WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
R India Ltd. v. Laksh Internet Solutions Private Limited.
Case No. D2008-0804
1. The Parties
The Complainant is R India Ltd., of Mumbai, India, represented by Anand & Anand, India.
The Respondent is Laksh Internet Solutions Private Limited, of Mumbai, India.
2. The Domain Name and Registrar
The disputed domain name is registered with Lead Networks Domains Pvt. Ltd.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 22, 2008. On May 23 and up to June 9, 2008, the Center transmitted by email to the Registrar, Lead Networks Domains Pvt. Ltd., a request for registrar verification in connection with the domain name at issue. The Registrar verification response was transmitted by email to the Center on June 9, 2008 after several reminders were sent by the Center to the Registrar from the period May 23, to June 6, 2008. The Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 9, 2008 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complaint filed an amendment to the Complaint on June 18, 2008. The Center verified that the Complaint together with the amendment to 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 18, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was July 8, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 9, 2008.
The Center appointed Harini Narayanswamy as the sole panelist in this matter on July 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
The Complainant, R India Ltd., is a provider of online news, information, communication, shopping and other Internet related services. It has adopted and used the name REDIFF since its inception in the year 1996.
The Complainant is the owner of the REDIFF mark and the domain name bearing its mark. The Complainant has provided a list of its trademark registrations in India and in the United States of America. In Rediff Communication Limited v. Cyberbooth and Another, AIR 2000 Bombay 27, the Complainant had successfully restrained other parties from using its REDIFF mark.
5. Parties’ Contentions
A. Complainant
The Complainant states that it has pioneered and initiated the foundation of e-commerce in India. The Complainant attributes its strong online presence and reputation to its distinctive and pioneering activities. The Complainant further alleges that its mark is a household name synonymous with e-commerce services.
The term REDIFF, according to the Complainant, is an invented one, which has been extensively used and promoted as a mark by the Complainant. The mark is also used by the Complainant, as the initial part of its trade names, some of which are REDIFF MAIL, REDIFF BOL, REDIFF MATCHMAKER, REDIFF SHOPPING, REDIFF SHARE and REDIFF ASTROLOGY. The Complainant alleges that the REDIFF mark serves as a source indicator and as a distinctive identifier of the Complainant’s services, known by millions of its users.
The Complainant alleges that its main focus is on using technology for community building. Through a single login facility, the Complainant contends that it offers both free and paid community features for individual users and businesses. The Complainant further alleges that it has a market capitalization of 250 million dollars; a figure which it states is far ahead of other Indian e-commerce operators and websites. The Complainant has furnished a copy of an article published in “BNET Business Networks” which articulates certain aspects of its financial growth. The Complainant has also provided a figure of two million dollars as its net income for the quarter ended March 2007 for the financial year 2006-2007. The Complainant further states its business has generated revenues of USD 8.53 million for the quarter ended December 31, 2007, which is allegedly an increase of 10 percent over the revenues figures from corresponding quarter ended December 31, 2006.
In June 2000, the Complainant states that it was one of the first few Indian Companies to have started trading on the NASDAQ under the symbol REDF. The Complainant states that its stock moved to USD 25.41 per ADS on July 13, 2007. The Complainant claims that its mark can be considered a “well known mark” as defined under Article 6 bis of the Paris Convention and that the Respondent has illegally misappropriated its mark. The Complainant requests for the transfer of domain name on the following grounds.
Confusingly similar.
The Complainant states that the disputed domain name contains the word “Rediff”, which makes it identical in part and confusingly similar as a whole to its mark. Due to long and continuous use of the mark by the Complainant, it emphasizes that it has both statutory and common law rights in its REDIFF mark.
The Complainant asserts that the domain name registration is classic example of typo squatting. If a user omits typing the dot between the “www” and the term “Rediff”, the user is misdirected to the Respondent’s website. The Complainant argues that this is a deliberate attempt to confuse users. An unwary user who lands on the Respondent’s site is likely to think that the Respondent is in some way affiliated with the Complainant. The Complainant fears that the domain name will not only create user confusion but will also dilute its mark.
The Complainant cites the following cases to support its arguments: Joanne Rowling v. Alvaro Collazo,WIPO Case No. D2004-0787; Oxygen Media LLC v. Primary Source, WIPO Case No. D2000-0362; Magnum Piering Inc. v. the Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525; and EAuto, LLC v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc.,WIPO Case No. D2000-0047.
No rights or legitimate interests.
The Complainant re-emphasizes that the domain name consists of its well-known REDIFF trademark, which indicates that the Respondent has no rights or legitimate interests in the domain name. The Complainant argues that the disputed domain name closely resembles its domain name , and the only difference being the missing period between the prefix “www” and the term “rediff”.
The Complainant asserts that the Respondent is not commonly known by the domain name. Nor has the Complainant authorized the Respondent to use its mark in the domain name. The Respondent’s choice of domain name is unnecessary, according to the Complainant, as the Respondent’s main intention is to cause confusion regarding the source, sponsorship, affiliation, endorsement of the activities carried on through the website.
The Respondent’s website displays pop up advertisements, which, as per the Complainant, shows that the domain name is not being used for legitimate non commercial purposes. The Respondent’s intention in registering the domain name, according to the Complainant, is to simply misappropriate the Complainant’s reputation.
Respondent’s website is not bona fide, according to the Complainant, as it trades on the fame and recognition of the Complainant’s well-known mark to cause initial interest confusion to bait Internet users. The Complainant believes the Respondent may resort to the typical strategy adopted by such cyber squatters, which is to compel the Complainant to buy out the Respondent.
The Respondent, according to the Complainant, has not engaged in any legitimate activity by which it can show rights or interests in the domain name. Furthermore, the domain name has been parked on “”, where it has been put up for sale. The Complainant states that parking the domain name on an auction site indicates that the domain name was registered by the Respondent only for purposes of sale. The Complainant cites the following cases to support its contentions. Credit Suisse Group v. Kingdomdatanet Network, Inc.,WIPO Case No. D2004-0846 and Credit Industriel et Commercial S.A Banque Scalbert Dupont S.A v. LaPorte Holdings, Inc.,WIPO Case No. D2004-1110.
Bad faith.
The Complainant attributes bad faith registration and use of the domain name to several factors. Firstly, the domain name incorporates the well-known REDIFF mark. Secondly, the deliberate omission of the dot makes for a strong case of typo-squatting. The Complainant cites Sportsman’s Guide. Inc. v. Vipercom, WIPO Case No. D2003-0145, and argues that typo-squatting by itself is strong evidence of bad faith registration and use of the domain name.
Thirdly, the Complainant cites Zinsser Co. Inc., Zinsser Brands Co. v. Henry Tsung, WIPO Case No. D2006-0413 and Micro Electronics, Inc v. JLee,WIPO Case No. D2005-0170, and argues that the Respondent has intentionally not built an active website to mislead Internet users to believe there is some affiliation with the Complainant.
Fourthly, the Complainant states that the Respondent has registered the domain name to disrupt the business of the Complainant by creating a likelyhood of confusion with the well known REDIFF mark and cites the case Go Daddy Software, Inc. v. Daneile Hadani, Sanofi- Aventis v. Elisabeth Riegel, WIPO Case No. D2002-0568 and Andrew Riegel, WIPO Case No. D2005-1045..
Lastly, the Complainant states that Internet users may be induced to believe that the Complainant has licensed their trademark to the Respondent, or that the Respondent has some connection or affiliation with the Complainant’s website or business.
B. Respondent
The Respondent did not file a response or otherwise reply to the Complainant’s contentions.
6. Discussion and Findings
In the “Procedural History”, the Panel had noted that there was a change in the domain name registrant after the Complaint had been filed with the Center on May 22, 2008 and June 9, 2008. The Rules, under paragraph 1, defines the Respondent as the holder of the domain name registration against which a Complaint is initiated. The holder of the domain name registration in the present case was identified by the Registrar on June 9, 2008 as: Laksh Internet Solutions Private Limited, of Mumbai, India.
From May 23, till June 9, 2008, the Registrar did not respond to the numerous emails and reminders sent by the Center requesting for registrar verification. When the Registrar finally responded on June 9, 2008, it informed the Center about the change in registrant of the domain name. This then brings up the question of the motives of the Registrar in delaying the verification response and the nexus between the Respondent and the Registrar. When the change of registrant occurs shortly after the Complaint has been filed, in an attempt by the Respondent to evade or disrupt the proceedings, it is likely a case of what is commonly known as cyber flight.
In another recent case, CanWest Mediaworks Publications Inc. v. Laksh Internet Solutions Private Limited/ SA c/o FP, WIPO Case No. D2008-0687, with a similar set of facts, involving the same Registrar and the same Respondent, the learned panel in that case noted that the practice of registrar verification delay of about thirteen days and the cyber flight associated with it, poses a serious concern. The learned panel urged the Center in that case to bring these facts to the attention of ICANN and the questions it raises about the registrar’s role and possible involvement in facilitating the Respondent’s cyber flight.
These cases highlight the fact that the practice of cyber flight has taken a very serious dimension where the Registrar is perhaps abetting the Respondent’s cyber flight. Of greater concern is the fact that this is not an isolated case, as it represents a pattern which is being blatantly repeated by the very same Registrar, Lead Networks Domains Pvt. Ltd., with the same Respondent, Laksh Internet Solutions Private Limited. The Panel agrees with the reasoning and concerns expressed in CanWest Mediaworks Publications Inc. id that the facts of these cases should be communicated to ICANN for its immediate attention.
Mutual Jurisdiction
The Center informed the Complainant by an email dated June 9, 2008 that the Registrar did not submit in its Registration Agreement to the jurisdiction at the location of the Registrar. This required the Complainant to amend the Complaint to expressly consent to the jurisdiction at the location of the domain holder’s address under the Rules, which it did.
The Complainant is required to prove three essential elements under paragraph 4(a) of the Policy to obtain the remedy of transfer of the disputed domain name. These are:
(i) The domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) The domain name was registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant, under paragraph 4(a)(i) of the Policy must establish that the disputed domain name is identical or confusingly similar to a mark in which it has rights.
The Panel finds that the Complainant has furnished evidence of its well established rights in the REDIFF mark. It has also shown long and continued use of the REDIFF mark and has provided published data regarding its financial status and other aspects of its business growth, which show its continuous and extensive use of the REDIFF mark.
The Panel recognizes that the Respondent has created a domain name which uses the Complainant’s mark in a confusingly similar manner. The only difference between the mark and the domain name is the addition of the prefix “www” and the gTLD identifier “.com.”
The Panel agrees with the Complainant’s contention that using the REDIFF trademark in its entirety in the domain name creates confusing similarity. The Panel finds that the domain name is confusingly similar to the Complainant’s REDIFF mark.
Apart from the visual similarity to the Complainant’s mark, the domain name also has a potential to easily misdirect and confuse Internet users. The Panel concurs with the Complainant’s submission that deletion of a dot in the domain name is not sufficient to dispel the confusing similarity. In fact an Internet user who accidentally omits the dot would be misdirected to the Respondent’s site. Mere omission of a dot between “www” and the trademark has been found a typical case of typo-squatting in several prior decisions. See for instance Alfa Laval AB, Alfa Laval Corporate AB v. Web Advertising, Corp,WIPO Case No. D2007-1895, where this conduct has been recognized as specifically targeting trademarks to diver Internet users.
The Panel holds, that the Complainant has under paragraph 4(a)(i) of the Policy, established that the disputed domain name is identical or confusingly similar to a mark in which it has rights.
B. Rights or Legitimate Interests
The Complainant under paragraph 4(a)(ii), must at least make out a prima facie that the Respondent lacks rights or legitimate interests in the disputed domain name. Under the Policy, a Respondent can claim to have rights if any of the factors listed under paragraph 4(c) are shown which would, for purposes of the Policy, rebut the Complainant’s prima facie case.
The Respondent has not filed a response to contest the allegations made by the Complainant. The Panel finds that the Respondent is not affiliated, authorized or licensed to use the Complainant’s mark. Neither is there any material on record to show that the Respondent is commonly known by the “Rediff” name. Nor is there any evidence which shows that the Respondent has used the domain name in connection with a bona fide offering of goods and services. On the other hand, there is overwhelming evidence showing the Complainant’s legitimate rights and ownership in the REDIFF mark and its strong identification with it.
There is nothing on record which gives any indication that the Respondent is using the domain name in a legitimate manner for non commercial or fair use purposes. The Respondent appears to have merely tried to capitalize on a common mistake that Internet users are likely to make in trying to reach the Complainant’s web site.
Clearly, the disputed domain name is not identified with the Respondent for any legitimate purpose. The Panel therefore holds, based on all the evidence on record, that the Respondent has no rights or legitimate interests in the domain name.
The Panel finds that the Complainant has presented a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name and has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Complainant must establish that the domain name was registered and is being used in bad faith under paragraph 4(a)(iii) of the Policy.
The Complainant’s argument that the domain name was registered for purposes of trafficking is tenable. The Respondent has not built an active website but has parked the domain name on “”, where it has been put up for sale. These circumstances indicate that the Respondent has acquired the domain name primarily for purposes of selling, renting or otherwise transferring the domain name to the Complainant or its competitors for valuable consideration, as per the bad faith circumstances mentioned in the Policy paragraph 4(b)(i).
The Panel accepts the Complainant’s arguments that, given its established reputation, the Respondent has attempted to misappropriate the Complainant’s widely known REDIFF mark by means of typo-squatting. Incorporating the widely known REDIFF trademark in the domain name, adding the generic abbreviation “www” for the “world wide web” and omitting the dot would misdirect Internet traffic looking for the Complainant’s website. Placing or prefixing “www” along with a widely known mark is recognized as a typical form of abusive domain name registration and is a classic example of typo-squatting which shows bad faith. See InfoS Inc., v. Registrar Administrator Lew Blanck,WIPO Case No. D2000-0069.
The Panel finds validity in the Complainant’s argument that the Respondent registered and is using the domain name, to disrupt the business of the Complainant. As the Panel has noted in the first ground discussed above, the domain name creates a likelihood of confusion with the widely known REDIFF mark. The business of the Complainant is focused around its web portal and the various e-services which the Complainant offers. The Panel accepts the Complainant’s argument that a domain name that so closely resembles its name and trademark has a potential to disrupt its business. The Complainant could also lose potential customers who are unsuspectingly misdirected to the Respondent’s website.
Finally, the Panel notes that the Respondent’s reputation is anything but spotless. The Respondent, it appears has been recently been involved in several UDRP cases. Some of these cases are: Hoffmann-La Roche Inc. v. Private Whois for RX-ACCUTANE.COM / Laksh Internet Solutions Private Limited,WIPO Case No. D2008-0682 and CanWest Mediaworks Publications Inc. v. Laksh Internet Solutions Private Limited/ SA c/o FP,, WIPO Case No. D2008-0687. It has been found in these cases that the Respondent has registered domain names in bad faith which infringe other widely known trademarks. The Respondent clearly has a prior history of registering and using the domain names in bad faith.
The Panel concludes that the Complainant has successfully established under paragraph 4(a)(iii) of the Policy that the domain name 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 be transferred to the Complainant.
Harini Narayanswamy
Sole Panelist
Dated: July 29, 2008
Full & Egal Universal Law Academy