The Complainant is R India Ltd. of Mumbai, India, represented by Anand & Anand, India.
The Respondent is Weerakiat Sripunyadach of Bangkok, Thailand. 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 27, 2012. On March 27, 2012, the Center transmitted by email to GoD, LLC a request for registrar verification in connection with the disputed domain name. On March 27, 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 March 30, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was March 19, 2012. The Respondent did not submit any formal response. Accordingly, the Center notified the Respondent’s default on April 20, 2012.
The Center appointed Richard Tan as the sole panelist in this matter on April 25, 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.
Three brief emails were received after the notification of Complaint from the Respondent. Two of the emails were received on April 2, 2012 and a further email on April 3, 2012. The emails appear to indicate that the Respondent had tried to delete the domain name, but had failed as the domain name was under lock; and that his English language is poor and that he would not renew the domain name once it expired. 4. Factual Background
The Complainant is a company based in India and owns registrations for the trademarks REDIFF, REDIFF.COM and other marks with a REDIFF prefix, including REDIFF MAIL, REDIFFPRO and REDIFF BOL, in India and the United States of America in connection with various goods and services. The REDIFF.COM mark has been used since 1996 by the Complainant. The mark REDIFF is an invented word.
It has used the marks in connection with e-commerce and on-line services, including email services, online shopping, chat messenger services, astrology and stock market updates. It has also used the name or mark REDIFF as part of its trade names like REDIFF MAIL, REDIFFMAILPRO, REDIFF NEWS, REDIFF SHOPPING, REDIFF SHARE, REDIFF ASTROLOGY, REDIFF DEAL, REDIFF PAGES and REDIFF MONEYWIZ.
The Complainant had a market capitalization of about USD 187 million as at March 2011. In June 2000, it became one of the first Indian companies to be traded on NASDAQ.
The Complainant has advertised its goods and services widely using its marks, and also owns various domain names incorporating the REDIFF mark, such as , and .
The REDIFF.COM mark is also featured in the Complainant’s name.
The disputed domain name resolved to websites consisting of third party sponsored links which generated revenues through pay-per-click links which routed users to websites that offered products that directly compete with the Complainant’s products and services.
The disputed domain name was registered on May 28, 2011. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is identical or confusingly similar to the Complainant’s trademarks. The Complainant owns both registered and common law rights in those marks in India and the United States of America and has made extensive and long use of those marks on its services and products as mentioned above. The Complainant also cited UDRP decisions such as R India Ltd. V. Laksh Internet Solutions Private Limited,WIPO Case No. D2008-0804 to illustrate that various UDRP panels have found in its favour when considering domain names that incorporated the Complainant’s trademarks.
The disputed domain name merely adds the generic term “www” and the use of the disputed domain name incorporating the Complainant’s trademark in its entirety is sufficient to establish confusing similarity.
The Complainant further claims that the Respondent has no rights or legitimate interests in respect of the disputed domain name. It has not granted the Respondent any license or authorization of any kind to use the trademarks.
The Respondent is also not using the disputed domain name in connection with a bona fide offering of goods or services. Instead the Respondent has intentionally chosen the disputed domain name based on the Complainant’s fame and reputation in order to generate traffic to its website that contains sponsored links to goods and services that compete with those offered by the Complainant.
The use of the website to obtain revenue from such links is not a bona fide use of the disputed domain name and does not give rise to any legitimate interests as it seeks to take unfair monetary advantage of the Complainant’s trademarks.
There is no plausible explanation for the Respondent’s use of the disputed domain name, which incorporates the trademark of the Complainant, an invented word. The Respondent has also not been commonly known by the disputed domain name.
The Complainant also contends that the disputed domain name was registered and is being used in bad faith. The Complainant contends that the Respondent had constructive notice of the Complainant’s rights in the trademarks at the time the Respondent registered the disputed domain name. The Complainant supposes that it must have been the fame of the trademarks that motivated the Respondent to register the disputed domain name, and that conduct constitutes opportunistic bad faith. The Complainant contends that this was a case of typo-squatting.
The Respondent also intentionally attempted to enjoy the benefits of pay per click revenues through sponsored links by attracting visitors to its website through creating a likelihood of confusion with the marks. The Respondent’s registration of the disputed domain name that was so obviously connected with the Complainant’s well-known marks showed the Respondent’s opportunistic bad faith. B. Respondent
Apart from the brief email communications mentioned in Section 3, the Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
The Complainant has the burden of proving each of the following three elements under paragraph 4(a) of the Policy in order to be entitled to a transfer of the disputed domain name:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
The Respondent is permitted under the Rules to submit a Response to the Complaint within twenty days of the date of commencement of the administrative proceedings. In the event of a failure to submit a Response, paragraph 5(e) of the Rules provides that absent any exceptional circumstances, the Panel is to decide the dispute “based upon the complaint”. Paragraph 14(b) of the Rules further provides that if a party, in the absence of exceptional circumstances, fails to comply with any provision of the Rules, the Panel is entitled to “draw such inferences,” from the Respondent’s failure to comply with the Rules, “as it considers appropriate”. While a panel may draw negative inferences from the respondent’s default, paragraph 4 of the Policy requires the complainant to support its assertions with actual evidence in order to succeed: see for example The Vanguard Group, Inc. v. Lorna Kang,WIPO Case No. D2002-1064; World Wrestling Federation Entertainment, Inc. v. Michael Bosman,WIPO Case No. D1999-0001; Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003; and Digital Vision, Ltd. v. Advanced Chemill Systems,WIPO Case No. D2001-0827. A. Identical or Confusingly Similar
Based on the evidence adduced by the Complainant as noted above, this Panel has no hesitation in finding that the Complainant owns registered and common law rights in the REDIFF and REDIFF.COM marks. Those marks have been registered in India and the United States of America and the evidence adduced by the Complainant demonstrates that the marks have been extensively used on the Complainant’s online and e-commerce services.
The Panel accepts that the disputed domain name is confusingly similar to the Complainant’s trademarks.
The Panel finds that the threshold test for confusing similarity under the Policy involves a comparison between the trademark and the domain name itself to determine likelihood of Internet user confusion. In order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the domain name, with the addition of common, dictionary, descriptive, or negative terms typically being regarded as insufficient to prevent threshold Internet user confusion.
In this Panel’s view, this threshold test is satisfied. The disputed domain name reproduces the marks but merely includes the generic letters “www” before the marks without a period.
The Complainant’s marks are however instantly recognizable as the dominant or principal component of the disputed domain name. The Panel accepts the evidence of the Complainant that the marks have acquired widespread fame and reputation and have become identified with the Complainant and its services. The Panel also accepts the evidence of the Complainant that the mark is an invented word.
The addition of the generic letters “www” does not prevent the disputed domain name from being regarded as confusingly similar to the marks. The addition of those letters would constitute insignificant modifications of the marks and would not prevent a finding of confusing similarity. Indeed, UDRP panels have found that domain names that combine generic terms with trademarks are generally confusingly similar to the marks: See e.g. Autodesk, Inc. v. Nurinet, WIPO Case No. D2011-1426. Neither would the presence of the TLD “.info” be sufficient to avoid a finding of substantial or confusing similarity since that is a technical requirement of registration.
The Panel finds this is a case of typo-squatting designed to confuse consumers looking for the Complainant’s website and services or products to instead visit the website associated with the disputed domain name.
In this Panel’s view, the test of confusingly similarity is clearly satisfied. This Panel accordingly finds that the disputed domain name is confusingly similar to the Complainant’s trademarks in which the Complainant has rights. B. Rights or Legitimate Interests
As several UDRP panels have found, a complainant is only required to make out a prima facie case that the respondent lacks rights or legitimate interests and once such a prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
In the absence of a formal Response, the Panel is entitled to draw certain inferences against the Respondent that it has no rights or legitimate interests. The Panel accepts the arguments and evidence advanced by the Complainant that the Respondent has no rights or legitimate interests in respect of the disputed domain names.
The Complainant has not granted the Respondent any license or authorization of any kind to use the trademarks. On the evidence, the Complainant is not in any way associated or affiliated with the Respondent nor is there any relationship between the Complainant and the Respondent that could give rise to any license, permission, or other right by which the Respondent could own or use any domain name incorporating the Complainant’s mark.
The registration of the disputed domain name was long after the Complainant had registered and used its trademarks. The evidence is that the disputed domain name was registered on May 28, 2011, which was long after the Complainant began doing business in 1996 using its REDIFF.COM trademark.
The Panel accepts the contentions of the Complainant that the Respondent must have had knowledge of the Complainant’s rights in the marks at the time the Respondent registered the disputed domain name.
In the Panel’s view, the Respondent has intentionally chosen the disputed domain name based on the Complainant’s trademarks in order to generate traffic to its website. The use of the website to obtain revenue from such links is not a bona fide use of the disputed domain name. The use of a mark with an intention to derive advantage from user confusion is not legitimate use and does not confer any rights in favor of the Respondent.
There is also no evidence that the Respondent is or has been commonly known by the disputed domain name or that the disputed domain name is in any way identified with or related to any rights or legitimate interests of the Respondent.
The Respondent has not filed a formal Response to the Complaint. It has not demonstrated that it has any rights or legitimate interests in the disputed domain name. In the absence of a Response, the Panel is entitled to draw certain adverse inferences against the Respondent, namely, that it has no rights or legitimate interests in the disputed domain name.
The Panel accordingly accepts the arguments and evidence advanced by the Complainant that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
Accordingly, the Panel finds that paragraph 4(a)(ii) of the Policy has been satisfied. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must, in addition to the matters set out above, demonstrate that the disputed domain name has been registered and is used in bad faith.
The Complainant submits that the Respondent registered and is using the disputed domain name in bad faith. The undisputed evidence establishes that the Respondent is not affiliated with the Complainant and has no license or other authorization to use the Complainant’s trademarks or a mark similar thereto.
The disputed domain name was registered well after the Complainant’s marks were in use. The Panel finds that the Respondent had actual or constructive notice of the Complainant’s marks and business when registering the disputed domain name, as asserted by the Complainant. It is highly improbable that given the reputation and fame of the trademarks, the Respondent was unaware of them at the time of the registration of the disputed domain name.
The Panel finds that in this case the incorporation of the trade marks as part of the disputed domain name is a clear indication of bad faith in itself. The Respondent’s choice of the disputed domain name which incorporates the Complainant’s mark in its entirety also leads to the conclusion that the Respondent was seeking to derive unfair monetary advantage from the Complainant’s reputation by its use of the website containing sponsored links from which revenue could be derived. That clearly demonstrates that the Respondent intentionally attempted to attract for commercial gain Internet users to its website by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.
The addition of the letters “www” to the marks at the beginning of the disputed domain name is also evidence of typosquatting as was found in decisions like National Association of Professional Baseball Leagues, Inc., d/b/a Minor League Baseball v. John Zuccarini,WIPO Case No. D2002-1011, where such acts were found capable of constituting evidence of bad faith.
The Panel also notes that, as found by other UDRP panels, where a domain name is so obviously connected with a well-known product or service, its very use by someone with no connection with the product suggests opportunistic bad faith: see for example Veuve Cliquot Ponsardin, Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163; PepsiCo, Inc. v. “null”, aka Alexander Zhavoronkov,WIPO Case No. D2002-0562; Go Daddy Software, Inc. v. Internet Masters, WIPO Case No. D2002-0570; and RapidShare AG, Christian Schmidt v. PrivacyP, Domain Admin / n/a, Sergey Malgov, WIPO Case No. D2010-0608.
The Respondent has not submitted any evidence to rebut the Complainant’s claims and assertions. In the absence of such evidence, and based on the evidence submitted by the Complainant and having regard to all the relevant circumstances, the Panel accepts the Complainant’s contentions that the disputed domain name was registered and is being used in bad faith within the meaning of 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.
Richard Tan
Sole Panelist
Dated: May 9, 2012
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