The Complainant is Housing Development Finance Corporation Limited (HDFC Ltd.) of Mumbai , Maharashtra, India, represented by Legasis Partners, India.
The Respondent is Raj Kumar of Mumbai, Maharashtra, India. The Domain Name and Registrar
The disputed domain name is registered with Visesh Infotecnics Ltd. d/b/a (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) through email on November 10, 2010. The Complaint also named the Registrar of the disputed domain name as Respondent. On November 10, 2010, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 15, 20 and 26, 2010 the Registrar transmitted by email to the Center its verification response confirming, inter alia, that the Respondent is listed as the registrant and providing the contact details / disclosing registrant and contact information for the disputed domain name.
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 of the Complaint, and the proceedings commenced on December 3, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was December 23, 2010. The Respondent was informed that if a response was not received by that date, the Respondent would be considered in default and the matter will proceed ex-parte. The Respondent did not submit a response. The Written Notice was returned by the courier service as undelivered. Accordingly, the Center notified the Respondent’s default on December 28, 2010.
The Center appointed Dr. V. K. Agarwal as the sole panelist in this matter on January 17, 2011. 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
From the Complaint and the various annexures to it, the Panel has found the following facts:
Complainant’s activities
The Complainant is a company incorporated in the year 1977 according to the laws of India. It is an old and well-established organization dealing in housing finance in India. The Complainant offers a wide range of services like home loans, deposit products, property related advisory services, insurance related services, training services, etc. The Complainant has branches in various cities in India and in some other countries of the world including the United Kingdom of Great Britain and Northern Ireland, Singapore and the United Arab Emirates. The Complainant has undertaken consultancy assignment in some countries of Asia, Africa and Europe for the purpose of assisting in the establishment of financial institutions.
The Complainant has also created a number of group companies in the field of banking and insurance. These companies have the acronym “HDFC” as a part of their name.
Respondent’s activities
The Respondent did not reply to the Complainant’s contentions. Hence, the Respondent’s activities are not known. 5. Parties’ Contentions A. Complainant
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are applicable to this dispute.
In relation to element (i), the Complainant contends that its full name is Housing Development Finance Corporation Limited abbreviated as “HDFC” Ltd. According to the documents of incorporation (since its inception) the major activity of the Complainant has been granting home loans, that is, finances to various entities for the purpose of construction and development of homes/ houses. In the whole of India and in some foreign countries it is also known as HDFC. The mark HDFC and marks comprising HDFC have continuously been used by the Complainant and its group companies since the year 1977.
The Complainant and its group companies are also the owners of the domain names , , , , , , etc. The web page “www.” of the Complainant is visited by a large number of Internet users on a daily basis from around the world. The Complainant receives several queries from non-resident Indians and persons of Indian origin seeking the Complainant’s services on a daily basis.
Thus, the Complainant contends that the domain name is very much identical or confusingly similar to the name and trademark of the Complainant.
In relation to element (ii), the Complainant contends that the Respondent (as an individual, business, or other organization) has not been commonly known by the name of HDFC or by the disputed domain name . Therefore, there is every possibility that by use of the disputed domain name the Respondent may mislead the customers of the Complainant. Thus, the Respondent is not making a legitimate or fair use of the disputed domain name. The members of the public associate the HDFC marks with the Complainant. The Respondent registered the disputed domain name for the sole purpose of creating confusion and misleading the general public and the customers of the Complainant and for encashing the goodwill and reputation of the Complainant.
Regarding the element (iii), the Complainant contends that the main object of registering the domain name by the Respondent is to mislead the general public and the customers of the Complainant. The intention of the Respondent is clearly to divert the customers of the Complainant. The Complainant has stated that the use of a domain name that appropriates a well-known trademark to promote competing or infringing products cannot be considered a “bona fide offering of goods and services”. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel as to the principles the Panel is to use in rendering its decision. It says that, “A panelist shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
According to paragraph 4(a) of the Policy, the Complainant must prove that:
(i) The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; 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 present dispute pertains to the domain name . The Complainant has been using the marks HDFC the full form of which is Housing Development Finance Corporation. In fact, the name of the Complainant is Housing Development Finance Corporation Limited. Since its inception the main activity of the Complainant has been granting home loans, that is, finances to various entities for the purpose of construction of homes/houses.
The Complainant is the registered owner of the trademark HDFC in India under class 36 items relating to ”services relating to finance and monetary affairs including loans for housing”. The Complainant is the registered owner and/or has applied for the registration of the trademarks HDFC (device); HDFC (device) HOME LOANS WITH YOU RIGHT THROUGH; HDFC (device) WITH YOU RIGHT THROUGH, etc. These marks are frequently advertised by the Complainant in various newspapers in India from time to time. The Complainant and its group companies are also the owners of various domain names containing the word “hdfc”.
In The New York Times Company v. New York Internet Services,WIPO Case No. D2000-1072, it was held that the domain name and the newspaper “The New York Times” are identical on their face. Similar conclusions have been arrived at by the panels in the cases Pharmacia & Upjohn AB v. Dario H. Romero,WIPO Case No. D2000-1273 and B Inc v. Cost Net Name Manager,WIPO Case No. D2001-0970.
The disputed domain name incorporates the Complainant’s trademark HDFC in its entirety with the addition of the words “home” and “loans”. The addition of these terms does not prevent a finding of confusing similarity.
Thus, the Panel finds that the disputed domain name is confusingly similar to the registered trademark of the Complainant. Paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
According to Paragraph 4(a)(ii) of the Policy, the Respondent may demonstrate its rights to or legitimate interest in the domain name by proving any of the following circumstances:
(i) before any notice to the Respondent of the dispute, the Respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the Respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights; or
(iii) The Respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent has not filed any response in this case. There is no evidence to suggest that the Respondent has become commonly known by the disputed domain name anywhere in the world. Further, the disputed domain name is not used by the Respondent for a bona fide offering of goods or services. Based on the default and the evidence in the Complaint, the Panel finds that the above circumstances do not exist in this case and that the Respondent has no rights or legitimate interests in the disputed domain name.
It has been held in a number of decisions that, “use which intentionally trades on the fame of another cannot constitute a bona fide offering of goods and services. To conclude otherwise would mean that a Respondent could rely on intentional infringement to demonstrate a legitimate interest, an interpretation which is obviously contrary to the intent of the Policy”.
See Madonna Ciccone, p/k/a Madonna v. Dan Parisi and "M",WIPO Case No. D2000-0847. Also Pavillion Agency Inc., Cliff Greenhouse and Keith Greenhouse v. Greenhouse Agency Ltd., and Glenn Greenhouse,WIPO Case No. D2000-1221.
Further, in view of the fact that the Complainant has not licensed or otherwise permitted the Respondent to use its name or trademark or to apply for or use the domain name incorporating said name, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. Paragraph 4(a)(ii) of the Policy is satisfied. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of the domain name in bad faith:
(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 trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of 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 trademark or service mark from reflecting the mark in a corresponding domain name, provided that it 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 Respondent has acquired the disputed domain name on September 14, 2009. The said registration expires on September 14, 2011. On November 10, 2010 the Complainant sent a copy of the Complaint to the Respondent by registered post to the address as recorded in WhoIs search. However, the same has been returned to the Complainant undelivered. Therefore, the Complainant has contended that either the address provided by the Respondent is incorrect or it does not exist.
The Complainant contends that the disputed domain name was registered or acquired primarily for the purpose of misleading or diverting the customers of the Complainant and to promote the services of the Complainant’s competitors. Therefore, the Respondent is engaged in unfair business practices and is tarnishing the reputation of the Complainant. The Complainant’s contentions have not been rebutted..
This and other information submitted by the Complainant leads to the presumption that the disputed domain name was registered and used by the Respondent in bad faith. Accordingly the Panel finds that the Respondent registered and used the domain name in bad faith. Paragraph 4(a)(iii) of the Policy is satisfied.
See the decisions The Chip Merchant, Inc. v. Blue Star Electronics, d/b/a Memory World,WIPO Case No. D2000-0474 and Yamaha Corporation v. Zhoulei, WIPO Case No. D2004-0126 and Organization Committee for the World Championship of Alpine Ski in 2009 v. Kenny E. Granum,WIPO Case No. D2006-0264. 7. Decision
For the foregoing findings, namely, that the disputed domain name is confusingly similar to a mark in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the domain name, and that the disputed domain name was registered in bad faith and is being used in bad faith, 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.1
Vinod K. Agarwal
Sole Panelist
Dated: January 30, 2011
1 The Complainant has indicated that the remedy preferred by the Complainant is to have the disputed domain name cancelled but if the Panel orders the transfer of the disputed domain name, the Complainant seeks an alternative remedy, i.e. direction to the Registrar and the Respondent to transfer the disputed domain name to the Complainant at the cost of the Respondent. The Panel notes that the remedies available to a complainant in a UDRP proceeding are limited to requiring the cancellation or transfer of the disputed domain name, there is no provision indicating the terms in which these remedies would be carried out. Accordingly, if the Complainant does not accept the transfer of the disputed domain name, the same may be cancelled by the Registrar.
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