The Complainant is Etechaces Marketing and Consulting Private Limited of Haryana, India, represented by Wadhwa Law Chambers, India.
The Respondent is Bhargav Chokshi / IR Financial Services Pvt. Ltd., of Ahmedabad, India, represented by Gaurav Soni, India. 2. The Domain Name and Registrar
The disputed domain name is registered with BigRock Solutions Pvt Ltd. (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 31, 2015. On March 31, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 1, 2015, 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 on April 2, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was April 22, 2015. The Response was filed with the Center on April 22, 2015.
The Center appointed Harini Narayanswamy as the sole panelist in this matter on May 1, 2015. 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 in the business of providing online insurance comparisons through its wholly owned company Policy Bazaar Insurance Web Aggregator Private Limited. It registered the domain name on May 26, 2008, and uses the trademarks POLICY BAZAAR and POLICY BAZAAR.COM in connection with its business. It owns trademark registrations for the said marks, details of its registered trademarks are:
TRADEMARK
TRADEMARK NUMBER
CLASS
DATE OF APPLICATION
POLICYBAZAAR.COM
1764833
38
December 17, 2008
POLICYBAZAAR.COM
1764834
41
December 17, 2008
POLICYBAZAAR.COM ( Device)
1764854
16
December 17, 2008
POLICYBAZAAR.COM (Device)
1764846
35
December 17, 2008
POLICYBAZAAR.COM ( Device)
1764847
36
December 17, 2008
POLICYBAZAAR.COM ( Device)
1764848
38
December 17, 2008
POLICYBAZAAR.COM ( Device)
1764849
41
December 17, 2008
POLICY BAZAAR (word mark)
2183635
16
August 1, 2011
The Respondents are Bhargav Choksi and IR Financial Services Pvt. Ltd. The second Respondent IR Financial Services Pvt. Ltd., is a company incorporated on March 2, 2006. The Respondents are collectively referred to as "The Respondent", in these proceedings. The Respondent registered the disputed domain name on February 25, 2012. 5. Parties' Contentions A. Complainant
The Complainant states that it runs India's leading online insurance comparison portal under the mark POLICY BAZAAR. It has been providing solutions to 5,000,000 Indian customers since 2008. During the year 2014, the Complainant states it received 8.1 million page views from 1.6 million users. At the time of filing the Complaint, its Alexa ranking in India was 665 and it has filed as evidence the Google Analytics Audience Overview for for the period from January 1, 2014 to December 31, 2014.
The Complainant states its insurance comparison engine runs due to intense research and periodic updating by a team of more than one thousand five hundred employees. The Complainant states that financiers and funds have invested in its business and it has spent over USD 18 million on advertising and promoting its mark. It was awarded "best financial website" by the Internet and Mobile Association of India for the years 2013 and 2014. The Complainant states it has registered rights and common law rights in the POLICYBAZAAR.COM trademark and the corresponding logo. The Complainant states it also owns several domain names formed with its POLICY BAZAAR and POLICYBAZAR.COM marks.
The Complainant states the disputed domain name uses the trademark in its entirety and is confusingly similar to its trademark. It contends it is the prior adopter, user and owner of the POLICY BAZAAR and the POLICYBAZAAR.COM marks and has trademark registrations and pending trademark applications for the said marks. The Complainant states it had sent a legal notice to Respondent dated July 2, 2013 and the Respondent replied to the said notice by a communication dated July 17, 2013.
The Complainant states the Respondent has no rights or legitimate interests in the disputed domain name, as the Respondent uses its mark without any permission and is not known by the disputed domain name. Further, the Respondent has started a competitor website with full knowledge of the Complainant's mark. The Respondent cannot demonstrate interests under paragraph 4(c) of the Policy, and there is no bona fide use of the disputed domain name except to bait Internet users by imitating the Complainant's mark.
The Complainant states the disputed domain name was registered and is being used in bad faith, primarily to disrupt the Complainant's business. It unfairly exploits the Complainant's mark and directly competes with the Complainant's business, thereby causing confusing to Internet users. The Complainant requests for transfer of the disputed domain name. B. Respondent
The Respondent contends IR Financial Services Pvt. Ltd. was incorporated on March 2, 2006 and operates a financial and insurance related service portal from the disputed domain name. It states that the Complainant is aware that it is a leading company in financial services and has filed as evidence testimonials, achievements and certificates of IR Financial Services Pvt. Ltd.
The Respondent states it uses the disputed domain name to provide various services related to Mutual Funds, Insurance, Tours and Travels, Fixed Deposits, Real Estate and other financial services. The Respondent contends the disputed domain name was adopted honestly and it is a unique combination of three generic words "online", "policy" and "bazaar". The Respondent states it has created its own goodwill in the market and has no intention of creating confusion with the Complainant's mark. The Respondent further states that its honesty is apparent because it has applied for trademark and copyright registration.
The Respondent claims it has common law trademark rights and has filed as evidence its trademark application dated April 4, 2013 and has provided details of its trademark and copyright applications:
TRADEMARK NUMBER
DATE OF APPLICATION
TRADEMARK
CLASS
GOODS / SERVICES
2507055
April 4, 2013
ONLINE POLICY BAZAAR
36
INSURANCE, FINANCIAL AFFAIRS, MONETARY AFFAIRS
Its Copyright application number is: Copyright No. 3472/2015 – CO/A. The Respondent states that it has also obtained a "No Objection Certificate" from the Trademark Registry to file the copyright application.
The Respondent states the Complainant does not have registered trademark rights for POLICY BAZAAR in class 36, which is the relevant class for the Complainant's insurance services, as the trademark application is still pending. The Respondent argues that the words "policy " and "bazaar" are common generic words; therefore the Complainant has no exclusive rights in its mark. The Respondent claims its adoption is honest and bona fide as it was not aware of the Complainant's rights. The Respondent claims its business has innovative features and its name has acquired secondary meaning, goodwill and reputation. The Respondent argues Complainant has not given evidence of adoption of its mark and hence cannot claim rights in the trademark.
The Respondent states it coined its mark from a combination of the words related to the nature of its business "online", "policy" and "bazaar" and has adopted the name based on availability. The Respondent further states it is commonly known by the disputed domain name and has trademark rights in the name. The Respondent has filed documents of association that it has entered into, with insurance organizations in connection with its insurance business. The Respondent further claims it is known for its quality of services, innovative services, portfolio management, customization and auto reminder features.
The Respondent states that the disputed domain name was registered for bona fide use and not for selling, renting or transferring. The Respondent further states it has not engaged in a pattern of registering domain names to disrupt the Complainant's business and argues that the artwork and website design is distinct and not confusingly similar to the Complainant's site. The Respondent states the Complainant should be liable for reverse domain name hijacking, as the Complainant has diverted the web traffic from the Respondent's site. The Respondent apparently owns the domain names and , and claims it is an honest and bona fide adopter of the disputed domain name for insurance services with no bad faith intent and requests for cancellation of the Complaint. Preliminary Issue - Concurrent Court Proceedings
The Complainant's counsel, by email dated April 26, 2015 informed the Center that the Complainant has filed a court proceeding against the Respondent on February 21, 2015. The matter is pending before the Gurgaon District Court in India and is pertaining to the disputed domain name. The Complainant requested the present proceedings under the Policy should be continued, notwithstanding the pendency of the concurrent court proceedings in India.
The Panel finds no reason to suspend or discontinue the proceedings. The Complainant has opted to seek remedy under the UDRP as an alternative dispute resolution mechanism. The Respondent has also participated in the present proceedings and made its submissions by filing a timely Response. The parties have willingly participated in the proceedings and the Panel finds it is proper to render the decision under the Policy. 6. Discussion and Findings
To obtain the remedy of transfer of the disputed domain name, the Complainant has to establish three requirements set out under paragraph 4(a) of the Policy. These are:
(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 lacks rights or legitimate interests in 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 under paragraph 4(a) of the Policy stipulates the Complainant has to establish the disputed domain name is confusingly similar to a trademark or a service mark in which it has rights.
The Panel finds, based on evidence filed by the Complainant, that it has established registered trademark rights for the POLICY BAZAAR and POLICY BAZAAR.COM trademarks. The Complainant has filed as evidence copies of its trademark registration certificates that clearly establish its prior use and its registered rights in the said marks.
The Respondent has argued that the Complainant lacks registered trademark rights in the relevant class for insurance services as the Complainant's trademark application under class 36 is still pending. It is well established in policy decisions, that trademark registration is proof of validity of trademark rights, irrespective of the class or goods or services for which it is registered. See WIPO Overview of Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), and paragraph 1.1 (If a complainant owns a trademark, it satisfies the threshold requirements under the Policy. Location of a trademark and the goods and services for which it is registered is irrelevant for the purpose of finding rights in a trademark under the first element of the UDRP). The Panel finds the Complainant is the registered owner of the POLICY BAZAAR and POLICY BAZAAR.COM trademarks and that it has used the mark in commerce from 2008.
The Panel finds the disputed domain name contains the Complainant's trademark in its entirety. This is sufficient to satisfy the requirement that the disputed domain name is confusingly similar to the mark. The mark prefixed with the word "online", does not lessen the confusing similarity of the disputed domain name.
The disputed domain name is therefore found confusingly similar to the Complainant's mark POLICY BAZAAR. The Complainant is found to have successfully established the first requirement 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 and legitimate interests in the disputed domain name. Once the Complainant has made a prima facie showing that the Respondent lack rights, the Respondent has the opportunity to rebut the Complainant's contentions and demonstrate any rights or legitimate interests in the disputed domain name.
The Complainant has submitted that the Respondent lacks rights or legitimate interests in the disputed domain name as the Respondent is not commonly known by the disputed domain name and even if it were, the name is only a copy of the Complainant's mark. Further, the Respondent is not a licensee or an affiliate of the Complainant and is not authorized to use its mark. The Respondent has submitted inter alia that it has rights and legitimate interests in the disputed domain name as it has been in the insurance business since 2006 and has filed documents as evidence to support its contentions.
The Panel finds the documents filed by the Respondent, merely show that IR Financial Services Pvt. Ltd. has been doing business in the area of insurance. The present dispute is regarding the legitimacy of the Respondent adopting the disputed domain name and not the legitimacy of the Respondent's insurance business. The documents filed by the Respondent regarding the business of IR Financial Services Pvt. Ltd. are therefore found to be unrelated to the issue in these proceedings.
It is evident that the Respondent has registered the disputed domain name after the Complainant's prior adoption, use and promoting its mark in commerce. The Complainant's trademark registrations clearly show that the Complainant has used the mark in commerce from 2008. The Respondent's trademark application number 2507055 dated April 4, 2013, shows date of use from February 25, 2012 in class 36.
Honest business policy requires adopting a name or mark that does not take advantage of another's goodwill or reputation to deceive consumers through confusion and deception. Registrationofa domain name that is confusingly similar to the trademark of another is considered lacking in good faith and devoid of legitimate rights under the Policy. See The Coca- Cola Company v. MyFanta Networks, S.L ,WIPO Case No. D2011-2063. (Respondent's use or demonstrable preparations to use, the disputed domain name in connection with an offering of goods and services, whether for profit or otherwise, has to be bona fide and not based on another's trademark rights).
Prior cases have consistently held that the true intent of paragraph 4(c)(i) of the Policy is to recognize a respondent's good faith registration and selection of domain name that does not imitate another's trademark. See The New England Vein & Laser Center v. Vein Centers for Excellence, Inc.,WIPO Case No. D2005-1318. (The term legitimate in paragraph 4 (c) of the Policy refers to the Respondent's entitlement to the domain name selected rather than to the legality of the business). See also Abu Dhabi Future Energy Company PJSC v. John PepinWIPO Case No. D2008 -1560 (Respondent may have in mind a legitimate business but its registration of domain names with "exploitative intent" does not confer any legitimate rights). Given the facts of the present case, it is doubtful whether the adoption of the disputed domain name by the Respondent was done without any expectation of capitalizing on the trademark of the Complainant.
When the adoption and registration of the disputed domain name itself cannot be termed legitimate or bona fide, any further action, such as trademark application or copyright application by the Respondent cannot be termed bona fide. Trademark application by a cybersquatter has been rejected as a respondent's defense in many previous cases; see Tiara Hotels & Resorts LLC v. John Pepin,WIPO Case No. D2009-0041.
The Panel finds inconsistencies in the Respondent's pleadings, such as, the Respondent stating that it has adopted the disputed domain name based on the generic words "Online", "Policy" and "Bazaar" that are related to the nature of its business. However, the disputed domain name is admittedly being used by the Respondent to provide a host of services like Mutual Funds, Insurance, Tours and Travels, Fixed Deposits, Real Estate and other financial services. In the Panel's view, the Respondent's argument that it adopted the domain name as the generic words "Online", "Policy" and "Bazaar" reflect its online business is clearly inconsistent with the numerous services offered by the Respondent's website. Similarly, the Respondent's arguments that the Complainant's mark is not distinctive, as it is comprised of two generic words is unpersuasive and not consistent with its own pleadings, as the Respondent has claimed trademark rights for three generic words, two of which are part of the Complainant's mark.
As discussed, the arguments and the evidence filed by the Respondent do not support a finding that the Respondent has rights or is making bona fide use of the disputed domain name. The Panel finds the Complainant has established the second element under 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 the disputed domain name has been registered in bad faith and is being used in bad faith.
The Complainant has established in these proceedings that it is a prior adopter of the mark and the mark is distinctive of the Complainant's services. The evidence on record shows the Respondent has registered the disputed domain name despite knowing about the Complainant's rights in the mark. The search report filed by the Respondent as evidence clearly shows the Complainant has prior rights in the POLICY BAZAAR mark. The Respondent by its own admission has been in the business of insurance since 2006, and the balance of probabilities indicates the Respondent ought to have been aware of the Complainant's prior rights in the trademark.
It is a well-settled proposition of trademark law, that the first party to adopt, use and promote the mark in commerce obtains ownership rights, even if the said trademark is comprised of generic words. The use of the trademark in the disputed domain name, in the Panel's considered view, is likely to cause consumer confusion as to source, sponsorship, affiliation or endorsement which constitutes bad faith registration and use under paragraph 4(b)(iv) of the Policy. The Panel finds the Respondent has copied the Complainant's mark with impunity and is claiming that it has its own goodwill and reputation.
The Respondent has argued that its website has a different look and offers more services and products than the Complainant's website. Where there is prima facie imitation of the Complainant's trademark, no further evidence needs to be examined. It is well established in domain name jurisprudence, that initial interest confusion occurs when the consumer or Internet user encounters the trademark in the disputed domain name and is then diverted to the Respondent's online location.
In the light of all that has been discussed and based on the material on record, the Panel finds the Respondent's registration and use of the disputed domain name constitutes bad faith registration and use under the Policy. The Complainant is found to have successfully established the third element under paragraph 4 (a) of the Policy. Reverse Domain Name Hijacking
The Respondent avers that there is a case for Reverse Domain Name Hijacking against the Complainant, as the Complainant has diverted the web traffic from the Respondent's site. The Respondent is required to establish that the present Complaint was brought in bad faith or to abuse the administrative proceedings under paragraph 15(e) of the Rules to succeed in a claim of Reverse Domain Name Hijacking. The Panel finds there is no evidence showing the Complainant has filed the Complaint in bad faith or that the Complaint was brought to abuse the administrative proceedings conducted under the Policy.
The Panel finds the Complainant has established all the three elements required under the Policy and the Respondent has not established that the present Complaint was brought in bad faith to abuse the administrative proceedings. The Respondent's request for Reserve Domain Name Hijacking is declined. 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: May 15, 2015
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