The Complainant is Hero InvestCorp Private Limited of Ludhiana, India, represented by Lall Lahiri & Salhotra, Advocates Patent and Trademark Attorneys, India.
The Respondent is Muzzafar Hussain Barchiwale of Hubli, 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 October 5, 2017. On October 9, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 10, 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 October 16, 2017. In accordance with the Rules, paragraph 5, the due date for Response was November 5, 2017. On October 20, 2017, the Center received an email communication from the Respondent. On November 6, 2017, the Center informed the Parties that it would proceed with panel appointment.
The Center appointed Ashwinie Kumar Bansal as the sole panelist in this matter on November 22, 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 company registered under the Companies Act, 1956 and a part of the HERO group of companies. The Complainant is the owner of the trademarks HERO and HERO GROUP.
The disputed domain name was registered by the Respondent on September 18, 2016. The disputed domain name resolves to a GoD, LLC (“GoDaddy”) registrar parking page. 5. Parties’ Contentions A. Complainant
The Complainant is a company organized and existing under the Companies Act, 1956 in India. It was incorporated on December 4, 1981 inter alia with the objective to apply for, register, own, develop, create, purchase or by other means acquire and protect, prolong and renew any trademark, patents, copyrights, industrial designs, trade secrets, confidential information or any other intellectual property rights, etc. It is a part of the HERO group of companies, the earliest of which was established in the 1950s for the manufacture and sale of bicycles and parts thereof. The group companies are engaged in diverse business activities including but not limited to financial solutions, insurance, investments, planning, advisory, execution and monitoring of investments, manufacture and sale of automobiles, parts and fittings.
The word HERO forms the forepart and most distinguishing feature of the Complainant’s corporate name and trading style and the name of some of the Complainant’s other group companies, all of whom are using the name HERO with the permission of the Complainant. One of the Complainant’s group companies is named Hero Housing Finance Limited, which was incorporated on June 16, 2016. The said group company of the Complainant is authorized by the Complainant to use the mark HERO. In the year 1984 as a part of reorganization of its group companies, the Complainant became the owner of the trademarks HERO and HERO GROUP. All the other group companies of the Complainant are using the trademark, trade name or domain name HERO under license and / or authority from the Complainant.
The Complainant is the proprietor of the trademark HERO either by itself or in conjunction with other words, devices or logos in India and several jurisdictions of the world including Afghanistan, Algeria, Angola, Argentina, Australia, Austria, Bahamas, Bahrain, Bangladesh, Benin, Bermuda, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), Cambodia, Canada, China, Egypt, France, Germany, Hong Kong, China, Indonesia, Japan, Malaysia, Mexico, New Zealand, Pakistan, Portugal, Republic of Korea, Scotland (United Kingdom), South Africa, Spain, Switzerland, Thailand, the United Arab Emirates, United Kingdom, Viet Nam, Zimbabwe, etc. The trademark registrations are valid and give the Complainant exclusive rights to use the same in respect of goods and services for which they are registered. Apart from the aforesaid trademark registrations, there are several applications pending in various classes for the trademark HERO and HERO-formative marks in the name of the Complainant.
The trademark HERO is well-known and enjoys goodwill and reputation of international character through publicity, dissemination of knowledge and information about the mark and products and services traded. The Complainant has, since its incorporation, spent millions of dollars on the publicity of their goods and sales promotion activities. As a result of such expenditure in terms of time, money and effort, the mark HERO today has become synonymous with the products and services of the Complainant.
The Respondent herein has registered the disputed domain name .
The Respondent has no rights or legitimate interests in the disputed domain name. The registration and use of the disputed domain name by the Respondent confuses the public to believe that he is associated with the Complainant in some manner, and such use violates the Complainant’s trademark rights.
The disputed domain name is similar to the Complainant’s trademark as the disputed domain name encapsulates the entire trademark HERO of the Complainant within its domain name in addition to incorporating the corporate name of group company Hero Housing Finance Limited. Adoption of the trademark in the disputed domain name is likely to lead the public to believe that the Complainant is connected with it. The Complainant requests the transfer of the disputed domain name. B. Respondent
The Respondent had sent an email on October 20, 2017 to the Center stating that the disputed domain name belongs to him and he will renew the same. But he did not file a Response to the (allegations made in the) Complaint. 6. Discussion and Findings
As per paragraph 5(e) of the Rules where a respondent does not submit a response, in the absence of exceptional circumstances, the panel may decide the dispute based upon the Complaint. The Panel does not find any exceptional circumstances in this case preventing it from determining the dispute based upon the Complaint, notwithstanding the failure of the Respondent to file a response. As per paragraph 14(b) of the Rules, where a party does not comply with any provision of the Rules, the Panel is to draw such inferences there from as it considers appropriate. It remains incumbent on the Complainant to make out its case in all respects under paragraph 4(a) of the Policy, which sets out the three elements that must be present for the proceeding to be brought against the Respondent, which the Complainant must prove to obtain a requested remedy. It provides as follows:
“4(a). Applicable Disputes. You are required to submit to a mandatory administrative proceeding in the event that a third party (a “complainant”) asserts to the applicable Provider, in compliance with the Rules of Procedure, that
(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.
In the administrative proceeding, the complainant must prove that each of these three elements are present.”
The Panel will address the three aspects of the Policy listed above. A. Identical or Confusingly Similar
The Complainant has produced registration certificates granted by the Registrar of Trade Marks, in its favour in respect of the trademark HERO, including Indian Trademark No. 235780, with an application date of June 13, 1966 and with a trademark certificate dated May 15, 1970, and Trademark No. 605247, with an application date of August 26, 1993 and with a trademark certificate dated January 17, 2005. The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) section 1.7 provides the consensus view of panelists: “While each case is judged on its own merits, in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.”
The Respondent has registered the disputed domain name wholly incorporating the Complainant’s trademark HERO and also the corporate name of one of the Complainant’s group companies, Hero Housing Finance Limited, which the Panel finds is sufficient to establish confusing similarity for the purpose of the Policy.
The Panel finds that the disputed domain name is confusingly similar to the trademark HERO. B. Rights or Legitimate Interests
The Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in the disputed domain name . Nevertheless, it is well settled that the Complainant needs only to make out a prima facie case, after which the burden of production shifts to the Respondent to rebut such prima facie case by demonstrating rights or legitimate interests in the disputed domain name.
The Respondent has registered the disputed domain name consisting of the trademark HERO. The Complainant and its group companies had been using the trademark for a long time. The Complainant has not authorized or permitted the Respondent to use the trademark HERO.
Paragraph 4(c) of the Policy lists circumstances, in particular but without limitation, which, if found by the Panel to be proved, may demonstrate the respondent’s rights or legitimate interests in a disputed domain name for the purposes of paragraph 4(a)(ii) of the Policy. Section 2.1 of WIPO Overview 3.0 provides: “While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of ‘proving a negative’, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”
The Respondent has failed to file a response to rebut the Complainant’s prima facie case or to explain how the disputed domain name’s resolution to a GoDaddy parking page supports the Respondent’s rights or legitimate interests. See section 2.9 of WIPO Overview 3.0. The Respondent has thus failed to demonstrate any rights or legitimate interests in the disputed domain name as per paragraph 4(c) of the Policy.
Based on the facts as stated above, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name . C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy identifies, in particular but without limitation, four circumstances which, if found by the Panel to be present, shall be evidence of the registration and use of the disputed domain name in bad faith. Each of the four circumstances in paragraph 4(b) of the Policy, if found, is evidence of “registration and use of a domain name in bad faith”. The Complainant is required to prove both that the disputed domain name was registered in bad faith and that it is being used in bad faith. Hence, circumstances at the time of registration and thereafter have to be considered by the Panel.
Section 3.1.1 of WIPO Overview 3.0 provides: “If on the other hand circumstances indicate that the respondent’s intent in registering the disputed domain name was in fact to profit in some fashion from or otherwise exploit the complainant’s trademark, panels will find bad faith on the part of the respondent. While panel assessment remains fact-specific, generally speaking such circumstances, alone or together, include: (i) the respondent’s likely knowledge of the complainant’s rights, (ii) the distinctiveness of the complainant’s mark, (iii) a pattern of abusive registrations by the respondent, (iv) website content targeting the complainant’s trademark, e.g., through links to the complainant’s competitors, (v) threats to point or actually pointing the domain name to trademark-abusive content, (vi) threats to “sell to the highest bidder” or otherwise transfer the domain name to a third party, (vii) failure of a respondent to present a credible evidence-backed rationale for registering the domain name, (viii) a respondent’s request for goods or services in exchange for the domain name, (ix) a respondent’s attempt to force the complainant into an unwanted business arrangement, (x) a respondent’s past conduct or business dealings, or (xi) a respondent’s registration of additional domain names corresponding to the complainant’s mark subsequent to being put on notice of its potentially abusive activity.”
The Complainant has produced evidence of registration of the trademark HERO in its favour given by the Trademark Registry. The Respondent has registered the disputed domain name recently on September 18, 2016 incorporating in it the trademark HERO of the Complainant (and the corporate name of one of the Complainant’s group companies). The disputed domain name also resolves to a GoDaddy parking page with links related to housing finance, one of the Complainant’s areas of practice. In view of these facts, use of the trademark in the disputed domain name is likely to cause confusion as to source, sponsorship, or affiliation, which constitutes bad faith registration and use under paragraph 4(b)(iv) of the Policy.
The Respondent has also listed the disputed domain name for sale for USD 29,000. The Complainant has not granted the Respondent permission or a license of any kind to use its trademark and register the disputed domain name . Such unauthorized registration and listing of the trademark for sale for USD 29,000 by the Respondent suggests opportunistic bad faith. The Respondent’s true purpose in registering and using the disputed domain name which incorporates the entire trademark of the Complainant is, in the Panel’s view, to capitalize on the reputation of the trademark.
The Panel therefore finds that the disputed domain name has been registered and is being used by the Respondent 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.
Ashwinie Kumar Bansal
Sole Panelist
Date: December 2, 2017
Full & Egal Universal Law Academy