WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION M (India) Private Limited v. NVS Consultants Pvt Ltd Case No. D2009-1222 1. The Parties
The Complainant is M (India) Private Limited of Hyderabad, India, represented by Khaitan & Co, India.
The Respondent is NVS Consultants Pvt Ltd of Madhya Pradesh, India. 2. The Domain Names and Registrars
The disputed domain name is registered with Directi Internet Solutions Private Limited d/b/a P. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 15, 2009. On September 15, 2009, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR a request for registrar verification in connection with the disputed domain name. On September 16, 2009, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR transmitted by email to the Center its verification response, confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on September 23, 2009.
The Center verified that the Complaint together with the amended 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 September 23, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was October 13, 2009. The Response was filed with the Center on October 13, 2009.
The Center appointed Pravin Anand as the sole panelist in this matter on November 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.
The Panel passed a procedural order under Rule 12 of the Rules on December 4, 2009 requiring the Respondent to file additional details regarding the registration of its mark in class 42.
On December 10, 2009 the Center received the Respondent's clarificatory submissions to the above mentioned procedural order and on December 16, 2009 the Center received the Complainant's reply to the Respondent's clarificatory submissions. 4. Factual Background
The facts stated in the Complaint by the Complainant M India Private Limited are as follows:
- The Complainant is a subsidiary of Monster Worldwide Inc.
- The Complainant is a well-known global provider of online careers and recruitment services.
- The Complainant has acquired M/s Webneuron Services Limited, owner of the leading Indian job site JobsA in the year 2005. From May 28, 2008 all the rights and liabilities of M/s Webneuron Services Limited was taken over by the Complainant including all its trademarks including JOBSAHEAD.
- The Complainants registered trademarks are as follows:
- JOBSAHEAD under registration number 927251 with a registration date of May 25, 2000 for class 16 with the Indian Trademark Registry.
- JOBSAHEAD, BETTER JOB, BETTER LIFE and design under registration number 1049595 with a registration date of October 4, 2001 for class 16 with the Indian Trademark Registry.
- JOBSAHEAD.COM FILL IN YOUR AMBITION and design under registration number 1270130 with a registration date of March 4, 2004 for class 16 with the Indian Trademark Registry
- The Complainant has extensively marketed its services and trademarks and has advertised and promoted them on a global basis.
- The Complainant is the registrant of the domain name since February 17, 2000.
- The Complainant and its predecessors in title have spent substantial amount of money in advertising the mark JOBSAHEAD.
The facts stated in the Response by the Respondent NVS Consultants Pvt Ltd are as follows:
- The disputed domain name was registered by the Respondent on April 14, 2006 with Directi Internet Solutions Private Limited d/b/a P.
- The Respondent has applied for registration of the trademark JOBSAHEAD.NET under application number 1517365 for class 42 with the Indian Trademark Registry. Additional Facts:
The Panel sought a clarification through its procedural order of December 4, 2009 from the Respondent asking the Respondent for the registration details of the trademark JOBSAHEAD.NET in Class 42 which the Respondent stated that it possessed in its Response to the Complaint. The Respondent in its clarificatory Response had stated that it had only applied for the registration of the mark JOBSAHEAD.NET in Class 42 bearing application number 1517365. 5. Parties' Contentions A. Complainant
The Complainant contends that:
- the mark Jobsahead was adopted by the predecessor of the Complainant as early as the year 1999.
- that the word “Jobsahead” has all the trappings of an arbitrary word and on account of its highly distinctive nature and the pioneering activities of its founder, the word “Jobsahead” has acquired an excellent reputation from the very beginning and the same has been consistently associated with the high quality of online recruitment services rendered under the mark Jobsahead.
- on account of its adoption, long, continuous and uninterrupted use and extensive advertising the predecessor company in title and now the Complainant company are the proprietor of the mark Jobsahead in India.
- the Respondent has registered the disputed domain name and has proceeded to activate a website under the said name. The fact that the website has been activated amounts to misuse of the Complainant's trade name, registered trademark and amounts to bad faith.
- the disputed domain name is identical to the trademark JOBSAHEAD in which the Complainant has rights; and
- the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
- the disputed domain name was registered and is being used in bad faith; B. Respondent
The Respondent contends that:
- the Complainant's mark is descriptive.
- the Registration of the trademark JOBSAHEAD is in different class than used by the Respondent.
- the comparison of the trademark and the disputed domain name should be done by considering the mark as a whole and not in parts.
- the Complainant enjoys no interest in the disputed mark.
- the Respondent has long acquired legitimate rights in the disputed mark by virtue of its use and application in Trademark Registry from April 2006.
- there is a delay on part of the Complainant and also in that time the Respondent has made investments in the disputed domain name.
- the disputed domain name was not registered and is used in bad faith. 6. Discussion and Findings
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that 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) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) that the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The disputed domain name at issue is . The Complainant is the holder of several registered trademarks comprising of the words “jobs” and “ahead”. Further the Complainant is also the registered proprietor of the trademark JOBSAHEAD in class 16 under registration number 927251.
The Panel recognizes that in numerous proceedings, a distinctive mark in its entirety which is incorporated in a domain name has been found to render the domain name confusingly similar to the distinctive mark in question (inter alia, Minnesota Mining & Manufacturing v. JonLR,WIPO Case No. D2001-0428; Sony Corporation v. Park Kwangsoo,WIPO Case No. D2001-0167).
In Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party,WIPO Case No. D2000-1415, the Panel stated that “[a]n independent basis for finding that a domain name is confusingly similar to a trademark is that, by virtue of the domain name itself, the domain name may confuse Internet users as to whether the site is associated or affiliated with, or sponsored by, the trademark holder.”
The Respondent has raised contentions regarding the validity of the Complainant's trademark registration by stating that the mark JOBSAHEAD is descriptive of the nature of the Complainant's goods and services offered under the said trademark. So long that the mark is a registered trademark in India, the descriptive aspect has already been considered by the Registrar of Trademarks and the mark has been considered to have acquired distinctiveness. Hence, this argument has no meaning at this stage as there is vast authority for the proposition that even descriptive words can acquire a secondary meaning and become a valid trademark.
Therefore the Panel finds that the disputed domain name is confusingly similar to the Complainant's trademark. B. Rights or Legitimate Interests
The Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the domain name:
- The Complainant did not know the Respondent and confirms that Respondent is not related to its business, and that it is not one of its subsidiaries, branch or correspondent and that it does not carry out any business with the Respondent.
- The Complainant has neither authorized nor licensed to the Respondent, in any way, the right to use or exploit the JOBSAHEAD trademark or to appropriate it in a domain name or to otherwise associate itself with the Complainant.
The respondent's user is not bonafide because of the following reasons:-
a) they have adopted an identical mark as the Complainant ;
b) in respect of identical services;
c) having made a misrepresentation that the mark is registered, when it was not;
d) they are not commonly known as ‘jobsahead' and no documents have been filed to establish this;
e) their user is not descriptive for the following reason:-
‘Jobsahead' is an unusual combination of the words ‘Jobs' and ‘Ahead' and for that reason is distinctive and has been so regarded by the Registrar of Trademarks in India while registering the petitioner's trademark and several variations thereof. The use of the said mark would amount to a trademark infringement in India and for that reason alone it cannot be bonafide or legitimate in any manner. C. Registered and Used in Bad Faith
The Respondent's registration of the disputed domain name strongly suggests knowledge of and intent to capitalize on the Complainant's trademark JOBSAHEAD. It is not reasonable to expect that the Respondent at the time of the registration of the domain name had no knowledge of the Complainant's trademark and services in connection thereto.
The Respondent has not presented any viable reasons or evidence or arguments of a legitimate interest in using the disputed domain name. It is not possible to conceive an obvious reason in which the Respondent could legitimately use the disputed domain name besides capitalizing on the reputation and goodwill associated with the Complainant's trademark Jobsahead.
Further the use of the disputed domain name by the Respondent would lead customers into believing that:
- The Respondent has some connection with the Complainant in terms of a direct nexus or affiliation with the Complainant.
- The Respondent's activities are endorsed by the Complainant.
It is unfortunate that the Respondent in its reply to the Complaint stated that its trademark JOBSAHEAD.NET was registered in Class 42. The Panelist wanted to verify this fact and upon verification, it learned that the Respondent's mark was only pending registration. The Respondent in its clarificatory email dated December 10, 2009 stated “The said application is still pending with the Trade Marks Registration Division”. This may not necessarily have been a deliberate concealment, but nonetheless does damage the Respondent's credibility, as in a suitable case, the panelist may have acted erroneously on this representation.
For all of the above reasons, the Panel therefore holds on balance that the Complainant has proved that the Respondent was acting in bad faith pursuant to paragraph 4(a)(iii) 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.
Pravin Anand
Sole Panelist
Dated: December 23, 2009
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