For wide expansion in foreign market trade mark has to be famous?

CJSC “Roust Inc.” is the proprietor of a number of trade mark registrations for marks comprising or including the word mark RUSSIAN STANDARD. The registrations cover a wide variety of goods and services including vodka. Russian Standard, Inc. uses some domain names, such as russian-standard.com, russian-standard.net, russianstandart.com and russianstandart.net, to offer its services.

On May 13, 2011 the “Roust Inc” asked for an indication of reasonable price for domains. It was USD 50,000. “Roust Inc.” declared that it would be willing to compensate for out-of-pocket expenses relating to the russian-standard.com domain name estimated at USD 5,000. On June 9, 2011 “Roust Inc.” offered USD 10,000 for all four domain names, but expressed the hope that the company might be prepared to go up to USD 15,000. The same day the Russian Standard’s representative responded with a counter-offer of USD 20,000 plus four cases of vodka. The negotiations stopped there.

WIPO Arbitration and Mediation Center has contributed to parties in solution of dispute. The complainant, “Roust Inc.”, contended that the domain names are all either identical or confusingly similar to its RUSSIAN STANDARD and RUSSIAN STANDART registered trade marks, that the Respondent, Russian Standard, has no rights or legitimate interests in respect of the domain names and that the domain names were registered and are being used in bad faith.

The Respondent contended that it selected the name “Russian Standard” for its corporate name and two of the domain names, because it has for decades been a commonly used Russian expression apt for use in relation to a wide variety of Russian-related goods and services including the AK-47, the space program and the Respondent’s Sova monthly magazine. Furthermore, the use of name “Russian Standard” has been in a totally different field from that of the complainant.

Complaint has been denied.