Complainant is ALH Group Pty Ltd of South Yarra, Australia, represented by Crowell & Moring, LLP of Brussels, Belgium.
Respondent is Naveen Mathur of Bangalore, India. 2. The Domain Name and Registrar
The disputed domain name (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 November 5, 2015. On November 5, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On the same day the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on November 10, 2015. In accordance with the Rules, paragraph 5, the due date for Response was November 30, 2015. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on December 1, 2015.
The Center appointed Douglas M. Isenberg as the sole panelist in this matter on December 8, 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
Complainant states that it is "in the business of offering hospitality experiences including electronic gaming, sports bars, bistros, restaurants, cafes, retail liquor sales, accommodation, nightclubs and wagering".
Complainant further states, and provides evidence to support, that it is the owner of the following trademark registration in Australia:
- Reg. No. 814,881 for a design mark that prominently includes the text "AUSTRALIAN LEISURE & HOSPITALITY GROUP", registered on November 23, 1999.
Complainant also states, as described further below, that it is the owner of two unregistered trademarks: a design mark that prominently includes the text "ALH Group"; and the word mark ALH GROUP.
The Disputed Domain Name was created on April 2, 2015, and, although it is not currently being used in connection with an active website, has been used previously in connection with a website that, as described by Complainant (and as a supported by appropriate evidence), "is almost an exact copy of the Complainant's website." 5. Parties' Contentions A. Complainant
Complainant contends, in relevant part, as follows:
- Complainant has rights in and to the registered and unregistered trademarks cited above. In support of its rights in and to all of these marks, Complainant states that it has continuously used these marks since November 23, 1999; that the marks are "well-known, as shown by the results on search websites such as Google, by its presence on social media and other websites, as well as by references in press articles" (all of which Complainant has supported with relevant evidence); and that "Complainant actively promotes [these marks] through its website linked to the domain names and ". Complainant further contends that the Disputed Domain Name is confusingly similar to these trademarks because, inter alia, "[t]he Disputed Domain Name incorporates Complainant's unregistered ALH Group trademark as well as the most distinctive elements of the Complainant's registered trademark in its entirety"; "[t]he addition of the letter 's' and the word 'inc' are insufficient to avoid the confusing similarity between the Disputed Domain Name and the ALH Group trademark"; and "Respondent has attempted to increase the confusing similarity by referring the Disputed Domain Name to a website which contained the Complainant's figurative marks and which constituted an almost exact replica of the Complainant's genuine website."
- Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia, "the Whois records indicate that Respondent is named Naveen Mathur [and] [c]onsequently, Respondent is not commonly known by the Disputed Domain Name"; "Respondent has not acquired trademark or service mark rights and Respondent's use and registration of the Disputed Domain Name was not authorized by Complainant"; and "the Disputed Domain Name was initially used to refer to a website which is almost an exact copy of the Complainant's website [and]…now simply resolves to an error page."
- The Disputed Domain Name was registered and is being used in bad faith because, inter alia,"at the time Respondent registered the Disputed Domain Name, Respondent must have known [of] Complainant and its trademarks [because] [t]he content provided on the website linked to the Disputed Domain Name referred at least initially to the Complainant's business [and]…was almost an exact copy [of] Complainant's genuine website"; "the impression of an endorsement or affiliation was initially increased by the fact that the Disputed Domain Name resolved to a website constituting an almost exact replica of the Complainant's genuine website"; "[i]t is clear that the Respondent aimed at being contacted by Internet users looking to trade with the Complainant"; "[b]y copying Complainant's website, Respondent created a high likelihood of confusion with Complainant's trademark"; and "[a]s the Respondent has previously linked the Disputed Domain Name to an almost exact replica of the Complainant's official website, there is a high likelihood that the Respondent has been using the Disputed Domain Name for phishing purposes or other malicious activity." B. Respondent
Respondent did not reply to Complainant's contentions. 6. Discussion and Findings
Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and (iii) the Disputed Domain Name has been registered and is being used in bad faith. Policy, paragraph 4(a). A. Identical or Confusingly Similar
For purposes of this decision, the Panel does not consider the only registered trademark cited by Complainant, Australian Reg. No. 814,881 for a design mark that prominently includes the text "AUSTRALIAN LEISURE & HOSPITALITY GROUP", as this text is not identical or confusingly similar to the Disputed Domain Name.
It is clear that registered trademark rights are not necessary for purposes of the Policy and that common law rights are sufficient. Therefore, the Panel considers whether Complainant has satisfactorily proven that it has common law rights in the mark ALH GROUP. As set forth in paragraph 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"):
The complainant must show that the name has become a distinctive identifier associated with the complainant or its goods or services. Relevant evidence of such "secondary meaning" includes length and amount of sales under the trademark, the nature and extent of advertising, consumer surveys and media recognition…[A] conclusory allegation of common law or unregistered rights (even if undisputed) would not normally suffice; specific assertions of relevant use of the claimed mark supported by evidence as appropriate would be required.
Here, although Complainant has not provided any evidence of length and amount of sales under the ALH GROUP trademark, the nature and extent of advertising or consumer surveys, Complainant has made much more than conclusory allegations of common law or unregistered rights in the ALH GROUP trademark, by providing evidence of use of the mark in news articles, social media services and Internet search results. A LinkedIn profile of Complainant provided as an annex indicates that Complainant is known as "ALH Group", that it has more than 10,000 employees and that it "operates over 300 licensed venues and over 460 retail liquor outlets across Australia." None of this has been contested by Respondent.
As a result, the Panel is convinced that Complainant has rights in and to the trademark ALH GROUP for purposes of the Policy.
As to whether the Disputed Domain Name is identical or confusingly similar to the ALH GROUP trademark, the relevant comparison to be made is with the second-level portion of the domain name only (i.e., "alhgroupsinc"), as it is well-established that the Top-Level Domain (i.e., ".com") may be disregarded for this purpose. See WIPO Overview 2.0, paragraph 1.2 ("The applicable top-level suffix in the domain name (e.g., '.com') would usually be disregarded under the confusing similarity test (as it is a technical requirement of registration), except in certain cases where the applicable top-level suffix may itself form part of the relevant trademark.").
The only differences between the ALH GROUP trademark and the Disputed Domain Name (in addition to the absence of a space in the Disputed Domain Name, which is necessary given that such characters do not exist in domain names) are the addition of the letter "s" and the abbreviation "inc" to the Disputed Domain Name. Previous panels have found that such minor differences do nothing to avoid a finding of confusing similarity. See, e.g., Staples, Inc., Staples The Office Superstore, Inc., and Staples Contract and Commercial, Inc. v. SkyLabs Corporation and DL Enterprises,WIPO Case No. D2004-0220 (finding confusing similarity despite a domain name's "deletion of the plural"); and Gilead Sciences, Inc. v. Name Redacted,WIPO Case No. D2015-1819 ("inc" is "an abbreviation for the word incorporated, which can be applied to the Complainant, as well as most large American companies, it thus does nothing to distinguish the disputed domain name from the Complainant's trademark").
Accordingly, the Panel finds that Complainant has satisfied the first element of the Policy. B. Rights or Legitimate Interests
Complainant has argued that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia,"the Whois records indicate that Respondent is named Naveen Mathur [and] [c]onsequently, Respondent is not commonly known by the Disputed Domain Name"; "Respondent has not acquired trademark or service mark rights and Respondent's use and registration of the Disputed Domain Name was not authorized by Complainant"; and "the Disputed Domain Name was initially used to refer to a website which is almost an exact copy of the Complainant's website [and]…now simply resolves to an error page."
Under the Policy, "a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP." WIPO Overview 2.0, paragraph 2.1.
The Panel finds that Complainant has established its prima facie case and without any evidence from Respondent to the contrary, the Panel is satisfied that Complainant has satisfied the second element of the Policy. C. Registered and Used in Bad Faith
Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy: (i) circumstances indicating that the respondent has registered or the respondent has 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 the respondent's documented out-of-pocket costs directly related to the domain name; or (ii) the respondent has 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 (iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent's 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 the registrant's website or location. Policy, paragraph 4(b).
In this case, Complainant appears to argue that bad faith exists pursuant to Policy paragraph 4(b)(iv), given that the Disputed Domain Name has been used in connection with a website that "is almost an exact copy of the Complainant's website." Previous UDRP panels have found bad faith where, as here, evidence "suggests that the disputed domain name has been registered and, for a certain period of time, was being used to copy and mirror a website" associated with complainant. Arkema France v. Aaron Blaine,WIPO Case No. D2015‑0502. See also L'Oréal v. Privacy protection service - / Denis Mishin,WIPO Case No. D2015‑1091 (Respondent "created a 'copycat' website and gave it a false appearance of being a commercial enterprise operated by or affiliated with the Complainant to sell the Complainant's products").
That Respondent may have stopped using the Disputed Domain Name in such manner prior to the date on which the Complaint was filed is irrelevant, especially given the well-established doctrine of "passive holding." Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003.
Accordingly, the Panel finds that Complainant has proven the third element 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 Name be transferred to Complainant.
Douglas M. Isenberg
Sole Panelist
Date: December 11, 2015
Full & Egal Universal Law Academy