The Complainant is Quadrific Media Private Limited of Mumbai, India, represented by Wadia Ghandy & Co., India.
The Respondent is Rajat Agarwal of Mumbai, India, represented by Anand & Anand, India, and Sinha & Company, Advocates, India. 2. The Domain Name and Registrar
The disputed domain name (“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 April 12, 2017. On April 13, 2017, the Center notified the Complainant that the Complaint was deficient. On May 29, 2017, the Complainant filed submissions to rectify this deficiency. On May 30, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On May 31, 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 June 14, 2017. In accordance with the Rules, paragraph 5, the due date for Response was July 4, 2017. On June 22, 2017, the Respondent requested an extension of two weeks to file the Response. On the same date, the Center invited the Complainant to submit any comments on this request by the end of June 26, 2017. The Center did not receive any such comments from the Complainant. Under the circumstances of this case, the Center granted the extension of time to file a Response until July 18, 2017. The Response was filed with the Center on July 18, 2017.
The Center appointed Gabriela Kennedy, Vinod K. Agarwal, and Tony Willoughby as panelists in this matter on August 16, 2017. The Panel finds that it was properly constituted. Each member of 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 was established in India on March 20, 2014, and provides online entertainment services. The Complainant applied for the registration of the SPARTAN POKER trade mark and SPARTAN POKER device mark in India in September 2014. Such trade mark applications are still pending.
The Respondent is an individual based in India. The Disputed Domain Name was acquired by the Respondent on July 9, 2014. 5. Parties’ Contentions A. Complainant
The Complainant’s contentions can be summarized as follows:
(a) The Complainant holds unregistered rights in the SPARTAN POKER trade mark, which it claims to have continuously used since March 2014. It has generated goodwill in relation to it, and has incurred expenses to advertise and promote the SPARTAN POKER trade mark in relation to its business. The Complainant also applied to register the SPARTAN POKER trade mark and other related marks in India on September 4, 2014. These are still pending registration. The Disputed Domain Name incorporates the SPARTAN POKER trade mark in its entirety and is therefore identical to it.
(b) The Complainant asserts that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The Respondent does not own the SPARTAN POKER trade mark and is not known in the market as “Spartan Poker”. The Disputed Domain Name does not correspond to a company name or product of the Respondent, and the Respondent has not used it in relation to his services. The Respondent was an employee/director of the Complainant, but did not have any legitimate interest in the Disputed Domain Name. After disputes arose between the Complainant and Respondent, the Respondent blocked the Disputed Domain Name. The Complainant sought to remove the Respondent as a director of the Complainant, but the Respondent obtained an interim injunction against such removal from the Calcutta High Court in India.
(c) The Complainant alleges that a shareholder and director of the Complainant had conceptualized the SPARTAN POKER trade mark to be used in connection with its online poker business, and had sought to acquire the Disputed Domain Name on behalf of the Complainant. However, due to an issue with the director’s credit card, he could not complete the acquisition. At the Complainant’s request, the Respondent therefore acquired the Disputed Domain Name for / on behalf of the Complainant. The Complainant subsequently used the Disputed Domain Name for its online poker business.
(d) In or around August 2016, the Complainant detected financial irregularities in its Mumbai office, and claims that the Respondent was involved in fraud and embezzlement. The Complainant sought to remove the Respondent as a director of the Complainant. The Respondent blocked the Disputed Domain Name in bad faith to prevent the Complainant from accessing and using it, which disrupted the Complainant’s business. The Complainant has issued court proceedings against the Respondent in India to try and prevent him from carrying on any online poker business using the same trade name and trade marks as the Complainant. The Complainant obtained an interim injunction against the Respondent preventing him from carrying on any online poker business using the word “Spartan”, or other similar derivatives. B. Respondent
The Respondent’s contentions can be summarized as follows:
(a) The Disputed Domain Name forms the subject matter of a pending civil suit in India. The Respondent submits that the issues concerning the rights and ownership of the Disputed Domain Name are ancillary to larger complex issues being determined in the civil suit, including an alleged breach of the terms of a joint venture between the Parties, alleged fiduciary duty, ownership of the SPARTAN POKER trade mark and the removal of the Respondent as a director of the Complainant. The Respondent therefore requests that the Panel exercises its powers under paragraph 18(a) of the Rules and terminate the current proceedings.
(b) The Respondent is the co-founder and CEO of the brand “PokerGuru”, which has gained substantial goodwill. The Complainant and Respondent decided to set up a joint venture concerning online poker in India in 2014, the terms of which are set out in an email dated June 22, 2014, sent by a director of the Complainant to the Respondent. The Respondent allegedly suggested to the Complainant that the SPARTAN POKER mark be used in relation to the joint venture. The Respondent claims that all costs and charges incurred in order to design the SPARTAN POKER device mark were incurred by the Respondent.
(c) The Respondent acquired the Disputed Domain Name on July 9, 2014 for the purposes of the joint venture. The Respondent spent time and money to develop the business of the joint venture, and helped to conceptualize and design the website to which the Disputed Domain Name resolved. A marketing strategy was adopted by the Respondent to promote the Disputed Domain Name, the SPARTAN POKER trade mark and the related business. The website to which the Disputed Domain Name resolved featured both the brands of the Respondent and the Complainant. The Complainant acknowledged the Respondent’s rights in relation to the joint venture by disbursing profits and dividends to him.
(d) The Respondent has initiated opposition proceedings against the Complainant’s applications for registration of the SPARTAN POKER trade mark and other related marks in India. The Respondent also subsequently filed applications for the registration of the SPARTAN POKER trade mark in India. The Respondent therefore maintains that he has rights in the Disputed Domain Name and the SPARTAN POKER trade mark.
(e) The Respondent asserts that he has rights and legitimate interests in the Disputed Domain Name as it was used to conduct the business of the joint venture entered into between the Parties, and all goodwill accruing to the business is shared equally between the Respondent and Complainant. Many articles refer to the Respondent as the co-founder of the joint venture business being operated under the SPARTAN POKER trade mark and Disputed Domain Name. The Respondent disputes the Complainant’s accusations of fraud and embezzlement on the part of the Respondent. Following the termination of the joint venture, the Respondent has not launched a competing business in relation to the SPARTAN POKER brand. 6. Respondent’s Request for Termination
The Respondent has submitted a request for the termination of these proceedings in accordance with paragraph 18(a) of the Rules, on the basis that the Disputed Domain Name forms part of a pending civil action in India.
Paragraph 18(a) of the Rules provides that “in the event of any legal proceedings initiated prior to or during an administrative proceeding in respect of a domain-name dispute that is the subject of the complaint, the Panel shall have the discretion to decide whether to suspend or terminate the administrative proceeding, or to proceed to a decision”.
As noted in paragraph 4.14.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, panels “generally issue a UDRP decision on the merits even in an overlapping court-UDRP proceeding scenario where, notwithstanding the fact that a UDRP decision would not be binding on the court”.
The Panel acknowledges that there is an ongoing dispute and court proceedings between the Parties regarding an alleged joint venture between the Parties, trade mark rights and allegations of misconduct. The Disputed Domain Name is only an ancillary matter to such ongoing civil action.
The Panel finds that it is able to make a determination in these proceedings based on the UDRP principles, without needing to go into an in-depth analysis of the surrounding dispute and other legal issues, which would be beyond the Panel’s remit. Therefore, the Respondent’s request for termination of these administrative proceedings is denied. 7. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant is required to prove each of the following three elements:
(i) the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(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 by the Respondent in bad faith. A. Identical or Confusingly Similar
The Complainant applied for the registration of the SPARTAN POKER trade mark and other related marks in India on September 4, 2014. The trade mark applications are still pending. The Complainant contends that it has unregistered rights in the SPARTAN POKER trade mark by virtue of its use of the mark in connection with the provision of online gaming services.
It is well established that the Policy protects rights in unregistered marks (see Seek America Networks Inc. v. Tariq Masood,WIPO Case No. D2000-0131; Imperial College v. Christopher Dessimoz,WIPO Case No. D2004-0322). Having considered the evidence submitted by the Complainant, the Panel accepts that the Complainant can claim rights in SPARTAN POKER. Whether or not the Respondent also has rights in the SPARTAN POKER trade mark is irrelevant for the purposes of this first limb.
The Disputed Domain Name incorporates the Complainant’s unregistered trade mark in its entirety. It is a well-established principle that in making an enquiry as to whether or not a trade mark is identical or confusingly similar to a domain name, the generic Top-Level Domain, in this case “.com”, may be disregarded (Rohde & Schwarz GmbH & Co. KG v. Pertshire Marketing, Ltd.,WIPO Case No. D2006-0762).
The Panel therefore finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
In light of the Panel’s findings under the third element below, it is unnecessary for the Panel to consider whether or not the Respondent has any rights or legitimate interests in respect of the Disputed Domain Name. C. Registered and Used in Bad Faith
In order to satisfy the third limb, the Complainant must prove both registration and use in bad faith; the Complainant cannot succeed if it cannot establish both.
The Complainant in no way makes any allegation of bad faith registration on the part of the Respondent. In fact, the Complainant admits in the Complaint that the Respondent had registered the Disputed Domain Name at the request of the Complainant: “The Respondent on behalf of the Complainant and whilst he was acting for the Complainant, made the aforementioned application for the registration of the [Disputed Domain Name], solely for the purpose of using it for the Complainant’s website for its online business. That the Respondent was acting at the behest of the Complainant is evident from a perusal of various email addressed by him to third parties.”
On this basis, it is clear that the Respondent registered the Disputed Domain Name in good faith, as such was done at the request and with the consent of the Complainant for the purposes of the Spartan Poker business.
With regard to determining whether the Respondent registered the Disputed Domain Name in good faith, there is no need for the Panel to consider any subsequent dispute that arose between the Parties or who owns the intellectual property rights in the Disputed Domain Name. What is important to consider is the Respondent’s intention at the time he registered the Disputed Domain Name, and it is clear that the Respondent acted in good faith by registering the Disputed Domain Name.
The Panel finds that the Complainant has failed to establish paragraph 4(a)(iii) of the Policy. 8. Decision
For the foregoing reasons, the Complaint is denied.
Gabriela Kennedy
Presiding Panelist
Vinod K. Agarwal
Panelist
Tony Willoughby
Panelist
Date: August 31, 2017
Full & Egal Universal Law Academy