WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION R India Ltd. v. Daniyal Waseem Case No. D2010-0346 1. The Parties
The Complainant is R India Ltd. of Mumbai, India.
The Respondent is Daniyal Waseem of Quetta, Pakistan. 2. The Domain Name and Registrar
The disputed domain name is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 6, 2010. On March 8, 2010, 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 March 10, 2010, 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. Further, in response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on March 16, 2010.
Based on email communications received by the Center from the Respondent, the Complainant thereafter requested for a suspension of the proceedings on March 18, 2010 for a period of four weeks to enable the parties to explore settlement options. As a settlement between the parties did not materialise, the Complainant requested that the proceedings be re-instituted on April 19, 2010.
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 April 21, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was May 11, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 18, 2010.
The Center appointed Syed Naqiz Shahabuddin as the sole panelist in this matter on May 31, 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 following summary sets out the uncontested factual submissions made by the Complainant:
(a) The Complainant is an online Internet portal service provider. Through a single log-in facility, accessed through the Complainant's website located at “www.r”, the Complainant provides various online services and e-commerce activities. Currently, these services and activities range from email services, news, online, shopping, chat, messenger, online sharing of audio/videos, astrology and stock market updates.
(b) The name REDIFF.COM is an invented word and was adopted in 1996 by the Complainant. The Complainant has registered the trade mark REDIFF.COM and other REDIFF prefix marks such as REDIFF MAIL and REDIFF BOL on a worldwide basis, including in the United States of America and India.
(c) Most of the Complainant's services apply REDIFF as part of their product or service trade names such as Rediff Mail, Rediff Bol, Rediff News, Rediff Matchmaker, Rediff Shopping, Rediffishare, Rediff Connexions, Rediff P4c Classifieds, Rediff Q&A And Rediff Astrology.
(d) On June 14, 2000, the Complainant became one of the first Indian companies to commence trading on NASDAQ under the symbol REDF. The Complainant has a current market capitalisation of USD 68.69 million as of March 2, 2010. For financial year 2007 – 2008, the Complainant reported revenues for the fiscal year ended March 31, 2008 of USD 32.25 million.
(e) The Complainant has, in the past, succeeded in restraining other parties from using the REDIFF trade mark and other confusingly similar marks in relation to different or similar services, by obtaining injunctive relief in India. The Complainant has also succeeded in several proceedings under the Policy in relation to other domain names which were confusingly similar to the REDIFF trade mark.
(f) The Complainant had previously filed a complaint (No. C2009-0005) against the Respondent through the Domain Name Dispute Resolution Centre (DNDRC), Pakistan in relation to the domain name . In that proceeding, the panel, on August 1, 2009, ordered a transfer of the domain name to the Complainant. Notwithstanding the decision, the Respondent wrote to the Complainant to express his intention to continue using the trade mark despite the decision and included photographs of the Respondent sponsoring an event where trophies displayed the REDIFF mark. 5. Parties' Contentions A. Complainant
(a) The Complainant contends that the disputed domain name is identical in part and confusingly similar as a whole to the REDIFF trade mark in which the Complainant has rights.
(b) The Complainant further contends that the Respondent does not have any rights or legitimate interests to the disputed domain name because:
(i) there is no evidence to indicate that the Respondent has any rights or legitimate interests to the disputed domain name.
(ii) there is no evidence to show that the Respondent is commonly known by the disputed name .
(iii) neither has the Complainant authorised nor licensed the Respondent to register or use the disputed domain name or any of the Complainant's trade marks to form part of a domain name.
(iv) the Respondent is not using the domain name for a legitimate noncommercial or fair use but is instead using it to trade on the fame and recognition of the Complainant's trade mark.
(c) In relation to the requirement of bad faith registration and use of the domain name, the Complainant contends as follows:
(i) the domain name was registered primarily for the purpose of trading on the commercial value and significance of the Complainant's domain name and to misappropriate the Complainant's well known and famous trade mark REDIFF.
(ii) by using the disputed domain name, the Respondent is intentionally attempting to attract for commercial gain, Internet users to the Respondent's website by creating a likelihood of confusion as to the connection or affiliation of the Respondent's website.
(iii) the Respondent has indicated in clear terms that it intends to continue using the Complainant's REDIFF trade mark notwithstanding the decision held by the DNDRC (see paragraph 4(c) above) wherein the panelist held that “the respondent has no legitimate interest in the domain name and the respondent is making mala fide use of the Complainant's trade mark”. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
In order to succeed in its Complaint, the Complainant is required to establish the following elements set out under paragraph 4(a) of the Policy:
(a) that the domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(b) that the Respondent has no rights or legitimate rights in respect of the domain name; and
(c) that the domain name has been registered and is being used in bad faith. 6.1 Identical or Confusingly Similar Trade Mark
The Complainant has adduced sufficient evidence to prove that it has rights to the REDIFF trade mark. Not only has the Complainant registered the trade mark in several jurisdictions, the Complainant has also provided evidence of substantial and reasonably long use of the trade mark.
In this Complaint, the disputed domain name wholly incorporates the REDIFF trade mark. The additional letters “pk” do not appear to distract a reasonable person's overall perception or impression of the distinctive feature of the disputed domain name, being REDIFF. In Magnum Piering, Inc. v The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525, the panel found that where a domain name wholly incorporates the complainant's trade mark, then that is sufficient to establish identity or confusing similarity for the purposes of the Policy.
Accordingly, this Panel concludes that the disputed domain name is confusingly similar to the REDIFF trade mark, in which the Complainant has sufficiently proven that it has rights. 6.2 Rights or Legitimate Interests in the Domain Name
The Complainant's assertions have not been rebutted by the Respondent to indicate whether it has any rights or legitimate interests to the disputed domain name. There was also no evidence to indicate that the Respondent was known by the name “Reddiff” or “rediffpk”.
The Complainant confirms that the Respondent is not authorised or licensed to register or to use the disputed domain name which incorporates the Complainant's trade mark.
The exchange of emails between the Respondent and the Complainant also indicate that the Respondent acknowledged the Complainant's rights and goodwill to the trade mark and that the Respondent wanted to be affiliated with the Complainant. On March 18, 2010, the Respondent wrote that, “...even than i tried to tell Ms Jyoti that we want to remain affliated with you guys and need your help and support, but we never get any response from her,...”. It, therefore, appears that it was always the intent of the Respondent to leverage off the Complainant's goodwill by using the REDIFF trade mark and that it did not possess any rights or legitimate interests to the disputed domain name.
Thus, the failure of the Respondent to reply to the Complainant's contentions and the evidence adduced by the Complainant leads the Panel to find that the Respondent has no rights or legitimate interests in the disputed domain name. The Panel could not find any justification, rights or legitimate interests on the part of the Respondent to the words comprising the disputed domain name.
Based on the above circumstances, the Panel is, therefore, satisfied that the second element of paragraph 4(a) of the Policy has been proven by the Complainant. 6.3 Registration and Use in Bad Faith
Based on the evidence adduced, this Panel is convinced that the REDIFF trade mark was calculatively selected by the Respondent to form the disputed domain name in order to disrupt the Complainant's ongoing business, to extract some form of direct or indirect commercial gain or to otherwise ride on the established goodwill of the Complainant.
By incorporating wholly the Complainant's REDIFF trade mark long after the mark had attained fame, it is suggestive of bad faith on the part of the Respondent. Bad faith may be found where a domain name “is so obviously connected with such a well known product that its very use by someone with no connection with the product suggests opportunistic bad faith.” (See Veuve Clicquot Ponsardin v. The Polygenix Group Co.,WIPO Case No. D2000-0163).
The evidence seems to suggest that the Respondent was aware of the commercial value and significance of the REDIFF trade mark. These include the widely-known nature of the Complainant's mark itself, the timing of the registration of the disputed domain name, the correspondence between the Complainant and the Respondent and the track record of the Respondent with regard to registration of domain names that incorporate the Complainant's REDIFF trade mark. The continued use of the domain name by the Respondent is indicative of opportunistic bad faith on the part of the Respondent.
Accordingly, the Panel is also satisfied that the third element of paragraph 4(a) of the Policy has been satisfactorily proven by the Complainant. 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.
Syed Naqiz Shahabuddin
Sole Panelist
Dated: June 14, 2010
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