Kommersant Publishing House v. Stanley Tobiason
Case No. D2002-0531
1. The Parties
The Complainant is Zakrytoe aktsionernoe abshestvo
“KOMMERSANT Izdatelskiy Dom” (ZAO Kommersant Publishing House), H.
11 Bld. 2, Tichvinsky per., RU-103055 Moscow, Russian Federation.
The Respondent is Stanley Tobiason, 1432 Orchard 24,
Eugene, 97403, OR, United States of America.
2. The Domain Name and Registrar
The Domain Name is <kommersant.com>.
The Registrar is Melbourne IT Limited, Level 2, 120
King Street, Melbourne, Victoria 3000, Australia.
3. Procedural History
The Complaint was received by WIPO Arbitration and
Mediation Center (“WIPO”) by email on June 6, 2002, and in
hardcopy form on June 10, 2002.
On June 11, 2002, Melbourne IT Limited confirmed
that the domain name <kommersant.com> ("the Domain Name")
was registered through Melbourne IT Limited and that Stanley Tobiason
("the Respondent") was the current registrant. The Registrar
further confirmed that the Uniform Domain Name Dispute Resolution
Policy (“the Policy”) is applicable to the Domain Name and that
the language of the registration agreement was English. In accordance
with the Rules for Uniform Domain Name Dispute Resolution Policy (“the
Rules”), paragraph 11, the language of the administrative proceeding
On June 11, 2002, WIPO advised the Complainant that
Complainant's Annex 7 (Certificate of Registration of the
Complainant's Trademark in English and Russian) had not been submitted.
On June 18, 2002, WIPO acknowledged receipt of Complainant's Annex 7
and thereafter verified that the Complaint satisfied the formal
requirements of the Policy, the Rules and the WIPO Supplemental Rules
for Uniform Domain Name Dispute Resolution Policy (“the Supplemental
Rules”) and that payment was properly made. The Administrative Panel
("the Panel") is satisfied that this is the case.
On June 20, 2002, WIPO notified the Respondent of
the Complaint in the usual manner and informed the Respondent inter
alia that the last day for sending its Response to the Complainant and
to WIPO was July 10, 2002. The Complaint was properly notified in
accordance with paragraph 2 (a) of the Rules.
No Response was received and WIPO issued a Response
Default Notification on July 12, 2002.
The Panel was properly constituted. The undersigned
Sole Panelist submitted a Statement of Acceptance and Declaration of
Impartiality and Independence.
No further submissions were received by WIPO, as a
consequence of which the date scheduled for the issuance of the
Panel’s Decision was August 1, 2002.
4. Factual Background
The Complainant is Zakrytoe aktsionernoe obshestvo
"KOMMERSANT. Izdatelskiy Dom" ("ZAO Kommersant.
Publishing House") incorporated and having its principal place of
business in Moscow, Russian Federation.
The Complainant is an award-winning Russian
publishing house, founded in 1988. Together with other media-related
activities, it distributes ten newspapers and magazines worldwide to
an audience of over one million.
The Complainant is the owner of the trademark
КОММЕРСАНТЪ (transliterated as and referred to hereafter as
KOMMERSANT), registered on December 24, 1999, by the International
Bureau of the WIPO in the International Register of Marks maintained
under the Madrid Agreement and Protocol. This trademark was registered
under the Madrid Agreement and the Madrid Protocol in the Russian
Federation, Armenia, Azerbaijan, Belarus, Germany, Kazakhstan,
Kyrgyzstan, Latvia, Republic of Moldova, Tajikistan, Ukraine,
Uzbekistan, Estonia, Georgia, Lithuania.
The Complainant's KOMMERSANT trademark can be
translated into English as 'Businessman'. The Complainant operates
websites under the domain names <commersant.com>, <commersant.ru>
and <kommersant.ru> providing news, announcements and corporate
information. Between early 1996 and October 29, 2000, the Complainant
had also operated the Domain Name for the same purpose. The
Complainant's statistical logs for 2000 demonstrate that <kommersant.com>
attracted over 46% of the Internet surfers, compared to 17% for <commersant.com>,
28% for <kommersant.ru> and 9% for <commersant.ru>.
The Complainant failed to renew the Domain Name as a
result of an error caused by its hosting company.
On January 24, 2001, the Respondent registered the
5. Parties’ Contentions
The Domain Name except for the top-level ".com"
extension is identical or at least confusingly similar to the
English transliteration of the Complainant's registered trademark.
The Respondent can have no rights or legitimate
interest in the Domain Name because he cannot demonstrate any of the
circumstances disclosed in paragraph 4 (i), (ii) or (iii) of the
Since the registration of the Domain Name on
January 24, 2001, up to the date the Complaint was filed, the
Respondent has failed to set up a website with the corresponding
domain name or to even post a welcome page.
The Respondent is not using, nor is the Respondent
demonstrating preparations to use, the Domain Name in connection
with a bona fide offering of goods or services.
The Respondent is not conducting any business that
would be entitled to employ the Complainant's trademark "Kommersant".
The Respondent has not been known by the Domain
Name, nor has the Respondent been demonstrating any use of the
Domain Name other than registering it and offering it for sale to
the Complainant for $5,000.
The Respondent has registered and used the Domain
Name in bad faith. The fact that in 16 months after the registration
of the Domain Name in question the Respondent has failed to set up a
website indicates that the Domain Name <kommersant.com> was
registered in order to prevent the Complainant from reflecting its
trademark in a corresponding domain name. The Respondent has engaged
in a pattern of such conduct which can be demonstrated by a Google
search for the Respondent's email address, which shows several
domain names which are stated by the Respondent to be "for sale"
and some of which employ third parties' registered trademarks (i.e.
'Kommersant' is the exact transliteration of the
Complainant's trademark and '.com' the common top level extension.
Most Internet users would try to use the Domain Name to see the
Complainant's website. The Complainant's statistical logs
demonstrate that most Internet users have associated the Complainant
with the Domain Name. Any website that could have been operating
under the Domain Name would be disrupting the business of the
Complainant and/or causing the Respondent to gain financially from
attracting Internet users to the website by creating a likelihood of
confusion with the Complainant's trademark as to the source,
sponsorship, affiliation or endorsement of the Respondent's website.
The Complainant believes that the Domain Name was
registered primarily for the purpose of selling, renting, or
otherwise transferring the domain name to the Complainant for
valuable consideration in excess of the domain name registrant's
out-of-pocket costs directly related to the Domain Name. The
Complainant has established communication with the Respondent by
email. The Respondent made an offer to transfer the domain name
under dispute to the Complainant for $5,000, which obviously is in
excess of the Respondent's out-of-pocket costs directly related to
the Domain Name. In several subsequent emails the Respondent
confirmed that the offer was still valid. Following the
Complainant's request for a draft of the contract the Respondent
sent an email with the draft attached.
The Domain Name does not resolve to a website or
other online presence, nor is there any evidence that such presence
is in the process of being established. There is no evidence of
advertising or promotion or display to the public of the Domain Name.
The relevant issue is not whether the Respondent is undertaking a
positive action in bad faith in relation to the Domain Name but
whether, in all the circumstances of the case, it can be said that
the Respondent is acting in bad faith. It is possible in certain
circumstances, for inactivity by the Respondent to amount to the
Domain Name being used in bad faith [Telstra Corporation Limited v
Nuclear Marshmallows, WIPO Case No. D2000-0003]. In addition to the
circumstances of passive holding in the present case, the Respondent
has offered the Domain Name for sale and has engaged in a pattern of
registering various domain names some of which are identical to
registered trademarks for subsequent sale.
The Respondent has not responded.
6. Discussion and Findings
In terms of paragraph 4(a) of the Policy, the
Complainant must prove that
(i) The 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.
Paragraph 14(b) of the Rules provides that if a
Party, in the absence of exceptional circumstances, does not comply
with any provision of, or requirement under, these Rules or any
request from the Panel, the Panel shall draw such inferences
therefrom as it considers appropriate. Accordingly, the Panel is
entitled to draw whatever inferences it considers appropriate where
the Respondent has been properly notified of the Complaint but fails
Identical or Confusingly Similar
The issue presented by the Complaint is that the
Domain Name, ignoring the generic top level domain extension '.com'
is identical to the transliteration of the Complainant's trademark,
rather than to the trademark itself. In this regard, the Complainant
cites Kabushiki Kaisha Aleph v. Doozi.com, WIPO Case No. D2000-1660
where the domain name at issue was <bikkuridonkey.com> which
the panel found was identical or confusingly similar to the
Complainant's Japanese equivalent BIKKURIDONKEY trademark because it
was identical in transliteration.
While it might be going too far to suggest that
the Domain Name is identical to the Complainant's mark, the Panel
does find that the Domain Name is confusingly similar to it. The
Panel notes in particular that a transliteration of the
Complainant's mark required to be provided in connection with its
registration under the Madrid Agreement and Protocol and that the
transliteration 'kommersant' is included in both the relative
English and Russian Certificate of Registration produced at Annex
7(a) and (b) to the Complaint. The Panel also gives some, albeit
lesser, weight to the Complainant's uncontested statement regarding
its log statistics indicating that the majority of visitors to its
Russian language website in 2000 used the 'kommersant'
transliteration to gain access, indicating that at least in the
minds of those visitors the transliteration is synonymous with the
Russian representation constituting the Complainant's mark.
Respondent’s Rights or Legitimate Interests
By the Complainant's own admission, the second
level of the Domain Name means 'businessman' (if suitably
transliterated) in the Russian language, a relatively generic term.
However, the Complainant has produced extensive evidence of its own
rights in the name and of the extent to which it is associated with
the Complainant in the minds of Russian-speaking people. The
Complainant further asserts that the Respondent has failed to set up
any website or even to post a welcome page, that he is not using or
demonstrating preparations to use the Domain Name and that he is not
conducting any business which would be entitled to use the
Of course, given the generic meaning of the word 'kommersant'
in Russian there might have been some legitimate use to which the
name could have been put. However, to be truly generic the name
requires a Russian connection and given the fame of the
Complainant's mark in Russia and amongst Russian speakers there is
no legitimate use which is obvious to the Panel. What is more, there
is no evidence before the Panel indicating that there has ever been
any such use in the Respondent's contemplation. Accordingly, where
there is no response from the Respondent, no known use of the Domain
Name and no obvious reason why the Respondent could be said to have
any rights or legitimate interests in respect of the Domain Name,
the Panel has no alternative but to accept the Complainant’s
submissions under this head. The Panel finds that the Respondent has
no rights or legitimate interests in respect of the Domain Name.
The Complainant makes a number of submissions
concerning its assertion that the Domain Name was registered and is
being used in bad faith. The Complainant states that the following
circumstances, taken together constitute bad faith:- (1) the
Respondent's pattern of conduct of registering domain names
containing other parties' registered trademarks and listing these as
'for sale', (2) what is best described as the potential for the
registration of the Domain Name to give rise to confusion or
disruption to the Complainant's business if it were used, (3) the
Respondent's offer to sell the Domain Name to the Complainant for
$5,000, and (4) the presence of 'passive holding' of the Domain Name
for 16 months.
Has the Respondent engaged in a pattern of
registration of domain names in order to prevent the owner of a
relative trademark or service mark from reflecting their mark in a
corresponding domain name? [Policy, paragraph 4(b)(ii)] The Google
search report produced by the Complainant at Annex 13 to the
Complaint does not appear to disclose such a pattern, nor do the
relative submissions in the Complaint. What the report indicates is
merely that the Respondent has dealt in domain names in the past and
offered them for sale on the Internet. Dealing in domain names is
not in itself objectionable. The Complainant's submission in this
regard is simply that the search shows several domain names which
are stated by the Respondent to be "for sale" and some of
which employ third parties' registered trademarks (i.e. linux-hw.com).
Thus, the Complainant only mentions a single domain name which might
fall within the meaning of paragraph 4(b)(ii) of the Policy but does
not add further details. In the Panel's view, the Complainant's
submission on a pattern of registrations does not make out a case of
registration and use in bad faith under the Policy, paragraph 4(b)(ii).
More would have been required in the form of evidence of domain
names registered by the Respondent and the relative conflicting
trademarks to allow the Panelist to discern any pattern.
The Complainant makes an unusual submission on the
potential for the Domain Name's use to give rise to confusion and/or
disruption to its business. It submits that most Internet users
would try to use the Domain Name to see the Complainant's website.
The Complainant's statistical logs are persuasive in this regard and
the Panel accepts that it follows logically that a website operating
under the Domain Name might have the effect of disrupting the
business of the Complainant or might cause the Respondent to gain
financially from attracting Internet users as a result of confusion.
The problem for the Complainant, however, is that (a) the evidence
shows no such actual use or confusion caused by the Respondent and
(b) any resulting disruption might also be said to result from the
Complainant's or its agents' failure to renew the name in the first
The Complainant offers evidence concerning the
proposed arrangement to sell the Domain Name for $5,000. An exchange
of email is produced at Annex 14 to the Complaint between
Complainant and Respondent regarding abortive attempts to reach a
deal. It is important to recognise that it was the Complainant who
made the initial contact with the Respondent to solicit a transfer.
However, unlike many cases where complainants attempt to bring the
dispute within the ambit of paragraph 4(b)(i) of the Policy by
making or having third parties make anonymous unsolicited offers to
purchase a domain name under some pretext independent from the
complainant, in this case the Complainant's initial email contact is
quite open as to (1) its identity as Kommersant Publishing House,
(2) the fact that it had previously held the Domain Name and (3) its
reasons for seeking a transfer of the Domain Name. Equally, the
Complainant's email does not expressly make or solicit an offer of
sale but merely states "we are ready to listen to your
The Respondent's reply to the Complainant's
initial email states: Thank you for your e-mail regarding
KOMMERSANT.COM. We will sell the domain name KOMMERSANT.COM for
$5,000 USD. These are the conditions and if you would like to move
forward with the transaction please call or email us. There is no
expression within the terms of this reply of any legitimate right to
use the Domain Name, no expression of the purpose for which the
Respondent was intending to use the Domain Name or indeed anything
other than a direct offer of sale. This in itself might not be
conclusive but had the Respondent not registered the Domain Name for
the purposes of onward sale at a price in excess of out of pocket
costs the Panel would have expected him to file a response to the
Complaint. The absence of such a response leads to the reasonable
inference that an onward sale to the Complainant was the true
purpose of the registration.
The Panel notes the citation of Telstra
Corporation Limited v Nuclear Marshmallows, WIPO Case No. D2000-0003
in support of the Complainant's contention that the passive holding
of the Domain Name in the present case demonstrates bad faith
registration and use. Clearly a domain name registrant is not
obliged to publish a website in connection with any domain name held
by them over any particular period of time. But, there are cases
where, taking all the circumstances together, passive holding can
amount to bad faith registration and use. The Panelist in Telstra
focused on five factors which may be summarised as (i) strength of
trademark's reputation; (ii) no evidence by Respondent of actual or
contemplated good faith use; (iii) active steps by Respondent to
conceal its identity; (iv) active provision of false contact details
by Respondent; and (v) lack of any plausible actual or contemplated
active use of the domain name by Respondent that would not be
In the present case, the Panelist considers that
there are circumstances disclosed by the evidence which, taken
together, render this a case where passive holding can and does
amount to bad faith registration and use. It is important to note in
this connection that the circumstances of bad faith registration set
out in paragraph 4(b)(i) to 4(b)(iv) of the Policy are expressly
stated to be 'without limitation'. In other words, the Panelist is
not restricted to the prescribed circumstances when considering the
question of bad faith. The particular circumstances of the present
case which lead to a conclusion that the Respondent has registered
and is using the Domain Name in bad faith are:
(i) the Complainant's trademark has a strong
reputation, having become famous in Russia and among the Russian
audience worldwide (albeit obviously strongest among those people
with connections to Russia and the other States which are the
subject of the Complainant's Madrid Agreement and Protocol
trademark registration) coupled to the Respondent's failure to
explain his motivation for registering such a distinctive (at
least among non-Russian speakers) and unusual domain name or to
offer any kind of response to the Complainant's initial contact
other than a bare offer to sell the Domain Name for a price
considerably in excess of the likely out of pocket costs;
(ii) the registration 'on the rebound' of the
Domain Name by the Respondent upon the Complainant's default in
its registration, in circumstances where the Complainant had been
actively using the Domain Name for a high traffic, highly popular
website up to the time when it lost the registration, together
with the Respondent's failure to provide any evidence of actual or
contemplated good faith use by him of the Domain Name or any other
adequate explanation for his conduct;
(iii) while it is not possible to determine
conclusively whether the Respondent was aware of the existence of
the Complainant and had the Complainant in mind at the time of
registration, the unusual nature of the Domain Name to English
speakers such as the majority of those based in the Respondent's
locality tends to indicate that the Respondent may well have been
aware of the Complainant or its website when he made the
registration. Whether or not this is the case, the Respondent has
not come forward to explain his conduct and this leads the Panel
to make the reasonable inference that no adequate explanation is
(iv) the fact that, on the evidence provided by
the Complainant and in the absence of any enlightenment which
might have been offered by the Respondent it is difficult to
conceive of a use of the Domain Name for any web publishing
purposes that would not be illegitimate such as by constituting
passing off or alternatively infringement of the Complainant's
In light of the above the Panel is satisfied that
in all the circumstances the Respondent has registered and is using
the Domain Name in bad faith within the meaning of paragraphs 4(a)(iii)
and 4(b) of the Policy.
In light of the Panel's findings, namely that the
Domain Name is confusingly similar to a trademark in which the
Complainant has rights, that the Respondent has no rights or
legitimate interests in respect of the Domain Name and that the Domain
Name was registered and is being used in bad faith, the Panel directs
that the Domain Name, <kommersant.com> be transferred to the