The Complainant is Bharti Airtel Limited of New Delhi, India, represented by Inttl Advocare, India.
The Respondent is PrivateWhois, Knock Knock WHOIS Not There, LLC of Beaverton, Oregon, United States of America / Navin Singh of Maharashtra, India. 2. The Domain Name and Registrar
The disputed domain name is registered with Automattic Inc. (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 16, 2018. On July 17, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 18, 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 July 19, 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 July 19, 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 July 20, 2018. In accordance with the Rules, paragraph 5, the due date for Response was August 9, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on August 13, 2018.
The Center appointed Harini Narayanswamy as the sole panelist in this matter on August 22, 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 leading telecommunications company and conducts its business under its flagship trademark AIRTEL. The Complainant owns several registered trademarks for the AIRTEL marks and AIRTEL formative marks. Some of these are: Indian trademark registration no. 1256043 for AIRTEL, registered with effect from December 18, 2003, in international class 38; and Indian trademark registration no. 1623142 for AIRTEL, registered with effect from November 21, 2007, in international class 41.
The Complainant's international registered AIRTEL trademarks include jurisdictions such as the European Union, Hong Kong, Singapore, Ghana, Kenya, Malawi, Sierra Leone, United Republic of Tanzania, Zambia, OAPI, and Madagascar.
The Complainant offers its customers an insurance product under the trademark AIRTEL SECURE for which the Complainant has a number of pending trademark applications.
The Respondent registered the disputed domain name on April 29, 2018. The disputed domain name resolves to a webpage that displays: "How to claim airtel secure" and a disclaimer that states:
"This is not official airtel secure website. This is a personal website to help people who want to claim airtel secure".
The site has explanations, comments and discussions about making a claim under the airtel secure scheme. There is, additionally a blog that displays some queries and experiences posted by users pertaining to "Airtel Secure" and replies to the queries. 5. Parties' Contentions A. Complainant
The Complainant states that it is one of the biggest telecom companies engaged in providing a variety of telecom services. The Complainant states its services are available in sixteen countries across Asia and Africa. Its product offerings in India include 2G, 3G and 4G wireless services, mobile commerce, fixed line services, high speed DSL broadband, IPTV, DTH and enterprise services. In other territories it offers 2G, 3G and 4G wireless services and mobile commerce.
The Complainant states that its well-known AIRTEL mark was invented and adopted in the year in 1994. The Complainant asserts that its mark is not a dictionary word but is a coined term, therefore the mark is entitled to a high degree of protection. The Complainant states it has spent extensively on marketing, advertising and promoting its mark. Due to the quality of its services, the Complainant states that its mark has gained goodwill and reputation in India and across the globe. As the mark is distinctive of its services, the Complainant claims both statutory and common law rights in the AIRTEL mark.
The Complainant states that it has taken legal action for protecting the AIRTEL mark over the years and has provided details of some previous court actions and civil suits that it had initiated with respect to its trademarks. The Complainant states it has prevailed in several UDRP cases, one of these is Bharti Airtel Limited, Body Corporate v. Ramandeep Singh, USA Webhost, Inc.,WIPO Case No. D2010-0524, pertaining to the domain name .
The Complainant states that on April 29, 2017, it launched a product under the AIRTEL SECURE trademark. The product offers protection to its subscribers against accidental, liquid, and other damage to handsets and devices. The service includes doorstep pick up of the device and its return after it is serviced at an authorized service center. The Complainant states that it provides AIRTEL SECURE services for all major device brands and has widely advertised its services under the mark. The Complainant states that the Respondent has recently on July 2, 2018, added a disclaimer on the website resolving to the disputed domain name .
The Complainant requests for transfer of the disputed domain name based on the three elements of paragraph 4 (a) of the Policy: that the disputed domain name is identical or confusing similar to a mark in which the Complainant has rights, the Respondent has no rights or legitimate interests in the disputed domain name and the disputed domain name has been registered and is being used in bad faith. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
It is an essential requirement under the Policy for a complainant to establish three elements under paragraph 4 (a) of the Policy to obtain the transfer of the disputed domain name, in seriatim these are:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent lacks rights or legitimate interests in the disputed domain name; and
(iii) The disputed domain name was registered and is being used in bad faith by the Respondent. A. Identical or Confusingly Similar
The first element requires the Complainant to establish the disputed domain name is identical or confusingly similar to a trademark or a service mark in which it has rights.
Evidence of ownership of a registered trademark is considered sufficient proof of a complainant's requisite rights in the trademark for purposes of paragraph 4(a)(i) of the Policy. See section 1.2.1 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"). The Complainant has provided details of ownership of its registered AIRTEL marks in India and in several other jurisdictions and has thereby established its rights in the AIRTEL mark in these proceedings.
The term "trademark or service mark" as used in paragraph 4(a)(i) of the Policy moreover encompasses both registered and unregistered or common law marks. See Section 1.1.1, WIPO Overview 3.0. The Complainant has provided evidence of use of the AIRTEL SECURE mark in commerce, promotional material, media coverage and news reports that establish it has common law unregistered rights in the mark. Based on the evidence, the Panel finds that the Complainant also has common law or unregistered rights in the AIRTEL SECURE mark.
The disputed domain name contains the trademark AIRTEL and is therefore found to be confusingly similar to the mark (and also to the AIRTEL SECURE mark). Accordingly, the Complainant has satisfied the first requirement under paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
The second element under paragraph 4(a) of the Policy requires the Complainant to make a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has the opportunity to rebut the Complainant's contentions and demonstrate rights or legitimate interests in the disputed domain name.
Paragraph 4 (c) of the Policy provides a non-exhaustive list that a respondent may rely on to demonstrate rights or legitimate interests in the disputed domain name. These are:
(i) Before any notice of the dispute, 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) Respondent (as an individual, business or other organization) has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) 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.
The Complainant has submitted that the Respondent lacks rights and legitimate interests in the disputed domain name. The Complainant states the Respondent has no business connection, approval or authorization to use the AIRTEL or AIRTEL SECURE mark. The Complainant has argued that the Respondent has registered the disputed domain name for purposes of misleading and diverting its customers which amounts to cybersquatting. The Complainant has argued the provisions under paragraph 4(c) of the Policy are not applicable to the disputed domain name. As the disputed domain name resolves to a website that provides inaccurate information, the Complainant argues that it induces users to circumvent its "Airtel Secure" program.
To avail the provisions under paragraph 4(c)(iii) of the Policy, it is necessary that a respondent demonstrates that the disputed domain name is not used with an intention of misleadingly diverting Internet users. Given that it has been consistently held by panels that use of the trademark per se in the disputed domain name is likely to mislead users due to the high possibility of affiliation with the trademark, it is difficult to conceive of a fair use in the present case. Due to the high risk of user confusion, such use of the trademark in the disputed domain name has been found in previous cases to create a situation of "bait and switch".
A customer looking for the Complainant's product online, is likely to be redirected to the Respondent's website, and the disclaimer on the webpage can be viewed only after being misdirected by the disputed domain name. The right to set up a commentary site does not give a respondent the right to use the trademark per se in the disputed domain name due to the high risk of affiliation with the trademark. See for instance Neteller Plc v. Prostoprom,WIPO Case No. D2006-0874, where it was observed that even though the respondent may have the right to establish a commentary or opinion site, it does not necessarily entitle the respondent to use the Complainant's exact name or mark as part of its addresses for such a website. Disclaimers and links to the authorized site, are generally found not to mitigate matters.
The Respondent's conscious choice of incorporating the trademark per se in the disputed domain name, would in the Panel's view, lead Internet users to its site based on intentional confusion. Panels have declined to find fair use or bona fide use when the trademark per se has been used in the disputed domain name by the respondent even in cases where the commentary on the website is criticism. See Puravankara Projects Limited v. Saurabh Singh WIPO Case No. D2014-2054.
The Respondent in the present case has used the AIRTEL trademark in entirety, which would in the Panel's assessment, lead to initial interest confusion and divert the Complainant's customers looking for the "Airtel Secure" product offered by the Complainant to the Respondent's site, which is a classic situation of "bait and switch". Panels have consistently held that where a domain name consists of a trademark per se, or even with an additional term, such a composition cannot constitute fair use, if it effectively impersonates the trademark as it would suggest sponsorship or endorsement by the trademark owner. In the Panel's assessment, the disputed domain name that consists of the trademark per se, would misleadingly divert customers that are looking for the Complainant's product online.
The Respondent did not file a Response in these proceedings and has not defended the allegations made by the Complainant. Even if the Respondent had responded and argued that the site is used for commentary, and therefore the use of the mark in the disputed domain name ought to be considered as nominative fair use to describe the Complainant's product for providing comments, the use of the trademark alone in the disputed domain name would lead to user confusion. The Panel finds there is no evidence that the Respondent is commonly known by the disputed domain or is using the disputed domain name in connection with a bona fide offering of goods or services. The Panel finds the Respondent has no authorization from the Complainant to use the AIRTEL trademark.
In line with the views expressed by previous panels regarding similar fact patterns as disclosed here, the Panel finds the use of the trademark per se in the disputed domain name carries a high risk of affiliation with the trademark, and in such circumstances, it is inconceivable to find fair use, as envisaged under paragraph 4(c)(iii) of the Policy, even if the site has a disclaimer. Such use of the disputed domain name in the Panel's assessment cannot be considered bona fide use or fair use under the Policy and not conducive to finding rights or legitimate interests in favor of the Respondent.
Accordingly, it is found that the Complainant has successfully made a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, as required under the second element of paragraph 4 (a) of the Policy. C. Registered and Used in Bad Faith
The third element requires the Complainant to establish the disputed domain name has been registered and is being used in bad faith by the Respondent.
It is unlikely that the Respondent was unaware of the Complainant's rights in AIRTEL mark, as the comments on the site clearly pertain to the "Airtel Secure" product offered by the Complainant. The Panel finds the disputed domain name being identical to the trademark as discussed earlier, carries a high risk of affiliation with the mark and due to the obvious association, it is likely to mislead users. The Panel also finds that the disputed domain name was registered after the Complainant had launched its product "Airtel Secure". The nature of the disputed domain name and the timing of registration of the disputed domain name, in the Panel's view, support a finding of bad faith registration.
As previously discussed, the use of the AIRTEL trademark per se in the disputed domain name is likely to cause confusion as to the source and origin. Internet users and the Complainant's customers looking for information about the Complainant's product are likely to be redirected to the Respondent's site. Under these circumstances, the Panel concludes that the Respondent has intentionally used the trademark, which apart from misleading customers, also prevents the Complainant from reflecting its mark in the disputed domain name. It is likely to be widely assumed by the public and Internet users that the AIRTEL trademark used in the disputed domain name is associated with the Complainant, which is found to be bad faith use of the disputed domain name.
The Complainant has argued that where the overall circumstances point to the Respondent's bad faith, mere existence of a disclaimer cannot cure bad faith. (See section 3.7 of WIPO Overview 3.0). The Panel agrees with the Complainant's argument and finds that the disclaimer would not dispel initial interest confusion. Furthermore, the timing of placing the disclaimer is also relevant. The disclaimer seems to have been placed by the Respondent as an afterthought and has been added recently. In the Panel's view placing a disclaimer on the website under the circumstances, is insufficient to avoid finding bad faith registration and use of the disputed domain name.
In conclusion, the Panel finds based on the facts and circumstances described, that the Respondent has intentionally attempted to attract Internet users to its website by creating a likelihood of confusion with the Complainant's AIRTEL mark which is recognized as bad faith registration and use of the disputed domain name under paragraph 4 (b) (iv) of the Policy. Apart from the nature of the disputed domain name that shows the Respondent has targeted the Complainant's mark, additional factors that contribute to finding bad faith are: the timing of registration, which was after the Complainant launched its product "Airtel Secure", the lack of Respondent's rights or legitimate interests in the disputed domain name and the use of privacy services by the Respondent, reinforces the finding of bad faith. (See section 3.2.1 of WIPO Overview 3.0,additional bad faith considerations).
The Panel finds that the Complainant has successfully established the third element under paragraph 4(a) of the Policy, that the disputed domain name was registered and is being used in bad faith. Accordingly, it is found that the Complainant has prevailed on all three elements under paragraph 4(a) 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.
Harini Narayanswamy
Sole Panelist
Date: September 5, 2018
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