Tau Technologies LLC v. Konstantin P Rybas
Claim Number: FA2012001925482
Complainant is Tau Technologies LLC (“Complainant”), represented by Gary J. Nelson of Lewis Roca Rothgerber Christie LLP, California, USA. Respondent is Konstantin P Rybas (“Respondent”), Russia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tau-technologies.com>, registered with Regional Network Information Center, JSC dba RU-CENTER.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 17, 2020; the Forum received payment on December 17, 2020.
On December 21, 2020, Regional Network Information Center, JSC dba RU-CENTER confirmed by e-mail to the Forum that the <tau-technologies.com> domain name is registered with Regional Network Information Center, JSC dba RU-CENTER and that Respondent is the current registrant of the name. Regional Network Information Center, JSC dba RU-CENTER has verified that Respondent is bound by the Regional Network Information Center, JSC dba RU-CENTER registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On December 23, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 12, 2021 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@tau-technologies.com. Also on December 23, 2020, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On January 18, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
PRELIMINARY ISSUE : LANGUAGE OF THE PROCEEDING
The Panel notes that the Registration Agreement is written in Russian, thereby making Russian the presumptive language of the proceedings. But the Complaint that has been filed is in the English language. It is therefore open to the Panel to require that the case be recommenced with a Complaint in Russian. However, it is also open to the Panel to find under Rule 11 that the language of the proceeding should be a language other than the language of the registration agreement. In the present case, Complainant has submitted that the language of the proceeding should not be Russian but English. Should the Panel accept that submission, the present proceeding would be able to be continued in English, including with the English-language Complaint already submitted.
Complainant has submitted that it appears from the available evidence that Respondent is conversant and proficient in English and that the Panel should therefore exercise its discretion and find that the proceeding should be conducted in the English language. As has been noted, the Panel has a discretion under UDRP Rule 11(a) to decide the appropriate language of the administrative proceeding. That discretion must be exercised having regard to the particular circumstances of the case. See FilmNet Inc. v. Onetz, FA 96196 (Forum Feb. 12, 2001) (finding it appropriate to conduct the proceeding in English under Rule 11, despite Korean being designated as the required language in the registration agreement because the respondent submitted a response in English after receiving the complaint in Korean and English). In support of its submission, Complainant contends the Domain Name is made up from two English words: TAU and TECHNOLOGIES. In addition, the entirety of the Website to which the disputed domain name resolves is in the English language, although it may also be presented in Russian by selecting an RU button. The English version includes English text, such as “Products,” “Enterprise,” “Pricing,” “Developers,” and “Company.”
It also includes English language logos of other companies, such as Costco Wholesale, The Home Depot, Walgreens, General Motors, and Motorola Solutions. See Compl. Exhibit 3.
The website also includes some colloquial English expressions such as “Let’s Start!”.
On the whole it appears that whoever was responsible for using the domain name in this way, which the Panel must assume was the Respondent or someone authorized by it to construct the website, has considerable familiarity with the English language. Moreover, Respondent must carry responsibility for what appears on its own website in the English language.
Accordingly , the Panel finds pursuant to Rule 11 and having regard to all the circumstances, that the language of the administrative proceeding shall be English and that the proceeding may go forward on that basis.
A. Complainant
Complainant made the following contentions.
Complainant offers engineering and scientific research and development services, including software development, in the fields of space systems, directed energy, electro-optic systems, defense systems, and national security systems. Complainant has rights in the TAU TECHNOLOGIES mark through Complainant’s registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 3,695,076, registered October 13, 2009). See Compl. Exhibit 6. Respondent’s <tau-technologies.com> is identical or confusingly similar to Complainant’s TAU TECHNOLOGIES mark as it incorporates the mark in its entirety, and merely incorporates a hyphen between the two terms and adds the “.com” generic top level domain (“gTLD”).
Respondent lacks rights or legitimate interests in the <tau-technologies.com> domain name. Respondent is not a licensee of Complainant and does not have authorization to use the TAU TECHNOLOGIES mark. Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services as Respondent uses the disputed domain name to pass off as Complainant.
Respondent registered and uses the <tau-technologies.com> domain name to pass off as Complainant and disrupt Complainant’s business for Respondent’s commercial gain. Furthermore, Respondent registered a confusingly similar domain name to create initial interest confusion.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that provides engineering and scientific research and development services, including software development, in the fields of space systems, directed energy, electro-optic systems, defense systems, and national security systems.
2. Complainant has established its trademark rights in the TAU TECHNOLOGIES mark through Complainant’s registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 3,695,076, registered October 13, 2009).
3. Respondent registered the <tau-technologies.com> domain name on July 14, 2015.
4. Respondent uses the disputed domain name to pass itself off as Complainant and disrupt Complainant’s business for Respondent’s commercial gain.
Paragraph 15(a) of 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 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the TAU TECHNOLOGIES mark through Complainant’s registration of the mark with the USPTO (e.g. Reg. No. 3,695,076, registered October 13, 2009). See Compl. Exhibit 6. Registration of a mark with the USPTO is sufficient to demonstrate rights in the mark per Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Since Complainant provides evidence of registration with the USPTO, the Panel finds Complainant has demonstrated rights in the TAU TECHNOLOGIES mark per Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s TAU TECHNOLOGIES mark. Complainant argues Respondent’s <tau-technologies.com> domain name is identical or confusingly similar to Complainant’s TAU TECHNOLOGIES mark as it incorporates the mark in its entirety, and merely adds a hyphen between the two terms. Adding a hyphen and a gTLD to a mark fails to distinguish a disputed domain name sufficiently from the mark per Policy ¶ 4(a)(i). See Pirelli & C. S.p.A. v. Tabriz, FA 921798 (Apr. 12, 2007) (finding that the addition of a hyphen between terms of a registered mark did not differentiate the <p-zero.org> domain name from the P ZERO mark under Policy ¶ 4(a)(i)). Therefore, the Panel finds the disputed domain name is confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s TAU TECHNOLOGIES trademark and to use it in its domain name adding only a hyphen;
(b) Respondent registered the <tau-technologies.com> domain name on July 14, 2015;
(c) Respondent uses the disputed domain name to pass itself off as Complainant and disrupt Complainant’s business for Respondent’s commercial gain;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant contends Respondent lacks rights or legitimate interests in the <tau-technologies.com> domain name as Respondent is not a licensee of Complainant and does not have authorization to use the TAU TECHNOLOGIES mark. Lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). Here, Complainant argues there is no evidence to suggest that Respondent was authorized to use the TAU TECHNOLOGIES mark. Additionally, the WHOIS information of record lists the registrant of the domain name as “Konstantin P Rybas.” Therefore, the Panel finds Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii);
(f) Complainant argues that Respondent fails to use the <tau-technologies.com> domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent uses the disputed domain name to pass off as Complainant. Using a confusingly similar domain name to pass off as a complainant may not be a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding the respondent did not use the domain name to make a bona fide offering of goods or services per Policy ¶ 4(c)(i) or for a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii) where the website resolving from the disputed domain name featured the complainant’s mark and various photographs related to the complainant’s business). Here, Complainant provides a screenshot of the resolving website, highlighting that the website is titled “Tau Technologies.” See Compl. Exhibit 3. Furthermore, Complainant highlights the resolving website gives the impression Respondent provides software development services for mobile device applications. See id. Therefore, the Panel finds Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
Secondly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the TAU TECHNOLOGIES mark and in view of the conduct that Respondent has engaged in since acquiring the disputed domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <tau-technologies.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: January 20, 2021
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