The Complainant is Ezeego One Travels and Tours, Ltd., Mumbai of India, represented by W.S. Kane & Co/Law, India.
The Respondent is Domain Admin, PrivacyP, Moergestel of The Netherlands. 2. The Domain Name and Registrar
The disputed domain name is registered with Visesh Infotecnics Ltd. d/b/a S. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 9, 2010. On August 10, 2010, the Center transmitted by email to Visesh Infotecnics Ltd. d/b/a S. A request for registrar verification in connection with the disputed domain name. Reminders to Visesh Infotecnics Ltd. d/b/a S were sent on August 11, August 12, August 16 and August 20, 2010. No verification response has been received from the registrar.
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 the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent as identified by the Complainant and by the available WhoIs register of the Complaint, and the proceedings commenced on August 25, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was September 14, 2010. The Respondent did not submit any response, other than an automated response email on September 17, 2010. Accordingly, the Center notified the Respondent’s default on September 17, 2010.
The Center appointed Jonas Gulliksson as the sole panelist in this matter on October 7, 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.
On September 20, 2010, the Center requested verification from Visesh Infotecnics Ltd. d/b/a S that the domain name had been put under Registrar Lock due to the expiry of the domain name on October 17, 2010. No response was received. 4. Factual Background
The Complainant is an Indian company providing booking service within inter alia adventure tourism, cruises and tours. Its customer is mainly the English and Hindi speaking public in India.
The Complainant is, inter alia, the holder of the following Indian trademarks:
No. 687878, (device), registered on March 6, 2008, for goods in class 28
No. 687718, (device), registered on March 6, 2008, for services in class 39
No. 689321, (device), registered on March 7, 2008, for goods in class 16
No. 726706, (device), registered on June 2, 2008, for goods in class 18
No. 689349, (device), registered on March 7, 2008, for goods in class 25
Moreover the Complainant is operating through the domain name and the domain name .
The disputed domain name was registered on October 18, 2009. 5. Parties’ Contentions A. Complainant
The Complainant has asserted that the disputed domain name is closely, deceptively and confusingly similar to the Complainant’s trade name Ezeego One Travels and Tours, to its own registered domain name and to its trademarks containing the elements EZEEGO and EZEEGO1. The Respondent has merely replaced the expression “.” with “biz” which has no effect on the confusing similarity.
The Respondent has no legitimate interest as it takes undue advantage of the reputation and goodwill. The Complainant has invested substantial amounts of money into advertisements and promotions. The Complainant refers to theWIPO Case No. D2000-0847 Madonna Ciccone v. Dan Parisi.
Moreover, the Complainant asserts the bad faith of the Respondent which is apparent from the fact that certain symbolic features on the web page of the disputed domain name are nearly identical to the features displayed on the Complainant’s website, such as the colour combinations. The domain name is easy to remember and was particularly chosen as an identifier for the Complainant itself and the services it provides.
The consumer is likely to be misled to believe that the Respondent’s services originate from the Complainant or that they are associated with each other. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1. Outstanding procedural issues The Registrars failure to reply to the Center’s notifications
In this case, the Registrar has failed to answer any of the Center’s emails, despite a number of reminders having been sent. The latest email from the Center was sent on September 20, 2010 in which confirmation was requested that the domain name was placed under registrar’s lock status due to the fact that the domain name is set to expire on October 17, 2010. The Registrar has not answered this email either; however, it appears from the WhoIs register that the domain name indeed is under prohibition of transfer.
The Registrar’s conduct in this matter is reflecting negatively on the Registrar. Albeit the prohibition of transfer seems to have been effected, the lack of response and cooperation is a serious matter.
For the Policy to be able to operate successfully it requires registrars to ensure that their public WhoIs databases are reliable and accurate and that registrars fully and promptly cooperate with Providers in dealing with requests and communications associated with complaints (see Mrs. Eva Padberg v. Eurobox Ltd.,WIPO Case No. D2007-1886.
The Registrar’s action, or rather non-action, in this case is one that ICANN may wish to investigate further. The Panel believes that it is important that such matters are brought to the attention of ICANN. ICANN can take such steps and impose such sanctions as it considers appropriate not only to ensure that the UDRP is observed in a particular case but also to safeguard the operation of the UDRP as a whole, compare with Weyerhaeuser Company v. Eurobox Ltd., Parallam, DP Manager / “Weyerhaeuser Company”,WIPO Case No. D2007-1792. The party identified as the Complainant
The Center has received an automated response email from the Respondent on September 17, 2010.
The content was as follows:
“Hello,
Thank you for contacting PrivacyP. This is an automated reply from contact@privacyp. If you retrieved this email address by performing a WHOIS lookup, then it is likely that this domain name has enabled Privacy Protection Service. Note that:
* PrivacyP provides a WHOIS privacy service for domain name owners that donot wish to be contacted directly.
* We are NOT the actual owner of the domain name.
* However, you can get in touch with the owner (registrant), admin, technical and billing contact of the domain name by visiting the following link:
* Using the above link is the ONLY way to get in touch with the domain name owner.
* We DO NOT accept any postal mail on behalf of the domain name owner and all mails sent to our address will be rejected. Any telephone calls received at the PrivacyP Telephone Number, would be greeted with an electronic answering machine requesting the caller to visit this website.
* Privacy Protection Service is not meant to be used for spam, abuse or any illegal/unlawful activities. If you come across domains names that are using Privacy Protection to aide in such activities, you can use the following link to lodge your complaint and appropriate action will be taken to either make the domain name owner information public or provide you with the necessary details:
Regards,
PrivacyProtect.Org”
The above cited message is, besides PrivacyProtect.Org’s apparent unwillingness to have any external contact with anyone, enough to cast some doubt regarding the true registrant of the disputed domain name.
Unfortunately, the Registrar’s failure to cooperate has meant that no clarification has been provided.
As has been noted by previous Panels, the Policy and Rules were adopted prior to the existence of privacy services and take no account of anything but a single and identified respondent, see the Rules, paragraph 1, which defines Respondent as “the holder of a domain-name registration against which a complaint is initiated.” Since the advent of proxy registrations and privacy services panels in Policy proceedings have not reached a full consensus on how to deal with this practice. As catalogued in Divex Limited v. ZJ, Sam Chang and Tim NG,WIPO Case No. D2007-0861, most panels appear to treat as the respondent the person or entity that has engaged the privacy service, even when that person or entity cannot be identified, see Association Robert Mazars v. Private Whois Service, c/o ,WIPO Case No. D2009-0183. Other panels, including some recent cases,1 have suggested that the definition of the Respondent in the Rules should be interpreted literally. The different interpretations and its adherence to the Policy and the Rules have been comprehensively discussed in e.g. Research In Motion Limited v. PrivacyP/Pluto Domain Services Private Limited,WIPO Case No. D2009-0324.
In most cases where a privacy service has been used by the registrant, the Registrar has in its verification email informed the Center of the actual registrant. However, as noted by the Panel in the decision cited directly above, a registrant that chooses to register through a privacy service and the registrar that provides such registration must bear some of the consequences of anonymous registration. See F. Hoffmann-La Roche AG v. PrivacyP, Domain Admin and Mark Sergijenko,WIPO Case No. D2007-1854; Ohio Savings Bank v. 1&1 Internet, Inc. and David Rosenbaum,WIPO Case No. D2006-0881. This should also be the case for the agency providing these kinds of privacy services.
Neither Complainant nor the provider is to blame if the underlying registrant fails to receive actual notice of this proceeding because it selected a registrar that did not ensure re-transmission of applicable notice to the actual registrant and did not comply with its duty to properly inform the Center of the possible underlying registrant. The Center has forwarded a copy of the Complaint to the identified Respondent which has, although given opportunity not provided any answer but an automated response.
It is this Panel’s view it would be contrary to the aims of the Policy, not to decide this case on the merits even though there may be some questions as to who is the true registrant of the domain name. The fact that there exists privacy services and Registrars that are not acting in compliance with the internationally established rules at hand should not be to the detriment of the Complainant. A. Identical or Confusingly Similar
The Complainant has provided as evidence copies of Indian trademark registrations for the device mark EZEEGO1. It has also provided evidence of the trademark’s use in India. The confusing similarity is obvious, not withstanding the addition of the number 1 in the Complainant’s device mark. The first element of paragraph 4(a)(i) of the Policy is thus satisfied. B. Rights or Legitimate Interests
The Complainant has asserted that the Respondent has no legitimate interest as it takes undue advantage of the reputation and goodwill of the Complainant’s substantial investments The Complainant has invested substantial amounts of money into advertisements and promotions. The Respondent has offered silence.
When this Panel has visited the website connected to the disputed domain name, it has come to a website, not very dissimilar to that of the Complainant in which it has stated “Welcome to Ezeego Travel and Ezeego India”. It appears that it has been the English speaking part of the Indian public which has been the targeted customer, in direct competition with the Complainant’s website and domain name.
Against the Complainant’s assertion of the Respondent’s lack of legitimate interest, the lack of Response and the apparent use of the disputed domain name cannot constitute any bona fide use. The Panel finds that the prerequisites in the Policy, paragraph 4(a)(ii) are fulfilled. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires the Complainant to prove that the domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy lists four circumstances, without limitation, that shall be evidence of the registration and use of a domain name in bad faith:
“(i) circumstances indicating that 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 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 your website or location or of a product or service on your website or location.”
The Complainant has above all contended that the Respondent has attempted to mislead the customers into thinking that the Respondent’s services originate from the Complainant or that they are associated with each other.
When reviewing in particular the content of the website connected to the disputed domain name it is, as the Complainant also contends, evident that certain features and colour combinations are, if not identical, than at least very similar. In the absence of any response, this Panel finds it obvious that the website has been registered and used for the purpose of so called initial interest confusion.
As also stated in the above cited previous Panel decision,WIPO Case No. D2009-0324, it might be argued that a registrant such as the Respondent identified here has a legitimate interest in registering any domain name. Registering a portfolio of domain names is an everyday business that by itself may be entirely lawful. Privacy services may likewise be legitimate in the absence of proof of abuse. And the ICANN name registration system requires a registrar to register a domain name upon its receipt of a proper registration agreement duly completed by a registrant; a registrar is forbidden to undertake any investigation to verify for example, the truth of a registrant's representation and warranty that “to [the registrant's] knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party.” (Policy, paragraph 2(b)) However, if, as in this case, a privacy service is entered into the registrar’s registers for its own account, when faced with a Policy proceeding it still must demonstrate its own legitimate interest in the domain name at issue, and may not be willfully blind to the marks of third parties. Thus, if a privacy service registers as agent, as appears to be the case here, it obtains no greater rights than its principal, the person engaging its privacy service. As stated above, in the absence of any response, the use of the disputed domain name remains sufficient evidence of bad faith registration and use. The Complainant has met its burden of proof under 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.
Jonas Gulliksson
Sole Panelist
Dated: October 21, 2010
1 E.g., Mark Alan Pearson and Markco Media Limited v. Domains by Proxy, Inc. and China Snake Media,WIPO Case No. D2009-0253, although the panel did proceed to find the party that had engaged the privacy service (and not the privacy Service itself) to be the substantive Respondent.
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