The Complainant is M/s Genpact Limited of Hamilton, Bermuda, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland, represented by Saikrishna & Associates, India.
The Respondent is Li Ye of Lishui, Zhejiang, China. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 14, 2012. On February 15, 2012, the Center transmitted by email to GoD, LLC a request for registrar verification in connection with the disputed domain name. On February 16, 2012, GoD, 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 the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 21, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was March 12, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 13, 2012.
The Center appointed Edoardo Fano as the sole panelist in this matter on March 20, 2012. 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.
The Panel has not received any requests from the Complainant or the Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the Parties (taking note of the Respondent’s default in responding to the Complaint).
Having reviewed the communication records in the case file provided by the Center, the Panel finds that the Center has discharged its responsibility under the Rules, paragraph 2(a), “to employ reasonably available means calculated to achieve actual notice to Respondent”. Therefore, the Panel shall issue its Decision based upon the Complaint, the Policy, the Rules and the Supplemental Rules and without the benefit of the Respondent’s response.
The language of the proceeding is English, being the language of the Registration Agreement. 4. Factual Background
The Complainant is Genpact Limited, and operates in the field of technology and knowledge services, with delivery centers in several countries, among which are India, China, the United States of America, Mexico, Romania, Hungary, Poland, South Africa, Colombia, Brazil, Japan.
From the year 2005, the Complainant is the owner of the trademark GENPACT. The followings are examples of the registration of the GENPACT trademark in several countries:
- India Trademark Registration GENPACT, No. 1363160;
- United States Trademark Registration GENPACT, No. 3,610,355;
- China Trademark Registrations GENPACT, No. 4752263, 4751768, 4751770;
- Brazil Trademark Registrations GENPACT, No. 827486294, 827486260, 827486286;
- Argentina Trademark Registrations GENPACT, No. 2.263.863, 2.116.514, 2.116.515;
- Chile Trademark Registration GENPACT, No. 755,475.
The Complainant provided evidence in support of the above-mentioned trademark registrations.
The Complainant also owns several domain names, among which are , , , , , , .
The disputed domain name was registered on June 8, 2011. At the time the Complaint was filed, the disputed domain name pointed to a webpage with sponsored links and stated that the disputed domain name is for sale. 5. Parties’ Contentions A. Complainant
The Complainant states that the disputed domain name is identical to its trademark GENPACT.
Moreover, the Complainant affirms that the Respondent has no rights or legitimate interests in respect of the disputed domain name since it has not been authorized by the Complainant to register and/or use the disputed domain name and it is not making a noncommercial or fair use of the disputed domain name.
The Complainant submits that the Respondent has registered and is using the disputed domain name in bad faith.
In fact, the Complainant’s trademark GENPACT, registered in many countries around the world, is owned by a company operating in the field of technology and knowledge service delivery, and the website at the disputed domain name consists of sponsored links in the same field, creating a clear likelihood of confusion among Internet users.
Further proof of the Respondent’s bad faith is the fact that the disputed domain name is offered for sale at the relevant website.
The Complainant finally considers the Respondent a professional cybersquatter since the Respondent appears to be the owner of about 154 domain names. B. Respondent
The Respondent did not reply to the Complainant’s contentions and is in default; in reference to paragraphs 5(e) and 14 of the Rules no exceptional circumstances explaining the default have been put forward.
A respondent is not obliged to participate in a proceeding under the Policy but if it fails to do so, facts asserted by a complainant may be taken as true, and reasonable inferences by the panel, in accordance with paragraph 14(b) of the Rules, may be drawn (see also Reuters Limited v. Global Net 2000, Inc,WIPO Case No. D2000-0441; Microsoft Corporation v. Freak Films Oy,WIPO Case No. D2003-0109; SSL INTERNATIONAL PLC v. MARK FREEMAN,WIPO Case No. D2000-1080; ALTAVISTA COMPANY v. GRANDTOTAL FINANCES LIMITED et al.,WIPO Case No. D2000-0848; Confédération Nationale du Crédit Mutuel, Caisse Fédérale du Crédit Mutuel Nord Europe v. Marketing Total S.A.,WIPO Case No. D2007-0288). 6. Discussion and Findings
Paragraph 4(a) of the Policy lists three elements, which the Complainant must satisfy in order to succeed:
(i) the disputed 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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel finds that the Complainant is the owner of the trademark GENPACT both by registration and acquired reputation and that the disputed domain name is confusingly similar to said trademark.
It is well accepted that a top-level domain suffix, in this case, “.info”, may be ignored when assessing the similarity between a trademark and a domain name (see, e.g., VAT Holding AG v V,WIPO Case No. D2000-0607).
The Panel finds that the Complainant has therefore met its burden of proving that the disputed domain name is confusingly similar to the Complainant’s trademark, pursuant to the Policy, paragraph 4(a)(i). B. Rights or Legitimate Interests
The Respondent has failed to file a Response in accordance with the Rules, paragraph 5.
The Complainant in its Complaint and as set out above has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. It asserts that the Respondent is not using the disputed domain name for a legitimate noncommercial or fair use or in connection with a bona fide offering of goods or services.
The prima facie case presented by the Complainant is enough to shift the burden of production to the Respondent to demonstrate that it has a right or legitimate interest in the disputed domain name. However, the Respondent has not presented any evidence of any rights or legitimate interests it may have in the disputed domain name.
The Panel therefore finds that the Policy, paragraph 4(a)(ii), has been satisfied. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that “for the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that [the Respondent has] registered or [has] 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 [the Respondent’s] documented out-of-pocket costs directly related to the domain name; or
(ii) that [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 [the Respondent has] engaged in a pattern of such conduct; or
(iii) that [the Respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the domain name, [the Respondent had] 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 Panel is of the opinion that the Respondent in the present case has to be considered as a “domainer”, or better still a “professional/sophisticated domainer”, although the fact of registering many domain names does not amount to bad faith per se as it appears to be stated by the Complainant.
In recent years there have been several decisions under the Policy regarding the issue of domainer acquisitions of large numbers of domain names in circumstances where the acquiring domainer may not have actual knowledge of possible trademark rights to a third party on the domain name being purchased, especially when the purchasing is automated.
Although the Policy was created to deal primarily with cybersquatters, several UDRP panels have notwithstanding decided to apply the Policy to cases where professional/sophisticated domainers acquire bulks of domain names by considering the failure of the respondents to conduct proper trademark rights searches before purchasing the domain names may support a finding of bad faith registration within the meaning of paragraph 4(a)(iii) of the Policy (mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc.,WIPO Case No. D2007-1141).
In fact several UDRP panel decisions have considered the specific responsibility of sophisticated domainers, by saying that “it is your responsibility to determine whether your domain name registration infringes or violates someone else’s rights” (see Grundfos A/S v. Texas International Property Associates, WIPO Case No. D2007-1448). Therefore, in this Panel’s view, people who make a living from registering vast numbers of domain names must make a reasonable effort to ensure that they are not infringing trademark rights of third parties, either registered or unregistered, without engaging in what is usually called “willful blindness” to the existence of such rights.
As stated by the UDRP panel in mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc.,WIPO Case No. D2007-1141: “Although there may be no obligation that a domain name registrant conduct trademark or search engine searches to determine whether a domain name may infringe trademark rights, a sophisticated domainer who regularly registers domain names for use as [pay-per-click] landing pages cannot be willfully blind to whether a particular domain may violate trademark rights. In this context, a failure to conduct adequate searching may give rise to an inference of knowledge.”
And also, “[…] an even more thorough search would also include search engine searches to see what new websites may exist that use a name identical or confusingly similar to the domain name at issue even in the absence of a trade mark application or registration) […] Similarly, Yahoo! and Google offer highly effective search engines to determine the most relevant references on the Internet in response to a particular search term. Searching of this kind is particularly appropriate for companies that operate [pay-per-click] landing pages. […] In this context, registrants that run [pay-per-click] landing page businesses cannot be willfully blind to whether the domain names they register are similar to trademarks and are pulling up [pay-per-click] advertising related to those trademark rights. […] It is reasonable to infer, based upon the circumstantial evidence available, that [r]espondent, a sophisticated party in the [pay-per-click] landing page business, must have been aware of the relevant trademark”.
This Panel completely agrees with the view of the panel in Research In Motion Limited v. Privacy Locked LLC/Nat Collicot,WIPO Case No. D2009-0320, who “believes it appropriate that purchasers of domain names should be taken to have knowledge of (a) what they have purchased and (b) how their domain names are being used. Accordingly, if a domain name, which they have purchased incorporates a third party’s trade mark of which they are likely to have knowledge, they should be treated as having acquired that domain name knowingly and knowingly to have put the domain name to the use to which it is being put. Were it otherwise, automated bulk transfers of domain names would be the perfect shield for abusive registrations”.
Therefore, the Panel considers that the Respondent in the present case should have known that the disputed domain name, when registered, corresponded to a registered trademark of the Complainant, and should have been aware of the fact that it was using it in bad faith since the links in the website at the disputed domain name, even in the case they are automatically generated, were referring to the same services provided by the Complainant. See also WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 3.4.
Considering the above, the Panel finds that the Complainant has presented sufficient and uncontested evidence to satisfy its burden of production with respect to the issue of whether the Respondent has registered and is using the disputed domain name in bad faith.
The Panel therefore finds that the Policy, paragraph 4(a)(iii) has been satisfied. 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 disputed domain name be transferred to the Complainant.
Edoardo Fano
Sole Panelist
Dated: March 30, 2012
Full & Egal Universal Law Academy