The Complainant is Fashion Design Council of lndia of New Delhi, represented by LexOrbis, India.
The Respondent is Vijay Singh of Mumbai, India. 2. The Domain Name and Registrar
The disputed domain name is registered with Network Solutions, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 17, 2016. On March 17, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 18, 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 March 30, 2016. In accordance with the Rules, paragraph 5, the due date for Response was April 19, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 21, 2016.
The Center appointed Ashwinie Kumar Bansal as the sole panelist in this matter on May 2, 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 society in India registered under the Societies Registration Act which is founded by many reputed fashion designers. The Complainant is the national body representing the Indian fashion industry with distinguished members from the Indian fashion fraternity. The Complainant is well known for fashion events and promotion of international trade. The Complainant advises and assists various fashion designers, retailers, models, etc. for raising professional standards and improving business practices.
The Complainant organizes fashion events including Indian Fashion Week and others such as India Couture Week, India Mens Week and Delhi Couture Week. The Complainant is renowned for its events inter alia India Mens Week, which it had held in the years 2009, 2010 and 2011. First event relating to India Mens Week was held in the year 2009. The Complainant filed a trademark application on May 30, 2013 for the trademark INDIA MENS WEEKS, which is pending before the Indian Trademark Registry.
The disputed domain name was registered on June 4, 2010. 5. Parties’ Contentions A. Complainant
The Complainant is a body of the Indian fashion industry constituted and represented by Indian fashion designers. The Complainant associates with a large number of national and international corporate houses and industry players who sponsor events organized by the Complainant. It promotes fashion designers through strategically planned and executed promotional campaigns. Many Indian business houses have been supporting and sponsoring the shows and events organized by the Complainant. The event INDIA MENS WEEK has been extensively covered and promoted in various newspapers, magazines, journals, news and entertainment websites and various online publications.
Through the prior adoption, extensive use and promotion of the trademark INDIA MENS WEEK, the Complainant has established itself as the exclusive and legitimate owner of the trademark INDIA MENS WEEK, which extends to, inter alia, all domestic and international fashion events, goodwill and reputation associated thereto, domain names and merchandise associated with these events.
The Respondent, in complete disregard of the Complainant’s statutory and common law rights on its trademark INDIA MENS WEEK, has dishonestly obtained registration of the disputed domain name. The events under the trademark INDIA MENS WEEK hosted by the Complainant and the disputed domain name are in no way connected to each other.
The disputed domain name fully incorporates the Complainant’s trademark INDIA MENS WEEK of which the Complainant is the prior adopter, user and legitimate proprietor. The registration of the disputed domain name by the Respondent creates confusion as to the source or the origin of services causing monetary loss as well as damage to the reputation and goodwill of the Complainant. The trademark INDIA MENS WEEK is an extensively used and promoted trademark which carries a high degree of distinctiveness. The Complainant alleges its trademark has acquired secondary meaning through its extensive use.
The Complainant further contends that the disputed domain name is confusingly similar to the trademark INDIA MENS WEEK, in which the Complainant has exclusive rights. The Respondent has no rights or legitimate interests in the disputed domain name and, specifically, has no connection, license or affiliation with the Complainant from which it might derive such rights or legitimate interests. The registration of the disputed domain name by the Respondent is in bad faith and with knowledge of the Complainant’s rights in the trademark INDIA MENS WEEK. The Complainant has sent a cease and desist letter on July 31, 2015 to the Respondent which was not responded by him.
The Complainant accordingly requests that the disputed domain name be transferred to the Complainant. B. Respondent
The Respondent did not answer the Complaint or otherwise reply to the Complainant’s contentions, and is consequently in default. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant relies on common law rights in the unregistered trademark INDIA MENS WEEK due to its prior adoption and use by the Complainant to identify its events organized on September 11, 2009 and subsequent events organized by it, prior to the registration of the disputed domain name on June 4, 2010 by the Respondent, which entitles it to bring this Complaint against the Respondent. The application for registration of trademark has been made on May 30, 2013 by the Complainant with the Indian Trademarks Registry and it is yet to be analyzed. The issue in this case is whether the Complainant had common law rights in the mark INDIA MENS WEEK for the purpose of the Policy . Common law rights may give rise to trademark rights under paragraph 4(a)(i) of the Policy. The consensus view according to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions - Second Edition (“WIPO Overview 2.0”), paragraph 1.7, on the issue is as follows:
“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. The fact that the secondary meaning may only exist in a small geographical area does not limit the complainant’s rights in a common law trademark. For a number of reasons, including the nature of the Internet, the availability of trademark-like protection under passing-off laws, and considerations of parity, unregistered rights can arise for the purposes of the UDRP even when the complainant is based in a civil law jurisdiction. However, 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. Some panels have also noted that in cases involving claimed common law or unregistered trademarks that are comprised of descriptive or dictionary words, and therefore not inherently distinctive, there may be a greater onus on the complainant to present compelling evidence of secondary meaning or distinctiveness. Some panels have noted that the more obvious the viability of a complainant’s claim to common law or unregistered trademark rights, the less onus there tends to be on that complainant to present the panel with extensive supporting evidence. However, unless such status is objectively clear, panels will be unlikely to take bald claims of trademark fame for granted.”
In this case, the Complainant has produced evidence of holding of various events including the first event on September 11, 2009 and relied upon copies of press releases in various newspapers, magazines, etc., details of sponsorship and participation fee received from the sponsors, invoices raised by third parties which demonstrated extensive use of the trademark INDIA MENS WEEK in the year 2009 and subsequent years in India. Considering the evidence produced by the Complainant, the Panel determines that the Complainant has sufficiently demonstrated that INDIA MENS WEEK has become a distinctive identifier associated with the Complainant’s services such that it may here assert rights to the same under the Policy1 . The disputed domain name is confusingly similar with the trademark INDIA MENS WEEK as it contains the entire trademark.
The first element of paragraph 4(a) of the Policy is accordingly proven by the Complainant. B. Rights or Legitimate Interests
The Complainant needs to establish at least a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name2 . Once such prima facie case is made, the burden shifts to the Respondent to demonstrate that it has such rights or legitimate interests3 .
In this case, the Complainant has not authorized the Respondent to use its trademark and seek registration of the disputed domain name nor the Respondent is affiliated with the Complainant. There is also no evidence before the Panel to suggest that the Respondent is commonly known as “India Mens Week”, or any other evidence that the Respondent has any rights or legitimate interests in the disputed domain name.
The Respondent having failed to answer the Complaint, the Complainant has accordingly met its burden under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy identifies, in particular but without limitation, four circumstances which, if found by the Panel to be present, shall be evidence of the registration and use of the disputed domain name in bad faith. Paragraph 4(b) is reproduced below:
“Evidence of Registration and Use in Bad Faith. For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location.”
Each of the four circumstances in paragraph 4(b) of the Policy (which are non-exclusive), if found, is evidence of “registration and use of a domain name in bad faith”. The Complainant is required to prove that both the disputed domain name was registered in bad faith and that it is being used in bad faith because in paragraph 4(a)(iii) of the Policy, the provision contains the conjunction “and” rather than “or” and it refers to both the past tense (“has been registered”) and the present tense (“is being used”). Hence, circumstances at the time of registration and thereafter have to be considered by the Panel. The Complainant is required to prove that the registration was undertaken in bad faith and that the circumstances of the case are such that the Respondent is continuing to act in bad faith.
The Respondent has registered the disputed domain name in the year 2010 but his website contains only one page indicating that site is under construction even after many years of the registration of the disputed domain name. The Complainant has not granted the Respondent permission or a license of any kind to use its trademark INDIA MENS WEEK and register the disputed domain name. Such unauthorized registration and use of the trademark INDIA MENS WEEK by the Respondent suggests opportunistic bad faith. The Respondent’s true purpose in registering and using the disputed domain name which incorporates the entire trademark of the Complainant is, in the Panel’s view, to capitalize on the reputation of the trademark INDIA MENS WEEK.
The Panel relies on Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003, to find that the apparent lack of so-called active use of the disputed domain name does not as such prevent a finding of bad faith (see also paragraph 3.2 of the WIPO Overview 2.0).
The Panel therefore finds that the disputed domain name has been registered and is being used by the Respondent in bad faith. 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.
Ashwinie Kumar Bansal
Sole Panelist
Date: May 7, 2016
1 See Sintef v. S,WIPO Case No. D2001-0507; La Mafafa, Inc. dba Cultura Profética v. Domains Real Estate,WIPO Case No. D2009-0534.
2 See Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455.
3 See also, Meizu Technology Co., Ltd v. “osama bin laden”, WIPO Case No. DCO2014-0002; H & M Hennes & Mauritz v. Simon Maufe, Akinsaya Odunayo Emmanuel and Nelson Rivaldo, WIPO Case No. D2014-0225.
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