The Complainant is Bharti Airtel Limited of New Delhi, India, represented by Inttl Advocare, India.
The Respondent is Domain Admin, c/o ID#10760, Privacy Protection Service INC d/b/a PrivacyP of Nobby Beach, Queensland, Australia / Sanjay Kumar, North Infra Tel India Ltd of Bihar, India. 2. The Domain Name and Registrar
The disputed domain name is registered with ZNet Technologies Pvt Ltd. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 8, 2017. On May 8, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 9, 2017, 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 May 18, 2017, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on May 23, 2017.
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 May 31, 2017. In accordance with the Rules, paragraph 5, the due date for Response was June 20, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 21, 2017.
The Center appointed Harini Narayanswamy as the sole panelist in this matter on June 29, 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 a leading telecommunications provider and offers its services under the trademark AIRTEL. The Complainant has operations in about twenty countries across Asia and Africa. A list of registered AIRTEL and AIRTEL formative marks along with copies of trademark registration certificates has been filed by the Complainant. Given here is an illustrative list of some of the Indian registered trademarks for the AIRTEL mark owned by the Complainant. Registration Number Trademark Class Registered with Effect From
828306
AIRTEL GOOD MORNING DELHI
9
November 19, 1998
896532
AIRTEL SMARTNET (word)
9
July 1, 2000
904078
AIRTELINK
9
February 17, 2000
934131
AIRTEL SMART NET
9
June 23, 2000
954260
AIRTEL Direct (word)
9
September 8, 2000
1256043
AIRTEL
38
December 18, 2003
1401344
AIRTEL3G
9
November 25, 2005
1401346
AIRTELTHREE
9
November 25, 2005
1491630
AIRTEL MUSIC SEARCH
38
September 27, 2006
1623142
AIRTEL
41
November 21, 2007
2022313
Airtel with device
38
September 14, 2010
2022314
Airtel with device
41
September 14, 2010
The international registrations for the AIRTEL mark, as per details provided by the Complainant are: Registration Number Trademark Class Registered with Effect From
3625337 US
AIRTEL
38
May 26, 2009
006545362 OHIM
AIRTEL
38, 41, 42
April 15, 2008
301030922 Hong Kong
AIRTEL (Logo)
38
January 14, 2008
T080242E Singapore
AIRTEL (Logo)
38
February 20, 2008
41687 Ghana
AIRTEL (Logo) (White and red)
38
October 22, 2010
0069547 Kenya
AIRTEL(Logo)
36, 38
October 25, 2010
01820, 01822
Malawi
AIRTEL (Logo)
9, 25
October 22, 2010
19056
Sierra Leone
Airtel
8
April 8, 2010
542
Tanzania Mainland
Airtel (Logo)
38
November 26, 2011
1958
Zambia
AIRTEL (Logo) (White and red)
38
October 22, 2010
65073
OAPI
Airtel
38
July 6, 2010
11939
Madagascar
Airtel (Logo)
38
August 16, 2011
The Respondent’s name is Sanjay Kumar, and according to the records, the Respondent is located in the state of Bihar, India. The Respondent has registered the disputed domain name on April 4, 2017. The Respondent used the services of Privacy Protection Service INC d/b/a PrivacyP of Australia, to hide his identity. 5. Parties’ Contentions A. Complainant
The Complainant states that it is ranked among the top three mobile service providers globally, in terms of subscribers. The Complainant states that as of May 2016, its subscriber base was over 361 million customers. The Complainant states that its product offerings include 2G, 3G and 4G wireless services, mobile commerce, fixed line services, high speed DSL broadband, IPTV, DTH and enterprise services.
The Complainant states that the AIRTEL mark was conceived, invented, coined and adopted in the year in 1994. The Complainant argues that its mark is not a dictionary word but is a coined term, therefore the AIRTEL mark is entitled to a high degree of protection.
The Complainant states it has spent extensively on marketing, advertising and promoting its mark. Due to the quality of services that it provides, the Complainant states that its mark has gained goodwill and reputation not merely in India but across the globe. As the mark is distinctive of the Complainant and its services, the Complainant claims both statutory and common law rights in the AIRTEL mark.
The Complainant states that it has from time to time taken legal action for protecting the mark and has provided details of some previous court actions and civil suits that it had initiated with respect to its trade marks. The Complainant states it has also filed UDRP cases to protect its mark, among these are theWIPO Case No. 2010-0524, pertaining to the domain name andWIPO Case No. D2013-1638 pertaining to the domain names , , and , where the proceedings were terminated due to the respondent in that case agreeing to transfer the disputed domain names to the Complainant.
The Complainant requests for transfer of the disputed domain name based on the three elements of the Policy, paragraph 4(a): that the disputed domain name is identical or confusing 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 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 provided details of its registered ownership for multiple AIRTEL marks in India and in several jurisdictions. Trademark registration is prima facie evidence or proof of rights in a mark. A registered trademark is a clear indication that the rights in the mark shown on the trademark certificate belongs to its respective owner. See Advance Magazine Publishers Inc., Les Publications Conde Nast S.A v. Voguechen,WIPO Case No. 2014-0657 (). Accordingly, it is found that the Complainant has rights in the AIRTEL mark.
The Complainant has additionally filed material that shows its common law trademark rights for the AIRTEL mark. The Panel finds, based on the evidence, that the AIRTEL mark is widely known due to the substantial and continuous use of the mark in commerce by the Complainant. Furthermore, the Panel notes that the Complainant has prevailed in several previous domain names cases where the AIRTEL mark has been targeted by cybersquatters. All the evidence collectively establishes, that the Complainant has enforceable rights in the AIRTEL trademark.
The Panel finds the entire AIRTEL trademark is replicated in the disputed domain name and this is sufficient to find confusing similarity with the mark. The words “mobile” and “tower” in disputed domain name, does not lessen the confusing similarity, as the crucial part of the domain name is the AIRTEL trademark. The use of the AIRTEL mark, by a person not associated with the Complainant, is likely to mislead and create confusion among the public. An unwary customer or person that comes across the disputed domain name, is likely to assume that it is associated with the Complainant due to the use of the AIRTEL trademark in the disputed domain name.
It is therefore found, that the disputed domain name is confusingly similar to a mark in which the Complainant has rights. The Complainant has successfully established the first requirement under paragraph 4(a) of the Policy. 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 to establish rights in the disputed domain name, the Complainant is deemed to have satisfied the second element under paragraph 4(a) of the Policy (See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”) Section 2.1.
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 Complainant has argued that the Respondent’s registration of the disputed domain name falsely represents that there is a nexus between the Complainant and the Respondent. The Complainant further argues, that the Respondent by registering the disputed domain name seeks to invite applications for installation of AIRTEL mobile towers. In doing so, the Respondent is likely to obtain personal information and official documentation; such as proof of identity from people showing interest in the installation of AIRTEL mobile towers, states the Complainant. The Complainant argues, that such use of its mark by the Respondent, would be fraudulent use. The Complainant has further argued that the Respondent’s intent of registering the disputed domain name, is to mislead and divert consumers from the Complainant’s website , and the Respondent thereby seeks to earn illegal gains. The Complainant further states that the Respondent has no credible rights to do so, as the Respondent has no business connection with the Complainant or any approval or consent from the Complainant to use its AIRTEL mark.
The Respondent has not filed a response and therefore has not refuted the allegations made by the Complainant in these proceedings. The Panel finds based on the unrebutted submissions made by the Complainant, that the Respondent has registered the disputed domain name to exploit the fame and reputation associated with the Complainant’s mark. Such use of the disputed domain name is not bona fide use and does not give rise to any legitimate rights or interests in favor of the Respondent. Particularly, as the Respondent has no authorization from the Complainant to use the AIRTEL trademark, which is widely associated with the Complainant and its business.
Accordingly, it is found that the Complainant has successfully made a prima facie case that the Respondent lacks rights and 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.
As discussed in the previous section, it is likely to be widely assumed by the public and Internet users that the trademark used in the disputed domain name, is associated with the Complainant or is sponsored, affiliated with or endorsed by the Complainant. Under the circumstance, where the Respondent has used the Complainant’s mark in the disputed domain without any authorization, a likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant’s site to the Respondent’s site (see E, Inc v. Triple E Holdings Limited,WIPO Case No. D2006-1095).
The Respondent by registering the disputed domain name has tried to create a false association with the Complainant’s mark and seeks to exploit the goodwill associated with the AIRTEL mark. Such registration and use of the disputed domain name by the Respondent, who is not the legitimate owner of the trademark, is recognized as bad faith registration and use of the disputed domain name under the Policy and supports a finding of bad faith registration and use under paragraph 4(b)(iv) of the Policy.
Additional inference of the Respondent’s bad faith can be drawn from the Respondent’s use of a privacy protection service, under the circumstances discussed.
Based on the findings, the Panel concludes 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. 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: July 6, 2017
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