The Complainant is Intelenet Global Services Private Limited of Mumbai, Maharashtra, India, represented internally.
The Respondent is Mayank Jasmera, Web Intelenet of Peeraghari, New Delhi, India, self-represented. 2. The Domain Name and Registrar
The disputed domain name is registered with BigRock Solutions Pvt Ltd. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 1, 2018. On August 1, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 2, 2018, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and provided 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 August 6, 2018. In accordance with the Rules, paragraph 5, the due date for Response was August 26, 2018. The Respondent filed an informal communication with the Center on August 8, 2018. The Respondent did not file a formal Response.
The Center appointed Dr. Vinod K. Agarwal as the sole panelist in this matter on September 10, 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
In the present case, the Complainant is known as Intelenet Global Services Private Limited, a company incorporated according to the laws of India. As per the Complaint, the Complainant is engaged in the business of providing outsourcing services in banking and finance, travel, logistics and hospitality, healthcare, telecom, retail, e-commerce and utilities industries in India, the United Kingdom of Great Britain and Northern Ireland (“UK”), the Philippines, Saudi Arabia, Dubai, United Arab Emirates, and Guatemala.
The Complainant also provides to its clients various other services including advertising, business management, business administration, office functions, services and research and design relating thereto, design and development of computer hardware and software, IT enabled business services, computer software consultancy, creating and maintaining websites for others, computer programming, Be-Spoke or custom software development, deployment and maintenance, ERP implementation and maintenance, application consulting and social media solutions.
The Complainant is the registered owner of the trademark INTELENET, including Indian trademark registration 464583, registered on September 13, 2004; and United States of America (“US”) trademark registration number 3527578, registered on November 4, 2008. The INTELENT trademark is used in connection with the Complainant’s abovementioned services.
The disputed domain name was registered on December 27, 2012. The disputed domain name resolves to a website promoting the Respondent’s IT services, which compete with those offered by the Complainant. 5. Parties’ Contentions A. Complainant
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are applicable to the present dispute.
In relation to the first element, the Complainant contends that the word “Intelenet” forms an important part of corporate name of the Complainant and other companies belonging to the “INTELENET” Group of Companies.
According to the Complaint, by virtue of prior adoption, long and continuous use, and extensive publicity and promotion, the trade name and trademark INTELENET have acquired tremendous goodwill and enviable reputation worldwide amongst the public in general. Thus, they are associated by businesses and the public exclusively with the Complainant and their businesses, services and products.
The word “intelenet” is the registered trademark of the Complainant. The said trademark INTELENET of the Complainant is registered in various jurisdictions throughout the world, such as, Australia, the European Union, the UK and the US in classes 9, 35, 38, 41 and 42. The said trademark INTELENET is also registered in India in the year 2004 in the same classes. Further that, the application for the registration of the said trademark INTELENET is also pending in Guatemala under classes 9, 35 and 42.
The Complainant also owns various domain names using the word “intelenet” as mentioned in Annexure 8 to the Complaint. Only to illustrate, some such domain names are ; ; ; ; ; ; and .
The Complainant has further contended that the Respondent provides website designing, website development and Search Engine Optimization services through the disputed domain name which services are similar to the services provided by the Complainant.
The Respondent has knowingly and with mala fide intention used the goodwill of the Complainant and registered the disputed domain name , which is similar to the name of the Complainant, the registered trademark of the Complainant, and the various domain names registered by the Complainant, with the addition of the word “web” to the disputed domain name. The addition of the word “web” does not change the overall impression of the designation as being connected to the Complainant’s trademark and does not prevent likelihood of confusion.
The registration of the disputed 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 INTELENET trademark. Thus, the intention of the Respondent is to create confusion in the market and business circles.
In relation to the second element, the Complainant contends that the Complainant’s trademark INTELENET has become highly distinctive of the goods and services of the Complainant on account of extensive use, viewership and promotion.
The Complainant further contends 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 their trademark or to apply for or use the domain name incorporating the trademark and that nobody would use the word “intelenet” unless seeking to create an impression of an association with the Complainant,
The act of the Respondent also constitutes infringement/passing off of the 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 the Respondent had no rights or legitimate interests in the disputed domain name.
Regarding the third element, the Complainant contends that the domain name was registered in bad faith and with an ill-motive to gain unfair commercial advantage, at the expense of the Complainant.
The purpose and intent of the Respondent in adopting the disputed domain name is to cash in on the name, fame, reputation and image and goodwill of the Complainant. In other words, the Respondent has registered and is using the disputed domain name in bad faith with the mala fide intention to dupe, cheat and attract Internet users into believing that the Respondent is associated with the Complainant and creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website.
Therefore, the registration and use of the disputed domain name by the Respondent was in bad faith and the requirements of paragraphs 4(a)(iii) and 4(b) of the Policy, read along with the Rules, paragraph 3(b)(ix)(3) have been established. B. Respondent
On August 8, 2018, the Respondent sent an informal communication to the Center, stating that the Respondent had used the disputed domain name for the last six years, and indicating that the disputed domain name could be surrendered if the Respondent were to be compensated for its alleged yearly expenses of approximately INR 100,000. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove that:
(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 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. A. Identical or Confusingly Similar
According to the information submitted by the Complainant, the Complainant is the owner of the trademark INTELENET in India as well as in other countries.
The present dispute pertains to the domain name . The Complainant possesses a large number of other domain names with the word “intelenet”. The disputed domain name is confusingly similar to the trademark of the Complainant. It incorporates the Complainant’s trademark in its entirety with the addition of the descriptive term “web”. Such an addition does not avoid confusing similarity with the Complainant’s trademark.
Therefore, the Panel finds that the disputed domain name is confusingly similar or identical to the trademarks of the Complainant. B. Rights or Legitimate Interests
According to paragraph 4(c) of the Policy, the Respondent may demonstrate its rights or legitimate interests in the disputed 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 disputed domain name or a name corresponding to the disputed 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 disputed 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 disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent has not filed any specific response to the Complaint 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 Mr. Mayank Jasmera. The Complainant has not authorized the Respondent to use the Complainant’s name or their trademark INTELENET. Further, no information is available whether the Respondent has filed any application for the registration of the mark INTELENET anywhere in the world. In other words, the Respondent does not have any registered trademark by the name of “intelenet” or any similar mark.
The Complainant has not licensed or otherwise permitted the Respondent to use its trademark or to apply for or use any domain name incorporating the trademark of the Complainant. Nobody would be likely to use the word “intelenet” 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 a bona fide offering of goods and services. The Respondent’s website offers services in competition with those of the Complainant and appears to take advantage of the goodwill associated with the Complainant’s trademark for unjust commercial gain.
Based on the evidence in the Complaint, the Panel finds that none of the circumstances described in paragraph 4(c) 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
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 disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that 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 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 it has engaged in a pattern of such conduct; or
(iii) The Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) By using the disputed 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.
The Complainant has also been the owner of trademarks incorporating the word “intelenet” in many countries for over ten years. Most of these domain names and the trademark have been created by the Complainant much before the date of creation of the disputed domain name by the Respondent.
The Complainant contends that the disputed domain name was registered or acquired by the Respondent primarily for the purpose of carrying on some of the business competitive to the Complainant. In fact, the Respondent is carrying on some business competitive to the Complainant. The disputed domain name is being used with the intent to deceive the members of the public deliberately and intentionally, with a view to trade upon and cash in on the name, fame, reputation, image and goodwill acquired by the Complainant and its associated companies.
It is a systematic attempt by the Respondent to derive unfair advantage, wrongful commercial gain and to mislead the general public. The Respondent is not making a noncommercial or fair use of the disputed domain name.
This and the other evidence submitted by the Complainant leads to the presumption that the disputed domain name was registered and used by the Respondent in bad faith.
The Panel concludes that the Respondent’s conduct amounts to the registration and use of the disputed domain name in “bad faith”. Paragraph 4(a)(iii) of the Policy is satisfied. 7. Decision
In the light of the foregoing reasons, namely, that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and that the disputed domain name was registered in bad faith and is being used in bad faith, 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.
Vinod K. Agarwal
Sole Panelist
Date: September 20, 2018
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