The Complainant is Acko Technology & Services Pvt. Ltd. of Mumbai, India, represented by Shardul Amarchand Mangaldas & Co, India.
The Respondent is Shashank Singh of Bhayander, India. 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 April 24, 2017. On April 24, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 25, 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 May 2, 2017. In accordance with the Rules, paragraph 5, the due date for Response was May 22, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 23, 2017.
The Center appointed Harini Narayanswamy as the sole panelist in this matter on May 30, 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 and its subsidiary company are incorporated under Indian laws and are in the business of providing general insurance and related services since September 2016. The Complainant uses the trademark ACKO in connection with its business. In July 2016, the Complainant purchased the domain name from Brandroot LLC, United States of America.
The disputed domain name was registered on October 25, 2016 by the Respondent. The disputed domain name resolves to a registrar parking page including sponsored links to a variety of goods and services. 5. Parties' Contentions A. Complainant
The Complainant states it is a holding company, that operates the back-end technology processes of its wholly owned subsidiary, ACKO General Insurance Limited ("Acko GI"). The Complainant states the ACKO trademark was adopted in May 2016, when it registered the domain name through an agent. The domain name is redirected to "www.", which hosts the website for the Complainant's business and also provides information on insurance related topics. Extracts from the WhoIs records for the domain names and , copies of the Complainants' bank statements, an invoice raised by Brandroot LLC, and printouts of the website "www." are filed as evidence by the Complainant.
The Complainant claims it has used the ACKO trademark since its incorporation and the name "Acko" is part of its trade name. People in the trade, are therefore well aware that the ACKO mark belongs to the Complainant. Further evidence filed by the Complainant are invoices bearing the ACKO mark, media reports showing that Acko GI is backed by the industrialist Mr. N.R. Narayana Murthy, the founder of Infosys Limited.
The Complainant states that its Indian trademark applications for ACKO TECHNOLOGY & SERVICES LTD. under classes 42 and 36 are pending. The date of first use of the mark in the trademark applications are claimed as September 7, 2016, states the Complainant, which is the date of its incorporation. The Complainant alleges that the ACKO mark is distinctive, unique and invented. It claims the mark is derived from the word "echo", based on the Complainant's business philosophy, which is, to resonate or to echo its customers' requirements and fulfil them.
The Complainant states that the disputed domain name contains the entire ACKO trademark, in which it has rights. The Complainant asserts that previous UDRP decisions have found the omission of one letter, does not effect the finding of confusing similarity between the disputed domain name and the mark. The present case is on a higher footing, argues the Complainant, as it contains a verbatim copy of the trademark along with the generic term "insurance". Merely adding generic words to a trademark, is insufficient to avoid a finding of confusing similarity, argues the Complainant, citing the consensus view of UDRP panelists.
The Complainant contends the Respondent has no proprietary or contractual rights in the disputed domain name. The Respondent is not known by the name "Acko", and has no business by the name or any common law trademark rights in the name. The Respondent is not authorized or licensed by the Complainant to use its mark. Use of the mark by the Respondent without prior express permission of the Complainant violates its rights. The Respondent is not running a website or a business from the disputed domain name and the Complainant adds that the Respondent has no bona fide or legitimate interests in the disputed domain name. Hoarding a domain name with an intention of to seek financial gain is not a legitimate use, argues the Complainant. The use of the term "insurance" with its mark in the disputed domain name constitutes passing off adds the Complainant.
The Complainant alleges that the disputed domain name has been obtained in bad faith for the reasons that: The Respondent's intention is to sell or transfer the disputed domain name to the Complainant for financial gain. The Complainant refers to an email communication where the Respondent has asked for a sum of USD 30,000 to transfer the disputed domain names and to the Complainant. The Complainant further argues that the Respondent does not run a website from the disputed domain name, and the Complainant believes the Respondent may falsely try to represent to the public that it is the Complainant and this is likely to cause damage to the Complainant's reputation. Based on all the arguments, the Complainant requests for the transfer of the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
The key elements that need to be established by the Complainant, in order to obtain the remedy of transfer of the disputed domain name under paragraph 4(a) of the Policy are:
(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 lacks rights or legitimate interests in the disputed domain name; and
(iii) The disputed domain name was registered and is being used in bad faith by the Respondent. A. Identical or Confusingly Similar
The first element requires the Complainant to establish the disputed domain name is identical or confusingly similar to a trademark or a service mark in which it has rights.
The Complainant has filed evidence to show its common law trademark rights in the ACKO mark. The evidence filed by the Complainant include: copies of the Complainant's bank statements, copies of invoices bearing the ACKO mark that show the Complainant's use of the ACKO mark in commerce and media reports referring to the Complainant's subsidiary Acko GI.
The Complainant has also filed as evidence, details of its pending trademark applications, for the trademark ACKO TECHNOLOGY & SERVICES LTD. under classes 36 and 42. The Complainant has filed extracts from the WhoIs records for the domain names and , and documents of its purchase of the domain name from Brandroot LLC. These documents establish its ownership and use of above mentioned domain names bearing its ACKO trademark, that show the Complainant's adoption and use of its mark in connection with its online business.
The Panel finds from the evidence that the Complainant has adopted and used the ACKO mark in relation to its insurance business and has established that it has common law rights in the ACKO mark for purposes of these proceedings under the Policy. The term "trademark or service mark" as used in paragraph 4(a)(i) under the Policy, encompasses both registered and unregistered or common law marks. (See section 1.1.1 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, ("WIPO Overview 3.0"))
The Panel determines that the disputed domain name is confusingly similar to the Complainant's trademark ACKO. The addition of the dictionary word "insurance" with the mark does not lessen the confusing similarity with the Complainant's mark, as the word "insurance" pertains to the Complainant's areas of business and heightens the confusing similarity. Internet users looking for Complainant online, are likely to be mislead or confused as to the origin and ownership of the disputed domain name.
The Complainant has successfully established the first requirement under paragraph 4(a) of the Policy, that the disputed domain name is identical or confusingly similar to a trademark or a service mark in which the Complainant has rights. B. Rights or Legitimate Interests
The second element under paragraph 4(a) of the Policy requires the Complainant to make a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. Where the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests, the burden of proving rights or legitimate interests in the disputed domain name shifts to the Respondent. If the Respondent fails to come forward with relevant evidence establishing rights in the disputed domain name, the Complainant is deemed to have satisfied the second element. (See section 2.1 of Third Edition, WIPO Overview 3.0).
The Complainant has argued that the Respondent has no rights or legitimate interests in the disputed domain name, as the Respondent is not known by the name "Acko", and has no business by the name. As the Respondent is not authorized or licensed by the Complainant to use its mark, the Complainant states that the Respondent has no contractual right to use the ACKO mark.
The Complainant has further argued, that the Respondent is not likely to have any business related to insurance, as an entity doing business in the area of insurance in India, is required to obtain regulatory approvals from the authorities. The Insurance Regulatory Development Authority of India (IRDA) is the regulatory body or appropriate authority in this regard. The Complainant believes such approvals have not been sought for or obtained from the IRDA by the Respondent.
The Respondent has not participated in these proceedings or controverted the submissions and arguments of the Complainant or provided any reasons that indicate legitimate use of the disputed domain name. Given the entire set of the circumstances set out above, it is reasonable to infer that the Respondent has no rationale for registering the disputed domain name except to create a false association with the Complainant's mark. The Panel finds that, under the circumstances discussed, where the Respondent is clearly not affiliated with the Complainant and there is confusing and deceptively similar use of the Complainant's trademark in the disputed domain name, the Respondent ought to have registered the disputed domain name to attract Internet traffic based on the Complainant's trademark. Such use of the disputed domain name is not a basis to find rights or legitimate interests in favor of the Respondent.
Accordingly, it is found that the Complainant has successfully established an unrebutted prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, as required under the second element of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
The third element requires the Complainant to establish the disputed domain name has been registered and is being used in bad faith by the Respondent.
The Complainant has established that it has used the ACKO mark in connection with its insurance business prior to registration of the disputed domain name. The record show the disputed domain name was registered in October 2016, and the Complainant's company was incorporated in September 2016. The timespan between the Complainant's commencement of its business and the registration of the disputed domain name is very narrow. In this context, the Panel finds the question of bad faith registration of the disputed domain name in the present case turns on the two divergent questions:
(i) Given the short timespan between the Complainant's use of the mark and the registration of the disputed domain name, does it preclude a finding of bad faith registration.
(ii) Does the Respondent's registration of the disputed domain name being close to the date of the Complainant's admitted use of its mark, prevent the Complainant from exercising its rights in the trademark or undermine the Complainant's trademark rights.
The Complainant has alleged that the "Acko" name and mark was adopted prior to its incorporation in September 2016 when its agent registered the domain name in May 2016. Further, in July 2016 the Complainant has shown that it acquired the domain name from Brandroot LLC. These details merely show the adoption of the trademark was done prior to the incorporation of the company. Nevertheless, the fact remains that the Complainant's actual use of the mark has admittedly been from the date of its incorporation, which is September 7, 2016. Under these circumstances, where the Complainant had barely commenced use of its mark, and within a short time frame the Respondent had registered the disputed domain name; could the Respondent's registration of the disputed domain name, be characterized as registration of the domain name in anticipation of the Complainant's future use of its mark in commerce and therefore in anticipation of the Complainant's trademark rights?
Under the Policy, domain names registered in anticipation of trademark rights, are found to be registration in bad faith, if it is found that the respondent's intent in registering the disputed domain name was to capitalize on the complainant's nascent trademark rights. See section 3.8.2 of the WIPO Overview 3.0. This proposition is supported by the basic underlying principle of the Policy, which is to protect consumers from online trademark related deception at the hands of respondents who register domain names in bad faith.
The Panel finds based on the facts and circumstances here, that the Respondent seems to have known of the Complainant's business using the ACKO mark in relation to insurance. It is reasonable to infer that the Respondent knowingly and deliberately registered the disputed domain name using the ACKO mark in anticipation of the Complainant's trademark rights and to capitalize on the Complainant's nascent trademark rights.
The Panel further finds the Complainant has also provided the email evidence of the Respondent's intention to derive profit or monetary gain from the disputed domain name. The evidence shows that the Respondent was willing to sell the disputed domain name to the Complainant for amount of USD 30,000 to transfer the domain names and to the Complainant. The Panel determines, based on the facts of the case, that the Respondent's primary motive in registering the disputed domain name appears to be to create a false association with the Complainant's business with an intent to derive profits in excess of costs associated with registration of the disputed domain name, and is recognized as an illustration of typical bad faith registration and use under the Policy.1
The Respondent did not avail the opportunity to respond in these proceedings and did not come forward with any submissions. The Panel after having considered the facts and circumstances discussed, determines that the Respondent has chosen the disputed domain name for the reason that he knew the Complainant's mark ACKO was associated with the insurance business and its potential to confuse viewers and the public. Improperly creating a false association, to attract viewers or to seek profit from the opportunity of creating a false association with a complainant's business is found to establish bad faith under the Policy.
Under the provisions of paragraph 4(b)(iv) of the Policy, trying to create a false association with the Complainant's trademark, when none exists is recognized as bad faith registration and use of the disputed domain name. It is likely to be assumed by the public and Internet users that the disputed domain name is associated with the Complainant or is sponsored, affiliated with or endorsed by the Complainant, the legitimate owner of the trademark.
The Panel concludes based on the points discussed, that the Complainant has successfully established the third element under paragraph 4(a) of the Policy, that the disputed domain name was registered and is being used in bad faith by the Respondent. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
Harini Narayanswamy
Sole Panelist
Date: June 13, 2017
1 It is well established that settlement discussions between the parties are admissible in UDRP proceedings as evidence to show bad faith, if the negotiation between the parties confirm that the respondent's intent was merely to capitalize on the complainant's rights, and there is no indication of the respondent is likely to use it for legitimate purposes, such negotiation between the parties can be material to a panel's assessment of bad faith, irrespective of whether such discussion / communication between the parties take place before or after filing the complaint (see section 3.10. WIPO Overview 3.0).
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