WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
R India Ltd. v. Abadaba S.A., Domain Admin
Case No. D2008-0803
1. The Parties
The Complainant is R India Ltd., Mahim (West), Mumbai, India, represented by Anand & Anand, India.
The Respondent is Abadaba S.A., Domain Admin of Panama.
2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with F.1
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 22, 2008. On May 22, 2008, the Center transmitted by e-mail to F a request for registrar verification in connection with the domain name at issue. On May 23, 2008, F transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. 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 June 11, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was July 1, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 2, 2008.
The Center appointed Douglas M. Isenberg as the sole panelist in this matter on August 15, 2008. 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 states that it began operations in 1996 and “is one of the premier worldwide online providers of news, information, communication, entertainment and shopping services.” Complainant further states that it offers a multitude of services via its website at “www.r”, including a chat service known as “Rediff Boll” – “[t]he word ‘BOL' being Hindi for ‘talking'.”
Complainant states that it has a current market capitalization of USD250 million and that its business generated revenues for the quarter ended December 31, 2007, totaling USD8.53 million. Complainant further states that it is traded on The Nasdaq Global Market under the symbol REDF.
Complainant states that it is the registrant of numerous trademark registrations in India and the United States of America for marks that consist of or contain the mark REDIFF, including U.S. Reg. No. 3,101,026 for the mark REDIFF, registered June 6, 2006;2 and Indian Reg. Nos. 822,870 for the mark WWW.REDIFF.COM, registered October 13, 1998; 970,605 for the mark REDIFF BOL, registered November 15, 2000; 970,606 for the mark REDIFF BOL, registered November 15, 2000; and 1,358,316 for the mark REDIFF BOL, registered May 19, 2005.3 Complainant's rights in these marks are referred to hereafter as the “REDIFF Trademark.”
The Disputed Domain Name was registered on December 15, 2000.
5. Parties' Contentions
A. Complainant
In addition to the factual background set forth above, Complaint contends, inter alia, as follows:
The Disputed Domain Name is identical or confusingly similar to the REDIFF Trademark because, inter alia, “the use of the word REDIFF in the initial part of the domain name would be understood as a reference to the Complainant because it is a registered and well-known trademark.”
- Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because it “comprises of a well-known and famous trademark REDIFF as well as the Complainant[‘]s service name REDIFF BOL,” “Respondent is not commonly known by the domain name or REDIFF or REDIFF BOL,” “on accessing the website to which the impugned domain name resolves, pop-up advertisements appear,” and “[t]he Respondent's website is not bona fide since the Respondent is trading on the fame and recognition of the Complainant's well-known trademark in order to cause initial interest confusion.”
- The Disputed Domain Name has been registered and is being used in bad faith because the registration “is nothing but an opportunistic bad faith registration on the part of the Respondent,” “[i]t is apparent that the Respondent has attempted to attract for commercial gain Internet users to the website to which the impugned domain name resolves to by creating a likelihood of confusion with the Complainants well-known and famous trademark REDIFF,” “there is a great likelihood that actual or potential unwary visitors to the Respondent's present web page or any future web page that is resolved to this disputed domain name[], will be induced to [among other things]… believe that the website to which the impugned domain name resolves to is affiliated to the Complainant or that it is the commercial arm of the Complainants Chat Service, REDIFF BOL.”
B. Respondent
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and (iii) the Disputed Domain Name has been registered and is being used in bad faith. Policy, paragraph 4(a).
A. Identical or Confusingly Similar
Based upon at least U.S. Reg. No. 3,101,026 cited by Complainant, the existence of which, as stated above, was independently confirmed by the panel, it is obvious that Complainant has rights in the REDIFF Trademark. In addition, at least two previous panels also have found that Complainant has rights in trademarks consisting of or containing the mark REDIFF. R India Ltd. v. REDIFFMOBILE.COM/ c/o “Whois Identity Shield”,WIPO Case No. D2008-0806 (transfer of ); and R India Ltd. v. Laksh Internet Solutions Private Limited.,WIPO Case No. D2008-0804 (transfer of ).
As to whether the Disputed Domain Name is identical or confusingly similar to the REDIFF Trademark, the relevant comparison to be made is with the second-level portion of the Domain Name only (i.e., “rediffbol”), as it is well-established that the top-level domain name (i.e., “.com”) should be disregarded for this purpose. See, e.g., Hoffmann-La Roche Inc. v. UrProxy Domains,WIPO Case No. D2007-0456 (“the relevant comparison to be made is with the second-level portion of each of the Domain Names only…, as it is well-established that the top-level domain names… should be disregarded for this purpose”).
Therefore, the only difference between the relevant portion of the Disputed Domain Name (“rediff”) and the REDIFF Trademark is the addition of the word “bol” to the Disputed Domain Name.4 As numerous decisions under the Policy have made clear, if “a disputed domain name incorporates the whole of the Complainant's trademark… together with [a] descriptive [phrase]… associated with the Complainant and its renowned activities,” then the domain name is confusingly similar to the Complainant's trademark for purposes of the Policy. Playboy Enterprises International, Inc. v. John Taxiarchos,WIPO Case No. D2006-0561 (internal punctuation and citations omitted). In this case, the addition of the word “bol” to the Disputed Domain Name is in fact associated with the REDIFF Trademark given Complainant's chat services offered under the name “Rediff Bol.” Accordingly, the Disputed Domain Name is confusingly similar to the Complainant's REDIFF Trademark, and the Panel is convinced that Complainant has proven the first element of the Policy.
B. Rights or Legitimate Interests
Complainant alleges that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because it “comprises of a well-known and famous trademark REDIFF as well as the Complainant[‘]s service name REDIFF BOL,” “Respondent is not commonly known by the domain name or REDIFF or REDIFF BOL,” “on accessing the website to which the impugned domain name resolves, pop-up advertisements appear,” and “[t]he Respondent's website is not bona fide since the Respondent is trading on the fame and recognition of the Complainant's well-known trademark in order to cause initial interest confusion.”
Under the Policy, a complainant is required to make out a “prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.” WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 2.1.
Accordingly, as a result of Complainant's allegations and without any evidence of Respondent's rights or legitimate interests in the Disputed Domain Name, the Panel is satisfied that Complainant has proven the second element of the Policy.
C. Registered and Used in Bad Faith
Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy: (i) circumstances indicating that the registrant has registered or the registrant has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the registrant's documented out-of-pocket costs directly related to the domain name; or (ii) the registrant has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant's website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the registrant's website or location or of a product or service on the registrant's website or location. Policy, paragraph 4(b).
In this case, Complainant does not specifically allege which, if any, of the four circumstances listed above exists to create bad faith. However, Complainant appears to argue that bad faith exists pursuant to paragraph 4(b)(iv) of the Policy. In particular, Complainant states that Respondent is using the Disputed Domain Name to deliver pop-up advertisements and that visitors to the website using the Disputed Domain Name may believe that the website is somehow affiliated with Complainant or Complainant's “Redoff Bol” chat service. Given that the display of advertisements is typically considered a commercial activity and that the Disputed Domain Name is so obviously connected with Complainant, it is obvious that visitors to the website using the Disputed Domain Name may in fact be confused as to the “source, sponsorship, affiliation, or endorsement” of the website, in violation of paragraph 4(b)(iv) of the Policy. This conclusion is consistent with the decisions cited by Complainant, including Zinsser Co. Inc., Zinsser Brands, Co. v. Henry Tsung,WIPO Case No. D2006-0413 (“it is overwhelmingly likely that the Respondent had the Complainants' mark in mind when it registered the Domain Name and that it did so with a view to… attract Internet users to his website”); and Micro Electronics, Inc. v. J Lee,WIPO Case No. D2005-0170 (“Respondent is attempting to attract Internet users unwittingly to his site for commercial gain – in the hope that Internet users would be confused into thinking that the site of the disputed domain name is linked to the legitimate business of the Complainant”).
Therefore, the Panel is convinced that Complainant has proven the third element of the Policy.
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 be transferred to the Complainant.
Douglas M. Isenberg
Sole Panelist
Dated: August 27, 2008
1 Although paragraph 8 of the Complaint states that “[t]his dispute concerns the domain name ”, all other references in the Complaint are to the domain name , and there is in the record no objection from Complainant to numerous communications from the Center referencing the domain name . Accordingly, the panel assumes that the single reference to was in error. Furthermore, the panel notes that the domain name was the subject of a previous dispute under the Policy brought by Complainant,WIPO Case No. D2008-0802, which case was terminated prior to the drafting of this decision.
2 Although the Complainant did not provide any evidence to support the existence of this registration, the panel independently confirmed this registration by visiting the website for the United States Patent and Trademark Office. “The panel may also undertake limited factual research into matters of public record if it feels that it needs that assistance in reaching a decision.” WIPO Overview of WIPO Panel Views on Selected UDRP Questions, para. 4.5
3 The Complainant did not provide any evidence to support the existence of this registration.
4 In light of Complainant's failure to provide evidence of its Indian trademark registrations for REDIFF BOL (Nos. 970,605, 970,606 and 1,358,316), the panel does not rely on these registrations.
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