The Complainant is Star India Private Limited of Mumbai, India, represented by Saikrishna & Associates, India.
The Respondent is Anmol of Bangalore, 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 March 7, 2016. On March 7, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 8, 2016, the Registrar transmitted by email to the Center its verification response.
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 March 9, 2016. In accordance with the Rules, paragraph 5, the due date for Response was March 29, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 30, 2016.
The Center appointed Pravin Anand as the sole panelist in this matter on April 5, 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 A. Complainant
The Complainant, Star India Private Limited is a television (TV) broadcasting company which claims to own, manage and control a range a TV channels catering to various choices of entertainment, sports, documentary, movies and music channels in India under its umbrella. The Complainant’s network boasts a viewership of more than 300 million viewers in numerous countries across Asia through its TV channels such as Life OK, Movies OK, STAR World, STAR Movies, STAR Sports, Star Gold. The Life OK channel is asserted to be as the fastest growing and widely viewed “Hindi General Entertainment Channel” in India and is currently ranked fourth in terms of rating points in this category. The Complainant records a viewership of close to a 100 million people each week for its Life OK channel. B. Complainant’s Domain Names
The Complainant operates through various websites that are accessible all over the world. In particular the Complainant is the owner of the domain name , which is the official domain name for the Complainant’s TV channel bearing the Life OK mark. The domain name was created on September 4, 2003 and today redirects all traffic to the Complainant’s consolidated TV viewing platform at . C. Complainant’s Trademark Registrations
The Complainant has been active in protecting its proprietary rights in the LIFE OK trademark. The Complainant has relied on several trademark registrations worldwide, details for which are as follows:
i. The earliest registration for the LIFE OK word device mark in India dates back to October 20, 2011 for its “Life OK” logo, under class 9, 16, 25, 28 and 41.
ii. The LIFE OK marks have further been registered under classes 9, 16, 25, 28, 38 and 41 in India and in other Asian countries such as Bangladesh and Bhutan. D. Enforcement of Rights by Complainant
The Complainant has also succeeded in numerous UDRP decisions upholding its rights in the LIFE OK trademark. The Complainant has relied upon some of the following decisions:
i. Star India Private Limited v. Andy Sawieljew,WIPO Case No. D2014-0818, ;
ii. Star India Private Limited v. Suezen Jackson,WIPO Case No. D2014-0820, ;
iii. Star India Private Limited v. Munzurul Mamun,WIPO Case No. D2014-0821, ;
iv. Star India Private Limited v. A Domain Privacy / Nish Patel, Ready Asset,WIPO Case No. D2014-0822, ;
v. Star India Private Limited v. Vishwajeet Kshirsagar, SEAES,WIPO Case No. D2015-0338, . E. The Disputed Domain Name
The disputed domain name was registered on June 25, 2015. Currently, there is no active website under the disputed domain name. 5. Parties’ Contentions A. Complainant
The Complainant contends that its business activities comprises of its use of the LIFE OK mark for its TV channel which at present is one of the fastest growing Hindi General Entertainment Channel’s in India. According to the Complainant it has adequately protected its rights in the LIFE OK trademark through its various trademark registrations and widespread use of the mark since October 2011. The Complainant’s states that apart from its hundreds of millions of viewers, the popularity of the Life OK TV channel can also be seen through the channels 3.3 million followers on Facebook and 100,000 followers on Twitter. The Complainant states that with annual turnover of USD 18.69 million and expenditure on promotional activity worth USD 17.24 million the Life OK channel has been a tremendous success with a rise of the channels viewership in “Television Points in Millions” (TVM) from 133 million in 2011-12 to approximately 266 million in 2015-16.
A summary of the Complainant’s contentions are detailed below:
i. The disputed domain name contains the words “Life” and “OK” in its entirety.
ii. The disputed domain name is deceptively similar to the Complainant’s domain name.
iii. The prefix “get” before the phrase “lifeok” is insufficient to distinguish or differentiate the disputed domain name with the Complainant.
iv. The prefix in the disputed domain name further adds to the confusion as the public is likely to believe that they may avail the Complainant’s services through the disputed domain name.
v. A WhoIs search would further cause confusion as the public may also perceive that an association exists between the Complainant and the Respondent.
vi. The Respondent has adopted the identical/deceptively similar mark without knowledge or consent of the Complainant.
vii. The Respondent was aware of the Complainant and its various marks, including the LIFE OK trademark and is using the mark merely to direct Internet traffic to its own website. The homepage of the disputed domain name initially displayed a banner reading “Gamer Forces” with a message underneath stating “GamerF is currently down for scheduled upgrade maintenance”.
viii. The Respondent has no use for the Complainant’s mark, neither has the Respondent ever been recognised or associated with the mark for its business activities. B. Respondent
The Respondent did not reply to the Complainant’s contentions. Therefore, this Panel may draw such inferences as it considers appropriate according to paragraph 14 of the Rules. Various previous panels have upheld this view, including in Microgaming Software Systems Limited v. Hosting Hosting,WIPO Case No. D2009-1423. 6. Discussion and Findings
Since the Respondent has failed to respond to the Complaint within the prescribed timeline, in accordance with paragraphs 5(f) and 14 of the Rules, the Panel finds that the present dispute is to be decided on the reasonable contentions featured in the Complaint.
Furthermore, the Complainant still has to satisfy the elements of paragraph 4(a) of the Policy to obtain a decision in its favour. The Panel will now analyze whether the Complainant has done so in the Complaint. A. Identical or Confusingly Similar
The Complainant has successfully established that it has the appropriate trademark rights over the mark “Life OK” on account of the its various trademark registrations and extensive use of the said mark in course of business. The Complainant has also established that the disputed domain name is confusingly similar to its domain name and LIFE OK trademark in view of the fact that the entire mark of the Complainant has been used as part of the disputed domain name. Various UDRP decisions have upheld the assertion that use of an entire trademark as part of the domain name will create a confusingly similar domain name. See Amanresorts Limited and Amanresorts International Pte Ltd v. Jainendra Bhagel,WIPO Case No. D2015-0161.
The Complainant’s trademark LIFE OK is comprised of two English words placed against each other in a manner which otherwise would not be used in ordinary course of English. The distinctiveness in the Complainant’s mark is further strengthened due to this syntactically unusual juxtaposition of words, a proposition that has been recognised by various courts of the world. See Proctor & Gamble Company v. Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), European Court of Justice Case No C-383/99 P.
This Panel agrees with the Complainant’s assertion that the prefix in the disputed domain name, i.e. the use of “get” before “lifeok”, is insufficient to appropriately distinguish the domain name with the Complainant’s trademark. The said assertion forms part of a well-settled proposition repeatedly upheld by in previous UDRP decisions. See Phillip Morris USA Inc. v. n/a,WIPO Case No. D2004-0462 and Hugo Boss Trade Mark Management GmbH & Co. KG and Hugo Boss AG v. Cheng Yong,WIPO Case No. D2016-0160 wherein it was held that “[i]t is well-established that where the distinctive and prominent element of a disputed domain name is the Complainant’s mark and the only deviation is the inclusion of numbers, letters or a generic term or the gTLD, as prefix or suffix, such prefix or suffix does not negate the confusing similarity between the domain name and the mark”. This Panel finds merit in the Complainant’s argument that the prefix would further add to the confusion considering how the Complainant uses the mark. Attaching the word “get” before the name of the Complainant’s TV channel would send a message to the unaware public that prospective customers may log on to the disputed domain name to subscribe or avail the Complainant’s services.
The Panel also finds that the generic Top-Level Domain (“gTLD”) in the disputed domain name has no legal significance, i.e. “.org”. See CBS Broadcasting Inc. v. Worldwide Webs, Inc.,WIPO Case No. D2000-0834 and Radwell International, Inc. v. Lucien Seaforth,WIPO Case No. D2015-0013.
Therefore, the Complainant has provided substantial evidence to prove that the disputed domain name is confusingly similar to the Complainant’s LIFE OK trademark. B. Rights or Legitimate Interests
The Complainant has consistently urged that no commercial relationship exists between the Complainant and the Respondent. Furthermore, the Respondent has never sought – nor has the Complainant given – permission to the Respondent to use the Complainant’s trademarks in any manner whatsoever. Prima facie, this Panel is of the view that no commercial relationship exists between the parties to authorize the Respondent to use the Complainant’s LIFE OK mark in any manner.
This Panel also finds merit in the Complainant’s contention that the Respondent has no use for the Complainant’s trademarks in lieu of the fact that the only time the Complainant’s mark has been used by the Respondent is in the disputed domain name itself. Since the disputed domain name initially displayed content of a third party website and subsequently ceased to function it makes it abundantly clear that the Respondent only uses the LIFE OK trademark to steer traffic from the Complainant’s domain name to the disputed domain name. See Twitter, Inc. v. Domain Admin, Whois Protection / Accueil des Solutions, Inc,WIPO Case No. D2014-0645 and Parfumerie Douglas Nederland B.V. v. Sascha Labarbe,WIPO Case No. DNL2015-0066. The Panel finds that the Respondent’s acts are riddled with dishonest intent and do not indicate that the Respondent has any rights or legitimate interests in the Complainant’s LIFE OK trademark.
Furthermore, there has been no evidence put forth to prove that the Respondent has been commonly known in the market or even remotely associated with the Complainant’s LIFE OK trademark at the time of registration of the disputed domain name, due to which this Panel feels that the disputed domain was merely registered with the intention of feigning an association with the Complainant to increase traffic on the disputed domain name. See Neteller plc v. Prostoprom,WIPO Case No. D2007-1713 which militates the Panel’s views that if the Respondent was not commonly known by the mark in question at the time of registration, no rights can accrue to the Respondent to legitimize its use of the mark in question as part of the disputed domain name.
Conclusively, the Complainant has successfully established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
The Respondent’s act of registering a domain name that entirely incorporates the Complainant’s LIFE OK trademark raises the propensity of confusion amongst the public. This Panel finds that diverting Internet traffic from the Complainant’s domain name to third party websites is prima facie evidence that the disputed domain name was registered and used in bad faith. See Twitter, Inc. v. Domain Admin, Whois Protection / Accueil des Solutions, Inc, supra.
This Panel is also of the view that the Respondent was clearly aware of the goodwill and reputation subsisting in the Complainant’s LIFE OK mark. The Respondent has calculatedly used the Complainant’s mark only as part of the disputed domain name, while filling the contents of the website with those of third party websites, which subsequently ceased to function altogether. An average and unwary viewer of the Complainant’s channel may be misled by the contents of the disputed domain name, which may adversely affect the goodwill and reputation in its LIFE OK mark and even dilute this evidently well-known mark. See V&S Vin&Sprit AhB v. Giovanni Pastore,WIPO Case No. D2002-0926.
To further establish the Respondent’s prior knowledge and awareness of the Complainant’s rights in its trademark and domain name, the Complainant asserts that the Respondent registered the disputed domain name in the year 2015, which was several years after the Complainant’s 2003 registration of the domain name and the 2011 launch of the “Life OK” channel. This Panel is of the view that given the dishonest manner in which the Respondent has adopted and used the Complainant’s mark the Respondent’s failure to refute the Complainant’s contentions, and the timing of the Respondent’s adoption of the disputed domain name strongly indicates to the Respondent’s knowledge and awareness of the Complainant’s LIFE OK trademark. See Volkswagen Aktiengesellschaft v. LaPorte Holdings,WIPO Case No. D2005-0780 and Consitex S.A., Lanificio Ermenegildo Zegna & Figli S.p.A., Ermenegildo Zegna Corporation v. Mr. Lian Ming,WIPO Case No. DWS2003-0001.
The fact that the disputed domain name does not currently resolve to an active website does not prevent a finding of bad faith registration and use.
Accordingly, this Panel finds that the disputed domain name has been registered and used in bad faith and the Complainant has made out a fit case against the Respondent in terms of paragraph 4(a)(iii) 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 the Complainant.
Pravin Anand
Sole Panelist
Date: April 19, 2016
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