The Complainant is Madhuri Dixit Nene of Mumbai, India, represented by AZB & Partners, India.
The Respondent is VG online of Chennai, India. 2. The Domain Name and Registrar
The disputed domain name is registered with D, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the”Center”) on July 25, 2012. On July 26, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 26, 2012, 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 for the disputed domain name.
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 July 27, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was August 16, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 17, 2012.
The Center appointed Pravin Anand as the sole panelist in this matter on September 13, 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
Madhuri Dixit Nene, the Complainant in the present case, is a famous Indian film actress and her career spans almost three decades. She has a pronounced position in Bollywood and has won numerous awards and accolades for her work in the field of Hindi Cinema over the time span of her career.
The Complainant is the owner of and proprietor of several trade mark registrations in India for the trade marks MADHURI DIXIT (with her image) as a composite mark, details of which are provided in the Complaint.
According to the publicly available WhoIs information and as confirmed by the Registrar, the Respondent, VG Online is the registrant of the disputed domain name . The disputed domain name was registered on January 25, 2006. 5. Parties’ Contentions A. Complainant
The Complainant is a famous film personality who has appeared in numerous commercially successful films. Since making her acting debut in year 1984, the Complainant essayed a variety of roles in films and has been nominated or received numerous prestigious awards.
The Complainant claims that she has rights in the trade mark MADHURI DIXIT (with her image) as a composite trademark, and that the trade mark has acquired tremendous fame, recognition and goodwill both in India and overseas over the last two decades. The Complaint asserts that the trade mark MADHURI DIXIT is thus, exclusively associated with the Complainant. The Complainant is the owner of the domain name .
The Complainant states that she has neither authorized nor permitted the Respondent to use the disputed domain name ; that the Respondent is not associated with the name and trade mark MADHURI DIXIT and therefore has no legitimate justification or interest in the disputed domain name. Additionally, the disputed domain name is identical to the name and trade mark MADHURI DIXIT and constitutes blatant infringement of the trademarks of the Complainant.
The Complainant contends that owing to the goodwill and reputation of the Complainant, use of the disputed domain name would either confuse or deceive her fans and public at large, and is also likely to create a false impression in the minds of the public that the disputed domain name is somehow associated with the various trademarks used and operated by the Complainant and with the business of the Complainant.
The Complainant further contends that the creation and registration of the disputed domain name is an attempt by the Respondent to free ride on the tremendous reputation and goodwill of the Complainant, and it is an attempt with malafide intention to attract the general public as well as Complainant’s fans to the disputed domain name, thereby diverting them from the Complainant’s website.
The Complainant states that MADHURI DIXIT trademarks were filed on August 9, 1999, which predate the Respondent’s registration of the disputed domain name by seven years. The Complainant alleges that the Respondent can offer no bona fide reason for adopting the disputed domain name and further states that the registration and use of the same clearly amounts to cyber squatting, which in itself proves bad faith.
The Complainant asserts that the Respondent, by registering the disputed domain name , has intentionally attempted to attract, for commercial gain, fans of the Complainant and public at large to the disputed domain name by riding upon the tremendous reputation and fame of the Complainant by causing deception and/or confusion or likelihood confusion as to the source, sponsorship, affiliation or endorsement of the disputed domain name.
The Complainant further asserts that the website not only has the photographs of the Complainant but also has the links to several third-party websites advertisements, thereby making unauthorized commercial gain. Such links that prove beyond any reasonable doubt that the Respondent has intentionally designed and continues to operate the disputed domain name in bad faith.
In view of above stated facts, the Complainant therefore requests for transfer of the disputed domain name . B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy lays out three elements that must be proven by the Complainant to establish its case and obtain the remedy under the Policy. These elements are:
1) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
2) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
3) The disputed domain name has been registered and used in bad faith. A. Identical or Confusingly Similar
The first element under paragraph 4(a) of the Policy requires the Complainant to prove that the disputed domain name is identical or confusingly similar to a mark in which it has rights.
The Complainant appears to be the registered owner of several trade mark registrations in India for the trade mark MADHURI DIXIT (with her image) as a composite trade mark, for which the details are provided as follows in the Complaint.
Registration No. and Date Class Status
870397 - August 9, 1999
3
Registered
870398 - August 9, 1999
9
Registered
870399 - August 9, 1999
14
Registered
870400 - August 9, 1999
16
Registered
870401 - August 9, 1999
25
Registered
The Complainant also appears to be the owner of the domain name , which is valid and currently registered until August 22, 2012. The Panel notes that the disputed domain name is identical to the Complainant’s trade mark MADHURI DIXIT, except that the suffix “.net” is added. It is well settled that the addition of the top Level domain suffix is irrelevant when comparing the disputed domain name and the trademark for determining whether the domain name is identical or confusingly similar to the trade mark. (Consitex S.A., Lanificio Ermenegildo Zegna & Figli S.p.A., Ermenegildo Zegna Corporation v. Oleg Filipov-Guevreyan, WIPO Case No. DLA2003-0002).
Further, in Kevin Spacey v. Alberta Hot Rods, NAF Case No. 114437, it was observed that, “a celebrity may have sufficient proprietary rights in their name to satisfy the standing requirement of Policy ¶ 4(a)(i) due to the celebrity’s fame and association of their name with their persona.” Stated simply, a celebrity’s name can serve as an unregistered trademark when used to identify the celebrity’s performance services.
For the reasons stated above the Panel finds the Complainant has satisfied the first requirement under paragraph 4(a) of the Policy that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. B. Rights or Legitimate Interests
The second element under paragraph 4(a) of the Policy requires the Complainant to prove that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests.
The Panel finds that the Complainant has made out a prima facie case and the finding is based upon the following:
- The Complainant neither authorized nor permitted the Respondent to use the domain name .
- There is no evidence on record that the Respondent has any connection/association with the name and trade mark MADHURI DIXIT.
- There is no evidence in record that the Respondent is commonly known by the disputed domain name.
- The Respondent registered and began using the disputed domain name after the Complainant had established rights in the MADHURI DIXIT trademark through registration and use.
Having found that the Complainant has established a prima facie case, the burden of production has shifted to the Respondent to rebut this showing. In examing whether the record demonstrates any rights or legitimate interest on the part of the Respondent in the disputed domain name, the Panel finds that Policy, paragraph 4(c)(i) is not applicable. To satisfy this requirement, the Respondent’s use of the disputed domain name has to be in connection with a bona fide offering of goods or services. The Respondent is using the domain name to divert people to the Respondent’s website from the Complaint’s website “”. This does not, in the Panel’s view, qualify as use in connection with a bona fide offering of goods or services under the Policy. The Panel further finds that Policy, paragraph 4(c)(ii) is also not applicable here, as the Respondent is not commonly known by or under the name MADHURI DIXIT.
The Panel also finds that Policy, paragraph 4(c)(iii) is also not applicable here as the Respondent with malafide intention is attracting the general public as well as the Complaint’s fans to the disputed website, thereby diverting them from the Complaint’s original website “www.”. This is done with the intention for commercial gain, as the website to which the disputed domain name directs displays third-party links from which the Respondent presumably earns profit.
The Respondent in the present case has not only chosen a domain name that is identical to the Complainant’s name and mark but also claims its website to be “the official fan site” of the Complainant. There are two different approaches of the WIPO Panel decisions of “fan sites”, which is summarized in paragraph 2.5 of the WIPO Overview of WIPO Panel Decisions on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) on whether use of a domain name as a URL for a fan web site amounts to giving the Respondent a right or legitimate interest in a domain name. One outlook is that the registrant of a fan site does have a right or legitimate interest in a domain name containing a complainant's mark, so long as the site is active, clearly noncommercial and clearly distinctive from any official site. The other outlook is that the registrant of a fan site does not have a right or legitimate interest in a domain name containing a Complainant's mark, because the registrant is misrepresenting itself as being that individual or entity and is preventing the mark owner from exercising its rights to the mark.
This Panel is inclined to consider that the second outlook represents the correct approach given to the facts and circumstances of the present case. However, even if the first outlook is considered, the Panel is of the opinion that the website does not indicate a legitimate and/or noncommercial use of the disputed domain name specially when there is a presence of pay-per-click links that negates the suggestion that the site is noncommercial in nature.
In addition to the above, the Respondent’s failure to provide any explanation for its use of the disputed domain name further corroborates the Panel’s findings as stated above.
The Respondent had the opportunity to establish its rights or legitimate interests, but did not choose to do so and thereby the Panel finds has failed to demonstrate any rights or legitimate interests in the disputed domain name. For the above stated reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name, thus the Complainant has established the second element as well. C. Registered and Used in Bad Faith
The third element under paragraph 4(a) of the Policy requires the Complainant to prove that the disputed domain name has been registered and is being used in bad faith.
For the purposes of Paragraph 4(a)(iii), the following circumstances are deemed to be evidence that a registrant has registered and has used a domain name in bad faith:
(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location.
The Panel is of the view that the Respondent registered the disputed domain name in order to confuse and divert the fans of the Complainant. Knowing the popularity of the Complainant, the Respondent apparently knew of the Complainant’s trademarks since it chose to register and use the disputed domain name and there is no other apparent legitimate justification for the Respondent's registration and use of the disputed domain name for its web site. In fact, by registering the disputed domain name , the Panel finds that the Respondent has created a likelihood of confusion with the Complainant’s marks as to the source, sponsor ship, affiliation or endorsement of its web site.
The Panel observes that while registering the disputed domain name the Respondent has dropped the name “Nene” from the Complaint’s domain name . Hence, when the domain name of the Complainant and the Respondent are compared, it is clear to this Panel that the Respondent’s domain name is bound to cause confusion and deception amongst the fans/users as they could assume it to be a genuine website of the Complainant or one which is authorized by the Complainant. The Panel here finds that very use of the disputed domain name is a sufficient attempt on the part of the Respondent to project that it is in some way or other associated with the Complainant.
Further, the Panel finds that the Respondent has various pay-per-click links displayed on the website and is enjoying the benefits of revenues generated through sponsored links on its website, by trading on the reputation of the Complainant thereby misusing the Complainant’s well known trademark MADHURI DIXIT.
For the reasons discussed above, the facts and circumstances in the present case indicate that the disputed domain name was registered and is being used in bad faith. The Panel finds the Complainant has therefore successfully established the third element under paragraph 4 of the Policy. 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.
Pravin Anand
Sole Panelist
Dated: September 28, 2012
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