The Complainant is Aditya Birla Management Corporation Private Limited of Mumbai, India, represented by Udwadia Udeshi & Argus Partners, India.
The Respondent is Ali Madencioglu of Kyrenia, Cyprus. 2. The Domain Names and Registrar
The disputed domain names , and are registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 22, 2014. On July 23, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On July 23, 2014, 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on August 19, 2014. Email communications were received from the Respondent on August 6 and 7, 2014.
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 August 21, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was September 10, 2014. No Response was received by the specified due date.
The Center appointed William R. Towns as the sole panelist in this matter on September 23, 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 part of the Aditya Birla Group, one of India’s largest industrial conglomerates, founded and run by the Birla family. The Complainant is the owner of Indian trademark registrations for ADITYA BIRLA GROUP and ADITYA BIRLA, used by Aditya Birla Group companies with a number of products and services.
The Respondent apparently resides in Cyprus. He describes himself as a collector of domain names, claiming to hold some 3,000 of them. The Respondent registered the disputed domain names between March 9 and 14, 2013. The disputed domain names replicate the names of Ananyashree Birla, Advaitesha Birla, and Aryaman Vikram Birla, the children of Mr. Kumar Mangalam Birla, the Chairman of the Aditya Birla Group.
The disputed domain names have been the subject of two previous UDRP proceedings involving the Respondent: Ananyashree Birla v. Ali Madencioglu,WIPO Case No. D2013-1123 and Neerja Kumar Mangalam Birla (Mrs.) v. Ali Madencioglu,WIPO Case No. D2013-1124.1 The distinguished three-member panel appointed in these cases found the complainants had not established trademark rights in their personal names and on that basis denied the complaints. Nevertheless, the panel observed that the record demonstrated overwhelmingly that the Respondent set out to target the complainants and to feed off the substantial reputation and goodwill of the Aditya Birla Group.
At various times, the Respondent has represented that he is a collector of domain names, that he registered the disputed domain names as a gift for Kumar Mangalam Birla, that the disputed domain names were registered for the protecting of the individuals, and that the disputed domain names would be linked to websites promoting or selling products. 5. Parties’ Contentions A. Complainant
The Complainant submits that the disputed domain names are confusingly similar to its registered ADITYA BIRLA GROUP and ADITYA BIRLA marks, because the disputed domain names all include “Birla”, which the Complainant asserts is the dominant and distinctive feature of its marks. The Complainant further asserts that the Birla family members whose names are replicated in the disputed domain names have common law rights in “Birla” in connection with the Complainant’s business or philanthropic activities.
The Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain names. The Complainant notes that the Respondent appears to be an individual located in Cyprus, a country where neither the Complainant nor the Birla family has any presence. According to the Complainant, the Respondent has no connection whatsoever with the Complainant or the Birla family, and has not been authorized to register domain names comprised of the Complainant’s marks or the Birla family name. The Complainant insists that the Respondent is not making a legitimate noncommercial or other fair use of the disputed domain names, nor using the disputed domain names in connection with a bona fide offering of goods or services. To the contrary, the Complainant submits that the Respondent acknowledges he is a collector of domain names, that prior to receiving a cease and desist letter the Respondent had offered the disputed domain names for sale, and that only after receiving the cease and desist letter did the Respondent claim that the disputed domain names were registered as gifts for the Birla family.
The Complainant contends that the Respondent registered and is using the disputed domain names in bad faith. The Complainant submits that it is clear the Respondent was aware of the Complainant’s marks and name when registering the disputed domain names. The Complainant maintains that the Respondent is in the business of registering domain names and thereafter selling them at a higher price, and that the Respondent repeatedly has contradicted himself when attempting to conceal his bad faith motives, at first asserting that the disputed domain names were gifts for the Complainant’s Chairman, then later that the disputed domain names were registered to protect the Birla children, and more recently that the disputed domain names do not reflect the personal names of any Birla family members. B. Respondent
The Respondent did not submit a formal reply to the Complainant’s contentions, but in an email to the Center dated August 6, 2014, the Respondent denied any cybersquatting, stating that the disputed domain names are personal names, but not the names of any celebrity, company, or a trademark registered to a company. The Respondent denies any bad faith, contending that he is not trying to pass the disputed domain names off as the Complainant’s trademark, nor trying to sell the disputed domain names, nor otherwise attempting to profit from them. The Respondent maintains that he collects domain names as a hobby and states that he does not see how registering personal names can be illegal. 6. Discussion and Findings A. Scope of the Policy
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store,WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware,WIPO Case No. D2000-0187. See Final Report of the First WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169-177. The term “cybersquatting” is most frequently used to describe the deliberate, bad faith abusive registration of a domain name in violation of rights in trademark or service mark. Id. at paragraph 170. Paragraph 15(a) of the Rules provides that the panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the panel deems applicable.
Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(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 with respect to the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
Cancellation or transfer of the disputed domain name are the sole remedies provided to the complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270. B. Identical or Confusingly Similar
The Panel finds that the disputed domain names are confusingly similar to the Complainant’s ADITYA BIRLA GROUP and ADITYA BIRLA marks, in which the Complainant has established rights through registration and use.2 In considering this issue, the first element of the Policy stands essentially as a standing requirement.3 The threshold inquiry under the first element of the Policy is largely framed in terms of whether the trademark and the disputed domain name, when directly compared, are identical or confusingly similar. In this case, BIRLA is the distinctive and source indicating feature of the Complainant’s marks, is present in each of the disputed domain names. That the disputed domain names may call attention to members of the Birla family does not dispel the confusing similarity of the disputed domain names with the Complainant’s marks. While Birla is a family name, it beyond question functions as an indicator of source for the Complainant and the Complainant’s goods and services.
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests
As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) of the Policy has been made. It is undisputed that the Respondent has not been authorized to use the Complainant’s marks. The disputed domain names nevertheless are confusingly similar to the Complainant’s marks, and the record reflects the Respondent has at various times advertised the disputed domain names for sale, as well as more recently stating that he intends to monetize the disputed domain names by using them with websites on which products are sold.
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights or legitimate interests in the disputed domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the disputed domain name, even if he has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
As noted earlier, the Respondent has not submitted a formal response to the Complaint, in the absence of which the Panel may accept all reasonable inferences and allegations in the Complaint as true. See Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009. Regardless, the Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondent’s registration and use of the disputed domain names within any of the “safe harbors” of paragraph 4(c) of the Policy.
Based on the record in this proceeding, it is evident to the Panel that the Respondent was aware of the Complainant and the Complainant’s marks when registering the disputed domain names. The Panel concludes from the totality of facts and circumstances that the Respondent registered the disputed domain names to trade on the goodwill and reputation of the Complainant and the Complainant’s marks. The Respondent has not been authorized to use the Complainant’s marks; nor is there any indication that the Respondent has been commonly known by the disputed domain names within the meaning of paragraph 4(c)(ii) of the Policy. The record before the Panel does not reflect the Respondent’s use of, or demonstrable preparations to use, the disputed domain names in connection with a bona fide offering of goods or services. Nor can it be said that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers.
As noted earlier, after a dispute arose regarding the disputed domain names, the Respondent at initially claimed that he registered the disputed domain names as a gift for the Complainant’s Chairman. He later would claim that he had registered the disputed domain names to protect Birla family members. In response to the instant Complaint, the Respondent appears to have taken the position that the disputed domain names do not incorporate the Birla name and mark at all. The Respondent’s claims are totally lacking in credibility, and are in the Panel’s opinion merely pretextual to the Respondent’s repeated attempts to exploit and profit from the Birla mark and name. Nothing in the record before the Panel supports a claim by the Respondent of rights or legitimate interests in the disputed domain name.
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent 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) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its 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 its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. M, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230.
For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent’s conduct in this case constitutes bad faith registration and use of the disputed domain names within the meaning of paragraph 4(a)(iii) of the Policy. The Panel finds that the Respondent was well aware of the Complainant and of the Complainant’s marks when registering the disputed domain names. The record amply evinces the Respondent’s abusive registration and use of the disputed domain names in a bad faith attempt to exploit, profit from, or otherwise take advantage of the Complainant’s marks and the Birla name.
Accordingly, the Panel finds that the Complainant has satisfied the requirements 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 names , , and be transferred to the Complainant.
William R. Towns
Sole Panelist
Date: October 7, 2014
1 The Complaint in Neerja Kumar Mangalam Birla (Mrs.) v. Ali Madencioglu,WIPO Case No. D2013-1124 was brought by Neerja Kumar Mangalam Birla, the mother of the minor children Advaitesha Birla and Aryaman Vikram Birla. The three-member panel in that case noted “[i]n the view of the Panel this Complaint and the parallel Complaint (Ananyashree Birla v. Ali Madencioglu,WIPO Case No. D2013-1123) should have been filed as one complaint in the name of a holder of trade mark rights in the name ‘Birla’, which features in its entirety in all the domain names the subject of these complaints. The Panel observes that the rules relating to re-filed complaints (see paragraph 4.4, WIPO Overview 2.0) will not apply in relation to any complaint filed by any trade mark owner, which will be a legal entity distinct from the Complainants.”
2 To the extent the Complaint urges that the persons whose names have been replicated by the Respondent have common law trademark rights in “Birla”, the Panel considers that the rules relating to re-filed complaints (see WIPO Overview 2.0, paragraph 4.4) would apply. Conversely, the rules relating to re-filed complaints do not apply to the Complainant’s assertion of rights in the ADITYA BIRLA GROUP and ADITYA BIRLA marks, and the Panel agrees with the comments of the distinguished three-member panel in Ananyashree Birla v. Ali Madencioglu,WIPO Case No. D2013-1123 and Neerja Kumar Mangalam Birla (Mrs.) v. Ali Madencioglu,WIPO Case No. D2013-1124 so noting.
3 See WIPO Overview 2.0, paragraph 1.2.
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