The Complainant is Havells India Limited and QRG Enterprises Limited of Delhi, India, represented by Scriboard Advocates & Legal Consultants, India.
The Respondent is Whois Foundation of Panama City, Panama, represented by Willenken Wilson Loh & Delgado, LLP, United States of America. 2. The Domain Name and Registrar
The disputed domain name, , is registered with NameK (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 31, 2016. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 1, 2016, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 5, 2016, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amended Complaint. The Complainant filed an amended Complaint on the same date.
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 September 6, 2016. In accordance with the Rules, paragraph 5, the due date for Response was September 26, 2016. The Response was filed with the Center on September 19, 2016. A Supplemental Filing in response to the Response was filed by the Complainant on September 21, 2016.
The Center appointed Ian Blackshaw as the sole panelist in this matter on September 28, 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 Fast Moving Electrical Goods company and a major power distribution equipment manufacturer with a strong global footprint and market dominance across a wide spectrum of products, including Industrial and Domestic Circuit Protection Devices; Cables and Wires; Motors; Fans; Modular Switches; Home Appliances; Water Heaters; Power Capacitors; CFLs; and Luminaires for domestic, commercial and industrial applications.
The Complainant considers its mark HAVELLS an important and valuable asset and has thus secured several trademark registrations for the mark HAVELLS in India, as well as several other jurisdictions, including Panama, the Respondent's country. Around 700 applications/registrations for the mark HAVELLS have been filed/obtained across the world and the first trademark registration dates back to 1955 in India.
The mark HAVELLS was coined and adopted by the Complainant's predecessor-in-title, the late Haveli Ram Gandhi, in 1942 and has been extensively used as a trademark ever since. The trademark HAVELLS was derived from the first five letters of "Haveli" which formed a part of the Complainant's predecessor's first name.
The Complainant and its subsidiaries own more than 45 different domain names, such as: ; ; ; ; and , each one of which comprises the mark HAVELLS. A complete list of such domain names registered by the Complainant and its subsidiaries has been provided to the Panel.
The Respondent is a Panamanian company that acquires and holds generic and descriptive domain names in high volume.
The disputed domain name was registered on February 13, 2006. 5. Parties' Contentions A. Complainant
The Complainant makes the following assertions:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
A mere glance at the disputed domain name gives rise to enormous confusion as to its origin, as the disputed domain name is identical to the Complainant's mark.
The utmost mala fide intention of the Respondent is evident from the fact that the Respondent has suffixed the word "India" after the Complainant's trademark HAVELLS.
In fact, in Facebook Inc. v. Naija Host,WIPO Case No. D2015-1057, the Panel held that the inclusion of the country name serves only to reinforce confusing similarity, rather than distinguish the disputed domain name.
Similarly, in AltaVista Company v. S.M.A., Inc.,WIPO Case No.D2000-0927, it was held that mere addition of the geographical term "USA", has little, if any, legal significance. In the same way, it can be construed that mere addition of the geographical term "India" has little or no legal significance.
The disputed domain name contains the entirety of the Complainant's well-known trademark/service mark HAVELLS. In EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc.,WIPO Case No.D2000-0047, the Panel decided that when a domain name wholly incorporates a complainant's registered mark, that is sufficient to establish identity or confusing similarity for purposes of the Policy.
It is well established that the specific Top-Level Domain, such as ".com", ".org, ".net" or ".travel", does not affect the domain name for the purpose of determining whether it is identical or confusingly similar.
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Respondent has no proprietary or contractual rights in any registered or common law trademark corresponding in whole or in part to the disputed domain name.
The mark HAVELLS is a coined word and the addition of the geographical term "India" after the mark HAVELLS clearly indicates that the Respondent knew of the Complainant's well-known mark as the mark HAVELLS has been in use by the Complainant in India since the year 1942. It is thus highly improbable that the Respondent has any rights or legitimate interests in the disputed domain name.
The Complainant submits:
(1) the Respondent has no connection with the Complainant or any company licensed by the Complainant;
(2) the Respondent is not commonly known by the disputed domain name or the trademark; and
(3) the Respondent was not and is not authorized by the Complainant to register, hold or use the disputed domain name.
The Respondent has no active business in the name of "Havells". The Respondent is not a licensee of the Complainant, nor has the Respondent ever been authorized by the Complainant to use the Complainant's trademarks or register the disputed domain name. The Complainant has no relationship with the Respondent.
The Complainant contends that the Respondent is a habitual "cybersquatter" and has never been commonly identified with the disputed domain name or any variation thereof prior to the Respondent's registration of the disputed domain name. Furthermore, the burden is on the Respondent to prove that it has rights and legitimate interests in the disputed domain name.
The Respondent is directing the disputed domain name to a parking page containing advertisements in an effort to generate revenue through consumers who mistakenly visit the site. Such an act by the Respondent clearly indicates that the Respondent does not have legitimate rights or interests in the disputed domain name.
The Respondent is also offering to sell the disputed domain name to any interested party for USD 4,799 – an amount which greatly exceeds the direct registration and/or renewal cost of the disputed domain name. This further indicates the lack of any legitimate rights or interests of the Respondent in the disputed domain name. A copy of the GoDaddy Auctions page for the disputed domain name and the website to which users are redirected once the option "Inquire about this domain" available on the disputed domain name is clicked has been provided to the Panel.
(iii) The disputed domain name was registered and is being used in bad faith.
The Complainant asserts that it is inconceivable that the registration by the Respondent of the disputed domain name was made without full knowledge of the existence of the Complainant and its well-known trademark. The Complainant's HAVELLS trademark is globally well-known as it has been continuously used since 1942. Moreover, the Complainant conducts business in Panama and has also registered HAVELLS as a trademark in Panama, the country of the Respondent. As mentioned above, courts in India and Turkey have declared the mark HAVELLS as a well-known mark.
The HAVELLS mark, due to its extensive use, advertisements, publicity and awareness throughout the world, has acquired the status of a well-known trademark under 6bis of the Paris Convention as well as Section 2[1][zg] of the Indian Trade Marks Act, 1999. The said mark/name qualifies all tests for the well-known status of a mark under section 11[6] of the said Act which includes considerations like knowledge or recognition among the relevant section of the public; duration; extent and geographical area of use; promotion and publicity of the mark; and so on.
It is the Complainant's contention that the Respondent has registered the disputed domain name in bad faith for the following reasons:
First, the mark HAVELLS, having been extensively used in relation to the business of the Complainant, has acquired distinctiveness and is understood and associated by consumers all around the world as the mark of the Complainant denoting its goods, services and business. Any incorporation of the said mark in a domain name is bound to be in bad faith. The Respondent clearly knew of the Complainant's prior rights when registering the disputed domain name. This by itself constitutes "bad faith".
More specifically, customers would be induced to believe that the Respondent has some connection with the Complainant in terms of a direct nexus or affiliation with the Complainant and that the Respondent is carrying on activities that have been endorsed by the Complainant and the services or products that are sought to be offered by the Respondent are at the same level of quality and reliability as that offered by the Complainant and its group of companies.
Thus, it would be extremely difficult, if not impossible, for the Respondent to use the disputed domain name as the name of any business, product or service for which it would be commercially useful without violating the Complainant's rights. Thus, it is submitted that the disputed domain name was registered in bad faith.
Any use of the disputed domain name by the Respondent would necessarily be in bad faith. See Expedia, Inc. v. European Travel Network,WIPO Case No. D2000-0137and Which? Limited v. James Halliday,WIPO Case No. D2000-0019,wherein it was held that owing to a wide public knowledge of the Complainant's mark, the Respondent cannot be said to have a legitimate interest in the concerned marks since he ought to have known of the Complainant's mark. B. Respondent
A summary of the Respondent's contentions is as follows:
The Respondent acquires and holds generic and descriptive domain names in high volume, through lawful and fair methods. As part of its business practice, it has a "well-known dispute resolution policy" in which it invites putative complainants to contact it regarding domain names that complainants believe correspond to a trademark. It has a liberal transfer policy whereby it typically agrees to voluntarily transfer domain names, typically irrespective of the legitimacy of the complainant's arguments, in an effort to avoid the needless time and expense associated with litigation and administrative hearings.
The Respondent has never heard of the Complainant, which is a company based in India. Upon learning of this matter and in an effort to resolve this matter expeditiously and without a substantial investment of time and expense by either party or the Panel, the Respondent contacted the Complainant and offered a voluntary transfer of the disputed domain name. The Complainant rejected this offer.
Without admitting fault or liability and without responding substantively to the Complainant's allegations, to expedite this matter for the Panel so that its time and resources are not otherwise wasted on this undisputed matter, the Respondent stipulates that it is willing to voluntarily transfer the disputed domain name to the Complainant. The Respondent requests that the transfer be ordered without findings of fact or conclusions as to paragraph 4(a) of the Policy (other than an order that the disputed domain name be transferred).
In numerous prior UDRP decisions, panels have consistently ruled that when a complaint has been filed and the respondent consents to the transfer of the domain name, it is inappropriate to issue any decision other than simply ordering the transfer of the domain name. Such panels consistently hold that it would be improper to issue any findings of fact in such cases, and other panels have gone further to state that it would be unwise to issue findings of facts or conclusions other than an order transferring the domain name.
Accordingly, the Respondent requests that the disputed domain name be transferred to the Complainant without further findings of fact or liability, including those related to the elements set forth in paragraph 4(a) of the Policy. C. Complainant's Supplemental Filing
A summary of the Complainant's Supplemental Filing with regard to the Respondent's consent to transfer is as follows:
The Complainant submits that the Respondent's business model is thriving at the expense of the UDRP, the service provider, and trademark owners. Despite the fact that the Respondent had to forego at least six domain names as a result of the UDRP, it continues undeterred. It is thus submitted that the present dispute should be adjudicated on the basis of the merits of the case so that the Respondent may stop abusing both the Policy and the trademark rights of others. The Complainant provides a number of prior UDRP decisions in which the panel examined the merits of the case despite a Respondent's unilateral consent to transfer, and requests the Panel to examine all three elements of paragraph 4(a) of the Policy. 6. Preliminary Issues
Before proceeding any further with this Decision, the Panel needs to decide, as a preliminary issue, a matter of the voluntary transfer of the disputed domain name by the Respondent to the Complainant, raised by the Respondent in its Response, and the Complainant's Supplemental Filing in reply to the Response, which requests the Panel to examine the elements of paragraph 4(a) of the Policy and to issue a decision on the merits of the case. A. Complainant's Supplemental Filing
Paragraphs 10 and 12 of the Rules grants the Panel the discretion to determine the admissibility of supplemental filings. Numerous UDRP panels have considered the principles which should be applied in exercising this discretion. See, e.g., The E.W. Scripps Company v. Sinologic Industries,WIPO Case No. D2003-0447. The principles adopted include that additional evidence or submissions should only be admitted in exceptional circumstances, such as where the party could not reasonably have known the existence or relevance of the further material when it made its primary submission; that if further material is admitted, it should be limited so as to minimize prejudice to the other party or the procedure; and that the reasons why the panel is invited to consider the further material should, so far as practicable, be set out separately from the material itself.
In this case, the purpose of the Complainant's Supplemental Filing, in large part, was to respond to the Respondent's request that the disputed domain name be transferred to the Complainant without further findings of fact or liability, including those related to the elements set forth in paragraph 4(a) of the Policy. This was not a matter which the Complainant could reasonably have anticipated at the time of filing its Complaint. The Panel therefore decides to admit the Supplemental Filing as to the Complainant's responses to the Respondent's request that the disputed domain name be transferred without a decision on the merits.
As the Panel considers the Complainant's contentions regarding only the "consent to transfer" issue, which has already been addressed extensively by the Respondent within its Response, the Panel does not consider it necessary to give the Respondent an additional opportunity to reply to the Supplemental Filing. See, e.g., Patriot Supply Store, Inc., d/b/a My Patriot Supply v. Domain May be for Sale, Check Afternic.Com Domain Admin, Domain Registries Foundation,WIPO Case No. D2016-1573. B. Consent to Transfer
Paragraph 4.13 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") considers whether a UDRP panel can decide a case based on a respondent's consent to transfer. In relevant part, "[s]ome panels have declined to grant a remedy solely on the basis of the respondent's consent, but rather elected to proceed to a substantive determination of the merits; for example, because the panel needs to be certain that the complainant has shown that it possesses relevant trademark rights, or because there is ambiguity as to the genuineness of the respondent's consent, or because the respondent has not expressly admitted bad faith, or because the panel finds there is a conduct or other aspect to the proceedings which warrants a full determination on the record, or because the panel finds that the complainant has not agreed to a consent decision and the complainant is entitled to the decision for which it has paid in filing its complaint, or because the panel finds a broader interest in reaching and recording a substantive determination (e.g., in connection with patterns of conduct under paragraph 4(b)(iii) of the UDRP)."
In this case, the Panel will proceed to a substantive determination for the following reasons:
- The Complainant has not agreed to a consent decision, requests a finding on the merits, and is entitled to the decision for which it has paid in filing its Complaint;
- The Respondent specifically denies fault or liability and has not conceded that the three elements of paragraph 4(a) have been satisfied;
- The Panel considers that there are wider policy reasons in reaching and recording a substantive determination, including the discouragement of further cybersquatting, if the Respondent in this case is found to satisfy the three elements of paragraph 4(a).
- The Panel finds a broader interest in reaching a substantive determination on the merits, given that those who choose to exploit the registration of domain names for profit should make the necessary preliminary trademark searches to avoid undue domain name registrations. See, e.g., Cartier International A.G. v. Domain May be for Sale, Check A, Domain Admin, Domain Registries Foundation,WIPO Case No. D2016-1534.
Therefore, the Panel agrees to the Complainant's request to decide the present case on its merits under paragraph 4(a) of the Policy, notwithstanding the Respondent's voluntary offer to transfer the domain name to the Complainant. 7. Discussion and Findings
To qualify for cancellation or transfer of the disputed domain name, the Complainant must prove each of the following elements of paragraph 4(a) of the Policy, namely:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(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.
In accordance with paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.
In accordance with paragraph 10(d) of the Rules, the Panel shall determine the admissibility, relevance, materiality and weight of the evidence. A. Identical or Confusingly Similar
It is well established in previous UDRP decisions that, where the domain name incorporates a complainant's registered trademark, this may be sufficient to establish that the domain name is identical or confusingly similar for the purposes of the Policy. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525.
The disputed domain name incorporates the Complainant's HAVELLS trademark, which makes the disputed domain name confusingly similar to this mark. This, in the view of the Panel, is bound to lead to confusion on the part of consumers and Internet users seeking information about the Complainant and its products and services marketed under its well-known HAVELLS trademark.
The addition by the Respondent, as a suffix, of the geographical term "India" to the Complainant's well-known HAVELLS trademark, as part of the disputed domain name, does nothing to distinguish the disputed domain name from the Complainant's well-known HAVELLS trademark. See Saks & Company v. ,WIPO Case No. D2013-1644. In fact, this addition, in the view of the Panel, tends to lead to more confusion, as the Complainant is a well-known and well-established company in India. See Facebook Inc. v. Naija Host, WIPOCase No. D2015-1057.
In view of all of the above, the Panel finds that the disputed domain name is identical or confusingly similar to the Complainant's well-known HAVELLS trademark, in which the Complainant has demonstrated, to the satisfaction of the Panel, that it has extensive rights and prior commercial use.
The first element of the Policy, therefore, has been met. B. Rights or Legitimate Interests
In order to determine whether the Respondent has any rights or legitimate interests in respect of the disputed domain name (paragraph 4(c) of the Policy), attention must be paid to any of the following circumstances in particular but without limitation:
- whether there is any evidence of 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 before any notice to the Respondent of the dispute;
- whether 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;
- whether 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 before the Panel to show that the Respondent was acting in pursuance of any rights or legitimate interests with respect to the disputed domain name. On the contrary, if the Respondent had any such rights or legitimate interests, the Respondent would have reasonably been expected to assert them, which the Respondent clearly has not done. On the contrary, in its Response, the Respondent, by offering the voluntary (emphasis added) transfer of the disputed domain name to the Complainant, clearly indicates that the Respondent does not have any such rights. See Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110.
In the view of the Panel, the adoption by the Respondent of a domain name identical or confusingly similar to the Complainant's HAVELLS well-known trademark inevitably leads to confusion on the part of Internet users and consumers seeking information about the Complainant and its products. Further, the Panel finds that the Respondent is trading unfairly on the Complainant's HAVELLS well-known trademark and also the valuable goodwill that the Complainant has established in its trademark through promotional investment and prior commercial use.
Also, the Panel finds no evidence that the Respondent has used, or undertaken any demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services.
Likewise, no evidence has been adduced that the Respondent has commonly been known by the disputed domain name; nor, for the reasons mentioned above, is the Respondent making a legitimate noncommercial or fair use of the disputed domain name.
Therefore, for all of the above reasons and also those advanced above by the Complainant, the Panel concludes that the Respondent has neither rights nor legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
Regarding the bad faith requirement, paragraph 4(b) of the Policy lists four examples of acts, which constituteevidence of bad faith. However, this list is not exhaustive, but merely illustrative. See Nova Banka v. Iris,WIPO Case No. D2003-0366.
Based on the evidence provided on the record, the Panel considers that the Respondent, by registering the disputed domain name incorporating as a dominant part thereof the Complainant's HAVELLS trademark, is trading unfairly on the Complainant's valuable goodwill established in such trademark. This constitutes bad faith under the provisions of paragraph 4(b)(iv) of the Policy. See Microsoft Corporation v. J. Holiday Co.,WIPO Case No. D2000-1493, in which it was stated that "consumers expect to find a company on the Internet at a domain name address comprised of the company's name or trademark". As this is not, in fact, the situation in the present case, the use by the Respondent of the disputed domain name is confusing and misleading and, in the view of the Panel, this is a further indication that the disputed domain name was registered and is being used in bad faith.
Again, in the absence of any explanation to the contrary by the Respondent, of which none is forthcoming on the record, the Panel takes the view that the Respondent did not register and use the disputed domain name by chance, but, in view of the factual background, as noted in Section 4 above, must have been aware of the notoriety of the Complainant's well-known HAVELLS trademark and its prior and widespread commercial use.
Also, the Panel finds that the Respondent's use of the disputed domain name, which has the effect of redirecting Internet users interested in the Complainant's products to its own website for presumed commercial gain, not only does not constitute legitimate noncommercial or fair use, but also constitutes bad faith on the part of the Respondent. See Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright,WIPO Case No. D2007-0267.
Furthermore, the nature of the Respondent's business and its activities, as described by the Respondent, constitutes, in the view of the Panel, further evidence of bad faith on the part of the Respondent. Likewise, the offering for sale of the disputed domain name by the Respondent, as mentioned above, is also evidence that the Respondent has registered and is using the disputed domain name in bad faith under the provisions of paragraph 4(b)(i) of the Policy.
Therefore, taking all these particular facts and circumstances into account and for all the above-mentioned reasons, including those advanced above by the Complainant, the Panel concludes that the Respondent has registered and is using the disputed domain name in bad faith. 8. 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.
Ian Blackshaw
Sole Panelist
Date: October 10, 2016
Full & Egal Universal Law Academy