The Complainant is Automotive Exchange Private Limited of Mumbai, India, represented by Cyber-IPR, India.
The Respondent is Hundraj Haryani of Mumbai, India, represented by Cyber Law Consulting, India. 2. The Domain Names and Registrar
The disputed domain names and are 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 August 7, 2015. On August 7, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On August 19, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceeding commenced on August 25, 2015. In accordance with the Rules, paragraph 5, the due date for Response was September 14, 2015. The Response was filed with the Center on September 14, 2015.
The Center appointed Harini Narayanswamy as the sole panelist in this matter on September 28, 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.
On October 5, 2015, the Center received a Supplemental Filing from the Complainant. The Center acknowledged its receipt, and informed the parties that it would be forwarded to the Panel, once appointed, who would have the discretion to accept or reject it. 4. Factual Background
The Complainant is an Indian company that hosts an automotive portal at domain name .
It is part of the Axel Springer Group, owner of Auto Bild, a leading automotive magazine and the India Today Group, owner of India's leading magazine "India Today" and the news channel "Aaj Tak".
The Complainant operates its business under the trademark CARWALE. It has registered trademark rights for the CARWALE mark and its variants, these are:
CARWALE registration number 1707762 in class 9;
CARWALE VINTAGE WHEELS (device mark) registration number 192052 class 41;
CARWALE MY GARAGE (device mark) registration number 1997953 class 41.
The earliest of the Complainant's CARWALE trademark registration dates back to July 8, 2008. The Complainant has also filed other word and device trademark applications that are still pending. The Complainant registered the domain name on May 24, 2005.
The Respondent is based in the city of Mumbai. The Respondent has obtained trademark registration for the word mark CARWALE, under class 38 bearing registration number 2284432, dated February 16, 2012. The Respondent has filed another trademark application which is pending. The Respondent has registered the disputed domain name on January 19, 2012 and the disputed domain name was registered on November 19, 2013. 5. Parties' Contentions A. Complainant
The Complainant states it has used the CARWALE mark for a decade and has gained goodwill due to its extensive use. The Complainant claims the mark is well known as defined under section 2 (a)(zg) of The Indian Trade Mark Act 1999, and any use of its mark by a third party would lead to consumer confusion and deception. The Complainant states that it has taken various initiatives and has received prestigious awards such as the Red Herring Global 200 Award (2010) and provided a list of awards that it has received.
The Complainant states that it launched its website in October 2005 which receives about 13 million hits every month. The Complainant has filed a copy of the Google Analytics report for the month of June 2015 and its mobile app as evidence. In the last ten years, the Complainant states it has served more than 120 million Indian car consumers.
The Complainant contends the disputed domain names are identical or confusingly similar to its trademark as they contain the entire mark. The Complainant argues that the addition of the words "India" and "Mumbai" with the CARWALE mark does not interfere with a finding of confusing similarity.
The Complainant argues that the Respondent has no rights or legitimate interests in the disputed domain names and that the Respondent has applied for trademark registrations to take advantage of the Complainant's mark. The Complainant further argues that the Respondent ought to have known of the Complainant's mark, which was well known at the time of registration of the disputed domain names. Furthermore, the Respondent is located in Mumbai and has used the disputed domain names for the same type of business as the Complainant. The Complainant has provided as evidence, customer complaints it has received due to the confusingly similarity of the disputed domain names with its mark and states the Respondent's use of the disputed domain names is only to mislead customers.
The Complainant argues that the disputed domain names were registered and are being used in bad faith. According to the Complainant, even a simple Internet search would have revealed to the Respondent the Complainant's rights in the mark at the time of registration. The Complainant states the Respondent uses the disputed domain name with its trademark displayed on its website to provide similar service and is trying to pass off his services as that of the Complainants'. The disputed domain name is being passively held, which is considered bad faith use. The Complainant argues that the Respondent has acquired the disputed domain names with an intent of disrupting its business and tarnishing its mark and requests for the transfer of the disputed domain names.
In addition to the present Complaint, the Complainant states it has filed a criminal action against the Respondent at Cyber Crime Cell at Mumbai and has filed a rectification application seeking cancellation of the trademark number 2284432 that is registered by the Respondent. B. Respondent
The Respondent states it is a sole proprietorship firm with a trading business that is confined to Mumbai and its suburban areas. The Respondent states that it is not in competition with the Complainant because of the Complainant's large scale operation with international associations.
The Respondent states that class 38 is relevant for the Complainant's business and argues that the Complainant has been negligent because it has filed under this class only in the year 2015. The Respondent argues that the awards mentioned by the Complainant have been given to the company "Automotive Exchange Private Limited" and not to the domain name . The Respondent rebuts the Complainant's contention that the CARWALE mark is well know and argues that the mark is merely a generic term consisting of two words "car" and "wale", which means "a person who has a car with him /her" and further argues that anyone is entitled to use the term "carwale" which is a generic term. The Respondent argues that the question of confusion among the public does not arise as the geographical areas of the businesses are different.
The Respondent submits that the reason for his using the words "India" and "Mumbai" along with the CARWALE mark in the disputed domain names was for purposes of giving a local meaning to his business and not for purposes of confusing the public but only to attract customers in his local area, and that there is no intentional wrong doing on his part. The Respondent argues that the Complainant did not have any trademark registrations for the words "car" or "wale" when the Complainant registered its domain name.
The Respondent states he was not aware of the Complainant's mark at the time of registration of the disputed domain names. The Respondent goes on to state that due to his business interests in cars accessories and car parts he has been known as "Carwale Haryani" since 1999, but has offered no evidence to establish this fact. The Respondent argues that he has obtained trademark registration prior to the registration of the disputed domain names and that the Complainant ought to have known of it.
The Respondent argues that the Complainant's trademark applications made at various points of time, under different classes is a business strategy adopted by big corporate entities, such as the Complainant, to squeeze out smaller businesses such as the Respondent. The Respondent states he has rights to do business under the constitution without disruption from the Complainant and further states that he has taken care to register only common and descriptive terms. The Respondent says there is no evidence of bad faith on his part or any evidence that he had knowledge of the Complainant's mark at the time of registration of the disputed domain names. The Respondent argues that the Complainant has waited for over four years after the Respondent registered the disputed domain names before initiating the present proceeding and argues that it may indicate the Complainant does not believe the disputed domain names were registered in bad faith. C. Supplementary Submissions
The Complainant has sought to file a supplementary submission, as a rejoinder, to the Response filed by the Respondent. There is no express provision in the Rules to entertain unsolicited supplemental filings. However, if the panel is satisfied that there are exceptional circumstances that warrant allowing the unsolicited submissions, such as some new information that a panel may require to arrive at a decision, the panel may, at its discretion, allow such supplemental submissions. As no such exceptional circumstance was present in this case to consider the supplemental submissions, pursuant to paragraphs 10 and 12 of the Rules, the Panel declined to accept the unsolicited submission filed by the Complainant. The Panel however needs to add here, that the Complainant's counsel has done commendable work in preparing such a detailed and well presented rejoinder. 6. Discussion and Findings
In order to obtain the remedy of transfer of the disputed domain names, the Complainant is required to establish the three elements mentioned under paragraph 4(a) of the Policy. These are:
(i) The disputed domain names are identical or confusingly similar to a mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) The disputed domain names were registered and are being used in bad faith by the Respondent. A. Respondent's Consent to transfer
In the present case, the parties have decided to settle the dispute amicably and have submitted a settlement agreement. The settlement agreement was sent by the Complainant to the Center through an email communication on October 9, 2015 and is signed by both the parties and their respective counsel.
In previous UDRP cases when a respondent has consented to transfer the domain name to the complainant, some panels have held that the requirements of paragraph 4(a) of the Policy are fulfilled and have ordered immediate transfer of the domain name. See eM, Inc. v.Mp3DownLoadCity,WIPO Case No. D2004-0967; Sanofi Aventis v. Day Corporation,WIPO Case No. D2004-1075. Whereas, in some other UDRP cases it has been held that a genuine unilateral offer to transfer the domain name by the respondent provides a basis of immediate transfer without considering the elements of paragraph 4(a) of the Policy. See Perkins Holdings Limited v. Domain Admin Privacy Protection Service INC d/b/a Private P/ Agus Hariyadi,WIPO Case No. D2015-0214, citing Wilmer Cutler Pickering Hale and Dorr LLP v. Texas International Property Associates – NA NA,WIPO Case No. D2008-1451 and Williams Sonoma Inc. v. EZ-Port, WIPO Case No. D2000-0207 (because respondent has consented to the relief requested by the complainant it is not necessary to review the facts supporting the claim). In Lonely Panel Publications Pty Ltd. v. Hoang Anh Minh and ,WIPO Case No. D2003-0355, the respondent signed a settlement agreement for transfer of the domain name and the respondent did not contest the case, the panel ordered immediate transfer based on the settlement agreement. See also paragraph 4.13 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions.
In the present case however, the Respondent has contested the case, and the settlement agreement appears to be part of a larger settlement of various other disputes and cases between the parties. As the request for transfer of the disputed domain names is not a unilateral request from the Respondent and the Respondent has contested the case, the Panel considers it appropriate to render a decision under the three elements of paragraph 4(a) of the Policy. B. Identical or Confusingly Similar
The Panel finds the Complainant has trademark rights in the CARWALE mark and the disputed domain names are confusingly similar to its mark. The Panel additionally notes that the Complainant has provided evidence that customers have been confused and deceived by the similarity of the disputed domain names to its mark. The Respondent's argument that the Complainant lack rights in the mark as "Carwale" is a generic term, is completely misplaced in this case, as the Complainant has clearly established that its mark has acquired secondary meaning as a source identifier of the Complainant's services. C. Rights or Legitimate Interests
It is found that the Complainant has put forward a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names. The fact that the Respondent has obtained a trademark registration prior to obtaining the disputed domain names does not necessarily establish the Respondent rights or legitimate interests in the disputed domain names for the purpose of the second element of the Policy. The Panel notes that in this case the Respondent's trademark application has been made several years after the Complainant has established its rights in the CARWALE mark. Also, as noted earlier, the Complainant has filed a rectification application against the trademark number 2284432 for removal of the Respondent's identical trademark from the trademark register.
The Panel notes the contradictory stand taken by the Respondent in claiming rights for his CARWALE trademark registration, while arguing that the Complainant lack rights in the mark as the term "carwale", as the term is allegedly a generic term. The Respondent has argued that it has a right to do business under the constitution. It needs to be mentioned here, that the Complainant has not objected to the Respondent's right to do business, but has objected to the use of its CARWALE mark being infringed by the Respondent. There are several inconsistencies and contradictions in the Respondent's arguments, and the Panel shall not dwell on these, as the dispute has been amicably settled between the parties. D. Registered and Used in Bad Faith
The Respondent has undoubtedly registered the disputed domain names after the Complainant's mark has become well known due to the Complainant's extensive use of the mark in trade and commerce and the Complainant is clearly a prior user of the mark.
The circumstances discussed in the present case indicate that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his website by creating likelihood with the Complainant's mark, which is considered evidence of bad faith under paragraph 4(b)(iv) of the Policy. The Complainant has submitted evidence that the website linked to the disputed domain name is being used by the Respondent to offer similar services as that of the Complainant. Whereas, the disputed domain name does not have any content and is being held passively by the Respondent, which under the circumstances discussed amounts also to bad faith use. Accordingly, the Panel finds on balance that the Respondent has registered and is using the disputed domain names in bad faith.
The Panel finds that the Complainant has satisfied the three requirements under paragraph 4(a) of the Policy. Therefore, on merits, the Complainant is entitled to the remedy of transfer of the disputed domain names. Further, under the terms of the settlement agreement entered into by the parties, the transfer of the disputed domain names to the Complainant is appropriate. 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.
Harini Narayanswamy
Sole Panelist
Date: October 12, 2015
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