The Complainants are Jeevansathi Internet Services Pvt. Ltd. and Info Edge (India) Ltd. of New Delhi, India, represented by Singh & Singh Lall & Sethi, India.
The Respondents are Shahid Khan, Jeevansaathy of Mumbai, India / Sameer Khan, Vidai of Mumbai, Maharashtra, India / Domains by Proxy, LLC of Scottsdale, Arizona, United States of America, self-represented. 2. The Domain Names and Registrar
The disputed domain names , , and are registered with GoD, LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 12, 2016. On July 12, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On July 14, 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 July 28, 2016. In accordance with the Rules, paragraph 5, the due date for Response was August 17, 2016. The Response was filed with the Center on August 16, 2016.
The Center appointed Pravin Anand as the sole panelist in this matter on August 25, 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. The Complainants
The complainants are Jeevansathi Internet Services Private Limited (the "Complainant No. 1" ) and Info Edge (India) Ltd. (the "Complainant No. 2"). The Complainant No. 2 was first incorporated as a private limited company in the year 1995 and then converted to a public limited company in the year 2006. The Complainant No. 1 is a subsidiary of and fully owned by the Complainant No. 2. The trademarks and domain names owned by the Complainant No. 1 are licensed to the Complainant No. 2. The Complainant No. 1 and the Complainant No. 2 are collectively referred to as the "Complainants".
The Complainants own and operate their website at the domain name, which was created on the December 4, 1998. The website provides a preliminary medium of contact and information for its users who have a bona fide intention to enter into a matrimonial alliance. The website also offers value added services to its users which are chargeable.
The Complainants have relied on several trademark registrations and applications in India and Pakistan, details of which are as follows:
i. The Complainants own registrations for the trademark JEEVANSATHI and / or its derivatives in India under classes 35, 42, 16 and 9. The earliest trademark application dates back to year 2000, which was granted in 2005.
ii. The Complainants have also filed three trademark application under Class 45 for the trademark JEEVANSATHI and JEEVANSATHI MATCHPOINT. These applications are still pending.
iii. The Complainant No. 1 has also obtained a trademark registration for the mark JEEVANSATHI in Pakistan under Class 42 bearing registration No. 219546 dating back to the year 2006, granted in 2010. B. The Respondents
The Complainants have filed the present dispute against the Respondent No. 1, Mr. Shahid Khan, the registrant of the disputed domain names , and .
The Respondent No. 2 is Mr. Samir Khan, belonging to the organization named "Vidai" and is the registrant of the disputed domain name .
As per WhoIs details, the disputed domain names and were created on December 15, 2014; was created on December 22, 2014; and was created on December 5, 2011.
The disputed domain names and despite being registered, have no content on their website and have only been registered by Respondent No. 1.
The Respondent No. 3 is Domains by Proxy, LLC, whose services were availed by Respondent No. 1 and 2 in January, 2016. 5. Parties' Contentions A. Complainants
The Complainants assert the following contentions:
i. That the Complainants are the registered proprietors / owners and lawful users of well-known and reputed trademark JEEVANSATHI and the domain name and other trademarks.
ii. The Complainants own trademark registrations for the trademark JEEVANSATHI and / or its derivative in India for the Classes 35, 42, 16 and 9. The Complainants also have pending trademark applications in Class 45 in India and trademark registration in Pakistan under Class 42 for the mark JEEVANSATHI.
iii. The trademark JEEVANSATHI has no ordinary dictionary meaning and is not used in the English language. It is a combination of two Hindi words and as a result of its extensive use of the trademark JEEVANSATHI and domain name , it has acquired a secondary meaning and is solely associated with the Complainants.
iv. The Complainants' website "www." is a medium for users who have a bona fide intention to enter into a matrimonial alliance. The users create their profile and the website also provides value added services for charges.
v The Complainants' website has more than 7.4 million registered member profiles as of end of quarter three of 2015-2016 and over 2,400 profiles were created in the first six months of 2016.
vi. The Complainants' website is the third most popular website and has been ranked 4131 globally as the figures available with A.
vii. The revenue of the Complainants from subscribership alone was INR 360.14 million in 2014 and continuous to grow.
viii. The Complainants have a network of offline centres and the Complainants have explored the Non- Resident Indian market for further reach of the website. As per figures obtained from A, the website "www." attracts visitors from places outside India.
ix. The Complainants also have mobile application where they widely use, advertise their trademarks and website.
x. The Complainants have continuously and uninterruptedly used the trademark and domain name and have a widespread reputation and goodwill in their marks as a result thereof.
xi. The disputed domain names , , and are identical to the registered and well-known trademark JEEVANSATHI and also the domain name of the Complainants.
Xii The registration of the disputed domain names , , and are completely dishonest, illegal and mala fide with a view to make monetary gain out of the Complainant's well-known and highly reputed trademark JEEVANSATHI and the enormous goodwill and reputation garnered by the Complainants.
xiii On comparison of the websites at the disputed domain names and to the Complainants' website "www.", it is evident that the Respondents have copied the Complainants' trademarks, domain names, website and logo.
xiv The colour scheme of the Respondents' trademarks are the same as the Complainants' trademark, i.e., red and black. The font, writing style, manner and formation of the Complainants' well-known trademarks have also been copied. The Internet Archive Wayback Machine for domain name shows that the colour combination and scheme used is identical to the way the Complaints' domain name appeared when the Respondent No. 2's was launched and registered. The Respondent No. 2's mark / logo / manner of writing JEEVANSAATHY is identical to the Complainants' as the Respondent No. 2's mark is written in bold, italic, red font with a capital "J" and the remaining letters in small case with a "dot" at the end of the word.
xv The disputed domain names and have been registered by Respondent No. 1 for the purposes of cybersquatting as no information or content has been uploaded on this website.
xvi The Complainants have received complaints from their customers regarding their confusion with the website of the Respondents' at .
xvii The Respondent No. 2 is related to the Respondent No. 1 as the disputed domain name adopted by Respondent No. 2 is identical to the name of the organization of Respondent No. 1 JEEVANSAATHY and the telephone number, email addresses mentioned on the webpage of "www." is identical to registrants contact number mentioned in the WhoIs reports for and of Respondent No. 1.
xviii The Facebook icon on Respondent No. 1's website "www." when clicked, redirects to a Facebook page that is named "" and the contact details show details of the Respondent No. 2 in addition to the Facebook profile linked to the Respondent No. 2's website being identical to that linked to website of the Respondent No. 1.
xix The Respondent No. 1 has maliciously has applied for a trademark application No. 2505343 dated March 26, 2012 for the mark JEEVANSAATHY.COM under Class 45.
xx The Respondent No. 3 is Domains by Proxy, LLC, whose services were availed by Respondent No. 1 and 2 in January, 2016.
xxi The Respondent No. 1 and 2 are interlinked with each other for the following reasons:
(a) All four disputed domains have been registered with God;
(b) The contact number of the Respondent No. 1 is the same as the Respondent No. 2.
(c) Trademark application applied by the Respondent No. 1 is for the mark being used by the Respondent No. 2 - JEEVANSAATHY.COM under Class 45.
(d) Facebook link provided by the Respondent No. 1 () redirects to Facebook page of Respondent No. 2.
(e) Twitter link provided by the Respondent No. 1 () redirects to Twitter handle of Respondent No. 2.
(f) Domains are being hosted on the same server.
xxii The Respondents have adopted the impugned marks in bad faith as the Complainants on July 29, 2013 had filed a complaint with the Senior Police Inspector, Crime Branch, CID, Mumbai, India against the Respondent No. 1 and 2 for use of the Complainants well-known trademark. The Respondents No. 1 and 2 were using the name / mark JEEVANSAATHY which is deceptively similar and phonetically identical to that of the Complainants' trademark / name and the services offered were also identical. Pursuant to that complaint, the Respondent No. 1 and 2 appeared to have discontinued the use of the trademarks / name. However, the Complainants were shocked to come across the disputed domain names registered in the name of the Respondents recently.
xxiii The Respondents are not legitimately using the disputed domain names in accordance with the Policy and the Rules. B. Respondents
The following are the contentions of the Respondents No. 1 and 2:
i. Both the Complainants and the Respondents are registered owners of different domain names.
ii. The Respondents have unique disputed domain names which are different from the domain name of the Complainants.
iii. The kind and class of people to whom the Respondents cater to are distinctly different from the kind and class of people to whom the Complainants cater to.
iv. The Complainants' trademark JEEVANSATHI is a descriptive and common word. It is used in India to denote a groom and a bridegroom and therefore, the Complainants cannot use it as a monopoly.
v. The Respondents' domain name and logo are not identical or similar or confusingly similar as that of the domain name of the Complainants.
vi. The spelling of disputed domain name of the Respondents has "y" at the end while the spelling of the Complainants domain name has the alphabet 'i' at the end.
vii. The word "jeevansathi" is being used by many other people to enhance their business, e.g.,J, Jeevansathi Matrimony, upcoming movie JivanSathi and restaurant JeevanSathi in Lucknow, India.
viii. The trademark certificates of registrations filed by the Complainants cannot be used or produced in legal proceedings as the certificates make mention of the same. Therefore, the Complainants have acted in a fraudulent manner. Merely because the Complainants have obtained a registration in Pakistan, it does not entitle them to use the mark worldwide. Further, the trademark registration is dated March 11, 2006 and for a period of 10 years. The Complainants have failed to provide a renewal certificate and the Complainants have disclaimed exclusive rights in use of the word "sathi".
xi. The Respondents deny that the use of the logo, font, writing style, presentation of their logo is copied from the Complainants.
x. Regarding the complaint filed by the Complainants with the Senior Police Inspector, Crime Branch, CID, Mumbai, India, the Respondents state that after they appeared and produced all documentation, the officer concluded that no case is made out as the disputed domain names are not the same as the Complainants' domain name. 6. Discussion And Findings A. Consolidation of the Respondents
A complaint may be brought against multiple respondents if the domain names or the corresponding websites are subject to common control and the consolidation would be fair and equitable. Based on the Complainants' submitted arguments in Section 5A, the Panel finds that the disputed domain names are under common control. Given that the joint Response was received, the Panel finds that it would be fair and equitable to proceed to issue a single decision.
The Panel notes that the Respondent No. 3 is merely the privacy service provider and is not the benefitial owner of the disputed domain names. Accordingly, the Panel will refer to the Respondents Nos. 1 and 2 jointly as the "Respondents".
The Panel will analyse whether the Complainants have made out a fit case in the Complaint to satisfy the three elements of paragraphs 4(a) of the Policy and the Rules to obtain a favorable decision. B. Identical or Confusingly Similar
The Panel finds that the Complainants have rights in the JEEVANSATHI trademarks acquired through its registrations as well as use which predate the date of registration of the disputed domain names - , , and - by over 13 years.
The disputed domain names of the Respondents are confusingly similar to the Complainants' trademark.
The disputed domain name relies on a common misspelling of the Complainants' JEEVANSATHI trademark (i.e., addition of the letter "a" and the use of the letter "y" instead of "i"). While, the disputed domain names and use ".info" and ".expert" domain instead of ".com", the generic Top-Level Domains ("gTLDs") are typically ignored under the first element. Lastly, the disputed domain name contains a generic term "expert" which does nothing to avoid confusing similarity.
The Panel relies on ESPN, Inc. v. XC2,WIPO Case No. D2005-0444, where it was observed that where a registrant deliberately introduces slight deviations into famous marks for commercial gains such acts amount to typosquatting. The Panel also relies on Wachovia Corporation v. Peter Carrington,WIPO Case No. D2002-0775, where the panel observed that registering a domain name which contains purposeful misspelling of the complainant's domain name amounts to a virtually identical and / or confusingly similar domain name to the complainant's trademark under paragraph 4(a)(i) of the Policy.
The Panel finds that there is generally no legal significance of taking into consideration the difference in the gTLDs, i.e., the use of ".info" or ".expert" since it does not typically identify the source of the services provided by the owner of the domain name. 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. Though it is important to point out that the registration under the said gTLDs forms part of the Respondents' aim to rely on typos of the Complainants' trademark and domain name . C. Rights or Legitimate Interests
The Complainants' averments point to the fact that there is no commercial relationship between the Complainants and the Respondents and the Respondents have not been given any license or permission by the Complainants for use of the JEEVANSATHI trademarks or formative marks. There have been other decisions of this forum supporting the same proposition. See Six Continents Hotels, Inc. v. Patrick Ory,WIPO Case No. D2003-0098. The Panel finds no lacuna in the Complainants' contentions and is of the view that the Respondents have no legitimate interests in their use of the JEEVANSATHI marks as part of the disputed domain name. The panel also finds that as the Respondents are providing the same services as the Complaints, the Respondents are relying on the goodwill and reputation vested in the Complainants' JEEVANSATHI trademarks and with the intention of deceiving customers into believing that they are in some manner connected with the Complainants.
The Panel is therefore of the view that the Respondents have not presented any evidence to support that their usage of the confusingly similar domain names to the Complainants' trademarks indicates any bona fide offering of services. While the Respondents assert that "jeevansathi" or "jeevansathy" is a generic term in Hindi to describe a groom or bridegroom and the Respondents are also offering a matrimonial match making service, it appears to the Panel that the Respondents have deliberately sought to benefit from the Complainants by incorporating a logo much similar to that of the Complainants and creating the impression that the Respondents are Complainants' or otherwise affiliated with the Complainants. Such use does not amount to a bona fide offering of services under the Policy.
It has been made clear through the Complainants contentions that they are the sole proprietor of the JEEVANSATHI trademarks and formative marks and any association of marks identical or similar thereto is attributed by the public and its subscribers to the Complainants only.
The Panel finds that there has been no attempt by the Respondents to indicate its use of the disputed domain name for any noncommercial or fair use. To the contrary this Panel is of the view that the Respondents are using domain names incorporating the Complainants' marks to mislead visitors to believe that the website is operated by the Complainants, and all such services offered through the disputed domain name are controlled by the same. Conclusively, the Respondents have no rights or legitimate interests under paragraph 4(c)(iii) of the Policy, for the its use of the Complainants' marks is for a mala fide purpose. D. Registered and Used in Bad Faith
A comparison of the manner of use of the Respondents' logos and font on the Respondents' website "www." is identical to that of the Complainants' website "www." substantiates the fact that the Respondents have incorporated the Complainants' JEEVANSATHI trademarks to deliberately mislead users for financial gain. The Panel finds that a user would mistakenly assume that the Respondents' services originate from the same source as those of the Complainants. Since the disputed domain names have comprehensively used the Complainants' JEEVANSATHI trademarks along with other features of the Complainants' website it is telling that the Respondents targeted the Complainants.
The Complainants have brought to light that the Respondents' registrations of the disputed domain names amount to cyber squatting since the Respondents are using the disputed domain name to attract unassuming customers of the Complainants' services to subscribe to the Respondents' services under the disguise of providing them the Complainants' services. The Panel agrees with the Complainants' claims and finds that the Respondents are relying on the common misspellings (or typos) of the Complainants' trademarks and website address to draw in the unsuspecting public for monetary gain. The Panel while relying on The One Account Limited v. PALUMBO Steve,WIPO Case No. D2014-1082, is of the view that the present dispute is a transparent case of typo-squatting where the Respondents are using the disputed domain names to facilitate fraudulent phishing activities. The Panel is certain that such an act in itself amounts to a bad faith registration under paragraph 4(b)(i) and paragraph 4(b)(iv) of the Policy.
The Panel is in agreement with the Complainants' claims where it has stated that the disputed domain names have been registered only to mislead the public at large and have them believe that there exists a connection between the Respondents with the Complainants. Such activities of the Respondents have disrupted the business of the Complainants who have received complaints from their customers regarding the activities of the Respondents which is causing the illegitimate benefit to the Respondents. Such activities are also causing substantial loss of sales and serious damage to the goodwill and reputation of the Complainants in their marks. The Panel finds that the Respondents' use of the disputed domain names is not bona fide and its acts translate into a bad faith attempt of trading on the Complainants' trademarks and deceive the public for its own motives. Therefore, the Respondents' actions amount to bad faith under paragraph 4(b)(iii) of the Policy.
The Panel finds that the Respondents were aware of the goodwill and reputation in the Complainants' marks and sought to take unfair advantage by registering the disputed domain names. This is reflective from the complaint filed in the Crime Branch, CID in Mumbai, India dated July 29, 2013 against the Respondents by the Complainants for use of the disputed domain name and other reasons. Thereafter, it is the contention of the Complainants that the Respondents discontinued their services briefly and have again resurfaced. Further, the Respondents' are engaged in the same services as that of the Complainants. This is a clear indication of the Respondents' awareness of the Complainants, its business, the goodwill and reputation its marks hold in the market.
The Panel finds that the Complainants have been using the domain name and the trademarks JEEVANSATHI since the year 1998 with its earliest registration for the JEEVANSATHI trademark in 2005 while the disputed domain names of the Respondents - and were created on December 15, 2014; was created on December 22, 2014; and was created on December 5, 2011. Given the present circumstances, the inactive use of some of the disputed domain names does not preclude the Panel's finding of bad faith.
All the aforesaid reasons, in the opinion of the Panel, clearly bear testimony to the fact that that the Respondents' registration and use of the disputed domain names are 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 names , , and be transferred to the Complainants.
Pravin Anand
Sole Panelist
Date: September 8, 2016
Full & Egal Universal Law Academy