The Complainant is Voltas Limited of Mumbai, India, represented by Anand & Anand, India.
The Respondent is Gurpreet Purewal, Voltas Engineering of Surrey, British Columbia, Canada, represented by CGM Lawyers, Canada. 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 January 19, 2017. On January 19, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 20, 2017, 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 February 8, 2017. In accordance with the Rules, paragraph 5, the due date for Response was February 28, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 1, 2017. On March 2, 2017, the Respondent's representative sent an email communication to the Center requesting an extension of time to respond to the Complaint. On March 2, 2017, the Center acknowledged receipt of the said email, referred to the Notification of Respondent Default and stated that the Center will proceed to appoint an Administrative Panel, adding that the Center will bring any submission by the Respondent to the attention of the Panel upon appointment.
The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on March 15, 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
The Complainant is part of the Tata group of companies and is one of India's largest manufacturers of air conditioners and air conditioning solutions, an engineering solution provider and project specialist. Incorporated in 1954, the Complainant is credited with revolutionizing the Indian air conditioning and refrigeration industry and setting international standards in product design, quality and retailing. The Complainant has won many awards for its services over the years and today offers engineering solutions for a wide spectrum of industries in numerous fields such as heating, ventilation and air conditioning, refrigeration, climate control, electro-mechanical, textile machinery, mining and construction equipment, water management solutions, building management systems, and pollution control. On its website, the Complainant lists overseas operations based in Bahrain, Qatar, Saudi Arabia, Singapore, United Arab Emirates and the United Kingdom. In addition to its Indian offices and its operations in the previously noted countries, the Complainant also lists territorial and area offices in the Netherlands and Oman.
The Complainant is the owner of a large variety of registered trademarks for the word mark VOLTAS, the earliest of which is Indian registered trademark no. 169302, filed on May 31, 1955, in international class 1. The Complainant provided a list of similar registered trademarks which it owns for the mark VOLTAS and a device covering Bahrain, China, Ghana, Hong Kong, Kuwait, Oman, Qatar, Saudi Arabia, Singapore, South Africa, and United Arab Emirates, together with trademark applications in respect of Mozambique.
The disputed domain name was created on December 12, 2011. Based upon the WhoIs record for the disputed domain name and the Complainant's screenshots of the website associated with the disputed domain name, the Respondent appears to be a limited company based in Surrey, British Columbia, Canada specializing in engineering and project management. The Respondent's website lists the company's activities as design build, project management, building envelope, electrical, mechanical and fire sprinkler services. 5. Parties' Contentions A. Complainant
The Complainant contends that the disputed domain name is identical or confusingly similar to trademarks in which the Complainant owns rights; that the Respondent has no rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
The Complainant notes that, since its inception, it has been continuously and consistently using the trademark and trade name VOLTAS, adding that this is a coined mark possessing the distinctiveness of an invented word and that it has acquired the status of a well-known trademark. The Complainant asserts that it has used the VOLTAS trademark consistently such that it is uniformly perceived as indicative of the source of the Complainant's products and services. The Complainant submits that its registered trademarks in various countries across the world reflect worldwide recognition of its use of the VOLTAS mark and the exclusivity which it enjoys in such mark. The Complainant notes that it has filed cases in India against the misuse of the VOLTAS mark and has obtained favorable orders whereby third parties have been restricted from the use of such mark.
The Complainant asserts that it has various online Internet portals and that some of the Tata group of companies are engaged in the business of providing multi-faceted services accessed by users, shareholders, customers and other Internet users worldwide. The Complainant lists some 37 domain names using the terms "voltas", "voltaslimited" and "voltasltd" of which it is the registrant spread across some four generic Top-Level Domains ("gTLDs") (".asia", ".com", ".net" and ".org") and four country code Top-Level Domains ("ccTLDs") (".ae", ".cn", ".hk" and ".in").
The Complainant states that the Respondent is domiciled in Canada but has been set up and incorporated by a person of Indian origin, noting that the Respondent's website states that Mr. Gurpreet Singh Purewala is the Respondent's Managing Director. The Complainant asserts that it is abundantly clear that the Respondent is well aware of its "Voltas" brand name and has been incorporated to capitalize on the goodwill and reputation in such brand which the Complainant has built over the years.
The Complainant notes that its VOLTAS trademark is wholly incorporated in the disputed domain name and asserts that this is sufficient to establish confusing similarity under the Policy. The Complainant adds that the disputed domain name contains the corporate name of the Complainant as its distinctive and most essential element and asserts that the disputed domain name is deceptively similar as a whole to the Complainant's VOLTAS mark.
The Complainant submits that it has overwhelming statutory and common law rights in the VOLTAS mark and is solely entitled to use the same, that it has not licensed or otherwise permitted the Respondent to use such mark or to register any domain name incorporating such mark, that the disputed domain name is not being used in connection with a bona fide offering of goods or services as the Respondent is trading on the fame or recognition of the Complainant's mark and that there is no plausible explanation for the use of the disputed domain name.
The Complainant asserts that the Respondent had constructive notice of the Complainant's rights in its VOLTAS mark by virtue of the Complainant's widespread reputation, use and registrations. The Complainant states that previous cases under the Policy illustrate the concept that the Respondent should have known of the Complainant's trademark if it is shown to be well-known or in wide use on the Internet or otherwise and that such knowledge on the part of the Respondent is an indicator of bad faith.
The Complainant states that the registration of the disputed domain name is an opportunistic bad faith registration on the part of the Respondent and submits that the Respondent has been aware prior to registration of the disputed domain name that there was a substantial reputation and goodwill associated with the Complainant's trademark. The Complainant contends that there is a considerable likelihood that the actual or potential unwary visitor to the web page at the disputed domain name will be induced to believe that the Complainant has licensed its VOLTAS mark to the Respondent or has authorized the Respondent to register the disputed domain name, that the Respondent has some connection with the Complainant such as an affiliation with the Tata Group, or that the Respondent has been authorized by the Complainant to carry out unethical activities. B. Respondent
The Respondent did not reply to the Complainant's contentions.1 6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(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. A. Preliminary Matter – Respondent's request for extension of time to file Response
The Complaint was notified via email on February 8, 2017, and the shipping records show that Written Notice reached the Respondent by courier in the middle of the day on February 10, 2017. As noted above, the Respondent did not file a Response in this case prior to the deadline of February 28, 2017, and the Center duly notified the Respondent's default on March 1, 2017. On March 2, 2017, the Center received an email from a law firm indicating that they had "just been retained by the Respondent". The firm requested an extension of time to respond to the Complaint. The Center replied on the same date, stating that any submission by the Respondent would be brought to the Panel's attention upon appointment. The Panel was appointed on March 15, 2017 by which date no such submission had been received.
The Panel commends the decision by the panel in Sakura Properties, LLC v. Andre Jensen,WIPO Case No. D2016-2209 to the Parties in the present case as a useful summary of the position regarding extensions to time limits under the Policy. In particular the following passage explains the requirement to adhere to the prescribed time limits:
"When the Respondent registered the Domain Names he entered into registration agreements with the Registrars. Those agreements incorporated the Policy. The Policy is in a standard form and the procedure is not susceptible to variation, save in specific circumstances e.g., paragraph 5(d) of the Rules, which provides inter alia: "At the request of the Respondent, the Provider [i.e., the Center] may, in exceptional cases, extend the period of time for filing of the response." A similar power is provided to the Panel by way of paragraph 10(c) of the Rules."
Paragraph 10(c) of the Rules provides that the Panel may, at the request of a Party or on its own motion, extend, in exceptional cases, a period of time fixed by the Rules or by the Panel. This, however, is to be balanced against the opening sentence of that paragraph, namely, "The Panel shall ensure that the administrative proceeding takes place with due expedition". It should also be noted that in terms of paragraph 10(b) of the Rules, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case.
In the present matter, the Panel is of the view that there has already been too much delay and that it is not appropriate to allocate further time for the Respondent to file a Response. Although the Respondent received Written Notice on February 10, 2017, it did not apparently retain legal representation until March 2, 2017, almost three weeks later, when the Respondent's representative indicted to the Center that it had "just been retained". This could not really be described as an exceptional circumstance justifying an extension bearing in mind the fact that the Respondent appears to have waited until the deadline for a Response before instructing representation.
Furthermore, despite it being made clear to the Respondent's legal representative by the Center on March 2, 2017, that any submission made on behalf of the Respondent would be brought to the Panel's attention on appointment no such submission had been filed before the Panel was appointed almost two weeks later. Had a Response been received in the interim period, the Panel might have been minded to accept it in accordance with the need to ensure that the Respondent received an opportunity to present its case. However, by the date of the Panel's appointment, the Respondent had already received a fair opportunity to present its case in terms of paragraph 10(b) of the Rules yet had failed to do so either before or after it had sought legal representation. Accordingly, the Panel's duty to ensure that the administrative proceeding takes place with due expedition in accordance with paragraph 10(c) of the Rules weighs in favor of proceeding to a decision, particularly in the absence of any communication from the Respondent or its representative specifying exceptional circumstances which might justify any further delay.
In these circumstances, the Panel will proceed to a decision. B. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has rights in the mark VOLTAS in terms of this element of the Policy. The second level of the disputed domain name reproduces this mark in its entirety and couples it with the generic word "engineering". It is well recognized in cases under the Policy that the addition of a generic word to a trademark in a domain name is insufficient to avoid a finding of confusing similarity between the mark concerned and the domain name. The gTLD ".com" is typically disregarded for the purposes of comparison on the grounds that this is wholly generic and required for technical reasons only.
In these circumstances, the Panel finds that the disputed domain name is confusingly similar to a mark in which the Complainant has rights and accordingly that the requirements of paragraph 4(a)(i) of the Policy have been satisfied. C. Rights or Legitimate Interests
In light of the Panel's finding in respect of bad faith registration and use below, there is no need for the Panel to address the issue of whether the Respondent has rights or legitimate interests in respect of the disputed domain name. D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, 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".
The essence of the Complainant's case on registration and use in bad faith is that its VOLTAS mark is globally well-known and that the Respondent must have reproduced this within the disputed domain name in that knowledge, with a view to capitalizing on the mark's inherent goodwill and reputation. There are fundamental problems with this approach from the Panel's perspective, notably with the Complainant's submissions as to the extent of the Respondent's likely knowledge of the Complainant and its mark, and the distinct lack of evidence produced in support of this key contention. The only evidence which the Complainant has produced pertaining to the Respondent and its use of the disputed domain name is a few screenshots of the relevant website and a copy of the WhoIs of the disputed domain name.
There is very little information to be deduced from the Complainant's limited screenshots. However, to the Panel, the Respondent's website has the appearance of an established engineering business offering various services on the west coast of Canada. The Panel does not know when the Respondent's company was founded or incorporated, only that the disputed domain name was created in December 2011 as noted on the corresponding WhoIs record. In the absence of suitable evidence to the contrary, it is entirely possible that the Respondent has been trading under the corporate name Voltas Engineering Limited for some time prior to its registration and use of the disputed domain name. It would have been a relatively straightforward matter for the Complainant to have ascertained this by obtaining an appropriate company search but in the absence of such the Panel is not in a position to assess whether the incorporation of the company and the creation of the disputed domain name took place at around the same time.
Clearly, the disputed domain name itself has been registered and used well after the Complainant established what the Panel accepts is a significant reputation in its VOLTAS trademark. The Complainant has demonstrated that such reputation extends to a wide range of countries, predominantly in Asia, the Middle East and Africa. However, the evidence before the Panel falls short of establishing whether and to what extent such reputation might extend to Canada where the Respondent is incorporated and apparently does business. The fact that a respondent is in a different jurisdiction than a complainant is not itself the paramount consideration, indeed, it is "something that some people can consider to be of greater significance than it actually is, particularly if the complainant has a significant online presence" (Fakir Elektrikli EV Aletleri Diş Ticaret Anonim Şirketi v. Development Services, Telepathy, Inc.,WIPO Case No. D2016‑0535). However, in the present case, the Complainant's evidence again falls short of establishing even the extent of its online presence for the purposes of showing that it is more likely than not that this would have reached the attention of those behind the Respondent's company.
The Complainant has produced a long list of domain names which it has registered. It is not clear whether each domain name points to a unique website or indeed to what kind of website the domain names might point. Nor does the type of top-level domain name assist the Panel. Adopting the most favorable construction of this evidence, the list might be treated as identifying the fact that the websites operated by the Complainant are focused on Asia and the Middle East, bearing in mind the nature of the ccTLDs. That, however, is speculation on the Panel's part and in any event it does not support the Complainant's case as to the Respondent's knowledge and intent to target the Complainant.
The Panel accepts the Complainant's submission that the VOLTAS mark is a coined term having no other meaning. However, the Panel is not prepared to infer from this fact on its own that the Respondent must have known of the Complainant's rights in the VOLTAS mark and have had an intent to target these as the Complainant contends. The Panel does not consider it inherently improbable that a company engaged in electrical engineering, as the Respondent appears to be, might have come up with this term independently of the Complainant's mark as a derivative or variation on the electrical unit, namely "volts".
As to the Complainant's reference to the Respondent's principal's name being of Indian origin, the Panel cannot ascribe any significance to this in the manner which the Complainant contends, namely that this means the Respondent must be deemed to have knowledge of the Complainant, it being a long-established and reputable Indian company. Again, it would have been a relatively straightforward matter for the Complainant to have gathered evidence as to who the Respondent's principal might be, what his origins are and the nature of his business activities which might have led to a reasonable inference of such knowledge and possibly, following on from such, might even have led the Panel to infer an intent on the Respondent's part to target the goodwill and reputation in the Complainant's mark, leading to a finding of registration and use in bad faith. However, the Panel is not prepared to do so based only on the Complainant's conclusory allegations.
It should also be noted that, at least based on the present limited evidence as regards the Respondent, its business and its corporate activities, the case strikes the Panel as perhaps not a typical or clear case of cybersquatting which the Policy is designed to address (see The T, LLC v. Jeffrey S. Poploff,WIPO Case No. D2000-1470 ("This Panel is not a general domain name court, and the Policy is not designed to adjudicate all disputes of any kind that relate in any way to domain names. Rather, the Policy is narrowly crafted to apply to a particular type of abusive cybersquatting.")). On the contrary, this may be a case which has competing legal interests at its heart. In any event, if cybersquatting is at the root of the Respondent's activities as regards the disputed domain name, the Complainant has failed to demonstrate this to the Panel's satisfaction on the balance of probabilities and within the framework laid down by the Policy.
The Complainant has made considerable efforts to show that it is prepared to seek various remedies relating to alleged infringement of its trademarks in the courts, even going to the extent of producing various orders which it has been successful in obtaining in previous cases between parties unrelated to the Parties in this administrative proceeding. Accordingly, it will no doubt be aware of the fact that it is free to take the present matter to such a forum, as indeed are both of the Parties. In that context, the Panel notes that although it has found that the Complainant has failed to prove on the present record that the disputed domain name was registered and used in bad faith within the meaning of the Policy, such finding should in no way be considered as preventing either of the Parties from seeking to pursue this matter through the courts should they choose to do so. Furthermore, this Decision is not addressed to any particular forum that may ultimately be seized of the matter.
The Complainant has failed to satisfy paragraph 4(a)(iii) of the Policy and in these circumstances the Complaint fails. 7. Decision
For the foregoing reasons, the Complaint is denied.
Andrew D. S. Lothian
Sole Panelist
Date: March 20, 2017
1 The Panel has taken note of a late Response filed on March 28, 2017, after the Decision had been rendered by the Panel. In light of the findings set out in this Decision, the Panel finds no reason for accepting this late Response and has subsequently decided to deny the Response.
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