The Complainant is Espire Infolabs Pvt. Ltd. of New Delhi, India, represented by Anand & Anand, India.
The Respondent is TW Telecom of Littleton, Colorado, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with Network Solutions, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 1, 2010. On July 1, 2010, the Center transmitted by email to Network Solutions, LLC. a request for registrar verification in connection with the disputed domain name. On July 1, 2010, Network Solutions, LLC. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 5, 2010. In accordance with paragraph 5(a) of the Rules, the due date for Response was July 25, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 26, 2010.
The Center appointed Brigitte Joppich as the sole panelist in this matter on July 28, 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 paragraph 7 of the Rules. 4. Factual Background
The Complainant was incorporated in 2003 and is part of the Espire Group, which is doing business in the field of software services. The Complainant itself provides end-to-end software services.
The Complainant is registered owner of the Indian trademark no. 1261396 ESPIRE & device, registered on January 16, 2004 in connection with services in international class 42 (hereinafter referred to as the “ESPIRE-Mark”).
The Complainant offers its services over the Internet at “”.
The disputed domain name was registered on July 23, 1997 and is currently inactive. 5. Parties’ Contentions A. Complainant
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy is given in the present case:
(1) The disputed domain name includes the word ESPIRE, which is identical in part and confusingly similar as a whole to the Complainant’s well-known and registered trademark ESPIRE.
(2) The Respondent has no rights to or legitimate interests in the disputed domain name, as the disputed domain name comprises the Complainant’s famous registered trademark in its entirety. The Complainant further states that the Respondent registered the disputed domain name to stop the growth of the Complainant’s business and to misappropriate the reputation associated with the Complainant’s trademark, that the Respondent is not commonly known by the disputed domain name, has not been authorized or licensed by the Complainant to register or use the disputed domain name, and that restricting the Complainant from using or transferring the disputed domain name is an illegal activity. The Complainant further submits that the Respondent is not making a bona fide offering of goods and services but trades under some other name and relies on the recognition of the Complainant’s well-known trademark in order to cause initial interest with and bait Internet users in accessing its website, which is typically the strategy of cyber squatters. The Complainant further contends that the fact that the Respondent is not using the disputed domain name is evidence that the Respondent registered the disputed domain name with the intent to block it and prohibit the Complainant from using it in order to commercially exploit the ESPIRE-Mark and to cause irreparable damage and injury to the Complainant’s goodwill and reputation.
(3) The Complainant contends that the Respondent registered and has been using the disputed domain name in bad faith. The disputed domain name was allegedly registered to disrupt the Complainant’s business, and the Respondent attempted to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the ESPIRE-Mark. The fact that it is parked highlights the mala fide intention of the Respondent “to squat on” the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present:
(i) the domain name is identical or confusingly similar to the complainant’s trade mark; and
(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 disputed domain name fully incorporates the verbal element of the Complainant’s ESPIRE-Mark. It is well established that the similarity between a trademark and a disputed domain name is not eliminated by the mere fact that the trademark includes additional graphical elements (cf. Sweeps Vacuum & Repair Center, Inc. v. Nett Corp.,WIPO Case No. D2001-0031; EFG Bank European Financial Group SA v. Jacob Foundation,WIPO Case No. D2000-0036; Delikomat Betriebsverpflegung Gesellschaft m.b.H. v. Alexander Lehner,WIPO Case No. D2001-1447; Sydney Markets Limited v. Nick Rakis trading as Shell Information Systems,WIPO Case No. D2001-0932). Furthermore, it is well established that the specific top level domain (in this case “.com”) generally is not considered as a distinguishing element when evaluating the identity or confusing similarity between a complainant’s trademark and a disputed domain name (cf. Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com,WIPO Case No. D2001-0374).
Therefore, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s ESPIRE-Mark and that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
In the light of the Panel’s finding below (cf. 6.C.) it is not necessary for the Panel in this regard to come to a decision. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which are evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, i.e.:
(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 trade mark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s 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 trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent 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 circumstances mentioned in paragraph 4(b) of the Policy are not exclusive. The Complainant must show that the disputed domain name was registered in bad faith and is being used in bad faith (cf. Telstra Corporation Limited. v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Telstra Corporation Limited v. Adult Web Development and Telstraexposed,WIPO Case No. D2002-0952; Prada S.A. v. Mr. Chuan Sheng Wang,WIPO Case No. D2003-0758).
On the balance of evidence in this case, the Panel is not convinced that the disputed domain name was registered by the Respondent in bad faith.
The disputed domain name was registered on July 23, 1997. The Complainant’s business has been incorporated in 2003, and the Complainant’s trademark was applied for registration in 2004. The Complainant did not provide any explanation as to how the Respondent - located in the U.S. - could possibly have been aware of the Complainant and the Complainant’s Indian ESPIRE-Mark when registering the disputed domain name.
It is consensus view among Panelists that when a domain name is registered before a trademark right is established, the registration of the disputed domain name was generally not in bad faith because the registrant could not have contemplated the complainant’s non-existent right (cf. Question 3.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions; John Ode dba ODE and ODE - Optimum Digital Enterprises v. Intership Limited,WIPO Case No. D2001-0074; Digital Vision, Ltd. v. Advanced Chemill Systems,WIPO Case No. D2001-0827; PrintForBusiness B.V v. LBS Horticulture,WIPO Case No. D2001-1182). There are certain exceptions to this rule, however circumstances justifying an exception have not been brought to the Panel’s attention on the record of this case and are hardy conceivable given the fact that the registration of the disputed domain name precedes the incorporation of the Complainant business and the registration of the ESPIRE-Mark by more than six years.
Accordingly, the Panel concludes that the first condition of the third requirement of the Policy has not been established. This Complaint must therefore fail. 7. Decision
For all the foregoing reasons, the Complaint is denied.
Brigitte Joppich
Sole Panelist
Dated: August 9, 2010
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