Despite global sanctions against Russia for its brutal invasion of Ukraine, a British domain investor attempted to sell the domain Yandex.tv to the Russian search engine Yandex.
Obviously it backfired; the company filed a UDRP and won it at the WIPO. The Respondent didn’t file a formal response, but stated that “if my domain name is confiscated at will, I will file a lawsuit in the US court to ensure my rights.”
Final decision: Transfer the domain Yandex.tv to the Complainant. It’s a demonstration of how processes work in the democratic world, unlike what’s happening in Vladimir Putin’s regime.
ARBITRATION AND MEDIATION CENTER
ADMINISTRATIVE PANEL DECISION
Yandex Limited Liability Company v. nina box, NINABOX INTERNATIONAL LIMITED
Case No. DTV2024-00011. The Parties
The Complainant is Yandex Limited Liability Company, Russian Federation, represented by Brand Monitor Legal Limited Liability Company, Russian Federation.
The Respondent is nina box, NINABOX INTERNATIONAL LIMITED, United Kingdom.
2. The Domain Name and Registrar
The disputed domain name yandex.tv is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 9, 2024. On February 9, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 9, 2024, 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 February 12, 2024. In accordance with the Rules, paragraph 5, the due date for Response was March 3, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 4, 2024.
The Center appointed Tobias Zuberbuhler as the sole panelist in this matter on March 5, 2024. 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.
On March 10, 2024, the Respondent sent an email to the Center.
4. Factual Background
The Complainant is one of the largest Russian IT companies, providing a variety of services including the Yandex search engine.
The complainant holds the rights to a wide range of trademarks in various jurisdictions, including the International trademark YANDEX (Reg. No. 820785, registered on November 10, 2003) and the Russian trademark YANDEX (Reg. No. 164, recognized as well-known by the Federal Service for Intellectual Property (ROSPATENT) on February 20, 2016).
The Complainant further holds the domain names yandex.com and yandex.ru under which the official website of the Complainant is available.
The disputed domain name was registered on May 18, 2020, and does not resolve to any active website.
5. Parties’ Contentions
A. Complainant
The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name.
B. Respondent
The Respondent sent an email to the Center on March 10, 2024, offering to sell the disputed domain name for a price to be negotiated, and stating that “but if my domain name is confiscated at will, I will file a lawsuit in the US court to ensure my rights”. However, the Respondent did not submit any formal response.
6. Discussion and Findings
A. Identical or Confusingly Similar
It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7.
The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1.
The entirety of the mark is reproduced within the disputed domain name. Accordingly, the disputed domain name is identical to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.
The Panel finds the first element of the Policy has been established.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.
Although 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 difficult 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 (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1.
Having reviewed the available record, the Panel finds 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 rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise.
Furthermore, the Panel notes the composition of the disputed domain name carries a high risk of implied affiliation with the Complainant. WIPO Overview 3.0, section 2.5.1.
The Panel finds the second element of the Policy has been established.
C. Registered and Used in Bad Faith
The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.
The Panel finds that the registration of the disputed domain name, which is identical to the Complainant’s well-known trademark by an unaffiliated entity, can by itself create a presumption of bad faith.
WIPO Overview 3.0, section 3.1.4.Panels have found that the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding. Having reviewed the available record, the Panel finds the non-use of the disputed domain name does not prevent a finding of bad faith in the circumstances of this proceeding. Although panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, and (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement). WIPO Overview 3.0, section 3.3. Having reviewed the available record, the Panel notes the distinctiveness or reputation of the Complainant’s trademark, and the composition of the disputed domain name, and finds that in the circumstances of this case the passive holding of the disputed domain name does not prevent a finding of bad faith under the Policy.
The Panel finds that the Complainant has established the third element 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 yandex.tv be transferred to the Complainant.
/Tobias Zuberbuhler/
Tobias Zuberbuhler
Sole Panelist
Date: March 15, 2024
