WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

ITAR-TASS News Agency (ITAR-TASS) v. Glavpochtamp / Alternative Deal, LLC

Case No. D2013-1253

1. The Parties

The Complainant is ITAR-TASS News Agency (ITAR-TASS) of Moscow, Russian Federation, represented by Internet & Law, Russian Federation.

The Respondent is Glavpochtamp of St. Petersburg, Russian Federation / Alternative Deal, LLC of New York, New York, United States of America (“US”).

2. The Domain Name and Registrar

The disputed domain name <itartass.com> (the “Disputed Domain Name”) is registered with Wild West Domains, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 11, 2013. On July 12, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On July 12, 2013, the Registrar transmitted by email to the Center its verification response confirming that the Respondent Glavpochtamp is listed as the registrant of record for the Disputed Domain Name and that Alternative Deal, LLC is the administrative contact.

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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 23, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was August 12, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 13, 2013.

The Respondent emailed the Center on August 14, 2013, alleging that it had never received the Complaint or notifications from the Center. The Center responded on the same date stating that the Complaint and notifications were sent to the Respondent electronically, including to the same address that the Respondent had emailed the Center from., and that the Center had discharged its obligation to notify the Respondent pursuant to paragraph 2(a) of the Rules.

The Center appointed Gabriela Kennedy, Richard W. Page and Olga Zalomiy as the Panel in this matter on September 25, 2013. 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 central information agency of Russia. In 1904, the first official news agency of Russia, the St. Petersburg Telegraph Agency, was established. On September 7, 1918, the St. Petersburg Telegraph Agency and the Press Bureau of the Central Executive Committee merged and became known as the Telegraph Agency under the All-Russian Central Executive Committee. On July 10, 1925, the Telegraph Agency of the Union of the Soviet Socialist Republics (TASS) was established and took over as the central information agency of Russia. In 1994, the agency changed its name to the Information Telegraph Agency of Russia, also known as ITAR-TASS, the Complainant in this case.

The Complainant owns the trademark “ITAR TASS” in Russia, in both the Latin and Cyrillic alphabet. The trademark “ИТАР-ТАСС” (which is “ITAR TASS” in the Cyrillic alphabet) was first registered with a priority date of March 7, 1996.

The Complainant owns and operates the domain name <itar-tass.com>, which resolves to a website that provides news and information.

The registrant of record for the Disputed Domain Name, as disclosed by the Registrar, is Glavpochtamp. According to the Registrar, the Disputed Domain Name was transferred to Wild West Domains, LLC in the name of this registrant on March 2, 2005.

The website that the Disputed Domain Name resolves to contains news articles and content that replicates the Russian version of, and displays the marks for Voice of America (a multi-media news broadcaster funded by the US government).

5. Parties’ Contentions

A. Complainant

The Complainant’s contentions can be summarized as follows:

(a) The Disputed Domain Name is identical or confusingly similar to the Complainant's trademark or service mark, in which the Complainant has rights:

The Complainant has registered trademark rights in ITAR TASS (both in the Latin and Cyrillic alphabet), which it first registered in Russia in 1996. The Complainant has also registered numerous domain names that contain its ITAR TASS trademark, including <itar-tass.com>, <itartass.biz.com>, <itartass.org>, and so on. The Complainant asserts that the Disputed Domain Name is identical to its ITAR TASS trademarks and to its company name (with the exception of the hyphen and the “.com” suffix).

(b) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name:

The Respondent has no rights in the ITAR TASS trademark, and the Complainant has not granted a licence or transferred to or authorised the use by the Respondent of, the Complainant’s ITAR TASS marks. The Disputed Domain Name also does not reflect the Respondent’s company name, and there is no affiliation between the Complainant and the Respondent. The Disputed Domain Name does not consist of a common term or ordinary word, and it therefore cannot be mere coincidence that the Respondent chose to register the Disputed Domain Name, which incorporates the world famous ITAR TASS mark. There is therefore no evidence to indicate that the Respondent may have become commonly known by the Disputed Domain Name, or any evidence of legitimate noncommercial or fair use of the Disputed Domain Name.

The Complainant began using the ITAR TASS mark since 1994 and it is well known. The Disputed Domain Name was registered by the Respondent on February 6, 2008, which was twelve years after the Complainant first registered its ITAR TASS mark, and thirteen years after the Complainant registered its domain name <itar-tass.com>.

The website that the Disputed Domain Name resolves to (the “Website”) contains content from a third party’s website found at “www.golos-ameriki.ru” (the Russian version of the multi-media broadcaster Voice of America). The Respondent is therefore not only violating the rights of the Complainant, but also the rights of Voice of America.

Moreover, when searching for the Disputed Domain Name in the websites Webstatsdomain.net and Google, one can find the following results: “Great news! To buy this domain please email at […]@hotmail.com” (Annex 5 to the Complaint). The Respondent is therefore aiming to increase the number of visitors to the Website by placing foreign news content under the Disputed Domain Name, in order to sell the Disputed Domain Name at a higher price.

Based on the above, the Respondent is not using the Disputed Domain Name for a bona fide offering of goods or services, and is not making a legitimate noncommercial or fair use of the Disputed Domain Name.

The Respondent’s bad faith registration is evidenced by the fact that the Respondent registered the Disputed Domain Name many years after the Complainant’s adoption and first use of its trademark ITAR TASS and its domain name <itar-tass.com>. As the Complainant is well-known, the Respondent must have been aware of the Complainant and its rights in the ITAR TASS trademark at the time it registered the Disputed Domain Name.

The Respondent intentionally chose to register the Dispute Domain Name in order to benefit from the goodwill gained by the Complainant in its ITAR TASS trademark. The Website also contains content from the website “www.golos-ameriki.ru”, and is therefore not only violating the rights of the Complainant, but also the rights of Voice of America. The Disputed Domain Name is also advertised as being for sale on the Website and other websites devoted to the sale of domain names. The foregoing was done with the purpose of intentionally attracting, for commercial gain, Internet users to the Website by creating a likelihood of confusion with the Complainant's trademarks. By attracting a high number of Internet users to the Disputed Domain Name, the Respondent could then sell it at a high price on the basis of its large number of visitors. The primary purpose of the Respondent in registering the Disputed Domain Name was to sell it at a price that greatly exceeds the direct costs of its registration, which is evidence of bad faith.

The content of the Website in the Russian language and the address of the Respondent shows that the Respondent is fluent in the Russian language, and so must have been aware of the world-famous reputation of the Complainant.

The Respondent also intentionally hid its personal details and contact information, by using Alternative Deal, LLC as its agent and listing its postal address on WhoIs as “Glavpochtamp, Do vostrebovaniya” (which stands for “the main post office, on demand” in English), in St. Petersburg, postcode 150000, Russia”. This is evidence of bad faith registration and use of the Disputed Domain Name.

Further, the Respondent has more than thirty other domain names registered to it, which suggests that the Respondent speculates on the sale of domain names.

Lastly, by registering the Disputed Domain Name, the Respondent prevented the Complainant from registering the Disputed Domain Name itself in order to reflect its trademarks.

B. Respondent

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

The fact that the Respondent has not submitted a Response does not automatically result in a decision in favour of the Complainant. However, the Respondent’s failure to file a Response may result in the Panel drawing certain inferences from the Complainant’s evidence. The Panel may accept all reasonable and supported allegations and inferences flowing from the Complaint as true (see Entertainment Shopping AG v. Nischal Soni, Sonik Technologies, WIPO Case No. D2009-1437, and Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403).

With regard to the Respondent’s email to the Center on August 14, 2013 (“August 14 Email”), the Panel notes that the Respondent alleges that the Disputed Domain Name was registered in 1996 and that representatives of the Complainant had previously offered to purchase the Disputed Domain Name for USD 800.00, which was unacceptable to the Respondent.

As the email was sent just two days after the deadline and before the Panel was appointed, the Panel believes that it is appropriate to consider the email.

6. Discussion and Findings

Under paragraph 4(a) of the Policy, the Complainant is required to prove each of the following three elements:

(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 by the Respondent in bad faith.

A. Identical or Confusingly Similar

The Panel accepts that the Complainant has rights in respect of the trademark ITAR TASS, based on its trademark registrations in Russia.

The Disputed Domain Name incorporates the Complainant’s ITAR TASS trademark in its entirety.

Further, it is a well-established rule that in making an enquiry as to whether a mark is identical or confusingly similar to a domain name, the generic top-level domain extension, in this case “.com”, may be disregarded (see Rohde & Schwarz GmbH & Co. KG v. Pertshire Marketing, Ltd., WIPO Case No. D2006-0762).

Accordingly, the Panel finds that the Disputed Domain Name is identical to the Complainant’s trademark in which it has rights, and that paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights or legitimate interests in the Disputed Domain Name by demonstrating any of the following:

(i) before any notice to it of the dispute, the Respondent’s use of, or demonstrable preparations to use the Disputed Domain Name or a name corresponding to the Disputed Domain name in connection with a bona fide offering of goods or services; or

(ii) the Respondent has been commonly known by the Disputed Domain Name, even if it has acquired no trademark or service mark rights; or

(iii) the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

Paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) states that once a complainant makes a prima facie case in respect of the lack of rights or legitimate interests of a respondent, the respondent carries the burden of demonstrating it has rights or legitimate interests in the domain name. Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.

The Panel accepts that the Respondent is not a licensee nor is it associated with the Complainant in any way that could give rise to any licence, permission or other right by which the Respondent could own or legitimately use the Complainant’s ITAR TASS trademark.

The Panel also accepts that the Respondent has failed to demonstrate any registration of the ITAR TASS trademark anywhere in the world or to provide any evidence that it has become commonly known by the Disputed Domain Name. Accordingly, the Panel is of the view that a prima facie case is established and it is for the Respondent to prove it has rights or legitimate interests to the Disputed Domain Name. As the Respondent did not submit a Response, the Panel will assess the case based on the reasonable inferences that can be drawn from the Complainant’s evidence and the Respondent’s email of August 14 Email (the “August 14 email”). The Panel finds that nothing in the August 14 Email disputes the contentions made by the Complainant with regard to the Respondent’s lack of rights or legitimate interests in the Disputed Domain Name.

The Website contains news articles and replicates the content of the website “www.golos-ameriki.ru” (i.e. the Russian version of Voice of America). The Panel therefore finds that the Disputed Domain Name is not being used (and there is no evidence demonstrating any preparations to use it) in connection with a bona fide offering of goods or services.

Further, in light of the fact that the Respondent is essentially using the Website to promote the content of, and includes references to, the Russian version of Voice of America, which is in the same business as and competes with the Complainant, and the Respondent is also promoting the Disputed Domain Name as being for sale on the website that the Disputed Domain Name resolves to, the Panel finds that the Respondent is not making fair use of the Disputed Domain Name without intent for commercial gain or without the intent to misleadingly divert consumers.

The Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name and that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Under the third requirement, the Complainant is required to prove that the Disputed Domain Name was registered and is being used in bad faith.

Bad faith registration

The Complainant asserts that the Disputed Domain Name was transferred and registered to the Respondent on February 6, 2008. The Respondent contends in the August 14 Email that the Disputed Domain Name was registered in 1996.

The Panel notes that Annexure 9 of the Complaint shows the Disputed Domain Name as being registered to the Respondent in the cache dated February 6, 2008, whereas the immediately preceding cache dated April 25, 2001 lists an individual named A. Lipovetskiy as the registrant. The Panel also notes that according to the Registrar, the Disputed Domain Name “was transferred to Wild West Domains, LLC in the name of this registrant on 2/3/2005”. The Panel is therefore satisfied that the Respondent was not the original registrant of the Disputed Domain Name in 1996. It is well established that “the transfer of a domain name to a third party does amount to a new registration” (WIPO Overview 2.0, paragraph 3.7). The Panel therefore accepts that the Respondent registered the Disputed Domain Name after the Complainant first registered its ITAR TASS trademark. Based on the reasons stated below, the Panel finds that the Respondent both registered and used the Disputed Domain Name in bad faith.

However, even if the Panel were to accept February 15, 1996, as the relevant registration date, the Panel would still find that the Respondent registered the Disputed Domain Name to take advantage of the confusion between the Disputed Domain Name and any potential rights of the Complainant, as even though the Complainant did not apply to register its ITAR TASS mark until March 7, 1996. The Complainant first began using the mark in 1994 and registered the domain name <itar-tass.com> in November 1995. It is reasonable to assume that the Complainant must have made some announcements and press releases informing the public of its change in name to ITAR-TASS in 1994, and the Respondent therefore knew about the Complainant and its ITAR TASS mark prior to the Respondent’s registration of the Disputed Domain Name. It cannot be mere coincidence that the Disputed Domain Name was first registered in 1996, one month before the Complainant filed its trademark application for the Cyrillic version of ITAR TASS in Russia; two years after the Complainant changed its name to incorporate the name ITAR-TASS and one year after it registered its domain name <itar-tass.com>.

Under Section 2 of the Policy, upon registering the Disputed Domain Name the Respondent provided the warranty that it “will not knowingly use the domain name in violation of any applicable laws or regulations” and it is the Respondent’s “responsibility to determine whether [its] domain name infringes or violates someone else’s rights.” Section 2 of the Policy not only imposes a duty on the part of the Respondent to conduct an investigation at the time of registration, “but also includes a representation and warranty by the registrant that it will not now or in the future use the domain name in violation of any laws or regulations”. As such, the Respondent used the Disputed Domain Name in such a manner (as described below) that resulted in a breach of the representations and warranties contained in Section 2 of the Policy.

Bad faith use

The Panel accepts the Complainant’s contention that its ITAR TASS trademark is a well-known mark, at least in Russia. The Panel further accepts that the Respondent knew of the Complainant’s trademarks based on the following:

(a) the Respondent registered the Disputed Domain Name more than ten, fourteen years after the Complainant first began using ITAR TASS, after the Complainant had first registered its ITAR TASS trademark and after the Complainant registered its domain name <itar-tass.com>;

(b) the Complaint has been using its trademarks with regard to the provision of news, and the Respondent's Website provides news related content;

(c) the Complaint’s trademarks and domain name <itar-tass.com> are identical and/or confusingly similar to the Disputed Domain Name;

(d) the Disputed Domain Name does not reflect the Respondent’s name, and “itartass” is not a common term or ordinary word; and

(e) the registrant of record for the Disputed Domain Name appears to be based in Russia.

As the Respondent knew of the Complainant’s rights in the ITAR TASS trademark, the Panel infers that the Respondent registered the Disputed Domain Name with the primary purpose of selling it for valuable consideration in excess of the Respondent’s out-of-pocket expenses directly related to the Disputed Domain Name. This is evidenced by the fact that: (i) the Website, and other websites, advertise the Disputed Domain Name as being for sale; (ii) the Respondent appears to have other abusive domain name registrations, which implies that the Respondent may be in the business of selling domain names which take advantage of third party rights; and (iii) in the August 14 Email, the Respondent even states that the Complainant offered to purchase the Disputed Domain Name for USD 800.00, but the Respondent found the offer to be unacceptable, which the Panel infers to mean that the Respondent intended to sell the Disputed Domain Name for an amount in excess of its out-of-pocket expenses.

The use by the Respondent on the Website of content taken from a third party’s website (“www.www.golos-ameriki.ru”) and its use of a third party’s trademark on the Website is further evidence of the Respondent’s use of the Disputed Domain Name in bad faith.

In view of the above, the Panel finds that the Disputed Domain Name was registered and is being used in bad faith within the meaning of paragraph 4(a)iii) of the Policy.

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 <itartass.com> be transferred to the Complainant.

Gabriela Kennedy
Presiding Panelist

Richard W. Page
Panelist

Olga Zalomiy
Panelist

Date: October 9, 2013