BY R. TODD PLASKACZ*
The recent ICANN administrative panel decision from the WIPO Arbitration and Mediation Center in the case of YANDEX et al. vs. Law Bureau of Moscow City Collegium of Advocates Case No. D2001-1486 is interesting in its rejection of the Respondent’s reverse domain name hijacking defence.
The Complainant, Yandex Technologies Ltd., is the owner of the largest Russian language search engine accessed under the domain name YANDEX.RU which was launched in September 1997. The Complainant alleged that the Respondent registered YANDEX.COM in bad faith in September 1998. The Respondent, on the other hand, argued that the ICANN policy was being used as an instrument of reverse domain name hijacking. In order to be successful under ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Complainant had to establish three elements:
1) that the domain name was identical or confusingly similar to the Complainant’s trademark; and
2) that the Respondent had no rights or legitimate interests in the domain name; and
3) that the domain name had been registered and was being used in bad faith.
In order to be successful in its reverse domain name hijacking defence, the Respondent had merely to establish one of three positions; either a) that it had used or was preparing to use the domain name in connection with a demonstrable bona fide offering of goods or services or b) that it had been commonly known by the domain name or c) that it was making a legitimate non-commercial or fair use of the domain name.
CASE ANALYSIS
The Complainant was able to easily establish the first element as it had filed to register YANDEX as a European Community trademark in December 1999 for which registration was granted in February 2001. The fact that a U.S. trademark application for YANDEX had become abandoned was immaterial as one is entitled to rely upon legitimate trademark rights anywhere in the world. More importantly, the Panel rejected the Respondent’s argument that the European trademark registration should not be considered since the European trademark application was filed after the domain name was registered. The Panel stated that the Policy does not require the Complainant to establish that its trademark rights predate the registration of the domain name at issue.
In order to establish the second element, the Complainant alleged that the domain name initially was set up with a counter for visitors and was not being used in connection with a bona fide offering of goods or services. The Complainant further stated that the URL more recently resulted in a simple “This page cannot be displayed” message.
The Respondent countered that that domain was registered with a view to opening a non-commercial site listing lawyers that serve as initial sources of Russian legal knowledge. The argument was rejected as the Respondent provided no tangible evidence to support its assertion. In other words, an express intention of future use set forth in the pleading does not constitute a demonstrable offering of goods or services.
In its Complaint, with a view to establishing that the Respondent had registered and was using the domain name in bad faith, the Complainant set forth two sets of circumstances that are identified in the Policy as being evidence of such bad faith registration and use. Firstly, the Complainant sought to establish that the registration was for the primary purpose of transferring the domain name for valuable consideration in excess of the out-of-pocket registration costs. The Complainant alleged that the Respondent had sought both verbally and through email to sell the domain name to the Complainant for $200,000. To support it’s position the Complainant filed as a Exhibit the Russian text and an English translation of the offer purportedly made by the Respondent to the Complainant. The Respondent vehemently rejected the notion that it had ever sought to sell the domain name alleging that the Complainant had filed false and slanderous statements and had forged the documents relied upon as proof. The Respondent wrote “The scornfully impudent attitude of the Complainant to the Center amazes, because Complainant considers that the similar forged documents can be accepted by the Center as the proof”. (SIC).
The Panel decided that issuing a determination as to whether or not the exhibit was suitable evidence was a matter better left to a court and made no finding in that respect.
The real issue then became whether or not the Respondent had engaged in a pattern of conduct preventing the owners of legitimate trademarks from reflecting their marks as domain names. To establish such a pattern of conduct the Complainant provided a list of hundreds of domain name registrations at one time or another held by the Respondent. The Respondent argued that it held only 10 domain names.
With respect to the generic domain names such as ARBITRATION.RU, BRILLIANT.RU and AUTOMOBILE.RU the Panel took no issue. However, the Panel did not regard as credible the Respondents unsatisfactory explanation that its registration of AOL.RU was adopted as an acronym for “Advocates of Law” rather than as an attempt to cyber squat AOL.COM’s Russian country domain. Nor did the Panel find any merit in the Respondent’s argument that its registered domains under ITOGI.COM and SBERBANK.COM were generic names meaning “results” and “savings bank” rather than the names of a highly regarded Russian magazine and bank respectively.
In the final analysis the Panel took judicial notice of media reports accusing the Respondent of engaging in cyber squatting noting that it was reported that a Russian bank had brought back its name from the Respondent for US$2000.00. The Panel concluded that the Complainant had succeeded in establishing that the Respondent registered the domain name YANDEX.COM in bad faith after it was aware of the Complainant’s search engine activities and that it had engaged in a pattern of conduct preventing other legitimate owners from registering their names. The corollary was that the Respondent’s accusations that the Complainant was guilty of reverse domain name hijacking was clearly unsustainable and had to be rejected.
* The author represented the successful Complainant and can be contacted at Plaskacz@plaskacz.com.
