The Complainant is Godrej Consumer Products Private Limited of Mumbai, India, represented by ANM Global, India.
The Respondent is Chris Peri of East Dundee, Illinois, United States of America. 2. The Domain Name and Registrar
The disputed domain name, (the “Domain Name”), is registered with GoD, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 6, 2011. On January 6, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On January 6, 2011, the Registrar 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 the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 13, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was February 2, 2011. The Response was filed with the Center on February 1, 2011.
The Center appointed Tony Willoughby as the sole panelist in this matter on February 11, 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.
As will be seen below, the Response contained a consent to the transfer of the Domain Name but the “consent” seeks a price (out of pocket expenses), which is not particularized. There is nothing before the Panel to indicate that that “consent” has led to any settlement of the dispute, so the Panel proceeds to a decision. 4. Factual Background
The Complainant is a member of a substantial group of industrial companies based in India and known as the Godrej Group. The business was founded in 1897 and commenced with the manufacture of locks (1897) and soaps (1920). It is now engaged in the provision of a wide variety of goods and services ranging from locks to food to refrigerators.
The Complainant owns trade mark GODREJ, in stylized form. The Complainant and other member companies of the Godrej Group are the registered proprietors of a large number of trade mark registrations in India and elsewhere of or including the mark GODREJ, mainly in stylized form. One such registration is Indian Trade Mark Registration Number 4774 dated September 4, 1942 GODREJ (in script form) in class 3 for soaps, scents et cetera. The trade mark was originally registered in the name of another company in the Godrej Group, Godrej Soaps Limited but the latest renewal notice extending the registration to September 6, 2016 is addressed to the Complainant.
The Godrej Group has for many years operated a trading website connected to the domain name, , a domain name, which its associated company, Godrej & Boyce Mfg. Co. Ltd., registered on August 17, 1998.
The Domain Name was registered on February 28, 2007. 5. Parties’ Contentions A. Complainant
The Complainant contends that the Domain Name is identical or confusingly similar to its GODREJ trade mark, that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Domain Name was registered and is being used in bad faith. B. Respondent
The Respondent denies the Complainant’s allegations. He contends that when he was searching for a domain name to register that had something to do with “God”, the name ‘godrej’ showed up on the domain search.
The Respondent denies that the Domain Name was registered and is being used in bad faith. He asserts that he has never used it. He recites the examples of bad faith registration and use set out in paragraphs 4(b)(i), (iii) and (iv) of the Policy and denies that any of them is applicable.
The Respondent also draws attention to the fact that the Respondent has held the Domain Name for 4 years without using it and without offering it for sale. He criticizes the Complainant for failing to show any interest in the Domain Name at an earlier stage and for rushing into this Complaint without first contacting the Respondent.
The Response concludes as follows:
“IV. Consent to Remedy
This paragraph if included informs the Complainant, the Registrar(s), and the Center that the Respondent is willing to pursue a pre-decision settlement option.
The Respondent is willing to transfer the disputed domain name immediately, without any problem and at the earliest, and offer all co-operation in the transfer, provided the Complainant agrees to the following:
Not to harass Respondent now or in future with any other complaint, or law suit or any other claims.
Not to accuse the Respondent of any wrong doing.
Reimburse the Respondent’s out-of-pocket costs directly related to the domain name – reasonable expense for the registration, domain renewal charges that the Respondent had incurred on the domain name.
No expense will be asked of the Respondent to pay for any of the costs relating
to the transfer of the domain name to the Complainant now or in the future. And this settlement is willingly done in good-faith between the Complainant and the Respondent and is final.” 6. Discussion and Findings A. General
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a trade mark 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 was registered and is being used in bad faith. B. Identical or Confusingly Similar
The Domain Name comprises in the main the house mark of the group of companies of which the Complainant is a prominent member company. This is also a trade mark (albeit in stylised form) of which the Complainant is a registered proprietor (see section 4 above). The only addition is the generic “.biz” top level domain suffix, which may be ignored for the purpose of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy.
The Panel finds that the Domain Name is identical or confusingly similar to a trade mark in which the Complainant has rights. C. Rights or Legitimate Interests
The Respondent registered the Domain Name in 2007 in the “.biz” top level domain (“TLD”). That domain is the subject of certain restrictions. According to the Registration Restrictions, “Registrations in the ‘.biz’ TLD must be used or intended to be used primarily for bona fide business or commercial purposes.”
However, the Respondent has acknowledged (and indeed sought to make a virtue of the fact) that he has made no use of the Domain Name since he registered it.
Why did the Respondent register the Domain Name? The only clue that he gives in the Response is that he came across the Domain Name while looking for a domain name “that had something to do with ‘God’”.
Given that the Domain Name is in the “.biz” TLD, one might reasonably have assumed that the Respondent intended to use the Domain Name for business, that being one of the ICANN restrictions related to the domain. On that basis the Panel supposes that it should be a simple matter for the Respondent to demonstrate his plans for the Domain Name. However, while the Respondent details what uses he has no intention of making of the Domain Name, at no stage does he give any indication of what is his proposed use of the Domain Name (business or otherwise).
The Complainant asserts that GODREJ is a very well-known trade mark in India and elsewhere. The Panel is unable to assess the fame of the Complainant’s trade mark outside India, but it is evidently a major household name in India and certainly strikes the Panel as a very unusual name to an English speaker. On the evidence put forward by the Complainant (and not disputed by the Respondent), it is likely to be unique to the Complainant. A Google search on the name, the results of which are exhibited to the Complaint, featured references to the Complainant, and nobody else.
In the absence of any indication from the Respondent as to the purpose for which he proposes to use the Domain Name, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name. D. Registered and Used in Bad Faith
On the evidence before the Panel there has to be a strong suspicion that the Respondent registered the Domain Name for no bona fide business purpose, in which case, had the Complaint included a complaint under the Restrictions Dispute Resolution Policy, it is likely that the Domain Name would have been ordered to be transferred to the Complainant or cancelled for that reason alone.
The Respondent says that he registered the Domain Name because it cropped up when he was looking for a domain name having something to do with God. To an English speaker the only connection that the domain name has with God is that it features at the beginning the letters “g”, “o” and “d”. Otherwise it is meaningless. If the Respondent was proposing to use the Domain Name for a business purpose (a prerequisite to registering in the “.biz” domain), one is left to wonder what business purpose that could be.
Having seen “godrej” appear as an available name, one could have expected the Respondent to check whether any conflicting business use had been made of the name. One might also have expected him to check whether the “.com” version was in use and if so for what business purpose. If the Respondent made any such enquiries, he has not felt it appropriate to share that information with the Panel.
In the result, the Panel is left to conclude that the Respondent has deliberately failed to disclose (a) what he knew of the Complainant in advance of registration of the Domain Name and (b) the true reason for his registration of the Domain Name. “Godrej” is a very unusual word/name to an English speaker and in the business community (the community covered by “.biz” domain name registrations) it seems to indicate the Complainant and nobody else.
Thus, the Panel finds on the balance of probabilities that the Respondent registered the Domain Name, knowing it to be the unique and very well-known Indian household brand name of the Complainant and with intent to capitalize in some way on the value of the Complainant’s trade mark.
The fact that it has taken the Complainant about 4 years since registration of the Domain Name to launch the Complaint is of no assistance to the Respondent. Given that the Respondent has made no actual use of the Domain Name to date, it may well be that it took some time before the Complainant learnt of the existence of the registration. Certainly, the lapse of time is insufficient to establish any form of acquiescence.
In the view of the Panel that continuing threat of abusive use hanging over the head of the Complainant is sufficient to constitute an abusive use for the purposes of paragraph 4(a)(iii) of the Policy.
The Panel finds that the Domain Name was registered and is being used in bad faith. 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.
Tony Willoughby
Sole Panelist
Dated: February 15, 2011
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