Comptek International, Inc.; Yandex Inc.; Yandex Technologies Limited v. Law Bureau of Moscow City Collegium of Advocates

WIPO Arbitration and Mediation Center

ADMINISTRATIVE

PANEL DECISION

Yandex Technologies Ltd (1), Comptek International Ltd (2),

Yandex Inc (3)

v.

Law Bureau of Moscow City Collegium of Advocates

Case No. D2001-1486

1. The Parties

The Complainants are Yandex Technologies Ltd of 2-4 Arch. Makarious III Avenue, Capital Center, 9th Floor, Nicosia 1505, Cyprus and

Comptek International Ltd and

Yandex Inc both of 11 Beacon Street, Boston, Massachusetts 02108, United States of America.

The Respondent is Law Bureau of Moscow City Collegium of Advocates of Nagatinskaya Street 2-1, Moscow 115230, Russia

2. The Domain Name and Registrar

The domain name at issue is <yandex.com>.

The Registrar is Network Solutions, Inc.

3. Procedural History

The WIPO Arbitration and Mediation Center [the Center] received the Complaint on December 21, 2001 [electronic version] and on December 27, 2001 [hard copy]. The Center verified that the Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy [the Policy], 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]. The Complainant made the required payment to the Center.

The formal date of the commencement of this administrative proceeding is January 14, 2002.

On January 4, 2002 the Center transmitted via email to Network Solutions, Inc a request for registrar verification in connection with this case and on January 7, 2002 Network Solutions, Inc transmitted by email to the Center Network Solutions verification response confirming that the registrant is Law Bureau of Moscow City Collegium of Advocates.

Having verified that the Complaint satisfied the formal requirements of the Policy and the Rules, the Center notified the Respondent of the Complaint on January 14, 2002. The Center advised that the Response was due by February 3, 2002. On the same day the Center transmitted by mail, copies of the foregoing documents.

A Response [electronic version and hard copy] was received from the Respondent by the due date of February 3, 2002. On February 3, 2002 Acknowledgement of Receipt of Response was sent to the Complainants and to the Respondent using the contact details contained in the Response.

Having received on February 15, 2002 Mr. David Perkins' Declaration of Impartiality and Independence and his Statement of Acceptance, the Center transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date, in which Mr. David Perkins was formally appointed as the Sole Panelist. The Projected Decision Date was March 12, 2002. The Sole Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Rules and the Supplemental Rules.

Having verified the communication records in the case file, the Administrative Panel finds that the Center has discharged its responsibility under para. 2(a) of the Rules "to employ reasonably available means calculated to achieve actual notice to Respondents". Therefore, the Administrative Panel shall issue its Decision based upon the Complaint, the Response, the Policy, the Rules and the Supplemental Rules.

4. Factual background

4.1 The Complainants

4.1.1 The Second Complainant, Comptek International Ltd

In 1995 the Complainant, Comptek International Ltd [Comptek], developed what it claims had become by August 2001 the largest search engine in Russia under the <yandex.ru> domain name.

4.1.2 The YANDEX Trademark

Comptek asserts that it created the YANDEX trademark, which is an acronym,

for Yet Another Index. Comptek says that the YANDEX logo has been used

in association with the search engine since its inception. That logo comprises

the cyrillic letter shaped like a reversed "R" and pronounced "YA" combined

with NDEX.

4.1.3 The YANDEX Community Trademark

On December 15, 1999 the Complainant, Yandex Inc, applied to register YANDEX

as a Community Trademark. CTM No. 1,424,670 registered pursuant to that application

on February 6, 2001 for goods and services in Classes 9, 38 and 42.

- Computer software and programs [Class 9]

- Telecommunication services employing the Internet; providing access to

electronic communication networks and electronic databases; transfer and dissemination

of information and data via computer networks [Class 38]

- Computer services; Internet services; consultancy, design, testing, research

and advisory services, all relating to computing and computer programming; computer

software; design, technical support and training services; computer help-line

services [Class 42]

On May 17, 2001 that registration was transferred to the Complainant, Yandex

Technologies Ltd

4.1.4 The YANDEX US Trademark

On March 6, 2000 the Complainant, Yandex Inc, applied to register YANDEX as

a trademark in the United States of America for

"Computer software for providing multiple user access to a global computer

network and computer software for use in creating and designing web sites"

in Class 9, claiming first use in commerce from September 23, 1997. This application

was given Serial Number 75/937082. From the Panel's own search, it appears that

this application was abandoned on February 22, 2001 for the Applicant's failure

to respond to an Office Action.

The Complainant, Yandex Inc., also asserts common law trademark rights for

YANDEX in the United States dating back to September 1997. No evidence of use

supporting that assertion is offered in the Complaint, other than the claim

in the US trademark application of first use dating from September 23, 1997.

4.1.5 The <yandex.ru> website gives background information under the

heading Yandex history, which is sub-divided into three segments sub-headed

Prehistory: New History (before <Yandex.Ru>): and

<Yandex.Ru> History. The latter serves to confirm establishment

of the Search Engine on September 23, 1997. A further section headed

Yandex Today lists some 15 Yandex prefixed services, including

<Yandex.News>: <Yandex.Encyclopaedia>: <Yandex.Mail>: <Yandex.Direct>

etc.

4.2 The Respondent

4.2.1 No information is given, either in the Complaint or the Response,

about the business of the Respondent. The name of the Respondent would indicate

the business of a Law firm or Consultancy. The Response claims that the domain

name in issue was registered for

"… opening non-commercial site about the known lawyers, which can serve initial

sources (indexes) of Russian legal knowledge"

This is referred to further in paragraphs 5.2.2 and 6.8 below.

5. The Parties Contentions

5.1 The Complainant's Contentions

5.1.1 Identical or Confusingly Similar

The domain name in issue is identical to the Complainant's YANDEX trademark.

5.1.2 Rights or Legitimate Interests

The Complainant's case is as follows:

- No use has been made of the domain name in issue other than in 1998 "…

with a counter for visitors but nothing else".

- The Respondent is not commonly known by the domain name in issue.

- The Respondent has no trademark or service mark rights in the mark YANDEX.

- There is no evidence of the Respondent making any legitimate non-commercial

or fair use of the domain name in issue.

In other words, the Complainant's case is that the Respondent cannot establish

any of the circumstances set out in paragraph 4c of the Policy which could demonstrate

rights or legitimate interests to the domain name in issue for the purposes

of paragraph 4a(ii) of the Policy.

5.1.3 Registered and Used in Bad Faith

The Complainant's case is as follows:

- The Respondent acquired the domain name in issue from the original registrant

primarily for the purpose of selling it to the Complainant for a sum in excess

of the Respondent's out of pocket costs directly related to that domain name.

Specifically, in November 1998 the Respondent approached Mr. Arkady Volozh of

Comptek with a verbal offer to sell the domain name in issue for approximately

US$200,000.00. Mr. Volozh rejected that offer. Then on February 10, 1999

the Respondent sent an email to the Complainant at <webadmin@yandex.ru>

captioned <yandex.com>, <yandex.net> <yandex.org> which read

"You can connect with the secretary of our Bureau by phone 111-20-73, 111-32-62

or send by e-mail the phone number of your employer, knowing proprietary terminology

and having rights to take decisions

With respect

Secretarial of Advocate Bureau of the Moscow City Collegium of Advocates

"ARBITRAJSUDPRAVO"

<www.zakon.ru>

<www.zakon.com>

<www.zakon.net>

<www.zakon.org>

- The Respondent has engaged in pattern of preventing legitimate trademark

owners from reflecting their marks in corresponding domain names. Here the Complaint

cites registration by the Respondent of

- rambler.org and aport.net, Rambler and Aport being the names

of third party Russian search engines;

- itogi.com, ITOGI being a large Russian Newspaper;

- sberbank.com, .org and .net, SBERBANK being the largest

Russian Bank; and

- aol.ru, AOL being the trademark of America Online.

The Complaint asserts that these circumstances evidence bad faith registration

and use of the domain name in issue by the Respondent within paragraphs 4b(i)

and (ii) of the Policy.

5.2 The Respondent's Contentions

5.2.1 Rights in the YANDEX Trademark

The Respondent's case is that the Complainant has no trademark rights in the

word YANDEX.

- The YANDEX Community Trade Mark was not applied for until December 1999,

more than 12 months after the Respondent registered the domain name in issue

in September 1998. A subsequent trademark registration cannot form the basis

for a Complaint in relation to an earlier registered domain name.

- YA means I in Russian. Therefore, YANDEX translates to INDEX in Russian.

This is a common word and cannot, therefore, constitute a trademark.

- When YANDEX is used colloquially, it means that an individual "… considers

himself as an initial source (index) of knowledge in some areas".

- As to the US, the US trademark application has not matured into registration

so that, again, the Complainant has no trademark rights as required under the

Policy.

5.2.2 Rights or Legitimate Interests

The Respondent's case is as follows:

- The domain name in issue was registered for a bona fide offering of services

[see, paragraph 4.2.1. above].

- Temporary inactivity [i.e. non-use of the domain name] does not destroy

the bona fides of the Respondent's said intention to use the domain name for

the purpose specified in paragraph 4.2.1. above.

5.2.3 Registered and Used in Bad Faith

The Respondent's case is as follows:

- When the Respondent registered the domain name in issue in September 1998

- the name was not acquired from a third party [contra, the Complainant's allegation

noted in paragraph 5.1.3 above] - the Respondent was unaware of the Complainant

companies. The YANDEX technology was little known at that time.

- The Respondent is not a notorious cybersquatter as alleged. The list of

domain names in Annex G to the Complaint which are registered by the Respondent

comprise common generic words, in English and Russian which the Respondent is

perfectly entitled to register as domain name. They include, for example, LEGISLATION.NET:

JURISTS.ORG and .NET: JURIDICAL .ORG and .NET etc

- As to RAMBLER and APORT, both are common words in English and Russian

and, as such, there was no mala fides in the registration of the domain names

RAMBLER.ORG and APORT.NET. As a further sign of the Respondent's good faith,

those domain names were allowed to lapse when the Respondent became aware of

third party claims - presumably, from the Companies operating the RAMBLER and

APORT search engines referred to in the Complaint.

- The Respondent has not registered as domain names the well known trademarks

of third parties. As to ITOGI, its meaning in Russian is "results", so there

is no connection between ITOGI.com and a newspaper of that name. There is no

large Russian newspaper called ITOGI.

- As to SBERBANK, there is no Russian Bank under that name. The largest

Russian Bank is "Akstionerniy Kommercheskiy Sberegatelnij Rossiyskoy Federatsii",

which has no claim by virtue of its name to the word SBERBANK which translates

in Russian into "Saving Bank" and is a common word. If the Respondent was really

trying to appropriate the Bank's rights, then the Respondent would have registered

<SBRF.COM>, .NET and .ORG. The Bank itself uses the domain name <SBRF.RU>

- As to AOL.RU, AOL is an abbreviation for "Advocates Of Law".

In Russian law, abbreviations cannot be registered as trademarks.

- The Respondent denies ever offering to sell the domain name in issue to

Mr Arkady Volozh of Comptek or to anyone else for US$200,000.00 or for any other

price.

The email dated February 10, 1999 is a forgery.

6. Discussion and Findings

6.1 The Policy paragraph 4(a) provides that the Complainant

must prove each of the following

(i) that the Respondent's 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 domain name; and

(iii) the domain name has been registered and is being used in bad

faith.

6.2 Paragraph 4(c) of the Policy identifies circumstances which, in particular,

but without limitation, if found by the Panel to be proved based on its evaluation

of all the evidence presented, shall demonstrate the Respondent's rights or

legitimate interests for the purpose of paragraph 4(a)(ii) of the Policy.

6.3 Paragraph 4(b) of the Policy sets out circumstances which, if found

by the Panel to be present, shall be evidence of the registration and use of

a domain name in bad faith.

The Complainant's Trade Mark Rights

6.4 Regardless of the position as regards the YANDEX US Trademark Application,

it is clear that the Complainants have trademark rights in the YANDEX mark by,

at least, registration of the Community Trade Mark with effect from December

15, 1999. The Panel is also satisfied that the Search Engine YANDEX.RU

was launched in September 1997.

Further, there is no evidence which contradicts the Yandex.Ru History

set out in the Complainant's website which tracks the development and growth

of the YANDEX Search Engine from September 1997 onwards. It is unnecessary,

in the Panel's view, to address whether or not the Complainants have common

law rights in the YANDEX mark in the United States.

6.5 It is not necessary under paragraph 4a(i) of the Policy for the Complainant

to establish that its trademark rights predate registration of the domain name

in issue. The relevance of the respective registration dates is in relation

to the requirements of paragraph 4a(iii) of the Policy.

6.6 Is YANDEX an invented word [i.e. acronym for "Yet Another Index"] as

the Complainant asserts [see, paragraph 4.1.2 above] or is its merely Russian

for "Index" and, therefore, a generic word as the Respondent asserts [see, paragraph

5.2.1 above]? As the Panellist understands it, the letter "Y" in Russian can

stand for "I", which is pronounced "ji". But, pronunciation will depend upon

the context in which the letter "Y" is used. In the case in point, the combination

of letters "YA" forming part of the word YANDEX will be pronounced "ja", not

"ji". The Panel is not, therefore, convinced that Yandex is merely a generic

word meaning "Index" in Russian. In any event, the mark has been registered

as a Community Trademark, it has been open to the Respondent to apply to cancel

that registration for over 12 months since the mark was registered in February

2001 but the Respondent has chosen not to.

6.7 In all the circumstances, the Panel takes the view that the Complaint

succeeds in establishing that the Complainant has trademark rights in the YANDEX

mark and that the domain name in issue, <YANDEX.COM>, is identical to

the Complainants' YANDEX trademark.

Rights or Legitimate Interests

6.8 Clearly, the Respondent cannot bring itself within the circumstances

set out in paragraphs 4c(ii) and (iii) of the Policy. The issue is whether,

before notice of the dispute, the Respondent had made demonstrable preparations

to use the domain name in connection with a bona fide offering of services [paragraph

4c(i) of the Policy]. In that respect, the domain name has been inactive for

almost 3½ years since registration in September 1998. This is more than temporary

inactivity. Further, the Respondent has provided no tangible evidence to support

its assertion that it intended from the outset to use the domain name for

"… opening non-commercial site about the known lawyers, which can serve initial

sources (indexes) of Russian legal knowledge".

In the circumstances, the Panel considers that the Complainant has satisfied

the requirement of paragraph 4a(ii) of the Policy.

Registered and Used in Bad Faith

6.9 Is there evidence of a pattern of conduct by the Respondent registering

as domain names third party marks? The majority of the Respondent's domain name

registrations exhibited to the Complaint appear to be generic words. In addition

to the examples highlighted in the Response [see, paragraph 5.2.3 above], there

are very many others in the same generic category. For example, <ARBITRATION.RU>:

<BRILLIANT.RU>: <AUTOMOBILE.RU>: <DEPARTMENT.RU: DIRECTORS.RU>

etc

6.10 However, the Respondent's explanations in relation to <AOL.RU>:

<ITOGI.COM>: and <SBERBANK.COM>: .ORG and .NET are not, in the Panel's

opinion satisfactory. Contrary to the Respondent's assertion, Itogi is a popular

weekly magazine which comments on business and political issues. This can be

seen from the website <www.gallupmedia.ru>. As to Sberbank, it is one

of the largest Russian Banks and is commonly known under that name. This can

be confirmed from the website at <www.asb.ru>. As to proposing that AOL

is, in the context of the domain name <AOL.RU>, an acronym of "Advocates

Of Law", the Panel does not regard it as credible given the clearly

unsatisfactory explanations proffered in respect of Itogi and Sberbank.

6.11 As to RAMBLER and APORT, together with YANDEX, they are the oldest

and most popular search engines in the Russian segment of the Internet. According

to the <www.rambler.ru >website, RAMBLER is a registered trademark of

OJSC Rambler Internet Holding. According to the <services.rol.ru>

website, APORT is a registered trademark of Golden Telecom. This is contrary

to the Respondent's suggestion that RAMBLER and APORT were freely available

words in common usage.

6.12 Further, from its own enquiries the Panel has been made aware of media

reports accusing the Respondent of engaging in cybersquatting. One such article

reports that Rosbank, a Russian bank, bought the domain name <rosbank.ru

>from the Respondent for US$20,000.00.

6.13 By the date when the domain name in issue was registered [September 1998]

the Complainant's YANDEX Search Engine had been in operation for one year. One

balance, the Panel considers it likely that, contrary to its assertions to the

contrary, the Respondent was aware of the Complainant's activities under the

YANDEX name / mark when registering the domain name in issue.

6.14 The Respondent states that the email of February 10, 1999 is a forgery.

The Panel has checked that the telephone numbers in that email do connect to

the Respondent, which may indicate that the document is genuine as the Complainant

asserts. The truth, or otherwise, of this issue is not suitable to be decided

under the Policy but by a Court. Consequently, no finding is made in this respect.

6.15 The Panel is, however, satisfied that the Complaint has succeeded in

demonstrating registration by the Respondent of the domain name in issue to

prevent the Complainants from reflecting their YANDEX trademark in a corresponding

domain name, and that the Respondent has engaged in a pattern of such conduct

in relation to the Itogi: Sberbank: AOL: Rambler; and Aport names / marks. The

circumstances of paragraph 4b(ii) of the Policy are, therefore, met and the

Complaint satisfies the third limb of the requirements of the Policy in paragraph

4a(iii).

7. Decision

For all the forgoing reasons, the Panel decides that the Complainants have

proved each of the three elements of paragraph 4a of the Policy. Accordingly,

the Panel requires that the registration of the domain name YANDEX.COM

be transferred to Yandex Technologies Limited.

8. Reverse Domain Name HiJacking

Insofar as the Respondent is accusing the Complainants of reverse domain name

hijacking, it follows from the Panel's Decision on the Complaint that the Respondent's

allegation in this respect is rejected.

David Perkins

Sole Panelist

Dated: March 6, 2002