The Complainant is The Bombay Dyeing and Mfg. Co. Ltd, The Wadia Group of Mumbai, India, represented by Lall Lahiri & Salhotra, Advocates Patent and Trademark Attorneys, India.
The Respondent is Domains By Proxy, LLC / DomainsByP of Scottsdale, Arizona, United States of America / Name Redacted1 of Littleton, Colorado, United States of America. 2. The Domain Names and Registrar
The disputed domain names and are registered with Wild West Domains, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 20, 2018. On June 20, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On June 21, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 25, 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 25, 2018.
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 June 27, 2018. In accordance with the Rules, paragraph 5, the due date for Response was July 17, 2018. The Respondent did not submit any formal response. Pursuant to paragraph 6 of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), the Center will proceed to Panel Appointment.
The Center appointed Alistair Payne as the sole panelist in this matter on July 30, 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 part of a corporate conglomerate of four publicly listed companies in India, commonly known as “The Wadia Group”, that traces its roots back to 1736 when Mr. Lovji Nusserwanjee Wadia set up a marine construction company. The Complainant operates textile mills while other businesses across the conglomerate are active in the aviation, chemicals, food processing, plantations, media, and real estate sectors. One of the companies in the Complainant’s corporate conglomerate, namely Nowrosjee Wadia and Sons Limited holds the trade mark registrations in the name “THE WADIA GROUP” on behalf of the group, including Indian registration number 2157412 for THE WADIA GROUP that was registered on May 21, 2013. The Complainant itself owns various Indian trade mark registrations on behalf of the corporate conglomerate for WADIA INTERNATIONAL CENTER and in particular Indian trade mark registration 2242199, registered on October 21, 2015. The corporate conglomerate has operated a website at the domain name since 1998 and owns 33 other domain names that include the “WADIA” name.
The Respondent registered the disputed domain name on June 11, 2018 and the disputed domain name on June 14, 2018. Neither of the disputed domain names resolve to a website but after the creation of each of them, members of the Complainant’s corporate group received emails from email addresses at each of the disputed domain names which appeared to have been malicious emails aimed at making a cyber attack upon the email address of the Chairman of the Complainant’s corporate conglomerate. 5. Parties’ Contentions A. Complainant
The Complainant asserts that the corporate conglomerate of which it is a part first used the WADIA trade mark in 1736 and since that date has made very substantial use of the mark in the course of its commercial activities such that the name “WADIA” has become distinctive of the products of the Complainant’s corporate conglomerate. It notes that members of its corporate conglomerate own trade mark registrations for THE WADIA GROUP and that the Complainant owns trade mark registrations for the WADIA INTERNATIONAL CENTRE and that the key element of each of its trade mark registration and domain names is the distinctive name or mark “Wadia”. It says that each of the disputed domain names are confusingly similar to THE WADIA GROUP or the WADIA mark in which the Complainant owns rights.
The Complainant submits that the Respondent has no rights to the marks WADIA or THE WADIA GROUP and has not been licensed or authorised by the Complainant’s corporate conglomerate to use either of these marks. In addition it submits that the Respondent is not commonly known by either of the disputed domain names. It says that the Respondent registered the disputed domain names hundreds of years after the predecessor of the Complainant’s corporate conglomerate first used the WADIA or THE WADIA GROUP and after the Complainant’s corporate conglomerate had made extensive use of these names or marks throughout the world. It follows, says the Complainant, that the Respondent has no rights or legitimate interests in the disputed domain names.
As far as bad faith is concerned, the Complainant submits that the Respondent has registered or acquired the disputed domain names with a dishonest intention to mislead and divert consumers, or with the intention of selling the disputed domain names to the Complainant at a profit, or with the intention of ranging a cyber attack on the Complainant’s corporate conglomerate in order to extort monetary befits from it. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant has demonstrated that it is part of a corporate conglomerate of 4 publicly listed companies in India, commonly known as “The Wadia Group”. The Complainant owns various Indian trade mark registrations on behalf of the corporate conglomerate for WADIA INTERNATIONAL CENTER and in particular Indian trade mark registration 2242199, registered on October 21, 2015. One of the Complainant’s group companies, Nowrosjee Wadia and Sons Limited holds the trade mark registrations in the name “THE WADIA GROUP” on behalf of the group, including Indian registration number 2157412 for THE WADIA GROUP that was registered on May 21, 2013. Although the Complainant has not provided evidence of group corporate structure or of an intra-group trade mark licence between these two entities to demonstrate the Complainant’s formal rights to use THE WADIA GROUP mark, the Panel is satisfied based on the other evidence submitted that the Complainant forms part of the conglomerate commonly known as THE WADIA GROUP and therefore more likely than not has rights to call itself part of “The Wadia Group” and in doing so to use to this extent THE WADIA GROUP registered trade mark in India.
In any event, the Panel finds that the key element of the Complainant’s registered trade mark WADIA INTERNATIONAL CENTRE is the highly distinctive name or mark “WADIA” and that the other elements of this mark are the common English words or phrase “International Centre” which do not play a distinguishing role in the mark. The disputed domain names both wholly incorporates the distinctive name “Wadia” as their key element. The other elements of either domain name comprise “groupltd” or “ltd” respectively. Neither of these elements suffice to distinguish either of the disputed domain names from the “Wadia” name, the Complainant’s mark, or from the THE WADIA GROUP, being the registered trade mark owned by the Complainant’s group company.
The Panel is therefore satisfied that the “Wadia” name is the key distinguishing element of each of the disputed domain names and that this is also the key element of the Complainant’s WADIA INTERNATIONAL CENTRE registered trade mark or of THE WADIA GROUP registered trade mark which the Complainant has a right to use as a core member of “The Wadia Group” of companies.
Accordingly, the Panel finds that each of the disputed domain names are confusingly similar to registered trade marks in which the Complainant owns rights and the Complaint succeeds under the first element of the Policy. B. Rights or Legitimate Interests
The Complainant has submitted that the Respondent has no rights to the us the mark WADIA or THE WADIA GROUP in the disputed domain names and has not been licensed or authorised by the Complainant, or by the Complainant’s corporate conglomerate, to use either of these marks. In addition, it submits that the Respondent is not commonly known by either of the disputed domain names. It says that the Respondent registered the disputed domain names hundreds of years after the predecessor of the Complainant’s corporate conglomerate first used the names or marks, WADIA or THE WADIA GROUP and after the Complainant’s corporate conglomerate had made extensive use of these names or marks throughout the world. It follows, says the Complainant, that the Respondent has no rights or legitimate interests in the disputed domain names.
The Respondent has failed to rebut the Complainant’s case under this element of the Policy and as outlined under Part C below it appears based on a statement made by the Respondent that the disputed domain names were registered fraudulently in the Respondent’s name and without his consent. The Panel therefore finds that the Respondent has no rights or legitimate interests in either of the disputed domain names and the Complaint also succeeds under this element of the Policy. C. Registered and Used in Bad Faith
The disputed domain name was registered on June 11, 2018 and the disputed domain name was registered on June 14, 2018 some years after the Complaint’s trade mark was registered and a very long time after the Complainant’s corporate group, “The Wadia Group” first commenced trading under that name or mark. Based on the evidence submitted by the Complainant, the Panel accepts that the Complainant’s corporate group has developed a very substantial reputation in India in connection with the THE WADIA GROUP name and mark and that on the balance of probabilities the registrant of each of the disputed domain names was very well aware of this name or mark upon registration of the disputed domain names.
The Respondent first advised the Center by email on June 25, 2018 that his online account had been hacked and that “25 or so domains” had been created fraudulently under his main account and confirmed this fact further in subsequent emails and that this is how the disputed domain names came into being. In these circumstances it can be inferred that the disputed domain names were registered fraudulently with a view to them being used in bad faith by the fraudulent registrant, whether in the Respondent’s name or in the name of a subsequent transferee. The fact that after registration of the disputed domain names, members of the Complainant’s corporate group received emails from email addresses at each of the disputed domain names which appeared to have been malicious and were aimed at making a cyber attack upon the email address of the Chairman of “The Wadia Group” conglomerate, only confirms the finding that the disputed domain names were registered and have been used in bad faith and that this is exactly the sort of bad faith registration and usage conduct that the Policy is designed to remedy.
Under paragraph 4(b)(ii) of the Policy there is evidence of registration and use in bad faith where a registrant has registered the disputed 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 the registrant has engaged in a pattern of such conduct. Considering that the disputed domain names each contain the very distinctive and well reputed “WADIA” mark with no distinguishing elements and it is apparent that the registrant in registering them in the form and has sought to allude to the Complainant’s corporate group and in addition noting that the registrant has registered not one but two such domain names in succession, then the Panel also finds that the requirements of this paragraph of the Policy are made out.
As a result the Panel has no hesitation in finding that each of the disputed domain names were registered and have been used in bad faith and the Complaint also succeeds under this 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 names and be transferred to the Complainant.
Alistair Payne
Sole Panelist
Date: August 11, 2018
1 As detailed in Section 4 of this Decision, the record indicates a third party may have used the named Respondent’s name in registering the disputed domain name without the named Respondent’s consent. The Panel has accordingly decided to redact the Respondent’s name from the caption and body of this Decision. However, the Panel has included in Annex 1 to this Decision an instruction to the Registrar which includes the Respondent’s name. The Panel has authorized the Center to transmit Annex 1 to the Registrar, and has indicated that Annex 1 is not to be published given the circumstances of this case. See Banco Bradesco S.A. v. FAST-12785241 Attn. B / Name Redacted,WIPO Case No. D2009-1788.
Full & Egal Universal Law Academy