WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Cian Technologies Ltd, Fastrunner Investments Ltd, iRealtor Ltd v. Nadejda V Galkina

Case No. DBZ2018-0001

1. The Parties

The Complainant is Cian Technologies Ltd of Lemesos, Cyprus, Fastrunner Investments Ltd of Nicosia, Cyprus, iRealtor Ltd of Moscow, Russian Federation.

The Respondent is Nadejda V Galkina of Tambov, Russian Federation.

2. The Domain Name and Registrar

The disputed domain name <cian.bz> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 9, 2018. On October 10, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 17, 2018, 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.

The Center verified that 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 18, 2018. In accordance with the Rules, paragraph 5, the due date for Response was November 7, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 8, 2018.

The Center appointed Assen Alexiev as the sole panelist in this matter on November 14, 2018. 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 three entities that act as the Complainant in this proceeding constitute the Cian group of companies, which has operated the “www.cian.ru” website since 2001. This website is a Russian online database of commercial and residential real estate sale and rent advertisements. The website contains millions of advertisements of properties that can be purchased or rented in the Russian Federation. It has had more than 25,000,000 total visits and has a Google global ranking at number 951, global ranking at number 9 in the real estate category, and Russian ranking at number 51.

The Complainant is the owner of the following trademark registrations for CIAN and ЦИАН (the Cyrillic version of CIAN) in the Russian Federation (collectively, the “CIAN trademark”):

- the trademark ЦИАН Яркий цвет недвижимости, with registration No. 407622, registered on April 29, 2010 with priority as of March 7, 2008 for services in International Class 35;

- the trademark ЦИАН and device, with registration No. 607116, registered on March 1, 2017 with priority as of March 30, 2016 for services in International Classes 35 and 36;

- the trademark CIAN and device, with registration No. 619822, registered on June 13, 2017 with priority as of March 30, 2016 for services in International Classes 35 and 36; and

- the trademark CIAN and device, with registration No. 628707, registered on September 5, 2017 with priority as of March 30, 2016 for services in International Classes 35 and 36.

The CIAN trademark is owned by the Complainant Cian Technologies Ltd, while the Complainant iRealtor Ltd is the registrant of the domain name <cian.ru> and is a licensee of the CIAN trademark with registration No. 407622.

The disputed domain name was registered on November 21, 2009.

5. Parties’ Contentions

A. Complainant

The Complainant submits that the disputed domain name is confusingly similar to the Complainant’s CIAN trademark.

The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name, because it does not use it in connection with a bona fide offering of goods or services, is not commonly known by the disputed domain name and is not making a legitimate non commercial or fair use of it. The Complainant also submits that the Respondent does not have trademark rights in the CIAN trademark and has not been granted any license or authorization by the Complainant to use the CIAN trademark in any manner, and that there is no affiliation between the Parties. Further, the disputed domain name does not consist of common terms or ordinary words in the Russian language or in any European language.

The Complainant also points out that the Respondent’s website at the disputed domain name imitates a real online database and harms the reputation of the Complainant’s CIAN trademark. The Respondent creates the illusion of a large database of advertisements on its website, but a search on it returns just 103 advertisements for real estate properties in Moscow, while the Complainant’s database contains 113760 real estate advertisements for the same city.

The Complainant contends that the disputed domain name was registered and is being used in bad faith because it was registered in order to prevent the Complainant from reflecting the CIAN trademark in a corresponding domain name, the disputed domain name was registered or acquired primarily for commercial gain by creating a likelihood of confusion with the Complainant’s CIAN trademark, and was registered for the purpose of disrupting the business of a competitor.

According to the Complainant, the CIAN trademark and the Complainant itself had already become well known to the Russian-speaking population when the disputed domain name was registered by the Respondent, and the Respondent’s choice of a domain name was not accidental. The disputed domain name is registered in the “.bz” country code Top-Level Doman (“ccTLD”), but the Respondent, being a Russian citizen, has no relation to the state of Belize, and the only aim of the registration of the disputed domain name was to mislead the Russian-speaking users, who may think that the disputed domain name is one of the Complainant’s websites in the international “.bz” ccTLD.

The Complainant points out that the content of the website at the disputed domain name shows that it attracts Internet users for commercial gain by using the reputation of the CIAN trademark. The website competes with the Complainant in the field of real estate advertising, and contains numerous paid advertisements. According to the Complainant, this shows that the Respondent has registered the disputed domain name in order to use it to generate revenues from paid advertising.

The Complainant requests the transfer of the disputed domain name to the Complainant iRealtor Ltd.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Pursuant to the Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the disputed domain name:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the Respondent has registered and is using the disputed domain name in bad faith.

In this case, the Center has employed the required measures to achieve actual notice of the Complaint to the Respondent, in compliance with the Rules, paragraph 2(a), and the Respondent was given a fair opportunity to present its case.

By the Rules, paragraph 5(c)(i), it is expected of a respondent to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name…”.

In this proceeding, the Respondent has not used the opportunity provided to it under the Rules and has not submitted a Response addressing the contention of the Complainant and the evidence submitted by it.

A. Identical or Confusingly Similar

The Complainant has provided evidence and has thus established its rights in the CIAN trademark.

The Panel notes that a common practice has emerged under the Policy to disregard in appropriate circumstances the ccTLD section of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i). The Panel sees no reason not to follow the same approach here, so it will disregard the ccTLD section of the disputed domain name.

The relevant part of the disputed domain name is therefore the section “cian”, which is identical to the word element of the CIAN trademark. In the Panel’s view, this may well lead Internet users to associate the disputed domain name with the Complainant and regard it as an official online location of the Complainant.

In view of the above, the Panel finds that the disputed domain name is confusingly similar to the CIAN trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often-impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. See section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

The Complainant has contended that the Respondent has no rights or legitimate interests in the disputed domain name, stating that the Respondent does not use it in connection with a bona fide offering of goods or services, is not commonly known by the disputed domain name and is not making a legitimate non commercial or fair use of it. The Complainant also submits that the Respondent does not have trademark rights in the CIAN trademark and has not been granted any license or authorization by the Complainant to use the CIAN trademark in any manner, and that there is no affiliation between the Parties. The Complainant also points out that the Respondent’s website is made to create the appearance of a large database, but actually contains a very small number of advertisements for real estate properties. Thus, the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.

The Respondent has not alleged that is has rights or legitimate interests in the disputed domain name and has not disputed the Complainant’s allegations in this proceeding.

The disputed domain name incorporates the CIAN trademark entirely. This makes it likely that Internet users may regard the disputed domain name as designating an online location of the Complainant. This likelihood of confusion is further increased by the Respondent’s use of the disputed domain name for a website that competes with the Complainant’s services.

On the basis of the above, and noting the lack of any explanation by the Respondent of its actions, the Panel accepts that the Respondent, being well aware of the Complainant, is likely to have registered and used the disputed domain name in an attempt to exploit the popularity of the CIAN trademark to attract the attention of Internet users and to mislead them to believe that the disputed domain name and the associated website represent an official online location of the Complainant, and to offer them services that compete with those of the Complainant. In the Panel’s view, such conduct does not appear to be legitimate and cannot be regarded as giving rise to rights or legitimate interests of the Respondent.

Therefore, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:

“(i) circumstances indicating that you have registered or you have 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) you have 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 you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”

The provisions of paragraph 4(b) of the Policy are without limitation, and bad faith registration and use may be found on grounds otherwise satisfactory to the Panel.

The incorporation of the Complainant’s CIAN trademark in the disputed domain name and its use for a website offering real estate advertising services show that the Respondent was well aware of the Complainant, its products and their goodwill when it registered the disputed domain name. All this has not been denied by the Respondent, and taken together it satisfies the Panel that the Respondent attempts to mislead Internet users that its website is a website of the Complainant with the objective of attracting them to the website and offering them services that compete with those of the Complainant.

On the basis of the above, the Panel accepts that this conduct of the Respondent amounts to bad faith registration and use of the disputed domain name.

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 name <cian.bz> be transferred to the Complainant iRealtor Ltd.

Assen Alexiev
Sole Panelist
Date: November 23, 2018