WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Itar-Tass News Agency v. Perfect Privacy, LLC / Jeff Barrows
Case No. D2014-2240
1. The Parties
The Complainant is Itar-Tass News Agency of Moscow, Russian Federation, represented by Internet & Law, Russian Federation.
The Respondent is Perfect Privacy, LLC of Jacksonville, Florida, United States of America (“United States”) / Jeff Barrows of Ashburn, Virginia, United States.
2. The Domain Name and Registrar
The disputed domain name <tass.com> is registered with Register.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 22, 2014. On December 22, 2014, the Center transmitted by email to Register.com a request for registrar verification in connection with the disputed domain name. On December 23, 2014, Register.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 December 29, 2014, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to amend the Complaint. The Complainant filed an amended Complaint on December 30, 2014.
The Center verified that 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 proceeding commenced on December 30, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was January 19, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 20, 2015.
The Center appointed Flip Jan Claude Petillion, Gabriela Kennedy and Lorelei Ritchie as panelists in this matter on February 13, 2015. The Panel finds that it was properly constituted. Each member of 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 news agency in the Russian Federation. Complainant has used the mark TASS in its operations since 1925. In this regard, the Complainant states that it was began as the “Commercial Telegraph Agency” in 1902. In 1925, the Complainant was founded as the “Telegraph Agency of the Soviet Union” (TASS) as the central information agency of the country. In January 1992, following the dissolution of the Soviet Union, the company name “TASS” was supplemented with “ITAR”;1 however, the Complainant continued to make use of the TASS trademark. The Complainant is the holder of, inter alia, the following registered trademarks:
- ТАСС TASS (in the Latin alphabet “TASS TASS”), registered on April 8, 1998 as a trademark in the Russian Federation with registration number 185462;
- ТАСС (in the Latin alphabet “TASS”), registered on April 10, 1998 as a trademark in the Russian Federation with registration number 186273;
- ИТАР ТАСС (in the Latin alphabet “ITAR TASS”), registered on March 7, 1996 as a trademark in the Russian Federation with registration number 152593;
- ITAR TASS, registered on March 21, 2006 as a trademark in the Russian Federation with registration number 345301;
The Complainant also owns several domain names including <tass.su> (registered in 2003), <tass.ru> (registered in 2009), and <en.itar-tass.com> (registered in 1995), which the Complainant uses as URLs for websites from which it presents information to consumers about its goods and services.
The disputed domain name <tass.com> was created on September 17, 1993 and is registered by the Respondent. The disputed domain name does not resolve to any website but mentions an error message.
5. Parties’ Contentions
The Complainant considers the disputed domain name to be confusingly similar to trademarks and service marks in which it claims to have rights. The Complainant further claims that the Respondent has no rights or legitimate interests in respect of the disputed domain name. According to the Complainant, the Respondent has not used the disputed domain name in connection with a legitimate use. Also, according to the Complainant, the Respondent has not been commonly known by the disputed domain name.
Finally, the Complainant considers that the disputed domain name was registered and being used in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
The onus is on the Complainant to make out its case and it is apparent, both from the terms of the Policy and the decisions of past UDRP panels, that the Complainant must show that all three elements set out in paragraph 4(a) of the Policy have been established before any order can be made to transfer a domain name. The standard of proof is the balance of probabilities.
Thus for the Complainant to succeed it must prove, within the meaning of paragraph 4(a) of the Policy and on the balance of probabilities that:
1. The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
2. The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
3. The disputed domain name has been registered and is being used in bad faith.
The Panel will deal with each of these requirements in turn.
A. Identical or Confusingly Similar
To prove this element the Complainant must first establish that there is a trademark or service mark in which it has rights. The Complainant has clearly established that there are trademarks registered in the Russian Federation in which the Complainant has rights. Moreover, the Complainant has also shown that it has common law rights based on its use of the TASS trademark since 1925 (See also Itar-Tass v. Igor Litinsky, WIPO Case No. D2014-0329).
The Panel considers the disputed domain name <tass.com> to incorporate the Complainant’s TASS trademark in its entirety, and with no further matter.
Accordingly, the Complainant has made out the first of the three elements that it must establish.
B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
It is established UDRP precedent that it is sufficient for the Complainant to make a prima facie showing that the Respondent has no rights or legitimate interests in the disputed domain name in order to place the burden of rebuttal on the Respondent. (See: Champion Innovations, Ltd. v. Udo Dussling (45FHH), WIPO Case No. D2005-1094; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110).
The Respondent appears not to be commonly known by the disputed domain name. The Respondent has also not acquired trademark or service mark rights. The Respondent’s use and registration of the disputed domain name was not authorized by the Complainant. There are no indications that a connection between the Complainant and the Respondent existed.
Moreover, the Panel is of the opinion that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. In fact, the disputed domain name simply resolves to a page with an error message, which does not in the circumstances of this case grant any rights or legitimate interest to the Respondent (See Société nationale des télécommunications: Tunisie Telecom v. Ismael Leviste, WIPO Case No. D2009-1529 ; Teachers Insurance and Annuity Association of America v. Wreaks Communications Group, WIPO Case No. D2006-0483).
Finally, the Respondent did not reply to the Complainant’s arguments and decided not to take part in the administrative proceedings. This is a further indication of the absence of rights or legitimate interests in the disputed domain name (INTS IT IS NOT THE SAME, GmbH dba DESIGUAL v. Two B Seller, Estelle Belouzard, WIPO Case No. D2011-1978).
The Panel finds that the Complainant has satisfied this element of the Policy.
C. Registered and Used in Bad Faith
The Complainant must prove on the balance of probabilities both that the disputed domain name was registered in bad faith and that it is being used in bad faith (See e.g. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Control Techniques Limited v. Lektronix Ltd, WIPO Case No. D2006-1052).
Although the term “tass” is a short term that may serve as an acronym, there is no indication in the record that it does, nor that it is a generic or common word. Moreover, the Panel has noted that the disputed domain name is composed of the Complainant’s distinctive TASS trademark in its entirety.
The Respondent is only passively using the disputed domain name, as the disputed domain name refers to a page mentioning an error message. In certain circumstances, the passive holding of a domain name can amount to bad faith registration and use. The passive holding of a domain name amounts to bad faith when it is difficult to imagine any plausible future active use of the domain name by a respondent that would be legitimate and not infringing a complainant’s well-known mark or unfair competition and consumer protection legislation (See Inter-IKEA v. Polanski, WIPO Case No. D2000-1614; Inter-IKEA Systems B.V. v. Hoon Huh, WIPO Case No. D2000-0438; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).
Other circumstances that evidence bad faith registration and use in the event of passive use of a domain name are:
- the fact that a complainant’s trademark has a strong reputation and has been used over a long period of time
- the absence of evidence whatsoever of any actual or contemplated good faith use,
- the taking of active steps by a respondent to conceal its identity or the provision of false contact details (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).
The Respondent is not actively using the disputed domain name and has not made any submissions or provided any evidence to show any contemplated good faith use. In addition, by hiding behind a privacy service, the Respondent took active steps to conceal his identity.
Therefore, the Panel finds that, on the balance of probabilities, it is sufficiently shown that the disputed domain name was registered and is being used in bad faith.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <tass.com> be transferred to the Complainant.
Flip Jan Claude Petillion
Date: February 27, 2015
1 In Russian: Informatsionnoye agentstvo Rossii TASS (Информационное агентство России