The Complainant is YANDEX of Moscow, Russian Federation, represented internally.
The Respondent is PrivacyProtect.org/inter Vladymir of Moergestel, Netherlands and Kiyev, Ukraine, respectively.
The disputed domain name <xyyandex.net> is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 2, 2010. On June 2, 2010, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com a request for registrar verification in connection with the disputed domain name. On June 7, 2010, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com. 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 9, 2010 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 10, 2010. The Center verified that the Complaint together with the amended 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 June 14, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was July 4, 2010. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent's default on July 7, 2010.
The Center appointed Ladislav Jakl as the sole panelist in this matter on July 15, 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.
The Complainant produces Internet-related services and products and has registered the trademark YANDEX in Russia on October 17, 2002 for the following classes 01-42 with the priority date of December 28, 2000 (Certificate No. 225163) which was registered on November 11, 2005 for classes 43-45 with the priority date of September 15, 2004 (Certificate No. 298734). The trademark ЯNDEX was registered for the following classes: 35, 38 with the effective date December 19, 2007 with the priority date of January 1, 2002 (Certificate No. 72), the trademark YANDEX was registered under the Madrid Agreement on April 8, 2004 for following classes 9, 38, 42 with the priority date of November 10, 2003 (Certificate No. 820785) and the US trademark YANDEX No. 3140852, was registered on September 12, 2006 for the following classes: 21, 23, 26, 36 and 38.
The Respondent registered the disputed domain name <xyyandex.net> on March 27, 2008, the expiry date is March 27, 2014.
The Complainant submitted the amended Complaint on June 10, 2010, with regard to the detailed contact information of the Respondent and the language of the proceedings. In this amended Complaint the Complainant requests that the language of proceedings be in English. In the e-mail communication dated June 11, 2010, the Respondent introduces that he is not fluent in English. No agreement between the parties on the language of the administrative proceedings has been concluded. The Registrar confirmed that the specific language of the registration agreement of the disputed domain name, as well as the Customer Master Agreement during the domain name registration and Customer Singup process, was the English language. According to paragraph 11(a) of the Rules, unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding. Therefore the Panel, taking into account the circumstances of this case and a number of recent UDRP proceedings and the reasons cited therein (BrandStrategy, Inc. v. BusinessService Ltd., WIPO Case No. D2007-0749; Laboratoire Biosthétique Kosmetik GmbH & Co. KG and MCE S.A.S. v. BusinessService Ltd., WIPO Case No. D2007-1836; LEGO Juris A/S v. Jan Cerny, WIPO Case No. D2010-0707), decides that the language of the administrative proceedings is English.
The Complainant contends that the disputed domain name is confusingly similar to the trademark YANDEX with the prefix “xy” (in Russian language it sounds like “hu-”) and that this domain name is composed by the words “xy” and “yandex”. YANDEX is a famous, widespread, well-known trademark, held by the Complainant. The word “yandex” has a strong significance as a trademark and a considerably important force of identification of the corresponding products. In the Russian language prefix ‘hu-” cannot exist grammatically, and if used, it would indicate that the person using a term with such “prefix” intentionally insults and pejoratively describes such term, to which the prefix is attached. The mentioned prefix is a provocative “penis”. The notoriety of the YANDEX trademark increases the likelihood of confusion with the website of the Complainant – “www.yandex.ru” and the website at the disputed domain name uses the Complainant's graphic trademark ЯNDEX(logo), search panel and panel of e-mail service similar to the Complainant's website at “www.yandex.ru”.
As to the fact that the Respondent has no rights or legitimate interests in respect of the domain name, the Complainant introduces that the disputed domain name does not resemble the Respondent's name in any way. It is used to direct Internet users to a website, which displays information in relation to the Complainant, which demonstrates that the Respondent was intentionally trying to attract Internet users to its website by creating a likelihood of confusion. The Respondent has not been authorized by the Complainant to use its trademark in this way, nor is there any relationship between the Complainant and the Respondent that could be a source of any rights or legitimate interest. The Respondent's project of distributing pornographic pictures cannot be a justification or a legitimate interest for using the disputed domain name.
The Complainant argues that the disputed domain name was registered and is being used in bad faith, as it was registered primarily for the purpose of causing the harm by using trademark YANDEX in a pejorative way while directing to the pornographic content and in no way the domain owner may not have been aware of the well-known trademark YANDEX, and registration may only have occurred in bad faith. The disputed domain name was registered and the website at the disputed domain name is using the Complainant's logos and trademarks after the date of priority of recognizing ЯNDEX as well-known trademark. Moreover, the Respondent intentionally associated “xy-” and “yandex” in order to lead Internet users to think that the domain owner's website was devoted to searching unwelcome or illegal information (like pornography, including child pornography). The domain name owner is attempting to tarnish the Complainant's marks and logos by registering the disputed domain name to associate the Complainant with pornography and other unwelcome or illegal information. On the website the Respondent uses graphic trademark ЯNDEX(logo), search panel and panel of e-mail service similar to the Complainant's website at “www.yandex.ru”. The Respondent was informed of the Complainant's rights in the YANDEX trademark through a cease and desist letter requesting the transfer of the disputed domain name to the Complainant. The Respondent failed to comply with such request which is a further indication of its bad faith.
For the above introduced reasons the Complainant, in accordance with paragraph 4(i) of the Policy, requests the Administrative Panel appointed in this administrative proceeding that the disputed domain name be transferred to the Complainant.
The Center informed the Respondent in English as well in Russian that he may submit the Response to the Complainant´s contentions in Russian or English, which Response would be brought to the Panel´s attention and consideration. But the Respondent did not reply to the Complainant's contentions.
In accordance with paragraph 4(a) of the Policy, the Complainant must 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 Complainant 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 has been registered and is being used in bad faith.
Paragraph 4(a) of the Policy states that the burden of proving that all three elements are present lies with the Complainant.
The Complainant states that the disputed domain name <xyyandex.net> of the Respondent is confusingly similar to the Complainant's trademark YANDEX, seeing that it incorporates this trademark in its entirety and that the addition of the suffix “xy”, as well as the addition of the top-level domain “net” do not have any impact on the overall impression of the dominant portion of the disputed domain name and such suffixes are therefore irrelevant to determining the confusing similarity between the trademark YANDEX and the disputed domain name.
Therefore the Complainant contends that the disputed domain name is confusingly similar to the trademark of the Complainant.
The Panel goes out from the principle that the test of identity or confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone: Wal-Mart Stores, Inc. v. Traffic Yoon, WIPO Case No. D2006-0812.
The disputed domain name <xyyandex.net> incorporates the trademark YANDEX as a part of it.
The suffix “xy” does not give any distinctiveness to the disputed domain name. Mere addition of that suffix by way of prefix to a complainant's mark does not adequately distinguish the disputed domain name from the mark pursuant to the Policy, paragraph 4(a)(i). See Wal-Mart Stores, Inc. v. Gerry Senker, WIPO Case No. D2006-0211; HSBCHoldings Plc v. David H. Gold, WIPO Case No. D2001-0343; F.Hoffmann-La Roche AG v. Whois Defender, Inc., WIPO Case No. D2006-0717.
Furthermore, the inclusion of the gTLD suffix “.net “ does not avoid confusing similarity of a domain name and a trademark (AT&T Corp. v. William Gormally, WIPO Case No. D2005-0758; Accor v. Lee Dong Youn, WIPO Case No. D2008-0705; and Sanofi-aventis v. Brad Hedlund, WIPO Case No. D2007-1310).
Accordingly, by registering the disputed domain name, the Respondent created a likelihood of confusion with the Complainant's trademark YANDEX. Moreover, it is likely that the disputed domain name could mislead Internet users in thinking this is in some way associated with the Complainant.
For all the above cited reasons, the Panel concludes that disputed domain name is identical or confusingly similar to the Complainant's trademark in which the Complainant has rights, and therefore the condition of paragraph 4(a)(i) of the Policy is fulfilled.
The Complainant contends that it has exclusive rights for YANDEX and no licence, permission or authorization was granted to use the trademark YANDEX in the disputed domain name of the Respondent. Furthermore, it is obvious that the Respondent uses the disputed domain name for commercial gain and with the purpose of capitalizing on the fame of the Complainant's trademark YANDEX. This domain name in question clearly alludes to the Complainant. The Complainant argues that there is no reason why the Respondent should have any right or interest in disputed domain name.
Based on the Complaint and in the absence of a Response, the Panel finds that the Respondent is not affiliated with the Complainant in any way, nor has the Respondent been authorized by the Complainant to register and use the Complainant's trademark or to seek registration of any domain name incorporating said trademark YANDEX.
The Respondent is not a licensee of the Complainant and did not obtain any authorization to use the trademark of the Complainant. The Panel notes that the submitted use of the disputed domain name is to display a parking-site on which click-through-advertisements appear. There is a consensus view by previous UDRP panels that such use cannot be considered a bona fide offering of goods or services, or a noncommercial or fair use in circumstances as the ones that are present in this case (Bridgestone Corporation v. Horoshiy, Inc., WIPO Case No. D2004-0795; Deutsche Telekom AG v. Dong Wang, WIPO Case No. D2005-0819).
For the above cited reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name, and that the requirements of paragraph 4(a)(ii) of the Policy are therefore fulfilled.
Under paragraph 4(a)(iii) of the Policy, the Complainant must prove that the disputed domain name was registered and is being used in bad faith. Paragraph 4(b) sets out certain circumstances which, in particular but without limitation, are to be construed as evidence of both. These include, inter alia, paragraphs 4(b)(ii), (iii) and (iv):
(ii) the Respondent has registered the disputed 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 disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his website or other online location, by creating a likelihood of confusion with the Complainant's mark as to source, sponsorship, affiliation, or endorsement of his website or of a product or service on that website or location.
The Complainant has submitted evidence, unchallenged by the Respondent, which tends to demonstrate that the Respondent knew or must have known of the Complainant's trademark YANDEX at the time he registered the disputed domain name. Due to the fact that the disputed domain name directs Internet users to a web page relating to the Complainant's business, it can be inferred that the Respondent cannot have ignored the Complainant's business reputation at the time of registration of that domain name.
The website with the disputed domain name used by the Respondent suggests that he is aware of the Complainant and that the Respondent's use of the disputed domain name might cause consumers to believe that the disputed domain name is affiliated with or owned by the Complainant.
The Panel further finds that by using the Complainant's trademark YANDEX to draw Internet users to a site offering what appears to be competing or at least related goods to the Complainant's goods, the Respondent is attempting to divert customers from the Complainant and thus to disrupt the Complainant's business. Such conduct has been found to signal bad faith in other cases such as Six Continents Hotels, Inc. v. Ramada Inn, WIPO Case No. D2003-0658.
For the above cited reasons the Panel finds that the disputed domain name was registered and used in bad faith.
Considering all the facts and evidence, the Panel therefore finds that the requirements of paragraph 4(a)(iii) of the Policy are also fulfilled in this case.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <xyyandex.net> be transferred to the Complainant.
Dated: July 27, 2010