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Otkrytoe aktsionernoe obschestvo “Pervy Moskovsky Tchassovoi Zavod” v. 3Ci [2004] GENDND 1353 (15 October 2004)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Otkrytoe aktsionernoe obschestvo “Pervy Moskovsky Tchassovoi Zavod” v. 3Ci

Case No. D2004-0654

1. The Parties

The Complainant is Otkrytoe aktsionernoe obschestvo “Pervy Moskovsky Tchassovoi Zavod”, of Moskva, Russian Federation, represented by Gorodissky and Partners, Russian Federation.

The Respondent is 3Ci, Phoenix, Arizona, United States of America, represented by Mag. Thomas Fraiss, Austria.

2. The Domain Name and Registrar

The disputed domain name <poljot.com> is registered with Network Solutions, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 18, 2004. On August 19, 2004, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain name at issue. On August 19, 2004, Network Solutions, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the 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”).

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 August 25, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was September 14, 2004. The Response was filed with the Center on September 14, 2004.

The Center appointed Peter G. Nitter as the Sole Panelist in this matter on September 24, 2004. 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

Complainant manufactures and trades in watches and chronometric instruments, and has registered the trademark POLJOT for such goods in twenty six countries around the world, firstly in Canada on July 26, 1978, and in Russia on November 15, 1979. Complainant filed a trademark application for POLJOT in the United States on February 27, 2003.

Respondent registered the contested domain name <poljot.com> on July 26, 1997.

5. Parties’ Contentions

A. Complainant

The domain name at issue is identical to a trademark in which Complainant has rights.

The Respondent has no rights or legitimate interests in respect of the domain name.

Complainant has never authorized Respondent to use the trademark POLJOT. The Respondent has no corresponding trademark for POLJOT in Russia, USA or any other countries of the world, nor has the Respondent a trade name or company name similar to the disputed domain name. The Respondent uses the disputed domain name commercially. On the Internet web page corresponding to the disputed domain name, Respondent is operating the Internet shop “Russian Watches Online”. The way the Respondent uses the domain name cannot be treated as a bona fide offering of goods or services. The Respondent exploits the trademark POLJOT for promotion and sale of other brands of watches by other manufactures.

The domain name was registered and is being used in bad faith.

Complainant has been manufacturing watches since 1930, and the trademark POLJOT is a world famous trademark first used in 1959. In the year 1961 the Complainant’s watch accompanied the First Man In Space, Yuri Gagarin, as well as other Soviet (Russian) cosmonauts. Since then the brand POLJOT (means “flight”) has been widely used by the Complainant and known around the world. The POLJOT watches have been official state presents from the Soviet Union and then from the Russian Federation to the heads of other states, world famous scientists, artists etc. The Respondent must therefore have been well aware of the fame of the POLJOT trademark and its owner, and has registered the disputed domain name exclusively because of the fame of the trademark and with the intention to gain additional commercial benefit caused by the fame of the POLJOT trademark.

The Respondent’s registration of the disputed domain name prevents the Complainant from reflecting trademark in a corresponding domain name.

On the bottom of the starting page of the website “www.poljot.com” there is a reference to Subwave Internet, the developer of the content of the website. The Complainant has checked the WHOIS-database for the domain names <poljot-usa.com>, <poljot.biz>, <poljot.info>, <poljot.org>, <poljot.net> and <poljot.ch> and found that all these domain names are registered in the name of (or with technical help of) the company Subwave Internet, and with the same name servers as the disputed domain name. The websites under the domain names <poljot.biz>, <poljot.info>, <poljot.org>, <poljot.ch> show the same content as the website “www.poljot.com”.

The above facts lead Complainant to the conclusion that the Respondent has engaged in a pattern of cybersquatting conduct by acquiring numerous “poljot” domain names through related persons.

The Complainant has several US customers who regularly buy watches directly from the Complainant. Among them are FULCRUM Investment Inc. and PACIFIC IBM Employees. The Respondent’s statement about sale of “genuine, first quality Poljot watches direct from the factory in Moscow”, which can be found on “www.poljot.com” “General Info” “Customer Info” “Prices” (see page 25 of Annex 7), is not confirmed by the records of the Complainant.

Not being an authorized distributor of the Complainant, the Respondent does not follow the Complainant’s sale requirements. The activity of the Respondent is disrupting international business of the Complainant.

POLJOT is a major trademark of the Complainant. This mark is often used to designate the Complainant itself, especially on the international market, as Complainant’s Russian company name is difficult to pronounce for non-Russian speakers. The trademark POLJOT is present on the letterheads, official stamps and website of the Complainant as a company logo. In view of this, Respondent’s unauthorized use of the trademark POLJOT through the contested domain name, creates a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.

B. Respondent

Respondent has not registered and used the disputed domain name in bad faith.

The Respondent registered the domain name on July 26, 1997, in order to establish an online shop for watches that are linked to aviation. At the time of registration, POLJOT was neither registered validly as a trademark in the United States nor was the trademark POLJOT known in the United States or internationally. Complainant has not offered any evidence that the trademark POLJOT was well known or even used in the United States at the time of registration. The only two trademark registrations that could be found in the database of the US Patent and Trademark Office have been cancelled before registration of the domain name because of inactivity. Moreover, these trademark registrations have not even been filed by the Complainant, the first registrant was the Poljot Watch Co in New York, the second registrant was the an Italian Corporation.

Even though the Complainant claims that POLJOT is a “world famous trademark” he does not claim that this was the case at the time of registration of the contested domain, and Complainant does not offer any evidence that this was actually the case. The Complainant just states that POLJOT watches were given to “heads of states, world famous scientists, artists etc” and could also mention only two US customers (FULCRUM Investment Inc. and PACIFIC IBM Employees), thus admitting that the trademark POLJOT was (and still is) known only to a very limited number of persons and not to the broad public. The Complainant even states that the Respondent “should have been well aware of the famousness of the POLJOT trademark” but does not claim that the Respondent actually knew the trademark POLJOT at the time of registration which in fact was not the case at the time of registration. This per se excludes a bad faith registration of the domain (see WIPO Case No. D2003-0029, Weissenberger AG v. Imagelinc).

Because the trademark POLJOT was not known in the United States at the time of registration of the domain name the Respondent did not create a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of watches on the website of the Respondent (see , Telecom House Inc. v. Chin-Fu Lo, WIPO Case No. D2003-0032). Also, the content of the website corresponding to the disputed domain name does not create a likelihood of confusion as already the homepage (first page) indicates clearly that the website is designed as “The First Online Shop for Russian Watches” specifying the watches sold with “AVIATOR”, “BURAN”, “STURMANSKIE” and “STRELA” but not as “POLJOT”; “AVIATOR” and “BURAN” being trademarks of the company VOLMAX in Moscow.

The domain name was neither registered nor acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant, as the alleged owner of the trademark or service mark, or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the domain name. Nor has the Complainant claimed that this is actually the case; the domain name was registered with the sole purpose of establishing an online shop for watches that are linked to aviation.

Therefore, the Respondent did not register the domain name primarily to disrupt the Complainants business, but rather to set up and develop the sale of Russian watches linked to aviation in the United States.

The domain name was neither registered in order to prevent the Complainant from reflecting the mark in a corresponding domain name and, in connection therewith, the Respondent has not engaged in a pattern of such conduct. The Complainant argues that the Zurich company Subwave Internet has registered several domain names that contain the trademark POLJOT. There is however no evidence that the Respondent is responsible for these registrations; there is no shareholding or other participation relationship between the Respondent and the Zurich company which at the time of registration of the domain name was also not known to the Respondent. Therefore, the Complainant did not prove that the Respondent did engage in any pattern of cybersquatting conduct.

It follows from the above stated, that the Respondent has legitimate interests in the domain name. For more than seven years the Respondent has undisputedly been selling Russian watches linked to aviation on the website “www.poljot.com”. This activity has required a considerable investment from the Respondent in order to set up the website “www.poljot.com” and to market this website together with the goods offered on it, and therefore the Respondent is conducting a bona fide offering of goods.

6. Discussion and Findings

A. Identical or Confusingly Similar

The domain name at issue is to be considered identical with Complainant’s trademark, as the suffix “.com” is inherent in all domain names under the “.com” gTLD, and, according to previous panel decisions under the UDRP, shall therefore not be taken into account when assessing the identity of a domain name and a trademark.

B. Rights or Legitimate Interests

The Complainant has not authorized the Respondent to use its trademark nor to register the disputed domain name, and the name of the Respondent is not, and does not include any part of any of the disputed domain name.

Respondent has asserted that he has legitimate interests in the domain name, as he, for more than seven years, has been conducting a bona fide offering of watches through the website corresponding to the domain name at issue.

In the opinion of the Panel, the use of the expression bona fide in Paragraph 4c(i) is sufficient to prevent a respondent who knowingly adopted another’s well known mark as a domain name from claiming the benefit of mere use of or demonstrable preparations to use the domain name in connection with the offering of goods or services prior to notice of a dispute. Previous panel decisions have also found that rights or legitimate interests cannot be created where the user of the domain name at issue would not choose a name unless he was seeking to create an impression of association with the Complainant, see inter alia Drexel University v. David Brouda WIPO Case No. D2001-0067.

For the above reasons, the Panel concludes that Respondent has no right or legitimate interest in the domain name at issue.

C. Registered and Used in Bad Faith

According to previous panel decisions under the UDRP, it has been established as a principle that when someone registers a domain name under gTLD domain, he represents and warrants to the registrar that, to the best of his knowledge, the registration of the domain name will not infringe the rights of any third party, see inter alia BolognaFiere S.p.A. v. Bonopera Daniele, WIPO Case No. D2003-0295, Six Continents Hotels, Inc. v. Seweryn Nowak, WIPO Case No. D2003-0022 and Nokia, Inc. v. B. B. de Boer, WIPO Case No. D2000-1397. Actual knowledge of Complainant’s trademark is a factor supporting bad faith see, inter alia, RRI Financial, Inc. v. Ray Chen, WIPO Case No. D2001-1242; Infospace, Inc. v. Siavash Jimmy Behain, et al., WIPO Case No. D2000-1631 and Expedia, Inc. v. European Travel Network, WIPO Case No. D2000-0137.

Respondent has asserted that he was not aware of Complainant’s trademark at the time of the registration of the domain name at issue. Respondent has furthermore argued that at the time of registration, Complainant’s trademark was neither registered validly as a trademark in the United States nor was it known in the United States or internationally, and furthermore that Complainant has not offered any evidence that the trademark was well known or even used in the United States at the time of registration.

It is however not a requirement under the Policy that Complainant’s trademark has been registered in Respondent’s country, nor that the trademark has obtained international recognition. Complainant has offered evidence that he had obtained registered rights in his trademark in several countries before Respondent’s use or registration of the domain name at issue.

In the view of the Panel it is furthermore highly probable that Respondent had Complainant’s trademark in mind when registering the Domain Name at issue.

This is first of all suggested by Respondent’s allegation that he registered the domain name at issue to sell “Russian watches linked to aviation”, linked with the Complainant’s trademark has in relation to such watches. On Respondent’s website, Respondent himself gives detailed information on Russian watch-making history, hereunder Complainant’s activity back to 1930. Under the heading “History / Links”, Respondent also writes the following about Complainant and his trademark:

“Since 1964, ‘?????’ or “POLJOT trademarks have marked the watches made in the 1st MWF. The factory trademarks are registered in 30 different countries and are famous in the whole watch world.”

“The high level of technological development, design and the high quality of ‘Poljot’ production are also confirmed by the fact that the administration of the President of Russia has chosen a ‘Poljot’ 3133 watch as a government award ‘From President of Russia’!”

“Today ‘Poljot’ is a leader among the producers of high-class men’s wrist watches.”

Against this background, it is quite inconceivable to the Panel that Respondent would have chosen the domain name at issue, which is identical to Complainant’s well-reputed trademark, without having knowledge of that trademark.

Respondent is selling watches with the POLJOT trademark through his website corresponding to the domain name at issue. Respondent is having a special focus on the fame, long history and quality of the Poljot watches and trademark in the marketing of the watches sold on the website, and under the heading “History / Links” Respondent is also providing a link to Complainant’s official website at “www.poljot.ru”.

These facts are, in the opinion of the Panel, indications that Respondent seeks to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of his website.

Complainant has thus established that the disputed domain name <poljot.com> has been registered and is being used in bad faith.

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <poljot.com> be transferred to the Complainant.

Peter G. Nitter
Sole Panelist

Dated: October 15, 2004