The Complainant is IndiaMART InterMESH Limited of Noida, India, represented internally.
The Respondent is Net 4 India Limited of Noida, India; Biren Pujara, ATB Infomart Pvt. Ltd./ ATB Infoindiamart Pvt. Ltd. of Mumbai, India, represented by Closer2patents, India. 2. The Domain Name and Registrar
The disputed domain name is registered with Net 4 India Limited (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 31, 2013. On November 1, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 14, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 14, 2013 providing the registrant and contact information disclosed by the Registrar. The Complainant filed an amended Complaint on November 18, 2013. On November 28, 2013, the Registrar confirmed registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the amended Complaint. The Center sent an email communication to the Complainant on November 29, 2013 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed a second amended Complaint on December 4, 2013.
The Center verified that the Complaint together with the amended Complaints 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 amended Complaints, and the proceedings commenced on December 5, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was December 25, 2013. The Response was filed with the Center on December 24, 2013.
The Center appointed Harini Narayanswamy as the sole panelist in this matter on January 6, 2014. 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 is an Indian company that runs an online business-to-business (B2B) portal to assist small and medium suppliers market their products. The Complainant has filed its company’s Memorandum and Articles of Association and a copy of the registration details for its domain name , from which it operates its business. It owns the trademark INDIAMART and has provided details of its trademark registrations. Among these are: Registration No. 1150935 in class 9, Registration No.1267627 in class 35 and Registration No. 1486285 in class 42. The Complainant has provided a list of its domain names bearing its INDIAMART trademark.
The Respondent is an Indian company based in Mumbai, India. The Respondent has filed its company’s Certificate of Incorporation. The Respondent claims that it uses INFO MART as its trade designator or trademark for which it has a distinct logo that differs from the Complainant’s mark. The Respondent has however not provided evidence of use of its INFO MART mark in commerce or any details of goods or services that it markets under the mark. The disputed domain name was registered on January 15, 2011. 5. Parties’ Contentions A. Complainant
The Complainant states it commenced its business in 1996 and was incorporated in 1999. It claims to be one of India’s largest online B2B marketplaces and information hubs for small and medium scale enterprises (SMEs). It provides a platform for SMEs to generate more business and facilitates this by providing tools for creating online catalogs, storefronts and it also helps SMEs establish their credibility. The Complainant states that over one million suppliers generate business leads from over five million buyers using its platform. The Complainant states that it has over two thousand eight hundred employees and fifty-five offices.
The Complainant contends that it has made impressive strides in its business and its revenues exceed USD 27 Million (Rupees 137 Crores). As evidence, it has filed its latest annual report, various articles published in the media about its pioneering role in promoting SME businesses, write-ups about the Complainant and accreditation certificates that it has received in recognition of its work. The awards won by the Complainant are the Red Herring Award and the Emerging India Award among others. The Complainant states its investors are Intel Capital and Bennett and Coleman & Co. Ltd. and that every year, along with “Et Now” it hosts the “Et Now – IndiaMART Leaders of Tomorrow Awards”.
Alluding to its INDIAMART trademark, the Complainant states it adopted the mark in 1996 and the mark is exclusively associated with its business. Its website ranks 1,126th in Alexra for worldwide web traffic and its India rank is 91st. The Complainant claims that apart from statutory rights, it has common law trademark rights in the mark. To prove its common law rights, the Complainant has filed figures showing promotional expenses for its mark and states that it has spent about USD 19 million on advertisements and promotion. It has also filed details of news articles published in print and electronic media and a certified statement of its sales figures for the last five years including figures for the financial year April 1, 2012 until March 31, 2013.
The Complainant states that its website also provides information pertaining to its business. The Complainant further states that the worldwide reputation of its mark has been recognized in previous UDRP decisions, including: Interbond Corporation of America, d/b/a U.S.A v. IndiaMART InterMESH Limited and P.Ltd, MFI Trade Link, NAF Claim No. 1239625, and IndiaMART InterMESH v. Personal, Manoj Nair/ WhoisGuard,WIPO Case No. DTV2011-0003. Further, a Google search for its mark returns 11,300,000 results referencing the Complainant, and based on all this material, the Complainant submits its mark is a well-known mark as understood under Article 6 bis of the Paris Convention.
The Complainant argues that the disputed domain name incorporates its mark in its entirety and differs only by the letters “info” prefixed to its mark and is confusingly similar to its mark. The Complainant further argues that the Respondent does not have rights or legitimate interests in the disputed domain name and is not known by the disputed domain name either as an individual or business. The Complainant states it has not permitted or licensed the use of its mark to the Respondent. The Respondent ought to have known of the Complainant’s rights due to its extensive online presence for B2B services, and the Complainant states the Respondent does not use the disputed domain name for a bona fide offering of goods and services.
The Complainant refers to various previous cases and strongly urges that domain names comprised of descriptive words that have acquired distinctiveness as trademarks are registered and used in bad faith when third parties try to exploit the mark. The Complainant states its mark has acquired distinctiveness and its use in the disputed domain name is a bid to attract Internet users and is likely to create confusion as to the source and affiliation of the Respondent’s website and products. The Complainant states that as its website is well-known, the use of its mark in the disputed domain name is likely to lead to the dilution of its mark and injure its reputation and goodwill. The Complainant therefore requests the transfer of the disputed domain name. B. Respondent
The Respondent at the outset states that the Complainant has wrongly addressed the name of the Respondent’s organization in the Complaint as “ATB Infoindia Mart Pvt. Ltd.”, whereas the correct name of the Respondent is ATB Infomart Pvt. Ltd. The Respondent asserts that on examining the government records for registered Indian Companies, it found that no company exists under the name “ATB Infoindia Mart Pvt. Ltd.” The Respondent further asserts that the Complainant is well-aware of the Respondent’s name, which is evident from its previous correspondence with the Respondent. Such incorrect reference of the Respondent’s name shows the Complainant’s bad intention, and the Respondent urges that the Complaint ought to be dismissed.
The Respondent admits that INDIAMART represents the trademark of the Complainant but has strongly urged that the Complainant has no rights in the disputed domain name although it contains the mark. The Respondent then goes on to state that it was looking to register the domain name . As the domain name was not available, it alleges that it has coined the disputed domain name by adding the word “India” between the terms “info” and “mart” with the intention of using it for doing its business in India. The Respondent further argues that it has registered the disputed domain name using the three generic words “info”, “India” and “mart” and therefore the disputed domain name is comprised of only generic words. The Respondent argues that it has merely added the word “India” between “Info Mart”, which is part of the Respondent’s company name and denies the Complainant’s argument that the word “info” has been added to the Complainant’s trademark INDIAMART.
The Respondent further argues that it has provided its complete name and address for the registration of the disputed domain name, and this fact ought to dispel any finding of bad faith motive on its part. The Respondent urges that it would have tried to conceal its contact details if there was any bad faith motive on its part and denies the Complainant’s allegations that it has provided an incorrect address. The Respondent has filed screen shots of the WhoIs search report of the disputed domain name as evidence.
The Respondent further contends that the Complainant has not filed a copy of its reply that was sent to the Complainant’s cease and desist letter. Such concealment of the Respondent’s reply is with ulterior motives to misguide the Panel, argues the Respondent. The Respondent states that the disputed domain name is unique and distinct from the Complainant’s trademark and has filed an affidavit of one of its clients, who states under oath that the said client has found there is no similarity between the website at the disputed domain name and the Complainant’s website at “www.”. The Respondent states its logo is different and a visual comparison between its website and the Complainant’s website is also very different and therefore there is no intention of passing off as alleged by the Complainant. The Respondent asserts that it has been using the disputed domain name honestly and it strongly denies that it has misappropriated the trademark INDIAMART. The Respondent states it is an honest concurrent user of the disputed domain name as envisaged in Section 12 of the Indian Trademarks Act 1999 and to support its contentions refers to three previous cases: Legal & General Group Plc v. Image Plus, WIPO Case No. D2002-1019, American Online, Inc. v. Frank Albanese, WIPO Case No. D2000-1604 and IndiaMART InterMESH Limited v. DomainShield LLC,WIPO Case No. D2011-0623.
The Respondent reiterates that it has used only the logo of INFOMART on its website and therefore Internet users are unlikely to be confused by the Complainant’s mark as to the source of the disputed domain name. The Respondent again refers to the previous cases cited above and based on these cases, the Respondent states it is making legitimate non-commercial fair use of the disputed domain name as envisaged in paragraph 4(c)(iii) of the Policy and requests for the Complaint to be denied. 6. Discussion and Findings
The Panel takes up the first issue raised by the Respondent that the Complainant has willfully and wrongly addressed the Respondent as “ATB Infoindia Mart Pvt. Ltd.” The Panel finds from the documents filed as evidence by the Respondent that the WhoIs record shows the name of the registrant organization as “ATB Infoindia Mart Pvt. Ltd.” In the Center’s communications with the Registrar, the Registrar in its verification reply to the Center has on the basis of the WhoIs record, mentioned the name of the registrant organization as “ATB Infoindia Mart Pvt. Ltd.”
The Complainant has therefore merely reflected the same name “ATB Infoindia Mart Pvt. Ltd.” that has been indicated by the Respondent in its domain name registration details. If the Respondent has wrongly mentioned “ATB Infoindia Mart Pvt. Ltd.” as the name of its organization, it cannot hold the Complainant responsible for this mistake. In light of this, in the Panel’s view, there does not appear to be any willful or intentional act on the part of the Complainant to misrepresent the name of the Respondent in these proceedings as argued by the Respondent. From the material on record it is found that the Respondent has provided incorrect details for the registration of the disputed domain name.
The Policy under paragraph 4(a) stipulates that the Complainant must establish three elements in these proceedings in order to obtain the remedy of transfer of the disputed domain name.
(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 was registered and is being used in bad faith by the Respondent. A. Identical or Confusingly Similar
The first requirement of paragraph 4(a) of the Policy requires the Complainant to establish that the disputed domain name is identical or confusingly similar to a trademark or service mark in which it has rights.
The Panel finds the Complainant has provided extensive evidence of its rights in the INDIAMART trademark. Such evidence includes its trademark registrations for its mark and documents showing it has common law rights in the mark. The Panel finds, based on the material on record, that the Complainant has undoubtedly established its rights in the mark and that the mark has become a distinct identifier of the Complainant’s business. The Respondent has not refuted the Complainant’s rights in the INDIAMART mark and has acknowledged and admitted the Complainant’s rights in the mark. The Panel finds that there is no dispute regarding the Complainant’s rights in the trademark INDIAMART in these proceedings. In the light of this discussion, the Respondent’s argument that the disputed domain name consists of three common generic words or terms does not hold good as the words in the Complainant’s mark have acquired secondary meaning for the purposes of the Policy.
The Panel also notes the contents of the sworn affidavit of the Respondent’s client, in which it is stated that the client finds no confusing similarity between the website linked to the disputed domain name and the website of the Complainant. The submissions in the said affidavit are focused on making a direct comparison of the look and feel of the two websites at the disputed domain name and the domain name . In UDRP disputes the analysis of confusing similarity is made between the disputed domain name and the trademark per se and not the website content. This is based on the principle of “initial interest confusion”, where the website content is generally disregarded in making the analysis of confusing similarity, as user confusion would arise when the user encounters the domain name and clicks on the domain name, which is before the user arrives at the Respondent’s website.
The disputed domain name undoubtedly incorporates the Complainant’s trademark INDIAMART with the term “info”. It is well established that the addition of generic terms to a trademark does not lessen confusing similarity, particularly if the mark in question is a distinctive trademark. See Swarovski Aktiengesellschaft v. WhoisGuard, Inc. / Person, Johnny D,WIPO Case No. D2013-1450. As discussed, the Complainant has undoubtedly established the distinctive nature of its mark in these proceedings by filing documents that demonstrate its extensive use of the mark and the wide recognition of its mark by the public.
The Panel accordingly finds the disputed domain name is confusingly similar to the Complainant’s mark.
The Complainant has successfully established the first element under paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
The second element under paragraph 4(a) of the Policy requires the Complainant to make a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Policy enumerates some circumstances under paragraph 4(c) by which a respondent may demonstrate rights or legitimate interests:
(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 tarnish the trademark or service mark at issue.
The Respondent is evidently not known by the disputed domain name: it has been strongly contended by the Respondent that the name of its organization is “ATB Infomart Pvt. Ltd.” Further, it is not the Respondent’s claim that it is using the disputed domain name in connection with a bona fide offering of goods or services. The Respondent’s argument is that it is making legitimate noncommercial fair use of the disputed domain name, without intent for commercial gain as specified under paragraph 4(c)(iii) of the Policy. The Panel notes that this assertion by the Respondent is bereft of any supporting evidence
The Respondent has also claimed that it is an honest concurrent user of the disputed domain name as envisaged under Section 12 of the Indian Trademarks Act 1999. The status of being an honest concurrent user of the INDIAMART mark can arise only if the Respondent has shown or established that it is a concurrent user of the mark in commerce. On the one hand, the Respondent has claimed that it uses the trade designator “Info Mart”, and on the other hand the Respondent has not claimed any registered or common-law rights in the INDIAMART mark. The Respondent provides no details of the date from which it claims to have used the mark and for what goods and services it allegedly uses the mark. Without such details of common law usage of the mark, under the circumstances described, in the Panel’s view, the question of claiming to be an honest concurrent user of the mark does not arise. Further, if the Respondent had indeed adopted the mark INDIAMART in commerce, this is inconsistent with its claim of using the mark or the disputed domain name for legitimate noncommercial fair use as envisaged under paragraph 4(c)(iii) of the Policy.
The Panel finds the Respondent has offered insufficient evidence for the applicability of any of the provisions under paragraph 4(c) of the Policy. The Complainant has put forward a prima facie case that the Respondent lacks rights of legitimate interests in the disputed domain name. Accordingly, the Panel finds that the Complainant has satisfied the second requirement of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
The third element under paragraph 4(a) of the Policy requires the Complainant to establish that the disputed domain name was registered in bad faith and is being used in bad faith.
The Respondent has presented several arguments denying bad faith on its part: First, it has argued that the disputed domain name is comprised of only generic words. Second, that it has merely added the word “India” between the two words in its own name “Info Mart”. Third, it has argued that its use of the mark in the disputed domain name is to be considered as honest concurrent use of the mark. Fourth, that it is using the disputed domain name for legitimate noncommercial fair use purposes. As discussed in the previous sections, these submissions made by the Respondent are not consistent with the evidence presented and the material on record.
In the Panel’s view, given the fact that the Complainant’s mark has acquired secondary meaning and is distinctive of the Complainant’s business, it is likely that the Respondent was aware of the Complainant’s mark. Even a simple Google search would have revealed the Complainant’s rights in the mark. Further, because the Complainant’s website draws enormous web traffic, it is likely that the Respondent registered the disputed domain name to derive some commercial benefit from use of the trademark in the disputed domain name. UDRP disputes are decided on the balance of probabilities. The Panel finds on balance, based on all the evidence on record, that the Respondent has not established any rights in these proceedings. The mark in question being well known, the Respondent most likely registered the disputed domain name for its confusing similarity with the Complainant’s mark and to derive the benefit of attracting web traffic to its website based on the Complainant’s established trademark rights and the goodwill associated with the Complainant’s mark.
The registration of a domain name that incorporates a well-known mark by a person who has no relationship to the mark is itself considered evidence of bad faith. See Swarovski Aktiengesellschaft v. Whois Privacy Protection Services, Inc. Guard, Inc. / ning ning,WIPO Case No. D2012-0979, where it was held that the registration of a domain name by a party that has no legitimate connection or relationship with the owner of the mark generally constitutes bad faith registration. Under the circumstances described, it is not unreasonable to infer that the disputed domain name was registered and is being used with the intention of deriving advantage from the large volume of web traffic to the Complainant’s website based on the reputation associated with the mark.
The Respondent in all likelihood is trying to divert traffic meant for the Complainant and derive commercial gain as set out in paragraph 4(b)(iv) of the Policy. The Panel holds that the Complainant has satisfied the third requirement of paragraph 4(a) of the Policy, namely that the Respondent has registered and is using the disputed domain name in bad faith. 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.
Harini Narayanswamy
Sole Panelist
Date: January 20, 2014
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