The Complainant is ICICI Bank Limited (the "Complainant No. 1") and ICICI Prudential Life Insurance Corporation Limited (the "Complainant No. 2") of Mumbai, India, represented by Anand & Anand, India.
The Respondent is Nitin Jindal, Across Ocean LLC of Artesia, California, United States of America ("United States"). 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 22, 2016. On March 22, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 23, 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on April 15, 2016.
The Center verified that the Complaint together with the amended 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 April 19, 2016. In accordance with the Rules, paragraph 5, the due date for Response was May 9, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 10, 2016.
The Center appointed Christos A. Theodoulou as the sole panelist in this matter on May 20, 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 Complainants No. 1 and 2 are companies organized under the laws of India.
According to the uncontested allegations of the Complainants, the Complainant No. 1 is India's second largest bank and enjoys great reputation both in India and abroad. The Complainant No. 1 is the parent company of the Complainant No. 2. Complainant No. 2 is one of the leading insurance Companies of India with more than 10,000 employees and over 100,000 advisors. It is a joint venture between ICICI Bank and Prudential plc, a financial services group in the United Kingdom of Great Britain and Northern Ireland ("United Kingdom"). The Complainant No. 1 is the owner of the trademark ICICI which is being used by its owner in India and many other countries. This trademark has acquired extensive reputation and was licensed by its owner to Complainant No. 2. The trademark, according to the uncontested allegations of Complainant No. 1 was registered in various classes under the (Indian) Trademarks Act of 1999 in 2000. Complainant No. 2 owns and uses trademark / service mark ICICI PRUDENTIAL since its inception in 2000.
Further, the Complainants No. 1 and No. 2 own various domain names containing the trademark ICICI such as: , and others.
The disputed domain name was created on May 11, 2004 and it is passively held. 5. Parties' Contentions A. Complainant
The Complainants contend that the disputed domain name is identical or confusingly similar to trademarks or service marks in which the Complainants have rights, that the Respondent has no rights or legitimate interests in the disputed domain name and that the Respondent registered and is using the disputed domain name in bad faith. B. Respondent
The Respondent did not reply to the Complainants' contentions. 6. Discussion and Findings
Before engaging in the threefold discussion of paragraph 4(a) of the Policy, the Panel will briefly address the procedural issue relating to the default of the Respondent. The implications of a default in this case are telling since the Complainants have the burden of proof, according to paragraph 4(a) of the Policy ("In the administrative proceeding, the complainant must prove that each of these three elements are present"). As such, the Panel cannot merely grant the Complainants' request automatically due to the default, but it has to examine instead the evidence presented to determine whether or not the Complainants have proved their case, as required by the Policy. See FNAC v. Gauthier Raymond,WIPO Case No. D2004-0881; Sonofon A/S v. Vladimir Aleksic,WIPO Case No. D2007-0668; Gaudi Trade SpA v. Transure Enterprise Ltd,WIPO Case No. D2009-1028.
The Panel shall now proceed to the analysis of the evidence in this case, based on the three elements of paragraph 4(a) of the Policy. A. Identical or Confusingly Similar
The Complainants have presented evidence to demonstrate that they own registered trademark rights in the mark ICICI and that they have been actively using these trademarks; and that they own many domain names incorporating the mark ICICI.
The mere fact that the Respondent has added the generic word "insurance" and the generic Top-Level Domain ("gTLD") ".com" does not ,in this Panel's view, affect that. the disputed domain name is confusingly similar to the trademark of the Complainant; and, in the circumstances of this case, is by itself sufficient to establish the criterion of confusing similarity for purposes of the Policy, as many previous UDRP panels have found. See e.g., Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903; Koninklijke Philips Electronics N.V. v. K. Harjani Electronics Ltd.,WIPO Case No. D2002-1021; DFDS A/S v. NOLDC INC,WIPO Case No. D2006-1070; American Automobile Association, Inc. v. Bladimir Boyiko and Andrew Michailov,WIPO Case No. D2006-0252; Nationwide Mutual Insurance Company v. Whois Agent, WHois Privacy Protection Service, Inc./Zhichao Yang,WIPO Case No. D2015-1129, Facebook, Inc., V. on behalf of customers,WIPO Case No. D2016-0244. Furthermore, confusion is also created since the Complainant No.2's mark ICICI PRUDENTIAL contains the word "prudential" which is associated with insurance.
In view of the above, the Panel finds that the Complainants have discharged its burden of proof on this point and holds that the disputed domain name is confusingly similar to the Complainants' trademark ICICI and ICICI PRUDENTIAL. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a non-exhaustive list of circumstances which, if found by a panel to be proved based on its evaluation of the evidence presented, shall demonstrate a registrant's right to or legitimate interest in a domain name. These examples are discussed in turn below, with regard to the specific facts of this case.
(i) Use or demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services prior to the dispute: the Respondent is not making a bona fide offering of its goods. In fact, the Respondent is using the disputed domain name to divert traffic from the Complainants' websites, which is not a bona fide offering of goods and services.
(ii) An indication that the Respondent has been commonly known by the disputed domain name, even if it has acquired no trademark rights: In this case, there is no such indication from the present record.
(iii) Legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademarks at issue: Again, in this case there is no such indication from the record.
The Respondent does not seem to have any trademark registrations including the term "icici". Additionally, it is to be noted that the Respondent did not present evidence of any license by the Complainants, with whom there seems to exist no relationship whatsoever.
As a conclusion on this point, the Panel finds that the Complainants have established an uncontested, prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and the Complainants have satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Complainants' argumentation on this point is mainly based on the circumstances mentioned in Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003 in order to demonstrate the Respondent's bad faith registration and use of the disputed domain name.
In reviewing the present case, it appears that the Respondent has registered the disputed domain name in bad faith.
The Panel finds it highly unlikely that the Respondent would randomly and unintentionally register a domain name that is confusingly similar to the Complainants' ICICI trademark. Rather, on a reasonable examination of the evidence, it seems to this Panel more likely that such registration and use would be motivated by a hoped-for capitalization, i.e., commercial gain from the Complainants' reputation.
Further, according to the uncontested allegations of the Complainants, the disputed domain name at the time of filing the Complaint was passively held. Passive holding of a domain name does not prevent a finding of bad faith registration and use (see Telstra Corporation Limited v. Nuclear Marshmallows, supra).
The Panel also notes the default of the Respondent, which in the present circumstances "reinforces the inference of bad faith registration and bad faith use". The Hongkong and Shanghai Banking Corporation Limited v. Bill Lynn,WIPO Case No. D2001-0915.
As a consequence of the above, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith.
Accordingly, the Panel finds that the Complainants have successfully proven that the disputed domain name is confusingly similar to trademarks and service marks in which the Complainants have rights, that the Respondent has no rights or legitimate interests in the disputed domain name, and that the Respondent registered and is using the disputed domain name 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 Complainants.
Christos A. Theodoulou
Sole Panelist
Date: May 23, 2016
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