The Complainant is Star India Private Limited of Mumbai, India, represented by Saikrishna & Associates, Advocates, India.
The Respondent is Vijay Sagar, Lifeoknews of Meerut, India. 2. The Domain Name and Registrar
The disputed domain name is registered with PDR Ltd. d/b/a PublicDomainR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 28, 2016. On January 28, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 29, 2016, 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 proceedings commenced on February 2, 2016. In accordance with the Rules, paragraph 5, the due date for Response was February 22, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 23, 2016.
The Center appointed Dr. Vinod K. Agarwal as the sole panelist in this matter on February 29, 2016. 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 a group company of Star Group Limited. The Star Group broadcasts over 60 channels in ten languages and offers a comprehensive choice of entertainment involving sports, movies, music and documentaries. Specifically, the Star Group owns and operates various branded television channels including STAR PLUS, STAR GOLD, STAR ONE, CHANNEL [V], STAR UTSAV, MOVIES OK, STAR WORLD, STAR MOVIES and STAR WORLD PREMIERE.
One of the channels owned, managed and operated by the Complainant is Life OK which is a “Hindi General Entertainment Channel” in India. The Life OK channel started on December 18, 2011. The content of the LIFE OK channel covers various genres including romance, mythology, action/adventure, horror, etc. The programmes aired on the Complainant’s channel LIFE OK have been the subject of numerous prestigious national and international awards.
The Complainant owns various trademark registrations for LIFE OK (design), including India trademark Filing No. 2223099, filed on October 20, 2011 and registered on September 19, 2013.
The disputed domain name, created on October 12, 2015, resolves to a website titled “LIFE OK NEWS”, which appears to offer news reporting in the Hindi language. 5. Parties’ Contentions A. Complainant
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are applicable to this dispute.
In relation to element (i), the Complainant contends that LIFE OK is the registered trademark of the Complainant. The said trademark LIFE OK of the Complainant is registered, apart from India, in various other countries, such as, Bangladesh, Bhutan, Hong Kong, China, etc.
In addition, there are several applications for the registration of the trademark LIFE OK of the Complainant pending in various foreign countries, a list of which is given in Annexure 6 to the Complaint. It has been clarified by the Complainant that some of the foreign registrations/applications have been filed in the name of “News America Incorporated”, which is the parent company of the Star Group, of which the Complainant is part.
The services rendered by the Complainant under the trademark LIFE OK have acquired formidable goodwill and an enviable reputation amongst the members of the trade, consumers and the public. Thus, the mark LIFE OK is directly associated with the Complainant.
The disputed domain name is confusingly similar to the Complainant’s registered LIFE OK marks.
The Complainant is also the owner of a number of domain names containing its trademark LIFE OK. The Complainant has also won a number of UDRP cases involving domain names containing the its trademark. These UDRP cases concerned inter alia: ; ; ; ; and .
The Complainant has further contended that the addition of the word “news” in the disputed domain name will not make any difference. It is not sufficient to distinguish and differentiate the disputed domain name from the registered trademark of the Complainant. Rather, it adds to the confusion. Therefore, the disputed domain name registered by the Respondent is confusingly similar to the Complainant’s trademark LIFE OK.
In support of its contentions, the Complainant inter alia relies on the UDRP decision in the case of Phillip Morris USA Inc. v. n/a,WIPO Case No. D2004-0462, wherein it was held that the mere addition of a word to a registered trademark does not avoid the confusing similarity between the disputed domain name and that trademark.
In relation to element (ii), the Complainant contends that its trademark LIFE OK has become highly distinctive of the goods and services of the Complainant on account of extensive use and promotion. Further, the Respondent is in no way related to the Complainant. The Complainant has not licensed or otherwise permitted or granted the Respondent an authorization or a right to use its trademark or to apply for or use the disputed domain name incorporating the mark.
The Respondent’s behaviour constitutes the infringement/passing off of the Complainant’s trademark. The Respondent registered the disputed domain name for the sole purpose of creating confusion and misleading Internet users. Thus, it is contended that the Respondent has no rights or legitimate interests in the disputed domain name.
In support of its contentions, the Complainant has relied on the decision in the case of Star India Private Limited v. Suezen Jackson,WIPO Case No. D2014-0820 wherein it has been held that, “[t]he disputed domain name was registered several years after the Complainant first registered and began using the LIFE OK trademark. The evidence on record provided by the Complainant with respect to the use of the LIFE OK trademark, combined with the absence of any evidence provided by the Respondent to the contrary, is sufficient to satisfy the Panel that, at the time the disputed domain name was registered, the Respondent most likely knew of the Complainant’s trademark and knew that it had no rights or legitimate interests in the disputed domain name”.
Regarding element (iii), the Complainant contends that the disputed domain name was registered in bad faith with an ill-motive to gain unfair commercial advantage, at the expense of the Complainant. The Respondent appears to operate a news website at the disputed domain name. However, most of the links provided on the website yield no result. Therefore, the Respondent is only making cosmetic use of the disputed domain name. The Respondent’s use of the disputed domain name amounts to the “blocking” of the domain name. By blocking a domain name identical/confusingly similar to the Complainant’s trademark, the Respondent is making use of the same in bad faith.
Further, the Respondent’s main objective in registering the disputed domain name was to attract Internet users for commercial gain to its website, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of the website. Therefore, the Respondent has registered and is using the disputed domain name in bad faith.
In support of its contentions, the Complainant has relied on the decision in the case of Consitex S.A., Lanificio Ermenegildo Zegna & Figli S.p.A., Ermenegildo Zegna Corporation v. Mr. Lian Ming,WIPO Case No. DWS2003-0001, wherein it was held that a respondent could not ignore the existence of well-known trademarks at the time of registering a domain name. Further, the registration of a domain name incorporating a famous trade mark, of which the respondent has knowledge, may in any case, be considered strong support evidence of bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel as to the principles it 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 and 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 disputed 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 disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
As per the public WhoIs information confirmed by the Registrar, the Respondent created the disputed domain name on October 12, 2015.
According to the evidence submitted by the Complainant, the Complainant is the owner of trademark LIFE OK. The trademark LIFE OK has been registered for many years.
The disputed domain name wholly incorporates the Complainant’s trademark with the addition of the generic term “news”. In this regard the Panel notes that the addition of a generic term to a complainant’s trademark is typically insufficient to prevent a finding of confusing similarity under the Policy.
Therefore, the Panel finds that the disputed domain name is confusingly similar or identical to the trademark of the Complainant. B. Rights or Legitimate Interests
According to paragraph 4(c) of the Policy, the Respondent may demonstrate its rights to or legitimate interests in the disputed domain name by proving any of the following circumstances:
(i) before any notice to the Respondent 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 (as an individual, business or other organization) has been commonly known by the disputed domain name, even if the Respondent 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.
There is no evidence to suggest that the Respondent has become known by the disputed domain name anywhere in the world. Additionally, the Complainant has not authorized or otherwise permitted the Respondent to use its name and/or trademark in the disputed domain name or otherwise. Accordingly, the Complainant has established a prima facie case that the Respondent lacks any rights or legitimate interests in the disputed domain name.
As the Respondent has not rebutted the Complainant’s prima facie case, and based on the available record, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
The Panel further notes that the use of a domain name – which includes the Complainant’s mark in its entirety – to resolve to website offering news content aimed at an Indian audience misleadingly implies a link to the Complainant (an Indian mass media company), and as such does not constitute a bona fide offering of news services.
Accordingly, the Panel finds that paragraph 4(a)(ii) of the Policy is satisfied. C. 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 the disputed domain name in bad faith:
(i) Circumstances indicating that the Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed 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 disputed domain name; or
(ii) The Respondent has registered the disputed 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 it has engaged in a pattern of such conduct; or
(iii) The Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) By using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line 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 disputed domain name contains the Complainant’s mark in its entirety, which, according to the Complainant’s unrebutted contentions, is very well-known in India, where the Respondent is located. As such, the Panel concludes that the Respondent must have had the mark in mind when registering the disputed domain name, and finds that it was registered in bad faith.
For reasons similar to those set forth above in the “rights or legitimate interests” section, the Panel concludes that the Respondent is using the disputed domain name in bad faith. The Respondent clearly intends to “free ride” on the fame and goodwill of the Complainant’s mark in the Indian media sector to attract visitors to its news website. This is use in bad faith.
Therefore, and the Panel concludes that the registration and use of the disputed domain name amounts to the registration and use in bad faith.
Accordingly, the Panel finds that paragraph 4(a)(iii) of the Policy is satisfied. 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.
Vinod K. Agarwal
Sole Panelist
Date: March 10, 2016
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