The Complainant is Bharti Enterprises (Holding) Private Limited of New Delhi, India, represented by Inttl Advocare, India.
The Respondent is Bharti International Trade Co. of New Delhi, India. 2. The Domain Name and Registrar
The disputed domain name is registered with Network Solutions, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 28, 2017. On May 1, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, 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 4, 2017. In accordance with the Rules, paragraph 5, the due date for Response was May 24, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 26, 2017. On the same day, the Center received an informal communication from a third party.
The Center appointed Harini Narayanswamy as the sole panelist in this matter on June 2, 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, Bharti Enterprises (Holding) Private Limited, and its group companies are a leading provider of telecommunication services in India and in several countries. The Complainant’s group companies are also involved in the insurance, the retail, the realty and the food business. Its products and services are marketed under its umbrella mark BHARTI. The Complainant has numerous trademark registrations for the BHARTI mark. An illustrative list of BHARTI and BHARTI formative marks along with copies of trademark registration certificates has been filed by the Complainant, these are:
Registration Number
Indian Trademark
Class
Registration Date
993494
Bharti (Device)
9
February 28, 2001
1053853
Bharti (Device)
9
October 22, 2001
1256049
BHARTI
38
December 18, 2003
1291327
BHARTI LIVE
38
June 21, 2004
1327609
Bharti Foundation (Device)
9
December 23, 2004
1327610
Bharti Foundation (Device)
16
December 23, 2004
1327611
Bharti Foundation (Device)
35
December 23, 2004
1327612
Bharti Foundation (Device)
37
December 23, 2004
1327613
Bharti Foundation (Device)
38
December 23, 2004
1327614
Bharti Foundation (Device)
41
December 23, 2004
1327615
Bharti Foundation (Device)
42
December 23, 2004
1593228
BHARTI
42
August 22, 2007
1593229
bharthi (Device)
42
August 22, 2007
1593230
bharthi (Device)
35
August 22, 2007
1593232
bharthi (Device)
36
August 22, 2007
1593233
bharthi
36
August 22, 2007
1623144
BHARTI
42
August 22, 2007
1623145
BHARTI
42
November 21, 2007
1744678
bharthi (Device in blue)
41
October 17, 2008
1744680
bharthi (Device in blue)
37
October 17, 2008
1744686
bharthi (Device in blue)
29
October 17, 2008
1744691
bharthi (Device)
35
October 17, 2008
1744694
bharthi (Device in blue)
38
October 17, 2008
The Respondent is Bharti International Trade Co., and it has registered the disputed domain name on July 14, 1998. The website linked to the disputed domain name states that it is under construction. The parties were involved in a litigation before the High Court of Delhi, India, involving the disputed domain name, and the matter was settled in the year 2005. (The Complainant’s documents show the court decree ordered is a settlement agreement between the parties but the details of the terms of settlement have not been provided with the court decree). 5. Parties’ Contentions A. Complainant
The Complainant states that in 1976, Sunil Bharti Mittal and his family founded the Bharti Group. Over the period of four decades, the group has grown and diversified from manufacturing bicycles and telecom equipment to areas such as insurance and realty. The BHARTI trademark is not merely an umbrella mark for the group but is also part of its corporate name that is used by the various companies of the group, such as “Bharti Airitel”, “Bharti Axa” and “Bharti Infratel”. The Complainant states the mark has acquired immense goodwill and is exclusively associated with the Complainant due to its extensive use. As evidence, the Complainant has furnished screen shots of a Google search that predominantly reveals links to the Complainant and its group of companies. Screen shots of similar searches on other search engines, Yahoo and Bing, are also filed as evidence. Evidence of trademark registrations and applications in India and other countries and jurisdictions, and a list of its registered ownership of several Bharti formative domain names has also been filed.
Presently, the group’s business is valued in billions of dollars states the Complainant and it operations are spread over 23 countries primarily in Asia and Africa. It has partnered with some of the biggest businesses around the world such as Walmart in the retail business, Sing Tel, Qatar Foundation Endowment, IBM, Ericsson, Nokia, Siemens and Alcatel-Lucent in the telecom business, AXA in the insurance business and Del Monte Pacific in the food industry.
As further evidence of extensive use of the BHARTI mark in commerce, the Complainant has filed promotional material and coverage in various print magazines, newspapers featuring the BHARTI mark. The Complainant states it has also spent on marketing, advertising and promoting its mark and due to the high quality of services provided it has gained goodwill and reputation across the globe including India and is distinctive of the Complainant and its services. It claims both statutory and common law rights in the name and mark.
The Complainant states that it has from time to time taken action to protect the mark and provided some details of previous court actions and civil suits with respect to its trademarks and BHARTI formative marks. The Complainant states it has also filed UDRP cases to protect its marks and has cited about six such cases where it has prevailed as a complainant.
The Complainant requests the transfer of the disputed domain name based on the three elements of the Policy: that the disputed domain name is identical or confusingly similar to a mark in which the Complainant has rights, the Respondent has no rights or legitimate interests in the disputed domain name and the disputed domain name has been registered and is being used in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
The key elements that are required to be established by the Complainant to obtain the 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 that the disputed domain name is identical or confusingly similar to a trademark or a service mark in which it has rights.
The Complainant has provided sufficient evidence of its registered and common law trademark rights for the BHARTI marks. The Panel finds the Complainant’s registered trademark is entirely incorporated in the disputed domain name and it is sufficient to establish confusing similarity with its mark. The word “global” with the BHARTI mark in the disputed domain name does not detract from the confusing similarity with the mark.
Accordingly, the Panel determines that 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 it 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. The overall burden to show that the Respondent lacks rights or legitimate however rests with the Complainant (See paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Jurisprudential Overview 3.0”).
Under the paragraph 4(c) of the Policy, a non-exhaustive, exemplary list of circumstances sets out the manner in which a respondent may typically establish rights or legitimate interests in the disputed domain name; these are:
(i) Before notice of the dispute, the respondent’s use or demonstrable preparations to use, the disputed domain name or a name corresponding to the domain name in connection with a bona fide offering ofgoods or service; or
(ii) The respondent (as an individual, business or other organization) has been commonly known by the disputed domain name, even if the respondent has not acquired any trade or service mark rights.
(iii) The respondent is making legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain or to misleadingly divert customers or tarnish the trademark or service mark at issue.
The Panel finds that the Complainant has not made a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name. The material on record shows the Respondent had registered and used the disputed domain name in connection with a bona fide offering of goods and services prior to notice of the present dispute. This supports a finding under paragraph 4 (c)(i) of the Policy, that the Respondent has registered and used the disputed domain name for legitimate purposes, in connection with a legitimate business.
The Complainant has filed a report made by an investigation agency “Greves Protection Management (P) Ltd. (Greves Report). The subject of the Greves Report states it is an: “Investigation into the use of domain name by M/s Bharti International Trade Co. Delhi”, and is dated April 6, 2017. The Greves Report states that it carried out a web based and onsite investigation into the use of the domain name by M/s Bharti International Trade Co. in New Delhi, India.
As per the Greves report, analysis of the available archive records divulged that there was no active website under the disputed domain name for about the last ten years. The archive records of the domain name were checked, and revealed that the Respondent had a related company named Bharti Global Industries Private Limited. The address and contact details of the said company were the same as the registrant contact details of the disputed domain name. A company named ARCK Consultants Private Limited has a registered office at the same address with the same contact telephone numbers.
Further, under the “Findings” section of the Greves Report, it was found that the disputed domain name belongs to Mr. Anil Kohli. He is not doing any business from the disputed domain name. Mr. Anil Kohli is a director of a company named M/s Ecoware Industries Private Limited. The said company was originally incorporated under the name M/s Bharti Global Industries Private Limited. Mr. Kohli is the owner of an entity named “Ecoware Enterprises”, engaged in the export of rice, tea, spices etc. to CIS countries1 . Mr. Kohli had stated that the use of the disputed domain name had been discontinued about fifteen years ago. Before discontinuation, the disputed domain name had been used for about five years in connection with the export of rice, tea, spices etc. to CIS countries and he added that they had retained the disputed domain name as it was their prime domain name. Bharti International Trade Co. and Bharti Global Industries Private Limited are presently not engaged in any business activities. The said firms were engaged in the same business as that of “Ecoware Enterprises”. Bharti Global Industries Private Limited has changed its name to Ecoware Industries Private Limited on August 30, 2001.
The Panel finds, based on the findings in the Greves Report submitted by the Complainant, that the Respondent named in this proceeding, i.e., Bharti International Trade Co had registered and used the disputed domain name in connection with a bona fide export business. The Respondent’s lack of use of the disputed domain name at present does not change this. Neither does the subsequent change in the name of the Respondent’s business show any lack of legitimate interest in the disputed domain name.
The Complainant has made unsupported conclusory allegations and has not provided evidence that shows the Respondent has registered or used the disputed domain name for any activities considered not legitimate under the Policy, such as in typical cybersquatting cases. Accordingly, it is found that the Complainant has not fulfilled its burden under the second element of paragraph 4 (a) of the Policy that there is a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name. 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 Panel finds no inference of bad faith registration of the disputed domain name can be made in view of the facts and circumstances in the case. As discussed in the previous section, the Respondent has registered the disputed domain name for legitimate and bona fide purposes. The subsequent change of name of the Respondent’s business and non-use of the disputed domain name, in and of itself and under the discussed circumstances does not show bad faith.
The Complainant has not established that the disputed domain name was registered and is being used in bad faith. 7. Decision
For the foregoing reasons, the Complaint is denied.
Harini Narayanswamy
Sole Panelist
Date: June 16, 2017
1 Commonwealth of Independent States: CIS countries such as Russia, Azerbaijan, Uzbekistan, Belarus, Kazakhstan, Kyrgyzstan, Moldova, Tajikistan and Armenia.
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