WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION R India Ltd. v. Pluto Domain Services Private Limited Case No. D2008-1738 1. The Parties
The Complainant is R India Ltd. of Mumbai, India, represented by Anand & Anand, of India.
The Respondent is Pluto Domain Services Private Limited of Mumbai, India. 2. The Domain Name and Registrar
The disputed domain name (the “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 November 11, 2008. On November 12, 2008, the Center transmitted by email to Lead Networks Domains Pvt. Ltd. a request for registrar verification in connection with the disputed domain name. On November 18, 2008, Lead Networks Domains Pvt. Ltd. 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 November 24, 2008 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on November 28, 2008. In response to a notification by the Center that the amended Complaint was administratively deficient, the Complainant filed amendments to the amended Complaint on December 20, 2008 and January 5, 2009. The Center verified that the Complaint together with the amendments to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 January 7, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was January 27,
2009. The Respondent was informed that if its Response was not received by that date, it would be considered in default. The Center would still appoint a Panel to review the facts of the dispute and to decide the case in the event of a default. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on January 28, 2009.
The Center appointed Dr. Vinod K. Agarwal, Solicitor of the Supreme Court of England and Wales and Former Law Secretary to the Government of India as the sole panelist in this matter on February 3, 2009. 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
From the Complaint and the various annexure to it, the Panel has found the following facts:
Complainant's activities
The Complainant is active in the areas of e-commerce and e-services on the Internet. The Complainant is the online provider of e-mail services, news, information, chat, communication, entertainment, and shopping services. Most of these services use “Rediff” as a part of their name, such as: Rediff Mail, Rediff News, Rediff Matchmaker, Rediff Shopping, Rediff Connections, etc. Furthermore , provides a combination of services to individuals and business houses. From June 14, 2000, the Complainant has also been publicly traded on Nasdaq from India.
Respondent's Identity and Activities
The Respondent did not reply to the Complainant's contentions. Hence, the Respondent's activities are not known. The domain name was registered on April 23, 2003. 5. Parties Contentions A. Complainant
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are satisfied in this dispute.
In relation to the first element, that is, whether the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights, the Complainant contends that REDIFF is its trademark. The domain name is confusingly similar to the Complainant's trademark. Thus, the domain name is confusingly similar to the Complainant's trademark REDIFF.
In relation to the second element, that is, whether the Respondent has no rights or legitimate interests in respect of the domain name, the Complainant contends that the Respondent has never registered “Rediff” as a trademark or any similar trademark. The Respondent (as an individual, business, or other organization) has not been commonly known by the domain name . Further, the Respondent is not making a legitimate noncommercial or fair use of the domain name. The Respondent registered the domain name for the sole purpose of creating confusion and misleading the general public and the customers of the Complainant.
Thus, it is contended that the Respondent has no rights or legitimate interests in the domain name .
Regarding the second element, that is, whether the domain name has been registered and is being used in bad faith, the Complainant contends that the main object of registering the domain name by the Respondent is to earn profit and to mislead the Internet users. The Complainant has contended that the use of a domain name that appropriates a well-known trademark to benefit from Internet trafficking cannot be considered a “bona fide offering of goods and services”. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel as to the principles the Panel is to use in rendering its decision. It states that, “A panelist shall 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”. According to paragraph 4(a) of the Policy, the complainant must prove that:
(i) The domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) The respondent has no rights or legitimate interests in respect of the domain name; and
(iii) The domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The present dispute pertains to the domain name . The Complainant is the owner of the trademarks REDIFF.COM, REDIFFMAIL, REDIFF BOL, for various internet services such as, e-mail, news, matchmaking, shopping, online trading, connections, etc. The domain name includes the entire REDIFF trademark of the Complainant.
The Complainant's trademark is REDIFF. The Complainant states that the trademark REDIFF is registered in India and the United States of America, and provides the relevant trademark registration numbers but no evidence of such registration has been submitted with the Complaint.
As used in the domain name, the word “india” is descriptive and does not contain any distinctive character. In Lilly ICOS LLC v. John Hopking / Neo net Ltd.,WIPO Case No. D2005-0694, the panel stated that, “generally, a user of a mark may not avoid likely confusion by appropriating another's entire mark and adding descriptive or non-distinctive matter to it”. The consumers of the Complainant, who are well aware of its trademark REDIFF, will immediately presume that the domain name is a domain name belonging to the Complainant. The addition of the generic top level domain “.com”, which is necessary for a domain name to be operational, does not alter the original trademark and does not eliminate the likelihood of confusion with the Complainant's REDIFF trademark. See Pomellato S.p.A v. Richard Tonetti,WIPO Case No. D2000-0493 and Société Générale and Fimat International Banque v. Lebanon Index/La France DN and Elie Khouri,WIPO Case No. D2002-0760.
The Panel finds that the domain name is confusingly similar to the registered trademark of the Complainant. B. Rights or Legitimate Interests
According to paragraph 4(c) of the Policy, the Respondent may demonstrate its rights to or legitimate interests in the domain name by proving any of the following circumstances:
(i) before any notice to the Respondent of the dispute, the Respondent's use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the Respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent has not filed any response in this case. There is no evidence in the record to suggest that the Respondent has become commonly known by the domain name anywhere in the world. The Respondent is known by the name of Pluto Domain Services Private Limited. Based on the default and the evidence in the Complaint, it is presumed that the above circumstances do not exist in this case and that the Respondent has no rights or legitimate interests in the domain name. See also Pavillion Agency, Inc., Cliff Greenhouse and Keith Greenhouse v. Greenhouse Agency Ltd., and Glenn Greenhouse,WIPO Case No. D2000-1221.
REDIFF is the name and mark of the Complainant. In the present circumstances, it is evident that the Respondent can have no rights or legitimate interests in the domain name. Further, the Complainant has not licensed or otherwise permitted the Respondent to use its name or trademark, or to apply for or use a domain name incorporating said name, and in the circumstances it is unclear that anybody could use the word “rediff” as a domain name unless seeking to create an impression of an association with the Complainant.
The Panel finds that the Respondent has no rights or legitimate interests in the domain name. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of the domain name in bad faith:
(i) circumstances indicating that the Respondent has registered or 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 documented out-of-pocket costs directly related to the domain name; or
(ii) the Respondent 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 it has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, internet users to its website or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website or location or of a product or service on its website or location.
The contention of the Complainant is that the present case is covered by the second, third and fourth circumstances as evidence that the domain name was registered in bad faith and is being used in bad faith. The Complainant has furnished evidence of the fact that the website located at the domain name has not been constructed so far and is simply an empty page through which no business is run nor any services are provided. When the said website is accessed, pop-up advertisements appear. Thus, given the circumstances, the disputed domain name is being used by the Respondent for exploiting Internet user's familiarity with the Complainant's reputation and goodwill.
According to the Complaint, this and other information submitted by the Complainant leads to the presumption that the domain name was registered and used by the Respondent in bad faith. The Panel agrees with said contention of the Complainant and concludes that the passive holding of the domain name amounts to the registration and use of the domain name in bad faith.
The Panel notes in passing, it appears that in the past also, domain names with the mark “REDIFF” have been created by others and they have been disputed by the Complainant. In the case of R India Ltd. v. Abadaba S.A., Domain Admin,WIPO Case No. D2008-0803, the panel ordered the transfer of the domain name to the Complainant. Similarly, in the case of R India Ltd. v. REDIFFMOBILE.COM c/o “Whois Identity Shield”,WIPO Case No. D2008-0806, the panel ordered the transfer of the domain name to the Complainant. 7. Decision
In light of the foregoing findings, namely, that the domain name is confusingly similar to a mark in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the domain name, and that the domain name was registered in bad faith and is being used in bad faith the Panel orders, (in accordance with paragraphs 4(i) of the Policy and Rule 15 of the Rules), that the domain name be transferred to the Complainant.
Dr. Vinod K. Agarwal
Sole Panelist
Dated: February 11, 2009
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