WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Tata Communications International Pte Ltd (f/k/a VSNL International Pte Ltd) v. Ravi Maraj Case No. D2010-0314 1. The Parties
The Complainant is Tata Communications International Pte Ltd (f/k/a VSNL International Pte Ltd) of Herndon, Virginia, United States of America, represented by von lode advokat ab, Sweden.
The Respondent is Ravi Maraj of St. Augustine, Trinidad and Tobago. 2. The Domain Name and Registrar
The disputed domain name is registered with CentralNic. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 1, 2010. On March 1, 2010, the Center transmitted by email to CentralNic a request for registrar verification in connection with the disputed domain name. On March 2, 2010, CentralNic transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Complainant filed an amendment to the Complaint on March 19, 2010. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the CentralNic Dispute Resolution Policy (the “Policy”) and the Rules for CentralNic Dispute Resolution Policy (the “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 March 22, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was April 11, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 12, 2010.
The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on April 20, 2010. 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 factual background is taken from information submitted in the Complaint.
Tata Communications is a part of the Tata Group, the largest corporate group in India. Tata Communications was formed after the Tata Group acquired a controlling interest in Videsh Sanchare Nigram Limited (VSNL) in 2002. The Tata Group has operations in more than 85 countries and the scale of its annual revenue is in the vicinity of USD 70 billion.
In August 2007 VSNL launched an International Calling Service called “Trueroots”, linking people particularly from South Asia residing in the United States to their families and friends. The service can be purchased online via , , , and .
The Complainant is the holder of registered trademarks and applications for TRUEROOTS including:
United States Patent and Trademark Office (USPTO) Reg. No. 3641747 filed on September 4, 2007, first use in commerce July 4, 2007, class 38, registered on June 23, 2009;
United Kingdom (“U.K.”) Patent Office trademark Reg. No. 2461089 filed on July 11, 2007, registered on February 29, 2008;
Canadian trademark application No. 1363239 filed on September 11, 2007 claiming use in Canada since at least as early as July 4, 2007;
Community trademark application No. 8754053, filed on December 14, 2009, class 38.
No background information is available about the Respondent except for that submitted in the registration document for the disputed domain name. The disputed domain name appears to have been registered on January 21, 2008. 5. Parties' Contentions A. Complainant
The Complainant has submitted copies of search documents in support of its claim to have rights in the TRUEROOTS trademarks listed in section 4 above.
The Complainant contends that the disputed domain name is confusingly similar to its trademark TRUEROOTS. In the context, the domain designation “.” should be considered as of no legal significance and not distinguishing.
The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant's use of the TRUEROOTS trademark dates back to the launch of the service on August 16, 2007, which predates the registration of the disputed domain name on January 21, 2008. The Complainant states that it has never authorized the Respondent to use the trademark TRUEROOTS in a domain name. The Respondent has no business or other connection with the Complainant.
The Complainant says that the disputed domain name is set up to redirect Internet users to Skype, which is a competitor of the Complainant in the telecommunications field. Thus the Respondent's business is not bona fide. The Respondent is disrupting the business of the Complainant by redirecting the Complainant's customers and prevents the Complainant from reflecting its trademark in a corresponding domain name.
The Complainant further contends that the disputed domain name was registered and is being used in bad faith. The registration date of the disputed domain name was later than the Complainant's announcement of its service, later than the Complainant's first use of the trademark TRUEROOTS, and later than the filing of certain of the trademark applications, but was before the earliest registration dates of the trademarks. The Complainant says that the Respondent must have registered the disputed domain name in the knowledge that trademark rights would soon arise through use or registration of a trademark by the Complainant. It is asserted that the Respondent's motive was either to benefit from the diversion of traffic to his own website, or to sell the disputed domain name profitably, or to block the Complainant from reflecting its trademark in the disputed domain name.
The Complainant has cited decisions under the Uniform Dispute Resolution Policy that it wishes to be considered as of possible precedent value.
The Complainant requests the transfer of the disputed domain name. B. Respondent
No submissions have been received from the Respondent. 6. Discussion and Findings
Paragraph 4(a) of the Policy states that the Respondent is required:
“…to submit to a mandatory administrative proceeding in the event that a third party (a ‘Complainant') asserts to the WIPO Arbitration and Mediation Center (the ‘Center'), in compliance with the Rules, that
(i) your Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the Domain Name; and
(iii) your Domain Name has been registered or is being used in bad faith,
provided that the Complainant has participated in a CentralNic Mediation to which you were a party and which involved the disputed Domain Name and that such Mediation has terminated.”
The Complainant has made the relevant assertions as above. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute. A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires that the Complainant has, in the present tense, rights in a trademark. The Panel is satisfied from the uncontested documentation provided in evidence that the Complainant holds and has rights in trademarks for TRUEROOTS registered at the USPTO and at the U.K. Patent Office, in addition to other trademark applications pending. The Panel is further satisfied on the evidence that the Complainant has exercised common law usage of the trademark since at least as early as August 16, 2007.
The disputed domain name comprises effectively two components. They are, first, the word “trueroots”; and second, the Internet directory identifiers “.us” and “.com”, which, it is well established in domain name disputes, are not distinguishing. The distinctive component “trueroots” is clearly identical to the Complainant's registered trademark TRUEROOTS. The Panel finds for the Complainant under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant states that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant says that it has no connection with the Respondent and has not permitted him to use the Complainant's trademark to register a domain name or in any other way.
Since the Complainant has the difficulty of establishing a negative in the terms of paragraph 4(a)(ii) of the Policy and may not have access to information available to the Respondent, the Policy provides for the Respondent to refute the Complainant's prima facie case in terms set out in paragraph 4(c) of the Policy, or otherwise to the satisfaction of the Panel.
The evidence shows that the website to which the disputed domain name resolves, is set up to redirect viewers to a website of Skype, a well-known Internet voice communications system in competition with telephone systems. The Respondent has made no submission, but it may reasonably be concluded that he could not succeed under paragraph 4(c)(i) of the Policy since he is not using the disputed domain name, identical to the Complainant's trademark, for a bona fide offering of goods or services. The Panel can find no prospect that the Respondent could claim to be generally known as TRUEROOTS within the meaning of paragraph 4(c)(ii) of the Policy, or that he is using the disputed domain name for a fair or noncommercial purpose in the terms of paragraph 4(c)(iii) of the Policy. Accordingly the Panel finds for the Complainant under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Complainant is required to prove that the disputed domain name was registered or is being used in bad faith. Paragraph 4(b) of the Policy states:
“For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a Domain Name in bad faith:
(i) you have registered or you have 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 your documented out-of-pocket costs directly related to the Domain Name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Domain Name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location.
(v) you have provided false contact details to us.”
The disputed domain name resolves to a website of Skype. The screenshot provided as evidence of this by the Complainant's representative, located in Sweden, showed the disputed domain name to have resolved to a Skype website in the Swedish language. In the exercise of the Panel's powers to make certain limited enquiries, it was observed that from an English-language computer address the disputed domain name resolved to a Skype website in English, suggesting that the referral software may be engineered to recognise the visiting computer's language. The website offered facilities to download the Skype program and, by implication, to become a Skype customer.
It may reasonably be concluded on the evidence and in the context of well established Internet business models that the Respondent has not invested in the establishment of a download site on behalf of Skype for any other primary purpose than monetary gain. Skype is a voice communications system that by its nature is in competition with the Complainant. The resale of its programs for commission may be a legitimate activity, but is not so if the reseller attracts Internet viewers for the purpose by the exploitation of another's trademark. On the evidence, the Panel finds that the Respondent's activities amount to the attraction of people looking for the Complainant's website, then attempting to interest them in the alternative and competitive services offered by Skype. The Panel finds that the Respondent has used the disputed domain name for commercial gain by creating a likelihood of confusion with the Complainant's trademark within the meaning of paragraph 4(b)(iv) 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 disputed domain name be transferred to the Complainant.
Dr. Clive N.A. Trotman
Sole Panelist
Dated: May 4, 2010
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