The Complainant is Shanti Adventure Tours Pvt. Ltd. of New Delhi, India, represented by LexOrbis, India.
The Respondents are Achal Kaushal, Innovation Central Int’l, Achal, Ice Digitals Private Limited of New Delhi, India, represented by Ashish Aggarwal, Intellect Law Partners Advocates, India. 2. The Domain Names and Registrars
The disputed domain name is registered with GoD, LLC.
The disputed domain name is registered with Net 4 India Limited.
Collectively, these two disputed domain names shall be referred to as the “Domain Names.” 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 23, 2015. On March 23, 2015, the Center transmitted by email to the Registrars a request for registrar verification in connection with the Domain Names. On March 23, 2015, the Registrar 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. On March 25, 2015, the Registrar Net 4 India did the same. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on March 28, 2015.
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 Respondents of the Complaint, and the proceedings commenced March 30, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was April 19, 2015. The Response was filed with the Center on April 18, 2015.
The Center appointed Vinod K. Agarwal, Michelle Brownlee and Robert A. Badgley as panelists in this matter on May 11, 2015. 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 filed Application No. 1855185 with the Registrar of Trademarks in India seeking registration of the trademark SHANTI TRAVEL and design in International Class 39 in connection with travel agency services. The status of the Application is “Accepted and Advertised (pending for registration)”. The Complainant owns the domain name and uses it to operate a website for travel services.
The Respondents registered the disputed domain name on May 24, 2011, and registered the disputed domain name on March 8, 2013. Both Domain Names have been used to operate websites offering travel services. Currently, the disputed domain name redirects Internet users to the website at “www.my”. 5. Parties’ Contentions A. Complainant
The Complainant is a travel agency having headquarters in India and offices in Bhutan, Indonesia, Maldives, Myanmar, Nepal, and Sri Lanka, and specializes in custom travel packages to these destinations. The Complainant states that it has been providing travel and tour related services in the name and under the mark SHANTI TRAVEL since at least as early as 2005. The Complainant submits that it spends a “huge amount of money on advertisement and promotional activities containing the trademark/trade name “Shanti Travel”, and contends that due to such activities, the mark has become associated with the Complainant and no one else. The Complainant states that in addition to advertising its services “in many media,” it operates a website at “www.”. The Complainant also owns several domain names that incorporate “shanti travel”, including , , , and others.
The Complainant contends that the Domain Names are confusingly similar to its SHANTI TRAVEL trademark, that the Respondents have no rights or legitimate interests in respect of the Domain Names and that the Domain Names were registered and are used in bad faith. The Complainant contends that the Respondents are intentionally creating confusion by using the Domain Names in connection with a website that also offers travel services. B. Respondent
The Respondents also offer travel services. The Respondents registered the disputed domain name in 2011, and used it in connection with a website that the Respondent claims is “the first focused business/site offering choices, facilitation and assistance for travel towards Rejuvenation, Health & Peace, Structured packages for Leisure/well-being/Wellness trips.” The Respondent states that the name of the site was changed to “www.my” in 2014 “due to numerological reasons.” The disputed domain name now redirects users to the “www.my” website. The main service that the Respondent offers is Ayurveda packages in India, which include yoga. The packages address issues such as rejuvenation, weight-loss, anti-aging, stress, old age care, arthritis care, diabetes care, among others.
The word “shanti” is a word of Sanskrit origin which means “peace.” The Respondents contend that the Domain Names are descriptive of the services the Respondents offer, which are travel packages to achieve rejuvenation, health and peace. The Respondents state that they were unaware of the Complainant’s “www.” website or claim to trademark rights in SHANTI TRAVEL at the time they registered the dispute domain name . The Respondents note that a number of other unrelated parties operate travel websites that use both the terms “travel” and “shanti” in either their domain names or business names.
The Respondents submit that their website is more popular than the Complainant’s website, and have provided printouts of Alexa website traffic ratings that show that the Respondents’ “www.my” website is the 10,371st most popular site in India, whereas the Complainant’s “www.” website is the 27,706th most popular site in India. The Respondents have presented evidence that they have been promoting their website in print advertisements in newspapers and magazines in India. The Respondents also promote their business through social media channels, including Facebook, Twitter, LinkedIn, Google+ and YouTube. The Respondents note that they received a cease-and-desist letter from the Complainant in 2011, but the Complainant took no further action until the present time. The Respondents argue that the Complainant is only choosing to pursue this action at this time because the Respondents’ website gets more traffic than the Complainant’s website.
The Respondents contend that they are not trying to confuse anyone. They point out that their site does not show up in the first pages of Internet search results for “shantitravel,” and refer to differences between their site and the Complainant’s site, such as differences in language (the Complainant’s site is in French, unless someone specifically selects a language choice), logos, and the type of travel packages offered. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel as to the principles the Panel is to use in rendering its decision. It says that, “A panelist 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”.
According to paragraph 4(a) of the Policy, the Complainant must prove that:
(i) The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) The domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel need not decide this issue in view of its conclusion below with respect to the “bad faith” element under the Policy. B. Rights or Legitimate Interests
The Panel notes that based on the facts and contentions described above, the Complainant has not met its burden under the Policy, but that in any event the Panel need not decide this issue in view of its conclusion below with respect to the “bad faith” element under the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that the following circumstances are evidence of registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent has registered or 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 documented out-of-pocket costs directly related to the domain name; or
(ii) 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) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
by using the domain name, the respondent has intentionally attempted 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 its website or location or of a product or service on its website or location.
The Panel concludes, for both Domain Names, that the Complainant has not carried its burden of proving that Respondent registered and used the Domain Names in bad faith within the meaning of the Policy.
The Policy does not contemplate this Panel serving as a tribunal of general jurisdiction over any and all disputes which are somehow related to domain names. The issues raised by the parties here exceed the relatively narrow confines of the Policy, which is designed chiefly to address clear cases of cybersquatting. See, e.g., Libro v. NA Global Link,WIPO Case No. D2000-0186. For example, the Respondents have argued for the descriptive significance of the wording “travel shanti” in connection with their services. The Respondents have presented evidence that others offer similar services under similar names, that the Respondents have advertised their services in print publications, and that the Respondents’ website gets more traffic than the Complainant’s site.
Additionally, the Respondents have stated that they had no knowledge of the Complainant’s claimed trademark when they registered the disputed domain name . Moreover, the Complainant’s trademark registration has not yet issued, and the Complainant did not present sufficient evidence for the Panel to determine whether common law rights exist.
In view of the foregoing and possibly other issues, the Panel concludes that the Complainant has not made out or proven a cognizable case under the Policy. 7. Decision
For the foregoing reasons, the Complaint is denied.
Vinod K. Agarwal
Presiding Panelist
Michelle Brownlee
Panelist
Robert A. Badgley
Panelist
Date: May 25, 2015
Full & Egal Universal Law Academy