The Complainant is CEAT Limited of Mumbai, India, represented by DePenning & DePenning, India.
The Respondent is Sharavanan Venkatesh of Chennai, India. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
(a) The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 28, 2018. On March 28, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 29, 2018, 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.
(b) 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”).
(c) In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 5, 2018. In accordance with the Rules, paragraph 5, the due date for response by the Respondent was April 25, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 30, 2018.
(d) The Center appointed Dr. Vinod K. Agarwal as the sole Panelist in this matter on May 31, 2018. 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
(a) The Complainant CEAT Limited is a public limited company, originally incorporated as CEAT Tyres of India Limited in 1958 under the provisions of the Indian Companies Act, 1956. The name of the Complainant was changed to CEAT Limited in 1990.
(b) The Complainant’s predecessor in interest and title, CEAT S.p.A. was established in the year 1924 in Turin, Italy. The word “CEAT” of the Complainant is acronym for “Cavi Electrici Affino Torino”, i.e. “Electric Cables and Allied Products Turin”. Thus, “CEAT” is an invented word by the predecessors of the Complainant.
(c) The principal activity of the Complainant is to manufacture different varieties of tyres for all kinds of automobiles and vehicles. In addition, the Complainant operates a dedicated customer service network for its consumers providing services including computerized alignment and balancing, nitrogen inflation, periodic tyre rotation, etc. Over the years, the operations of the Complainant have expanded to over 120 countries worldwide.
(d) In the past, the Complainant has also won a number of International Awards, such as, Reader’s Digest Trusted Brand Gold Award (2009); Employer Branding Award for Excellence in Training (2007-08); National Centre for Quality Calibration Distinguish Award (2006 and 2004), etc.
(e) The Complainant was established as a tyres manufacturer in India in the year 1958. Since then, the Complainant has manufactured huge quantity of tyres for all kinds of automobiles and vehicles. The products of the Complainant are used and consumed by a large number of users throughout India.
(f) As a part of its marketing campaign, the Complainant has also launched the CEAT Cricket Rating in 1995. In the year 1995-96 the Complainant launched CEAT International Cricket Rating Awards. It is a yearly event. In the year 1995-96 and in subsequent years a large number of the said Awards have been awarded to the best Cricket players of various countries of the world, including India.
(g) The Complainant is the owner of many CEAT trademark registrations in various jurisdictions including in India. See, e.g., Indian trademark number 604993, applied for on August 25, 1993.
(h) The disputed domain name was registered on December 27, 2017, and resolves to a registrar parking website displaying pay-per-click links, along with a link for the sale of the disputed domain name. 5. Parties’ Contentions A. Complainant
(a) The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are applicable to the present dispute.
(b) In relation to paragraph 4(a)(i) of the Policy, the Complainant contends that it is using the mark CEAT as its trade name, trademark and service mark. The trade/service mark CEAT of the Complainant has acquired distinctiveness and is a well-known trade/service mark associated solely and exclusively with the Complainant and its business. The use by any other person of the trade/service mark CEAT or any other phonetically, visually or deceptively similar mark would not only result in immense confusion and deception but would also be in violation of the Complainant’s right in the said trade/service mark. The services rendered by the Complainant under the trademark CEAT have acquired formidable goodwill and enviable reputation amongst the members of the trade, consumers and the public. Thus, the mark CEAT is directly associated with the Complainant.
(c) According to the Complaint, the Complainant is the registered proprietor of the trademark CEAT in over 120 countries, including United States of America, Canada, etc. It is stated that “CEAT Gomma Soc Per Az” and “CEAT S.p.A.” were the registered proprietors of the trademark CEAT since 1961. These rights were assigned to the Complainant in 1978. The worldwide registration rights for the trademark CEAT were held by CEAT S.p.A., which were subsequently assigned to Pirelli & C. S.p.A. The Pirelli & C. S.p.A. assigned worldwide rights in the trademark CEAT to the Complainant by an assignment in 2010.
(d) The Complainant has registered various trademarks containing the word CEAT in India. Some illustration of such trademarks are, CEAT, CEAT WITH RHINO & BORN TOUGH, CEAT SAMRAAT, CEAT ANMOL ALL TRACK, CEAT CRICKET RATING, CEAT SECURA, CEAT MILE-XL, CEAT CZAR, CEAT HUB, CEAR SHOPPE, etc. These trademarks are registered in different Classes, such as, 9, 12, 16, 35, 37, and 41. The particulars of registration of these trademarks including their registration numbers and the Classes in which they are registered have been stated in Annex 8 to the Complaint.
(e) The registration of the domain name by the Respondent is confusing inasmuch as it causes the public to believe that the Respondent is associated with the Complainant and also violates the Complainant’s trademark rights in the CEAT trademark. Thus, the intention of the Respondent is to create confusion in the market.
(f) The Complainant is also an owner of a number of domain names containing its trademark CEAT. Some illustrations of such domain names are as follows: , , , , , , , , , etc.
(g) The Complainant has further contended that the addition or suffix of the word “group” in the disputed domain name will not make any difference. It is not sufficient enough to distinguish and differentiate the disputed domain name with the registered trademark of the Complainant. It adds to the confusion. Therefore, the disputed domain name registered by the Respondent is confusingly similar to the Complainant’s trademark CEAT.
(h) In support of its contentions, the Complainant has relied on the decision in an earlier UDRP case of CEAT Limited v. Vertical Axis Inc., / Whois Privacy Services Pty. Ltd.,WIPO Case No. D2011-1981 the Complainant’s rights in the CEAT trademark were recognized and the domain name was transferred to the Complainant.
(i) Therefore, the disputed domain name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights.
(j) In relation to paragraph 4(a)(ii) of the Policy, the Complainant contends that the Complainant’s trademark CEAT has become highly distinctive of the goods and services of the Complainant on account of extensive use, viewership and promotion. Further that, the Respondent is in no way related to the Complainant. The Complainant has not licensed or otherwise permitted or granted to the Respondent an authorization or a right to use its trademark or to apply for or use the domain name incorporating the mark and that nobody would use the word “Ceat” unless seeking to create an impression of an association with the Complainant, The disputed domain name is well-known and directly connected with the Complainant.
(k) The act of the Respondent constitutes infringement/passing off of trademark of the Complainant. The Respondent registered the disputed domain name for the sole purpose of creating confusion and misleading the general public and the customers of the Complainant. Thus, it is contended that there were no legitimate rights or interests of the Respondent in the disputed domain name.
(l) Regarding paragraph 4(a)(iii) of the Policy, the Complainant contends that the disputed domain name was registered in bad faith and with an ill-motive to gain unfair commercial advantage, at the expense of the Complainant. The Respondent is only trying to usurp the reputation and goodwill of the Complainant’s trade/service mark CEAT through the disputed domain name. The Respondent has not made any legitimate offering of goods or services under the Complainant’s trade/service mark CEAT through the disputed domain name.
(m) Further, main object of registering the disputed domain name by the Respondent is to attract Internet users, for commercial gain to its website, by creating a likelihood of confusion with the Complainant’s trade/service mark CEAT as to the source, sponsorship, affiliation or endorsement of the website. Therefore, the Respondent is using the disputed domain name in bad faith.
(n) Further, domain names are fast emerging corporate assets and have evolved as a fulcrum of a company’s visibility and marketing operations. Business transactions are primarily being carried out only through Internet addresses rather than street addresses or post boxes or even faxes. Hence, it becomes critical that unscrupulous individuals are not allowed to usurp well-known trademarks and domain names to unfairly benefit from such act.
(o) In support of its contentions, the Complainant has relied on the decisions in the cases of Research in Motion Limited v. Privacy Locked LLC/Nat Collicot,WIPO Case No. D2009-0320; SembCorp Industries Limited v. Hu Huan Xin,WIPO Case No. D2001-1092; Oberoi Hotels v. Arun Jose,WIPO Case No. D2000‑0263 and Parfumes Christian Dior v. Javier Garcia and C,WIPO Case No. D2000‑0226wherein it has been held that a respondent could not ignore the existence of well-known trademarks at the time of registering a domain name. Further that, the registration of a domain name in the name of a famous trademark, of which the respondent has knowledge, may in any case, be considered strong support evidence of bad faith. B. Respondent
(p) The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
(a) Paragraph 15(a) of the Rules instructs this Panel as to the principles the Panel is to use in rendering its decision. It says that, “A panelist shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
(b) According to paragraph 4(a) of the Policy, the Complainant must prove that:
(i) The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) The domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
(c) According to the information submitted by the Complainant, the Complainant is the owner of trademark CEAT. The trademark CEAT is registered in certain countries of the world for the last many years. The said expression “CEAT” by itself and combined with certain other words is also registered as trademarks in India in various Classes. The word “CEAT” was registered in Class 12 (Pneumatic Tyres for Vehicle Wheels) with the Trademark Registry of India under number 204251 on August 17, 1961 and duly renewed thereafter.
(d) The present dispute pertains to the domain name . The Complainant is the owner of the trademark CEAT. The disputed domain name is very much similar to the trademark of the Complainant, merely adding the word “group” to the Complainant’s trademark. Such an addition does not avoid a finding of confusing similarity.
(e) Therefore, the Panel holds that the disputed domain name is confusingly similar to the trademarks of the Complainant. B. Rights or Legitimate Interests
(f) According to paragraph 4(c) of the Policy, a respondent may demonstrate its rights to or legitimate interest in a domain name by proving any of the following circumstances:
(i) before any notice to the respondent of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) The respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
(g) The Respondent has not filed any Response in this case. There is no evidence to suggest that the Respondent has become known by the disputed domain name anywhere in the world. The Respondent is known by the name of “Sharavanan Venkatesh”. The Complainant has not authorized the Respondent to use the name or trademark CEAT. Further no information is available whether the Respondent has filed any application for the registration of the mark CEAT anywhere in the world.
(h) It is evident that the Respondent can have no legitimate interest in the disputed domain name. Further, in view of the fact that the Complainant has not licensed or otherwise permitted the Respondent to use its trademark or to apply for or use the domain name incorporating the trademark and that nobody would use the word “CEAT” unless seeking to create an impression of an association with the Complainant. Further, the Respondent’s display of the webpage when considered in its entirety does not constitute bona fide offering of goods and services.
(i) The use of the disputed domain name by the Respondent does not amount to the bona fide offering of goods or services. Based on the Respondent’s default and the evidence in the Complaint, the Panel finds that none of the circumstances foreseen in paragraph 4© of the Policy exist in this case and that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
(j) Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration or use of the domain name in bad faith:
(i) Circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that the complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or
(ii) The respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that it has engaged in a pattern of such conduct; or
(iii) The respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) By using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.
(k) The Complainant contends that the domain name was registered or acquired primarily for the purpose of misleading the customers of the Complainant. The Respondent is not making a noncommercial or fair use of the disputed domain name. It also appears that the Respondent has also offered the disputed domain name for sale on a website. The disputed domain name is being used with the intent of wrongful commercial gains within the meaning of paragraph 4(b)(i) and 4(b)(iv) of the Policy. This and other information submitted by the Complainant leads to the presumption that the disputed domain name is registered and used by the Respondent in bad faith.
(l) Therefore, the Panel agrees with the said contention of the Complainant and concludes that the registration of the disputed domain name amounts to the registration and use of the domain name in “bad faith”. Paragraph 4(a)(iii) of the Policy is satisfied. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and Rule 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
Vinod K. Agarwal
Sole Panelist
Date: June 11, 2018
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