Complainant is Anecdote Pty Ltd. of Pascoe Vale, Australia, represented by Boazz Law Chambers, Advocates, India.
Respondents are Domain Admin, Privacy Protection Service INC d/b/a PrivacyP of Nobby Beach, Australia and Mangal D Karnad of Bangalore, India, self-represented (collectively referred to as "Respondent"). 2. The Domain Name and Registrar
The Disputed Domain Name is registered with BigRock Solutions Pvt Ltd. (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 20, 2016. On December 20, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On December 20, 2016, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on January 5, 2017. In accordance with the Rules, paragraph 5, the due date for Response was January 25, 2017. The Response was filed with the Center on January 23, 2017.
The Center appointed Richard W. Page as the sole panelist in this matter on January 26, 2017. 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
Complainant is a leading global player in the consultancy and training line of commerce, especially in organizing storytelling workshops for "in house" organizations around the world. Complainant helps an organization/entity tap into its natural power of stories to simplify change and to inspire and make their strategy work. Complainant helps in growing one's business and to be more humane and engaging. The consulting services are specially designed to offer unique training and consulting programs for professionals the world over.
In early 2004, Complainant commenced use of the trademark and service mark ANECDOTE (collectively the "ANECDOTE Mark") for the training services it offered. The trademark ANECDOTE was registered from September 29, 2004 in Australia. Complainant also has trademark registrations or similar protection in the United States of America ("United States"), New Zealand and under the Madrid Protocol, which registrations are identified in its Complaint. The element "Anecdote" also forms part of Complainant's corporate name. Complainant is the sole creator and exclusive owner of the ANECDOTE Mark. In addition, Complainant is the owner of the domain names and .
Complainant has partnered with leading practitioners in many countries including, India, Singapore, Australia, New Zealand, the United States, Mexico, the United Kingdom of Great Britain and Northern Ireland, France, Belgium, the Netherlands and Thailand. Hence Complainant has a footprint on every continent worldwide.
Complainant's services under the ANECDOTE Mark or the "Anecdote" corporate name have been widely publicized through the Internet. In addition, Complainant maintains its own websites at "www." and "www..au".
Complainant has incurred substantial expenses over more than a decade in creating and promoting its ANECDOTE Mark related services.
Complainant's domain name was created over thirteen years ago, on August 10, 2003, and was subsequently transferred to Complainant on or around May 15, 2008. Complainant's domain name was created on August 12, 2004.
The registration of the Disputed Domain Name was on November 2, 2015. The evidence provided by Complainant shows that the Disputed Domain Name was being used to promote Respondent's consultancy service to help businesses market by storytelling. 5. Parties' Contentions A. Complainant
Complainant alleges that Respondent has registered and used the Disputed Domain Name in violation of Complainant's ANECDOTE Mark. Complainant further alleges that the Disputed Domain Name is confusingly similar to the ANECDOTE Mark and incorporates the critical element "ANECDOTE" in its entirety. Complainant further alleges that the addition of the letter "k" to create "aneckdote" is not distinctive.
Complainant contends that as a result of the high level of services rendered by Complainant since 2004 bearing the ANECDOTE Mark or the "Anecdote" corporate name, the same has garnered revenues, which translate into significant goodwill and reputation amongst members of the quality conscious public in India and internationally. This has in turn rendered the ANECDOTE Mark and the "Anecdote" corporate name highly distinctive and exclusively recognized and associated with Complainant. The ANECDOTE Mark and "Anecdote" corporate name are therefore entitled to protection against misappropriation. Complainant further contends that any misuse of ANECDOTE Mark and "Anecdote" corporate name or any other deceptively or confusingly or phonetically similar representation by a third party would be in violation of Complainant's statutory and common law rights in the ANECDOTE Mark.
Complainant states that through use of its domain names, the websites to which the websites resolve have become extremely popular. Complainant further states that the early adoption and extensive, continuous and ceaseless use of Complainant's domain names has ensured that Complainant is known and recognized as the sole owner of the websites worldwide. Complainant further states that it maintains a strong presence on the Internet.
Complainant contends that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. Complainant further contends that it has granted no license or permission to Respondent to use the ANECDOTE Mark. Complainant further contends that Respondent has not used the Disputed Domain Name in connection with the good faith sale of any goods or the good faith rendition of any services. Complainant further contends that Respondent has never been known by the name "Aneckdote" prior to the registration of the Disputed Domain Name.
Complainant asserts that Respondent registered and used the Disputed Domain Name in bad faith. Complainant further asserts that it is the intention of Respondent to imitate and copy Complainant's domain names and ANECDOTE Mark. Complainant further asserts that it is Respondent's intention to cause confusion and deception amongst Internet users and to mislead Internet users into believing Respondent is in some way connected or associated with Complainant. Complainant further asserts that Respondent is merely typosquatting and nothing more.
Complainant argues that Respondent has intentionally attempted to attract for commercial gain, Internet users to Respondent's website "www." by creating the likelihood of confusion amongst Internet users that Respondent is associated with or endorsed by Complainant. B. Respondent
Respondent alleges that the addition of the letter "k" to the Disputed Domain Name makes it distinctive from the ANECDOTE Mark and that Respondent has never claimed to be associated with Complainant. Respondent further alleges that it is a small family-run business, which family invested all of its finances in building the brand Aneckdote. Respondent further alleges that it has legitimately tried to build the brand to the best of its capabilities and Respondent's services have been to clients based solely out of the City of Bangalore, State of Karnataka, India in terms of Influencer Marketing and Graphic Design services and that one hundred percent (100%) of Respondent's Internet traffic has been generated from India. Respondent further alleges that Complainant's website traffic and search results are completely different, not a single point of similarity exits between the two.
Respondent asserts that the letter "k" is not adjacent to the key for "c" on a keyboard. Thus, an Internet user would not be able to type "Aneckdote" by accident or mistake. Respondent further asserts that Complainant is trying to steal Respondent's Disputed Domain Name through bullying and harassment, because Complainant is a much larger organization. The logos of the two companies are distinctive as are their brand identities. Respondent further asserts that it is highly unlikely for an Internet user to confuse two completely different companies.
Respondent argues that its website ranking is far superior to Complainant's ranking, as of November 2016, thus showing a clear indication of Respondent's efforts to build and improve its brand.
Respondent argues that it halted its Internet activities in May upon receipt of a cease and desist letter from Complainant as a show of good faith. Respondent further argues that it has conducted events and seminars in a completely different vertical, catering to a completely different target audience in a different part of the world.
Respondent announces that its intention is to stand out from Complainant and other competitors, not to appear confusingly similar. Respondent further announces that it intends to use the "www." website only as an information portal and not to derive any financial gain. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: "A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules, and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy directs that Complainant must prove each of the following:
i) that the Disputed Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and,
ii) that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and,
iii) that the Disputed Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Complainant contends that it has numerous registrations of the ANECDOTE Mark and that its trademark registrations are valid and subsisting.
Prior UDRP decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this assumption. See, EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc.,WIPO Case No. D2000-0047.
Respondent rebuts that Complainant does not have a registration of the ANECDOTE Mark in India, while all of Respondent's revenue is generated from the nexus of Bangalore.
Complainant counters that it has statutory and common law rights in the ANECDOTE Mark. Complainant further contends that it has a footprint on every continent worldwide. Complainant contends that its high level of services rendered since 2004 bearing the ANECDOTE Mark or the "Anecdote" corporate name has earned revenues, which translate into significant goodwill and reputation, amongst members of the public in India.
The Panel finds that, based upon this record, Respondent has not sufficiently refuted the trademark rights of Complainant. Therefore, for purposes of this proceeding, the Panel finds that Complainant has enforceable rights in the ANECDOTE Mark under the Policy.
Complainant further contends that the Disputed Domain Name is identical with and confusingly similar to the ANECDOTE Mark pursuant to the Policy paragraph 4(a)(i).
Numerous UDRP decisions have recognized that incorporating a trademark in its entirety can be sufficient to establish that the Disputed Domain Name is identical or confusingly similar to a registered trademark. See, Rapidshare AG and Christian Schmid v. majeed randi,WIPO Case No. D2010-1089.
Complainant argues that the entirety of the ANECDOTE Mark is incorporated into the Disputed Domain Name. Complainant further argues that when a Disputed Domain Name incorporates an entire trademark with only the addition of a common word or letter, it is still confusingly similar to the trademark as the addition of the term like the letter "k" does not eliminate the confusing similarity. See, NameSecure L.L.C.F. Hoffmann-LaRoche AG v. P Martin,WIPO Case No. D2009-0323; Dixons Group Plc. v. Mr. Abu Abdullaah,WIPO Case No. D2001-0843; V&S Vin & Sprit AB v. Ooar Supplies,WIPO Case No. D2004-0962; Research in Motion Limited v. One Star Global LLC,WIPO Case No. D2009-0227; Covance, Inc. and Covance Laboratories Ltd. v. The Covance Campaign,WIPO Case No. D2004-0206; SoftCom Technology Consulting Inc. v. Olariu Romeo/Orv Fin Group S.L.,WIPO Case No. D2008-0792.
The Panel notes that the entirety of the ANECDOTE Mark and the "Anecdote" corporate name is in the Disputed Domain Name. The addition of "k" in the Disputed Domain Name does not affect a finding that the Disputed Domain Name is identical or confusingly similar to Complainant's ANECDOTE Mark.
Therefore, the Panel finds that the Disputed Domain Name is confusingly similar to the ANECDOTE Mark pursuant to the Policy paragraph 4(a)(i). B. Rights or Legitimate Interests
Complainant contends that Respondent has no rights or legitimate interest in the Disputed Domain Name pursuant to the Policy paragraph 4(a)(ii).
Paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") states that once Complainant makes a prima facie case in respect of the lack of rights or legitimate interests of Respondent, Respondent carries the burden of demonstrating it has rights or legitimate interests in the Disputed Domain Name. Where Respondent fails to do so, Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
Complainant contends that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. Complainant further contends that it has granted no license or permission to Respondent to use the ANECDOTE Mark. Complainant further contends that Respondent has not used the Disputed Domain Name in connection with the good faith sale of any goods or the good faith rendition of any services. Complainant further contends that Respondent has never been known by the name "Aneckdote" prior to the registration of the Disputed Domain Name and is making no fair or noncommercial use of the Disputed Domain Name.
The Policy paragraph 4(c) allows three nonexclusive methods for the Panel to conclude that Respondent has rights or a legitimate interest in the Disputed Domain Name:
(i) before any notice to you [Respondent] of the dispute, your 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; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Disputed Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are 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.
Complainant's allegations constitute a prima facie case, giving rise to Respondent's obligation to present contrary evidence. Respondent has not directly refuted each of these contentions, but the Panel infers that Respondent believes that it has used the Disputed Domain Name in connection with a bona fide offering of goods and services in an unrelated "vertical" within the line of commerce occupied by Complainant. Respondent does not see its services as competing.
The Panel finds that the services of Complainant and Respondent are in the consultancy and training line of commerce, especially in organizing storytelling workshops for "in house" organizations around the world. The Panel further finds that this line of commerce is narrow enough that Complainant's digital footprint would have been well-known to Respondent in India and internationally.
The choice of the Disputed Domain Name appears to be fashioned to create confusing similarity, as found above. The rendition of similar services in these circumstances cannot be coincidental and is not bona fide with the meaning of the Policy, paragraph 4(a)(ii) and 4(c). Therefore, the Panel finds that Respondent has no rights or legitimate interest in the Disputed Domain Name pursuant to the Policy paragraph 4(a)(ii). C. Registered and Used in Bad Faith
Complainant contends that Respondent registered and is using the Disputed Domain Name in bad faith in violation of the Policy paragraph 4(a)(iii).
The Policy paragraph 4(b) sets forth four nonexclusive criteria for Complainant to show bad faith registration and use of the Disputed Domain Name:
(i) circumstances indicating that you [Respondent] have registered or you have acquired the Disputed Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Disputed Domain Name registration to Complainant who is the owner of the ANECDOTE Mark or to a competitor of that Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the Disputed Domain Name; or
(ii) you [Respondent] have registered the Disputed Domain Name in order to prevent the owner of the ANECDOTE Mark from reflecting it in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the Disputed Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Disputed Domain Name, you [Respondent] 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 Complainant's ANECDOTE Mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product.
Complainant asserts that Respondent has acted in bad faith under paragraph 4(b)(iv) and alleged the necessary elements.
Respondent argues that it has acted in good faith, citing its website ranking as being far superior to Complainant's ranking, as of November 2016, thus showing a clear indication of Respondent's efforts to build and improve its own brand.
Respondent argues that it halted its Internet activities in May upon receipt of a cease-and-desist letter from Complainant as a show of good faith. Respondent further argues that it has conducted events and seminars in a completely different "vertical," catering to a completely different target audience in a different part of the world.
Respondent announces that its intention is to stand out from Complainant and other competitors, not to appear confusingly similar. Respondent further announces that it intends to use the "www." website only as an information portal and not to derive any financial gain.
The Panel ratifies its finding that Respondent chose the Disputed Domain Name in a line of commerce in which Complainant's ANECDOTE Mark was readily ascertainable. There was no reason for Respondent to choose "aneckdote" other than to trade on Complainant's goodwill and trademark rights.
Therefore, the Panel finds that Complainant has proven the necessary elements of the Policy, paragraphs 4(a)(ii) and 4(b)(iv). 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 Complainant.
Richard W. Page
Sole Panelist
Date: February 9, 2017
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