The Complainant is R India Ltd. of Mumbai, India, represented by Anand & Anand, India.
The Respondent is Personal, EM India of New Delhi, India. 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 January 7, 2011. On January 7, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 7, 2011, 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. The Complainant filed an amendment to the Complaint on January 15, 2011.
The Center verified that the Complaint together with the amendment to 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 17, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was February 6, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 8, 2011.
The Center appointed Maninder Singh as the sole panelist in this matter on February 14, 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
In the complaint filed by the Complainant, it has been claimed that the Complainant has been providing various online services and e-commerce activities such as rediffmail, news, online shopping, chat, messenger, online sharing of audio/videos, astrology to stock market updates etc. - through its website “www.r”. It might be noted that the Complainant claims that the domain name was adopted by the Complainant in the year 1996 and the same appears to have been registered as a domain name on February 8, 1997 (Annexure-H). The complainant has been using world class technology to drive community building. According to the Complainant, its domain name is well known in almost every field of e-service and e-commerce.
The Complainant has further claimed that it has been using “Rediff” as prefix to its various services viz. REDIFFMAIL, REDIFFMAILPRO, REDIFFBOL, REDIFFNEWS, REDIFFMATCHMAKER, REDIFFSHOPPING, REDIFFISHARE, REDIFFCONNEXIONS, REDIFFP4CCLASSIFIEDS, REDIFFQ&A, REDIFFASTROLOGY etc. (Annexure-C). Through a single login facility, the Complainant provides a combination of free and paid community features and products to individuals and businesses. For millions of users all over the world, the word “rediff” is a distinguishable mark – a mark on which they have implicit faith and trust. The perusal of the Complaint further shows the claim of the Complainant that the copyright in the said domain name and its concept rests with the Complainant. The Complainant has neither licensed nor granted any rights to any third party to use its domain name.
The reported revenue from the domain name for the year ending on March 31, 2010, as shown in the Complaint, is to the tune of USD 18.84 million. According to the Complainant, the current market capitalization (as on January 4, 2011) of the Complainant’s domain name is USD144.19 million.
Whereas the Complainant had registered its domain name in the year 1997, the disputed domain name has been registered in the name of Respondent on July 12, 2008 (Annexure-A). The Respondent’s domain name includes the word “Rediff” which is identical to the well known trademark and service mark of the Complainant in which the Complainant has a statutory right as well as common law by virtue of its long and continuous user and being the registered proprietor thereof.
For further strengthening of its case, the Complainant has asserted that in the past also, the Complainant has been able to get restraint orders issued against parties for using deceptively similar marks to its domain name “Rediff.Com”. In this regard, the Complainant has, inter-alia, annexed the judgement of the Hon’ble Bombay High Court in its case titled as – Rediff Communication Ltd. Vs. Cyberbooth & Anr. – AIR 2000 Bombay 27 (Annexure-J). Reliance has also been placed by the Complainant on certain UDRP decisions of WIPO (Annexures-M&N) including in certain complaints filed by complainant itself. One of such cases relied upon by the Complainant is titled as R India Ltd. Vs. R C/o Whois Identity Shield,WIPO Case No. D2008-0806 (Annexure-K).
As against the above claim of the Complainant set-out in the complaint, the Respondent has not furnished any response and in these circumstances, the Panel is left with no other option but to proceed on the basis of the current record. 5. Parties’ Contentions A. Complainant
The Complainant contends that:
(1) The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
(i) The Complainant contends that the Respondent’s domain name includes the word “rediff” which is identical as a whole to the well known trademark and service mark REDIFF, REDIFF.COM in which the Complainant has a statutory right as well as a right in common law by virtue of long and continuous user and being the registered proprietor thereof.
(ii) The Complainant claims that people across the world associate the name REDIFF exclusively with the Complainant and its multifarious e-services and activities.
(iii) The Complainant further alleges that the adoption of the disputed domain name by the respondent is an attempt to associate itself to the Complainant’s online service under the trade name/domain name by incorporating the name of the service in full. If a user searching for Complainant’s service online as REDIFF will be taken to the Respondent’s domain name, thereby enhancing the possibility of inevitable confusion.
(2) The Respondent has no rights or legitimate interests in respect of the domain name.
(i) The Complainant contends that the disputed domain name comprises of a well known and famous trademark REDIFF, the sole purpose of registering the domain name is to misappropriate the reputation associated with the Complainant’s famous domain name .
(ii) The Complainant has never authorized nor licenced the Respondent to register or use the disputed domain name incorporating its domain name / trademarks or any part thereof.
(iii) The Respondent’s choice of the Complaint’s well known trademark REDIFF as part of its domain name is totally unnecessary and the sole purpose of carrying on business through the use of the disputed domain name incorporating the Complainant’s well known and famous trademarks is to cause confusion as to the source, sponsorship, affiliation or endorsement of the activity being carried on through the website.
(iv) The Complainant submits that the Respondent’s website is not bonafide since the Respondent is trading on the fame and recognition of the complainant’s well-known trademark in order to cause initial interest, confusion and bait Internet users to accessing its website and force the Complainant to buy the Respondent out in order to avoid said confusion as is typically the strategy of such cyber squatters. The Respondent has no right or legitimate interest in the disputed domain name.
(3) The domain name was registered and is being used in bad faith.
(i) The Complainant submits that the Respondent was aware of the commercial value and significance of the domain name and the adoption and use of the disputed domain name by the Respondent is nothing but an opportunistic bad faith registration.
(ii) The incorporation of Complainant’s well known and famous domain name by the Respondent in its disputed domain name is for the purpose of misappropriating the Complainant’s domain name.
(iii) By its malafide adoption of the Complainant’s domain name, the Respondent is trying to create a likelihood of confusion with the Complainant’s well known and famous trademark REDIFF.
(iv) The Respondent has registered the disputed domain with a view to disrupt the business of the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Panel has considered the documents submitted by the Complainant for supporting the claim that the Complainant has been using the trademark REDIFF.COM for its various online services and e-commerce activities since 1996 and has a trademark registration in respect of its mark WWW.REDIFF.COM on October 13, 1998. There does not appear to be any doubt that the Complainant is the owner of general trademarks with “Rediff” as the distinctive element, as coined by it and is widely used for last more than one decade. Indeed, it is a well known mark which is distinctive and identified with its owner. The Panel has no doubt that the Complainant has trademark rights that also correspond to its disputed domain name . The disputed domain name with the addition of “gamesclub” is not sufficiently different from the Complainant’s trademark for the purposes of the first element; and the domain name of the Respondent would remain confusingly similar to the trademark of the Complainant. The Panel has no doubt that the user of the word “rediff” either as a pre-fix or as suffix etc. in any other mark or name attempting to relate it with the Complainant would neither be bona fide nor would it be permissible. The Panel, therefore, concludes that the domain name registered by the Respondent on July 12, 2008 noting the dominant “Rediff”, is confusingly similar to the well known trademark and service mark of the Complainant. B. Rights or Legitimate Interests
The Panel has no doubt that the disputed domain name incorporates the well known and famous trademark REDIFF of the Complainant. The Respondent has failed to submit any response or document to prove that it has rights or has been using the disputed domain name legitimately. The contention of the Complainant that the Respondent has been using the disputed domain name - being identical and confusingly similar with the domain name of the Complainant, without any authorization or licence from the Complainant. It is more than apparent to this Panel that such an attempt on the part of the Respondent is to create confusion and to cash on the name of the Complainant. The Respondent is apparently attempting to extract commercial benefits for itself at the cost of the Complainant by adopting a confusingly similar domain name. The Panel has little difficulty in accepting that the Respondent has nothing to prove its bona fide use of the disputed domain name as it has failed to submit any response or document to show that it had legitimate interests in the disputed domain name in response to the prima facie case made by the Complainant.
The Panel has, therefore, little doubt in its mind that the Respondent has no legitimate interests or rights in the disputed domain name. C. Registered and Used in Bad Faith
The disputed domain name has been registered by the Respondent subsequent to the Complainant’s relevant trademark registration and is being used in bad faith.
In the absence of any response to the contrary, the Panel has no inhibition in accepting that the contention of the Complainant that having fully aware of the commercial value and significance of its domain name, the Respondent has attempted to grab the disputed domain name to take commercial advantage of it by riding over the substantial goodwill and reputation of the Complainant in the domain name.
The Panel is of the view that there is every likelihood of Internet users of the disputed domain name of Respondent believing that there is connection, nexus, affiliation or association between the Complainant and the Respondent thereby having the effect of disrupting the business of the Complainant.
The Panel, therefore, finds that the disputed domain name was registered and being used in bad faith by the Respondent. 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.
Maninder Singh
Sole Panelist
Dated: February 19, 2011
Full & Egal Universal Law Academy