The Complainant is Shri Adi Godrej of Mumbai, India, represented by ANM Global, India.
The Respondent is Summit Services LLC, Bruce Wayne of Wilmington, Delaware, United States of America. 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 March. On March, the Center transmitted by email to GoD, LLC a request for registrar verification in connection with the disputed domain name. On the same date, 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on April 3, 2012.
The Center verified that the Complaint together with the amended 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 April 4, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was April. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April.
The Center appointed Fabrizio Bedarida as the sole panelist in this matter on May 3, 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. 4. Factual Background
The Complainant in this administrative proceeding is Shri Adi Godrej, the current Chairman of the Godrej Group (and on this basis the Panel presumes that the Complaint is brought in the latter capacity, on behalf of the Godrej Group and corporate holder of the relied upon marks). Shri Adi Godrej is a renowned Indian industrialist and philanthropist. He is also one of the richest people in India. Adi Godrej is the Chairman of the Godrej Group and several entities that are part of one of India’s leading conglomerates. These include Indian companies like Godrej Industries, Godrej Consumer Products, Godrej Properties as well as international companies including Godrej & Boyce, Godrej Agrovet, Godrej International and Godrej Global Mideast FZE. The Complainant is considered to be one of the top business icons of the Indian Industry as the Chairman of the Godrej Group.
The GODREJ trademark has been in extensive and continuous use since the year 1918 in relation to the Complainant’s business.
The GODREJ trademark has been registered in numerous countries for decades.
The domain names , , and of the Complainant’s group anticipate the disputed domain name registration by several years.
The disputed domain name was registered on March 6, 2011. 5. Parties’ Contentions A. Complainant
The Complainant claims that:
1) The disputed domain name is confusingly similar to the GODREJ trademark.
2) The GODREJ trademarks are extensively used and enjoy widespread recognition.
3) The Respondent has no connection or affiliation with the Complainant and has not received any license or consent, expressed or implied, to use the GODREJ trademark in a domain name or in any other manner.
4) The Respondent has never been known by the disputed domain name and has no legitimate interest in the GODREJ trademark or in the name “Godrej”.
5) The present official website “www.” is a complete example of unfair and unethical practice to the detriment of the Complainant Shri Adi Godrej and the Godrej Group.
6) The disputed domain name is being used by the Respondent in bad faith and is an attempt to take advantage of the Complainant’s goodwill and reputation in name and the brand. This is an attempt to misuse the disputed domain name by the use of a typographical variant which is also similar to the name of the Chairman of the group i.e. “Adi Godrej”.
7) The Complainant has common law rights in the mark GODREJ that has been used by the Complainant in relation to all his stationery articles. In support of its claim Complainant refers to previous UDRP decisions, among them: Julia Fiona Roberts v. Russell Boyd, WIPO Case No. D2000-0210 (domain name , where the panel decided that registration of her name as a registered trademark or service mark was not necessary and that the name “Julia Roberts” has sufficient secondary association with complainant that common law trademark rights do exist under United States trademark law);
8) The Respondent clearly knew of the Complainant’s prior rights when registering the disputed domain name.
9) The core, distinctive and dominant element of the Complainant’s trademark, GODREJ, is combined in the disputed domain name with the personal name Adi which is the name of the Complainant.
10) In Institut Merieux v. Summit Services LLC,WIPO Case No. D2011-0974 (domain name ), the Respondent was “Summit Services LLC of Wilmington, Delaware, United States of America”, the same entity responding in the present case. The domain name, , was identical to Mr. Alain Merieux, a person of high repute and a billionaire. This prior case illustrates the Respondent’s pattern of conduct in registering domain names corresponding to third parties’ trademarks combined with personal names.
The Complainant requests that the Panel issue a decision that the disputed domain name be transferred to the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant has established that it has rights in the GODREJ trademark and has stated that the disputed domain name is confusingly similar to it.
In order to substantiate this claim, the Complainant has argued that, the core, distinctive and dominant element of the Complainant’s trademark, GODREJ, is combined with the personal name Adi which is the name of the Complainant.
This Panel agrees with the Complainant that the addition of the personal name Adi to the Complainant’s trademark GODREJ does not avoid confusion. On the contrary, this Panel believes that, Adi being the personal name of the Complainant, the addition of this specific name to the Complainant’s trademark increases confusion.
Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain name. A respondent in a UDRP proceeding does not assume the burden of proof, but may establish a right or legitimate interest in a domain name by demonstrating in accordance with paragraph 4(c) of the Policy:
(i) that before any notice to the respondent of the dispute, the respondent used or made preparations to use the disputed domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) that the respondent is commonly known by the domain name, even if the respondent has not acquired any trademark rights; or
(iii) that the respondent intends to make a legitimate, noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.
This Panel finds that here, the Respondent has no connection or affiliation with the Complainant, which has not licensed or otherwise authorised the Respondent to use or register any domain name incorporating the Complainant’s trademark. The Respondent does not appear to be commonly known with the name “Godrej” or by a similar name, and has not alleged any facts to justify any rights or legitimate interests in the disputed domain name. The Respondent does not appear to make any legitimate use of the disputed domain name for noncommercial activities. Finally, the Respondent has not replied to the Complaint, proving or at least alleging in any other way any right or legitimate interest in the disputed domain name.
Accordingly, the Panel finds that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
For the purpose 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 holder’s 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 the Respondent 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 the holder’s website or other online 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 the Respondent’s website or location.
Accordingly, for a complainant to succeed, the Panel must be satisfied that the disputed domain name has been registered and is being used in bad faith.
Considering the Complainant’s trademark rights, the Complainant’s Group reputation, trademark and domain name registrations, the extensive use and promotion of the GODREJ trademark also on the Internet on the one hand, and on the other, the Respondent’s use of the disputed domain name to offer links to a variety of other websites, the fact that the disputed domain name is for sale through Sedo at the starting price of 10,000 USD, the fact that the Respondent chose for the disputed domain name a combination of the Complainant’s trademark GODREJ and the personal name Adi, which is also the personal name of the Complainant and that the disputed domain name is identical to some of the domain names owned by the Complainant’s Group, the fact that this same Respondent has been involved in another UDRP proceeding for having abusively registered a domain name corresponding to a third party’s trademark, the Panel, in the absence of contrary evidence, finds:
1) that the Respondent must have had actual knowledge of the Complainant’s trademark at the time of the registration of the disputed domain name;
2) that, due to the trademarks and the domain name registrations held by the Complainant and his Group and the own name of the Complainant, Adi Godrej, the Respondent’s choice to register the disputed domain name, in the Panel’s view, cannot be casual but had to be intentional;
3) that the use of the disputed domain name to offer links to a variety of other websites and the fact that the disputed domain name is for sale through Sedo at the starting price of 10,000 USD, is further inference of bad faith registration and use;
4) the fact that this same Respondent has been involved in another UDRP proceeding for having abusively registered a domain name corresponding to a third party’s trademark is proof of a pattern of conduct of the Respondent;
5) that in the absence of any rebuttal by the Respondent of the Complainant’s claims, or any other indication in the case file, the Panel accepts as true the Complainant’s contentions.
Accordingly, the Panel finds on the basis of the evidence presented that the Complainant has satisfied paragraph 4(a)(iii) of the Policy. 7. Decision
For 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.
Fabrizio Bedarida
Sole Panelist
Dated: May 8, 2012
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