The Complainant is HSIL Limited of Kolkata, West Bengal India, represented by Manav Gupta, India.
The Respondent is Reed Mueller, Domain Recovery of San Clemente, California, United States of America ("United States"), self-represented. 2. The Domain Name and Registrar
The disputed domain name (the "Disputed Domain Name") is registered with Moniker Online Services, LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 4, 2018. On June 4, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On June 5, 2018, 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 June 5, 2018, 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 June 10, 2018. In response to a request for clarification sent by the Center, the Complainant filed an amendment to the amended Complaint on July 2, 2018.
The Center verified that the Complaint together with the amended Complaint and the amendment to 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 July 12, 2018. In accordance with the Rules, paragraph 5, the due date for Response was August 1, 2018. The Response was filed with the Center on August 1, 2018.
The Center appointed John Swinson as the sole panelist in this matter on August 17, 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
The Complainant is a company incorporated in India. The Complainant is in the business of manufacturing sanitary ware products and kitchen appliances. The Complainant owns several registered trade marks for HINDWARE in stylised form, the earliest of which is Indian registered trade mark number 529823, registered on May 16, 1990 (the "Trade Mark").
The Complainant named three respondents in the Complaint – Moniker Online Services, Reed Mueller and a second individual. Moniker Online Services is the Registrar with which the Disputed Domain Name was registered. The Complainant has provided evidence of WhoIs search results dated May 14, 2018 which identified the second individual as the registrant of the Disputed Domain Name. However, in its verification response, the Registrar informed the Center that Reed Mueller is the current registrant of the Disputed Domain Name. As such the Panel has proceeded on the basis that Reed Mueller is the Respondent.
According to the Response, the Respondent registered the Disputed Domain Name on December 26, 2000 to promote the Respondent's activities as well as for a range of parking pages. The Respondent submits that he operates a business related to the sale of undergarments.
At present, there is either no active website associated with the Disputed Domain Name, or it seems to rotate on occasion to a pay per click ("PPC") link page. 5. Parties' Contentions A. Complainant
The Complainant makes the following submissions.
Identical or confusingly similar
The Disputed Domain Name is identical to the Complainant's Trade Mark as it incorporates such mark in its entirety.
Rights or legitimate interests
The Respondent has no rights or legitimate interests in the Trade Mark or the Disputed Domain Name. The Respondent is not commonly known by the Disputed Domain Name nor does he hold any trade mark corresponding with the Disputed Domain Name. The Complainant has not authorized the Respondent to use its Trade Mark nor to register any domain name incorporating such mark.
The Disputed Domain Name has not been used for any bona fide purpose since the time of registration. The Respondent has used the Disputed Domain Name as a PPC link page. As there has been no legitimate use of the Disputed Domain Name the Respondent does not have rights or legitimate interests.
Registered and used in bad faith
The Complainant has used the Trade Mark for a significant period of time prior to the registration of the Disputed Domain Name. The Respondent would have been well aware of the Complainant's reputation and registered the Disputed Domain Name to deliberately divert Internet users from the Complainant's website.
At the time of the Complaint, the Disputed Domain Name contained PPC links relating to companies in the same industry as the Complainant. The Respondent is intentionally trying to attract Internet users for commercial gain to its website by creating a likelihood of confusion with the Complainant's business. B. Respondent
The Respondent, Reed Mueller, makes the following submissions.
The Respondent buys domain names and develops them into active websites. On December 14, 2000, the Respondent registered from which to market and sell women's undergarments but considered that this was too generic. As such, the Respondent then registered the Disputed Domain Name on December 26, 2000. The Respondent submits that the Disputed Domain Name is a combination of hind (the body part behind the back) and ware (referring to goods and materials).
Since 2000 the Disputed Domain Name has been used at various times to promote the Respondent's activities as well as for a range of parking pages. The Respondent verified via the United States Patent and Trade Mark Office that there were no pending or active trade marks for "hind ware" at the time he registered the Disputed Domain Name. The Complainant does not have such a registration in the United States. 6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:
(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 in bad faith.
The onus of proving these elements is on the Complainant. A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to the Trade Mark.
The Trade Mark is a figurative mark which features stylized text along with a "H" device. Previous panels have found that, as design elements are not capable of being represented in a domain name, these elements can be disregarded for the purpose of assessing identity or confusing similarity (see section 1.10 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0")). The design elements of the Trade Mark are not so prominent or distinctive so as to consider the Trade Mark to be incapable of distinctiveness without these elements. The Panel finds that the Trade Mark satisfies the requirement that the Complainant show "rights in a mark" for the first element of the Policy.
The Disputed Domain Name is confusingly similar to the Complainant's Trade Mark as it incorporates the textual element of such mark in its entirety. No other terms have been added and the textual element of the Trade Mark is clearly identifiable in the Disputed Domain Name.
The Complainant succeeds on the first element of the Policy. B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests.
The Panel finds that the Complainant has made out a prima facie case for the following reasons:
- There is no evidence that the Respondent has been commonly known by the Disputed Domain Name or the Trade Mark, or has registered or common law rights in relation to the Disputed Domain Name.
- The Respondent has not been making a legitimate noncommercial or fair use of the Disputed Domain Name without intent for commercial gain. The Complainant has provided evidence that from time to time the Respondent has used the Disputed Domain Name for PPC advertising and is likely doing so for profit.
- The Respondent has not used, or made demonstrable preparations to use, the Disputed Domain Name in connection with a bona fide offering of goods or services. Despite the Respondent's submissions, it appears that the Respondent has been using the Disputed Domain Name as a PPC link page, with links to sites in the same industry as the Complainant's business.
The Respondent argues that it uses the Disputed Domain Name for legitimate activity, namely to promote its business of selling women's undergarments. However, the Respondent has provided no evidence to support this submission. As such, the prima facie case established by the Complainant has not been successfully rebutted and the Complainant succeeds on the second element of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Name in bad faith.
If circumstances indicate that the Respondent's intent in registering the Disputed Domain Name was to profit in some fashion from, or otherwise exploit, the Complainant's Trade Mark, panels will find bad faith on the part of the Respondent (see section 3.1.1 of the WIPO Overview 3.0).
It is unclear from the submissions of the parties whether it was the Respondent or the above-referenced second individual who originally registered the Disputed Domain Name in 2000. The WhoIs search conducted by the Complainant on May 14, 2018 shows the Disputed Domain Name is registered in the name of said second individual. However, on June 5, 2018 the Registrar, in its verification response to the Center, stated that the registrant of the Disputed Domain Name was Reed Mueller. It is Reed Mueller who responded to the Complaint. It may be the case that the Respondent acquired the Disputed Domain Name during the period between May 14, 2018 and June 5, 2018, however the Response claims that the Respondent registered the Disputed Domain Name in 2000.
Where the reason for the initial registration of a domain name is unclear, and the domain name is subsequently used to attract Internet users by creating a likelihood of confusion with a complainant's mark, panels have found an inference of bad faith can be supported, which is open for the respondent to rebut (see WIPO Overview 3.0, section 3.2). In this case, the Respondent has not provided any evidence that the Disputed Domain Name has in fact been used in relation to a business promoting and selling women's undergarments, or for any other legitimate purpose. Without such evidence, the Panel finds the Respondent's explanation for his reason for choosing the Disputed Domain Name somewhat unbelievable.
Further, the Complainant has provided evidence that the Respondent has, from time to time, used the Disputed Domain Name to host PPC links for bathroom items, which is related to the services provided by the Complainant and the industry in which the Complainant operates.
Based on the information before the Panel, and taking into consideration the past use of the Disputed Domain Name, the Panel concludes that the Respondent has used the domain name to intentionally attempt to attract, for commercial gain, Internet users to the website to the Respondent's website by creating a likelihood of confusion with the Complainant's Trade Mark, which is evidence of bad faith registration and use under paragraph 4(b)(iv) of the Policy.
The Complainant succeeds on the third element of the Policy. 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.
John Swinson
Sole Panelist
Date: August 31, 2018
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