DECISION

netBridge Limited v. RosBusinessConsulting

Claim Number: FA0306000161282

PARTIES

Complainant is netBridge Limited, Nicossia, Cyprus (“Complainant”) represented by Victor S. Lavrenko. Respondent is RosBusinessConsulting, Moscow, Russian Federation (“Respondent”) represented by Stephen H. Sturgeon, of Law Offices of Stephen H. Sturgeon & Assoc., PC.

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <mailru.com>, registered with Network Solutions, Inc.

PANEL

The undersigned certify that each of them has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

Anne M. Wallace, Q.C., Mayer Gabay and Diane Cabell as Panelists.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on June 3, 2003; the Forum received a hard copy of the Complaint on June 2, 2003.

On June 10, 2003, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <mailru.com> is registered with Network Solutions, Inc. and that the Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On June 10, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 30, 2003 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@mailru.com by e-mail.

A timely Response was received and determined to be complete on July 14, 2003.

On July 24, 2003, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the Forum appointed Anne M. Wallace, Q.C., Mayer Gabay and Diane Cabell as Panelists.

An additional Response from Respondent was received on August 6, 2003. This response was submitted after the deadline for submissions and without the required fee.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

In its submission, Complainant asserts as follows:

“netBridge Limited and entities own trade marks and pending R.F. applications for trade marks including the mark “mail.ru as evidenced by a Certificate of Rospatent (Russian Patent Agency) № 194817. Registration of the trade mark is in effect on the whole territory of the Russian Federation within the period of 10 years from the 6^th of July 2000.

LLC netBridge Services, an alleged subsidiary of netBridge Limited, was an applicant for 8 additional design marks incorporating “mail.ru.” The numbers of Decisions of acceptance of applications for registration of these marks: № 2001730823/71 dated November the 8^th 2001, № 2001731742/71 dated November the 14^th 2002, № 2001731740/71 dated November the 14^th 2002, № 2001731741/71 dated November 14^th 2002, № 2001731787/71 dated November the 13^th 2002, № 2001731452/71 dated November the 13^th 2002, № 2001731451/71 dated November the 13^th 2002, № 2001731450/71 dated November the 13^th 2002.”

Complainant asserts that the disputed domain name <mailru.com> is identical or confusingly similar to the MAIL.RU trademark and used for the same services, namely free email hosting.  Complainant alleges that the Respondent’s only purpose in registering the disputed domain is to interfere with Complainant’s business by misleading users attempting to reach the Complainant’s site.

For reasons which appear below, we will not outline the remainder of Complainant’s submissions.

B. Respondent

The Respondent denies that Complainant’s mark is valid since Russian law proscribes trademarking of words that generically identify the marked goods or services.  The Respondent also claims that it has used the disputed domain since 1999, long before the Complainant’s mark was registered.

FINDINGS

Complainant has failed to establish any bad faith on the part of the domain holder.

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

Identical and/or Confusingly Similar

Under Policy ¶ 4(a)(i), the domain name must be identical or confusingly similar to a "trademark or service mark in which the complainant has rights". The Panel finds that the domain name is confusingly similar to the trademark.

Registration and Use in Bad Faith

The Respondent supplied copies of documents indicating that it leased the domain name from the previous holder beginning in September, 1999 and acquired outright title to the domain in December 2002.  Given this evidence that Respondent’s domain name registration predates Complainant’s enforceable rights in the MAIL.RU mark, we find that Complainant lacks standing to bring this claim under the UDRP. See Phoenix Mortgage Corp. v. Tom Toggas, D2001-0101 (WIPO March 30, 2001) (finding that Policy ¶ 4(a)(i) “necessarily implies that Complainant’s rights predate Respondent’s registration. . .of the domain name”); see also Ezcommerce Global Solutions, Inc. v. Alphabase Interactive, D2002-0943 (WIPO Nov. 21, 2002) (allowing a junior trademark user to challenge a domain name registration, which predates Complainant’s trademark rights, is “obviously contrary to the intent of the Policy and to trademark law generally”).  Although the Respondent may have registered the domain in its own name after the Complainant’s mark was registered, that registration was not made in bad faith, but merely to continue the services that it had been offering for several years.

On this basis, the Complaint is denied.

Rights or Legitimate Interests

We do not need to consider this element.

DECISION

Having found the Complainant has not established bad faith on the part of the Respondent, the Panel concludes that relief shall be DENIED.  

Anne M. Wallace, Q.C., Panel Chair
Dated: August 12, 2003

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