The Complainant is Iweb Group Inc. of Montreal, Canada, represented by Brouillette & Partners LLP, Canada.
The Respondent is iWeb Technology Solutions Pvt. Ltd. of Mumbai, Maharashtra, India, internally represented. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 5, 2013. On April 8, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 8, 2013, 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.
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 April 11, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response May 1, 2013. The Response was filed with the Center April 25, 2013.
The Center appointed Luca Barbero, J. Nelson Landry and Ashwinie Kumar Bansal as panelists in this matter on May 30, 2013. The Panel finds that it was properly constituted. Each member of 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 has submitted evidence of ownership of the following trademark registrations consisting of, or including, IWEB:
- the United States of America trademark registration No. 3235840 for IWEB (word), filed on November 19, 2004, with first use date of July 7, 2001, and the Canadian trademark registration No. TMA577594 for IWEB (word), filed on October 16, 2000, with first use date of November 13, 1998, both registered in relation to “Internet related services, namely, hosting the websites of others on a computer server for a global computer network, dedicated server services, managed hosting services, server co-location application hosting, registration of domain names for identification of users on a global computer network; providing customized on-line web pages featuring user-defined information, which includes search engines and on-line web links to other sites”;
- the United States trademark serial no. No. 85317185 for IWEB (word and design), filed on May 10, 2011, in International classes 9 and 42;
- the Canadian trademark registration No. TMA590489 for IWEB TECHNOLOGIES (word and design), filed on January 12, 2001, with first use date of November 1, 1998, for “Internet related services, namely, hosting the websites of others on a computer server for a global computer network, dedicated server services, managed hosting services, server co-location application hosting, registration of domain names for identification of users on a global computer network; providing customized on-line web pages featuring user-defined information, which includes search engines and on-line web links to other sites”;
- the Community trademark No. 011443934 for IWEB (word and design), filed on December 20, 2012, in classes 9 and 42;
- the Japanese trademark application No. 2012-097835 for IWEB (word and design), filed on December 3, 2012, in classes 35 and 42.
The trademark IWEB was first used by the Complainant’s wholly owned subsidiary, Le Groupe iWeb Technologies Inc. in Canada, as early as November, 1998, and in the United States, as early as July 7, 2001, as it appears from the Affidavit of the Complainant’s President attached to the Complainant.
The Complainant and its subsidiary Le Groupe iWeb Technologies Inc. are the owners of several domain names consisting in, or including, IWEB trademark, such as , , , and .
The disputed domain name was registered by the Respondent on February 24, 2005.
The Complainant’s attorneys on November 28, 2012, sent to the Respondent a cease and desist letter requesting the Respondent to stop using and transfer to the Complainant the disputed domain name. 5. Parties’ Contentions A. Complainant
The Complainant states that its trademark IWEB has been widely used by the Complainant and its subsidiary and that it has invested considerable time, money and effort in promoting the trademark and the products and services associated to it.
The Complainant informs the Panel that, as a consequence of the Complainant’s marketing efforts and its success in the industry, the IWEB trademark appeared on several websites (among others: “www.tophosts.c”a, “”, “”, “”, “”, “”, “”, “”, “”) and on Netcraft Ranking, Web Hosting Magazine Editor’s Choice and Search results on WebHostingTalk. In addition, the Complainant underlines that its press releases are published on several sites, including Yahoo!, OpenPress, StockHouse, WebHostingTalk, HostSearch, theWHIR and eMediaWire.
The Complainant also states that it is offering a variety of Internet and technological services in all countries around the world, including India, the country of the Respondent’s head office, where it is currently offering services to about 500 clients and has generated USD 1.1 million in sales in 2012.
The Complainant submits that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant asserts that it has never authorized the Respondent to use its trademark IWEB in any way and that the Respondent is not the owner of any United States, Canadian, Japanese, European or International trademark similar to the disputed domain name nor any trademark similar to IWEB. The Complainant also contends that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name.
The Complainant submits that the disputed domain name was registered and is being used in bad faith since:
- the Respondent registered the disputed domain name long after the Complainant or its subsidiary had begun to use the IWEB trademarks and domain names including IWEB trademark in the United States and in Canada;
- the Respondent provides products and services similar to the ones offered by the Complainant and, therefore, there is no legitimate way by which, at the time of registration, the Respondent would not have known the Complainant’s trade name and trademark;
- the Respondent has registered on purpose the disputed domain name, incorporating the Complainant’s trademark along with the word “techno”, which is part of the Complainant’s Canadian trademark No. TMA590489 and clearly refers to the technological field, in which the Complainant is offering its products and services;
- the Respondent’s website constitutes prima facie evidence of bad faith since it is solely used to cause confusion amongst consumers looking for the Complainant’s products or services;
- following receipt of a cease and desist letter sent by the Complainant’s attorneys on November 28, 2012, the Respondent denied infringing the Complainant’s trademarks and refused to comply with the cease and desist letter demands, by continuing to use the disputed domain name to offer its products and services directly to the public. B. Respondent
The Respondent states that the disputed domain name is not identical or confusingly similar to the Complainant’s trademark and states that, prior to registering the disputed domain name, it had made enquiries with the Indian Register of Companies and, having discovered that there were no companies registered with names beginning with “iWeb”, registered the company “iWeb Technology Solutions Private Limited” in 2005 and, subsequently, the disputed domain name, “clearly symbolizing the company’s name in a short form”.
The Respondent states that it was unaware of the Complainant or of its trade name and trademark when it registered the disputed domain name since the Complainant has no base, registration or business well-known throughout the world and does not operate through any registered entity in India. The Respondent also asserts that its products are widely acknowledged by industries.
The Respondent underlines that IWEB is not a globally known trademark because a Google search reveals various companies, products, services, solutions and domain names containing the word “iweb”. The Respondent further alleges that the Complainant’s trademark IWEB is not registered in India, while, in said country, the Respondent has copyrights and trademark rights on IWEB ENTERPRISE SUITE, which is the registered software brand name for the Respondent’s range of products.
The Respondent informs the Panel that it also owns since several years many other domain names related to its products, solutions, trademarks and copyrights, including , , , , , and .
The Respondent highlights that the disputed domain name reflects its registered trade name and remarks that it is involved in the business of development, implementation and customization of ERP, CRM, SCM, HRMS, manufacturing, production, production planning, QMS & finance management modules, software and products and is not involved directly or indirectly in the business of hosting, website hosting, selling servers, server space, backup plans, virtualization services, domain name registrations, which is the business of the Complainant.
The Respondent also states that it is commonly known by the disputed domain name and that it is making a legitimate noncommercial or fair use of the disputed domain name, without any intention to misleadingly divert consumers for commercial gain or to tarnish the Complainant’s trademark.
The Respondent also rebuts the Complainant’s contentions as to the Respondent’s alleged bad faith, stating that:
- the disputed domain name was not registered or acquired by the Respondent primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the disputed domain name;
- the disputed domain name was not registered in order to prevent the Complainant from reflecting its trademark in a corresponding domain name and, in connection therewith, the Respondent has not engaged in a pattern of such conduct,
- the Respondent and the Complainant are not competitors and the disputed domain name was not registered by the Respondent primarily to disrupt the Complainant’s business;
- the fact that the Complainant has brought the Complaint more than 8 years after the disputed domain name was registered suggests that the Complaint is barred by laches or at least that even the Complainant did not believe that the Respondent was motivated by bad faith;
- the disputed domain name was registered purely to reflect the company name iWeb Technology Solutions Pvt.Ltd and trademark and copyright registrations were sought for IWEB ENTERPRISE SUITE, which is the primary software product being sold by the Respondent.
The Respondent also makes reference to several local and global awards that the Respondent and its promoter Mr. Akshay Shah won:
- Akshay Shah won the MIT USA’s Technology Review INDIA TR35 2011 contest for his unique software technology innovation “Agilewiz BPMS™”;
- the Respondent has been ranked among the Top 10 product companies to be showcased at the Launch event of Nasscom IP4Biz at Interop, Mumbai in October 2012;
- the Respondent was named as one of the 50 emerging companies in India for 2010 by NASSCOM;
- the Respondent was conferred the “Indian Leadership Award for IT” at the National Level by the All India Achievers Foundation – New Delhi;
- the Respondent was nominated and ranked at 139 in the Tata NEN Hottest Startups Awards 2008. Around 700 plus start-ups and entrepreneurs had participated to this event across India. 6. Discussion and Findings
According to paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or a service 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. A. Identical or Confusingly Similar
The Complainant has provided evidence of ownership of trademark registrations for IWEB (word mark) in the United States and in Canada.
Pursuant to a number of prior decisions rendered under the Policy, the addition of descriptive terms to a trademark is not a distinguishing feature.
See, inter alia, Barry D. Sears, Ph.D. v. YY / Yi Yanlin, WIPO Case No. D2007-0286 (“diet” added to the ZONE mark); Fry’s Electronics, Inc. v. Whois ID Theft Protection, WIPO Case No. D2006-1435 (“electronic” added to the FRY mark); Wal-Mart Stores, Inc. v. Henry Chan,WIPO Case No. D2004-0056 (“chase”, “girlsof”, “jobsat”, “sams”, “application”, “blackfriday”, “blitz”, “books”, “career(s)”, “check”, “flw”, “foundation”, “games”, “mart”, “photostudio”, “pictures”, “portrait”, “portraitstudio(s)”, “registry”, “retaillink” and “wire” added to the WALMART mark); PepsiCo, Inc. v. Henry Chan,WIPO Case No. D2004-0033 (“chart”, “miusic”, “earena”, “sweep”, “nfl” and “coliseum” added to the PEPSI mark); International Organization for Standardization ISO v. Quality Practitioners Institute and Website Pros, Inc. and Quality,WIPO Case No. D2005-1028 (“net” and “training” added to the ISO mark); Banca Intesa S.p.A v. Roshan Wickramaratna,WIPO Case No. D2006-0215 (“online” added to BANCAINTESA mark); Groupe Auchan v. Jakub Kamma,WIPO Case No. D2007-0565 (addition of the term “software” to the trademark AUCHAN).
Therefore, the mere addition of the word “techno” to the trademark IWEB in the disputed domain name does not exclude the confusing similarity between the disputed domain name and the Complainant’s trademark.
It should be also taken into account the well-established principle that the generic top level domain may be excluded from consideration as being merely functional component of a domain name. See i.a. Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429, stating: “the specific top level of the domain name such as ‘net’ or ‘com’ does not affect the domain name for the purpose of determining whether it is identical or confusingly similar”; and Chevy Chase Bank, F.S.B. v. Peter Ojo,WIPO Case No. D2000-1770, where it was found that “the accused domain name is legally identical to Complainant’s trade name CHEVY CHASE BANK.” See also, among others, Priority One Financial Services Inc. v. Michael Cronin, WIPO Case No. D2006-1499 and Laramar Group, L.L.C. v. XC2, WIPO Case No. D2006-0617.
In view of the above, the Panel finds that the Complainant has proven that the disputed domain name is confusingly similar to the trademark in which the Complainant has rights, in accordance with 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. The Respondent may establish a right or legitimate interest in the disputed domain name by demonstrating, in accordance with paragraph 4(c) of the Policy, any of the following:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The Complainant has submitted that it did not authorize the Respondent to use its trademark IWEB and that the Respondent is not making a legitimate use of the disputed domain name.
However, the Respondent has provided evidence showing that, at the time the disputed domain name was registered, the Respondent had already established its company iWeb Technology Solutions Pvt. Ltd. In addition, soon thereafter, the Respondent obtained copyrights and trademark rights on iWeb Enterprise Suite, which is the registered software brand name for the Respondent’s range of products; in particular, the copyright certificate shows a date of publication in 2006, in India, and the trademark IWEB ENTERPRISE SUITE was applied, in class 9, with a date of first use of October 1, 2005.
In addition, according to the Respondent’s site and the declarations issued by some of its clients attached to the Response, the Respondent has been providing, under the company name iWeb Technology Solutions Pvt. Ltd, services differing from the ones of the Complainant, namely the development, implementation and customization of ERP, CRM, SCM, HRMS, manufacturing, production, production planning, QMS & finance management modules, software and products.
Therefore, the Panel finds that the Respondent has proved that it is commonly known by a name corresponding to the disputed domain name – being plausibly an abbreviation of the first and more relevant part of the Respondent’s company name “iWeb Technology” -, and that, before any notice of the dispute on November 28, 2012 by the Complainant’s attorneys’ letter, the Respondent has, for at least 6 years, used the disputed domain name and a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services.
In light of the above, the Panel finds that the Complainant has failed to prove the requirement of 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 the disputed domain name in bad faith:
(i) circumstances indicating that the holder 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 holder 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 holder has engaged in a pattern of such conduct; or
(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the holder 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 holder’s website or location or of a product or service on the holder’s website or location.
As mentioned above, the Complainant is the owner of trademark registrations for IWEB prior to the date of registration of the disputed domain name, in the United States and in Canada, i.e. the United States trademark registration No. 3235840 for IWEB (word), filed on November 19, 2004, with first use date of July 7, 2001, and the Canadian trademark registration No. TMA577594 for IWEB (word), filed on October 16, 2000, with first use date of November 13, 1998. The Complainant also owns the Canadian trademark registration No. TMA590489 for IWEB TECHNOLOGIES (word and design), filed on January 12, 2001, with first use date of November 1, 1998.
According to the documents and statements submitted by the Complainant, at the time of the registration of the disputed domain name, in 2005, the Complainant was using its trademarks in Canada and United States only, and there is no evidence of sale or use of any of the Complainant’s trademarks in other countries of the world.
In the affidavit issued by the President of the Complainant annexed to the Complaint (paragraph 11), the Complainant’s sales of IWEB products and services and marketing expenses are disclosed, on an annual base, from 2005 to 2012, for a period subsequent to the registration of the disputed domain name, but not before.
The Complainant also stated (in paragraph 10 of the affidavit annexed to the Complaint) that it has promoted net-based services to 9,680 clients in 158 countries, including India, but has not mentioned the date of this data.
The Complainant’s President further asserted (in paragraph 14 of his Affidavit), that the Complainant is well established in many countries, including India, where it is currently offering services to about 500 clients and has generated USD 1.1 million in sales for the year 2012. The Complainant, however, did not indicate whether the Complainant had clients and sales in India before 2005 and did not provide any evidence that it had made a single sale in India, where the Respondent is based, before 2005, or that it was known in India prior to, or at the time of, the registration of the disputed domain name.
In absence of any evidence of sales by the Complainant in India prior to the registration of the disputed domain name, the Panel finds that the Complainant cannot claim to have acquired, at that time, any common law rights, or renown in India for its trademark IWEB.
In light of the above, the Panel finds that the Complainant has failed to prove that the Respondent was or ought to be aware of the Complainant and of its trademark at the time of the registration of the disputed domain name.
With reference to the use of the disputed domain name, the Complainant states that the Respondent is using the correspondent website “solely … to cause confusion amongst consumers looking for the Complainant’s products or services” (paragraph 44 of the Complaint).
However, the Panel notes that, considering the goods and services described in the Complainant’s trademark registration, on the one hand, and the description of the Respondent’s activities published on the Respondent’s website, on the other hand, the two companies are not competitors. The activities of the Complainant are, in fact, described in the United States trademark registration No. 3235840 for IWEB as follows: “Internet services, namely, hosting the websites of others on a computer server for a global computer network, dedicated server services, managed hosting services, server co-location application hosting, registration of domain names for identification of users on a global computer network providing customized on-line web pages featuring user-defined information, which includes search engines and on-line web links to other sites”; while the description of the Respondent’s activity published on the Respondent’s website is the following: “iWeb Technology Solutions Pvt. Ltd. (iWeb) is a Private Limited Company incorporated in the year 2005. Using innovative tools, it develops and implements a suite of innovative enterprise applications that operate in an integrated environment and conform to international standards. Although founded as a pure software product/solutions company, it is strategically diversifying as a software services provider to draw on a growing market that wants ‘Software as a Service’ (SaaS) & ‘Platform as a Service’ (PaaS)”.
Furthermore, a close examination of the evidence submitted by the parties as to the content of the Respondent’s website clearly explains the origin, the key persons involved and line of activities of the Respondent, all of which are located in India. Furthermore, there is not any link to competitors of the Complainant and the Panel cannot see any Internet users misdirection or comments by the Complainant to that effect.
In light of the above, the Panel finds that the Respondent was not acting in bad faith in registering and using the disputed domain name. 7. Decision
For the foregoing reasons, the Complaint is denied.
Luca Barbero
Presiding Panelist
J. Nelson Landry
Panelist
Ashwinie Kumar Bansal
Panelist
Date: June 14, 2013
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