prove each of the following elements with respect to the Domain Name: (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. A. Identical or Confusingly Similar Pursuant to paragraph 4(a)(i) of the UDRP, the Complainant must prove that the Domain Name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights. The submitted evidence shows that the Complainant owns numerous trademark registrations for the YANDEX trademark in Latin and Cyrillic characters. Pursuant to section 1.2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), this satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case. The Domain Name consists of the Complainant's YANDEX trademark, the term "taxi", and the generic TopLevel Domain ("gTLD") ".top". "Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element."2 It is well-established that the applicable gTLD should be disregarded under the confusing similarity test as a standard registration requirement.3 In this case, because the Complainant's YANDEX trademark is recognizable within the Domain Name, the inclusion of the term "taxi" does not prevent a finding of confusing similarity between the Domain Name and the Complainant's trademark. The gTLD ".top" is disregarded from the assessment of confusing similarity. Therefore, the Domain Name is confusingly similar to the Complainant's YANDEX trademark. The Complainant has satisfied the first element of the UDRP. B. Rights or Legitimate Interests To prove the second UDRP element, the Complainant must make out a prima facie case4 in respect of the lack of rights or legitimate interests of the Respondent. Pursuant to paragraph 4(c) of the Policy, any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on the evidence, shall demonstrate a respondent's rights or legitimate interests to a domain name for the purposes of paragraph 4(a)(ii) of the Policy: 2 Section 1.8, WIPO Overview 3.0. 3 Section 1.11.1, WIPO Overview 3.0. 4 Section 2.1, WIPO Overview 3.0. page 4 (i) before any notice of the dispute, the respondent's use of, or demonstrable preparations to use, the 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 domain name, even if the respondent has acquired no 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 submitted evidence that shows that the Respondent has not been commonly known by the Domain Name. The Complainant contends and the Respondent does not deny it that the Complainant did not authorize the Respondent's use of the Complainant's trademark in the Domain Name. The Respondent's use of the Domain Name does not satisfy requirements of bona fide offering of goods and services. The Respondent used the Domain Name to point to a website in Russian, which offered taxi driver jobs at Yandex in many cities in the Russian Federation. The website under the Domain Name displays the Complainant's Yandex trademark in Cyrillic along with the word "такси", which means "taxi" in Russian. In addition, the website displays an imagine of a taxi cab with the Complainant's Яндекс (YANDEX in Cyrillic) trademark painted on the cab. While the website under the Domain Name displays instructions on how to retrieve property lost in Yandex taxi, information about advantages of work at Yandex as well as other similar information, it provides no disclosure regarding lack of any relationship between the Complainant and the Respondent. Based on the similarity between the Domain Name and the Complainant's trademark and the content of the Respondent's website, the Panel concludes that the website at the Domain Name suggested affiliation between the Complainant and the Respondent. Nor is the Respondent's use of the Domain Name fair, because "it falsely suggests affiliation with the trademark owner".5 The nature of the Domain Name itself suggests sponsorship or endorsement by the Complainant because the Domain Name, which contains the Complainant's YANDEX trademark and the term "taxi", and used to direct to the website that offered taxi driver jobs for the Complainant. The Respondent's website contains no information regarding lack of affiliation between the Complainant and the Respondent. Based on the foregoing evidence, the Panel finds that the Complainant has made out a prima facie case in respect of the lack of rights or legitimate interests of the Respondent in the Domain Name. Once a complainant makes a prima facie case, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the Domain Name.6 Because the Respondent has failed to rebut the Complainant's prima facie showing and to demonstrate his rights or legitimate interests in the Domain Name, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the UDRP. C. Registered and Used in Bad Faith Pursuant to paragraph 4(a)(iii) of the Policy, the Complainant must prove that the Domain Name was registered and is being used in bad faith. The UDRP establishes that, for purposes of paragraph 4(a)(iii), "bad faith" registration and use of a domain name can be established by a showing of circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to the respondent's website or other online location, by creating a likelihood of confusion with the complainant's mark as to source, sponsorship, affiliation or endorsement of the respondent's website or location, or of a product or service on the respondent's website or location. See Policy, paragraph 4(b)(iv). Prior UDRP panels have found "the 5 Section 2.5.1, WIPO Overview 3.0. 6 Section 2.1, WIPO Overview 3.0. page 5 following types of evidence to support a finding that a respondent has registered a domain name to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant's mark:. (ii) seeking to cause confusion (including by technical means beyond the domain name itself) for the respondent's commercial benefit, even if unsuccessful, (iii) the lack of a respondent's own rights to or legitimate interests in a domain name, . (vi) absence of any conceivable good faith use." 7 Based on the evidence submitted by the Complainant, the Panel concludes that the Respondent has registered and is using the Domain Name in bad faith. Given the renown of the Complainant's mark in the Russian Federation, where the Respondent is located, the Respondent's use of the Complainant's ЯНДЕКС trademark on the website under the Domain Name in connection with Complainant's purported taxi driver job offers, the Respondent could not plausibly assert that, in registering the Domain Name, which fully incorporates the YANDEX trademark, he was not aware of the Complainant's rights in the YANDEX mark. It is likely that the Respondent registered the Domain Name to trade on the goodwill of the Complainant's trademark. The website at the Domain Name offers jobs as taxi drivers for the Complainant. The content of the website at the Domain Name is designed to create an impression that it belongs or is associated with the Complainant. The Panel concludes that the Respondent registered and is using the Domain Name to intentionally attempt to attract, for commercial gain, the Internet users to the Respondent's website or other online location, by creating a likelihood of confusion with the Complainant's mark as to source, sponsorship, affiliation or endorsement of the Respondent's website or location, or of a product or service on the Respondent's website or location. Finally, the Panel finds that the Respondent's current non-use or passive holding of the Domain Name constitutes further evidence of the Respondent's bad faith.8 The Respondent's registration of the Domain Name incorporating the Complainant's well-known trademark and its prior bad-faith use of the Domain Name make any good faith use of the Domain Name implausible. The Complainant has satisfied the third element of the UDRP. 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 Domain Name, be transferred to the Complainant. /Olga Zalomiy/ Olga Zalomiy Sole Panelist Date: July 28, 2022 7 Section 2.1, WIPO Overview 3.0. 8 Section 3.3, WIPO Overview 3.0.
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