The Complainant is WIPRO Limited of Karnataka, India, represented by K&S Partners, India.
The Respondent is Domain Admin, Privacy Protect, LLC (PrivacyP) of Burlington, Massachusetts, United States of America (“USA”) / WIPRO Technologies of Karnataka, India. 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 27, 2018. On August 27, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 28, 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 August 29, 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 August 30, 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 September 3, 2018. In accordance with the Rules, paragraph 5, the due date for Response was September 23, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 24, 2018.
The Center appointed Amarjit Singh as the sole panelist in this matter on October 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
The Complainant was incorporated in the year 1945. WIPRO was adopted by the Complainant as an essential part of the name thereof in 1977. The first registration of the mark WIPRO was obtained by the Complainant on September 24, 1974 (Indian registration no. 299508). The Complainant and its Indian subsidiaries are the proprietors of more than 169 trademarks in respect of goods and services containing the word “wipro”. The Complainant also holds registration of the mark WIPRO in USA and European Union. The Complainant also obtained registrations of domain names as per the following details:
No.
Domain Names
Date of Registration
1
August 12, 1992
2
April 4, 2005
3
March 29, 2010
4
February 28, 2004
5
November 12, 2010
6
June 4, 2010
7
February 19, 2006
8
February 4, 2005
The Complainant is the proprietor of the mark WIPRO in respect of variety of goods and services under the common law on account of priority in adoption and use. The Complainant also holds multiple statutory rights to the exclusive use of the mark WIPRO.
The Respondent has obtained registration of the disputed domain name on July 8, 2018. The disputed domain name resolves to a website nearly identical to the Complainant’s website.
The Complainant has therefore filed the Complaint seeking the transfer of the disputed domain name in its favour by way of the present administrative proceedings. 5. Parties’ Contentions A. Complainant
The Complainant is a registered company in India, established in the year 1945 as a vegetable oil manufacturer under the name Western India Vegetable Products Limited. Thereafter, the Complainant changed its name to Wipro Product Limited with effect from June 17, 1977. The Complainant subsequently changed its name to WIPRO Limited with effect from April 28, 1984.
It is pointed out that the Complainant has been known by the name and mark WIPRO since 1977 and the name and mark WIPRO is extremely well-known in India and the same has become a household name in India.
The Complainant has wide presence in India as well as globally including in the USA.
The name WIPRO is the Complainant’s corporate name, trade name and the Complainant is known worldwide by the name WIPRO. Since the Complainant’s incorporation in the year 1945 the Complainant has over the years built up formidable reputation in respect of its business and services worldwide and have garnered tremendous reputation globally in respect of the name WIPRO. In connection with the Complainant’s business, the Complainant owns and uses numerous WIPRO trademarks globally. The Complainant is the registered proprietor of the trade name and mark WIPRO globally. The Complainant has registrations for the name and mark WIPRO in USA, European Union.
The Complainant and its Indian subsidiaries are the proprietors of more than 465 trademarks in India. The Complainant has registrations for the mark WIPRO in class 9, 16, 35, 42 to name a few. The Complainant has annexed a list of some 169 trademarks owned by the Complainant and its subsidiaries containing the word “wipro”. The Complainant is also the registered proprietor of the mark in India and copies of some of the registration certificates for the mark WIPRO as well as for the mark in India are annexed to the Complaint.
The Complainant first obtained registration of the name and mark WIPRO in India in the year 1974.
The Complainant has also registered several domain names incorporating the trademark WIPRO. The Complainant has generic Top-Level Domain (“gTLD”) domain names and country code Top-Level Domain (“ccTLD”) domain names registered in its name as mentioned above.
By virtue of prior adoption, long and continuous use and extensive publicity and promotion, the trade name and mark WIPRO has acquired tremendous goodwill and reputation worldwide and is associated exclusively with the Complainant and their business, services and products by the trade and public.
The disputed domain name is identical to the Complainant’s trade name and mark WIPRO. The mark WIPRO is the Complainant’s corporate name, trade name and the Complainant is known by the name WIPRO globally. The name and mark WIPRO has been continuously used by the Complainant since 1977 in respect of its various business – IT, telecommunications, banking, consumer care, healthcare, manufacturing, professional services etc. and the name and mark WIPRO is exclusively associated with the Complainant.
The Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has no relationship with the Respondent and has never authorized the Respondent to register or use its trademark in a domain name.
The Respondent’s registration and use of the disputed domain name has been made in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant is known by the corporate name, trade name and trademark WIPRO since 1977. The Complainant is well established with unmatched goodwill and reputation and the name and mark WIPRO has become a household name in India and is a well-known in several jurisdictions and extremely well-recognized mark.
The disputed domain name consists of the Complainant’s registered trademark WIPRO. WIPRO incontestably is the principal part of the disputed domain name. The word “careers” used in the disputed domain name is a generic word indicative of one of the services/ functions/ features of the Complainant. The addition of the word “careers” would not prevent a finding of confusing similarity under the first element (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Jurisprudential Overview 3.0”), section 1.8).
In Wipro Limited v. Big Shi,WIPO Case No. D2015-1353, it was held that “The panel is satisfied that the Complainant has established that it has right to the trade mark WIPRO and also that WIPRO is a well-known trade mark.”
The threshold for confusing similarity involves the comparison between the trademark and the domain name itself to determine confusing similarity. The trademark would generally be recognizable within the domain name. In this case the Complainant’s registered trademark WIPRO is the dominant portion of the disputed domain name. The addition of the word “careers” before the word “wipro” does nothing to prevent the confusing similarity. Moreover, for the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy it is permissible for the Panel to ignore the gTLD suffix “.com”.
From the above, it is evident that the Respondent’s disputed domain name is identical to the Complainant’s well-known corporate name, trademark and trade name WIPRO and the requirement of the paragraph 4(a)(i) of the Policy has been clearly established by the Complainant. B. Rights or Legitimate Interests
The name and mark WIPRO is a distinctive and invented word, forming the key component of many of the trademarks owned by the Complainant. In fact, the Complainant is the owner of many WIPRO and WIPRO formative marks in India and worldwide. The name and mark WIPRO is extremely well-known globally and especially in India for the past four decades.
Since WIPRO is an invented word coupled with the reputation, fame and goodwill attached with the name and mark WIPRO globally, it is inconceivable that the Respondent could have independently adopted the disputed domain name incorporating the trademark WIPRO on its own.
The Complainant’s trade and service marks are known in India and globally as the Complainant has been in business since 1977 and is among the top Indian IT services company and is exclusively associated with the Complainant and its business worldwide. The Respondent has no due cause for registering the disputed domain name .
The Complainant has no relationship whatsoever with the Respondent and has never authorized the Respondent to register and use the disputed domain name or any other domain name.
The Complainant has not given any license to the Respondent to use its mark in any domain name or in any manner whatsoever. The Respondent is not commonly known by the disputed domain name and mark WIPRO.
The Respondent chose to register the disputed domain name in order to create a direct association with the Complainant. By registering the disputed domain name the Respondent is illegally diverting and attracting Internet users into believing that the disputed domain name belongs to or is endorsed by the Complainant or is authorized by the Complainant, which is not the case.
The extent of fame of the WIPRO mark which, as an invented word is a highly distinctive mark, makes it difficult for anyone else who is not authorized or licensed by the Complainant to use or register the mark to assert rights or legitimate interests in a domain name incorporating the WIPRO trademark. The Respondent is not commonly known by the name WIPRO corresponding to the disputed domain name and it does not appear that the Respondent has rights or legitimate interests to the mark WIPRO
The Respondent does not have any trademarks or trade names corresponding to the disputed domain name, nor is there any other indication that the Respondent has been using the term “wipro” in such a way as to give the Respondent any rights or legitimate interests in the disputed domain name. Further, use of the disputed domain name by the Respondent for running massive recruitment and job fraud racket by seeking monetary payment from job seekers and aspiring candidates only tarnishes the immense reputation and goodwill associated with the Complainant’s well-known name and mark WIPRO.
Reference is made to Wipro Limited and Wipro Trademarks Holding Limited v. Global Link.Com, Ltd/d/b/a/Global Online,WIPO Case No. D2000-0656 wherein it has been held that “WIPRO is a distinctive and invented word forming the main part of many of the trademarks of the Complainants, including those registered in the United States, the country of residence of the Respondent.” Further, it was held that “no authorized association between the parties existed at the time of registration, nor has any subsequently come into being. Under these circumstances the Respondent’s interest in the domain names is not legitimate.”
In Sanrio Company Ltd and Sanrio, Inc v. Neric Lau,WIPO Case No. D2000-0172 it was held that “Since the SANRIO SURPRISES mark is unique to Complainants and Complainants have never authorized or licensed its use by Respondent, Respondent cannot be said to have legitimately chosen the SANRIOSURPRISES.COM domain name unless it was seeking to create an impression of an association with Complainants. Since there is no such authorized association, Respondent’s interest in the domain name cannot be said to be legitimate.”
From the above submissions, the Complainant has successfully fulfilled the requirements of paragraph 4(a)(ii) of the Policy and Panel hold that the Respondent has no right or legitimate interest in the disputed domain name. C. Registered and Used in Bad Faith
The Respondent “knew or should have known” of the registration and use of the trademark WIPRO prior to registering the disputed domain name. The Complainant is an extremely well-known IT company not only in India but in several jurisdictions. It is unimaginable that the Respondent is not aware of the Complainant. The Complainant started its operations in India way back in the year 1945 and the name and mark WIPRO has been in continuous use by the Complainant since 1977. The name and mark WIPRO is extremely well‑known globally as the Complainant is one of the top IT consulting and outsourcing companies in India. The Complainant’s mark WIPRO is well-known and the Complainant had established international reputation that extends beyond India to several jurisdictions including in the USA. The disputed domain name was registered as recent as July 2018 by the Respondent which is after more than three decades the Complainant started its business in India. It is pertinent to mention that the Respondent’s website corresponding to the disputed domain name is near identical to the Complainant’s website. The Respondent has slavishly copied not only the look and feel of the Complainant’s website but each and every word from the Complainant’s website and has also copied and used the images of the Complainant’s employees who are actually mentioned in the Complainant’s website at “www.careers.”. This clearly indicates that the Respondent is extremely well-aware of the Complainant, its business, and the huge interest and desire that the trade and public has in getting a job with the Complainant as well as the tremendous goodwill and reputation associated with the Complainant’s mark WIPRO. Being fully aware of the Complainant, the services offered by the Complainant, the high interest of job seekers to get placements and jobs with the Complainant, and the immense goodwill and reputation associated with the name and mark WIPRO, the Respondent registered the disputed domain name corresponding to the website which is nearly identical to the Complainant’s website only to mislead job seekers and run the massive recruitment and job fraud by creating an impression of direct association with the Complainant. From the above, it is crystal clear that the Respondent “knew” about the Complainant and its trademark WIPRO especially when the Respondent has slavishly copied the entire contents of the Complainant’s website, text, images and design corresponding to the disputed domain name.
The Respondent being well aware of the Complainant, its consulting and outsourcing business, and the professional services provided by the Complainant, has registered and used the disputed domain name knowing well that Internet user, coming across the disputed domain name will immediately assume that the disputed domain name belongs to and /or is associated with the Complainant.
The Respondent’s bad faith use and registration is further evident from the fact that the Respondent through its website “www.” corresponding to the disputed domain name is running a massive recruitment and job fraud racket in India by duping and trying to dupe innocent candidates who are eager to seek employment with the Complainant.
The bad faith use and registration of the disputed domain name by the Respondent is further evident from the fact that the Respondent has copied the exact look and feel, the content as well as the images of the Complainant’s employees from the Complainant’s website to make students and candidates believe that the Respondent is actually the Complainant.
The Respondent’s very use of the term as the disputed domain name is in bad faith, as it is with the knowledge of the Complainant’s globally renowned IT business under the name and mark WIPRO. Further, registration and use of the word “careers” along with WIPRO by the Respondent in the disputed domain name is in bad faith to falsely and fraudulently indicate to students and job aspirants that the disputed domain name and the corresponding website “www.” belongs to the Complainant, when in reality it does not. The registration and use of the disputed domain name if allowed to continue would be highly detrimental to the Complainant, its business activities as well as detrimental to public interest.
The use of the word “wipro” in the disputed domain name along with the word “careers” was intended by the Respondent to create the impression of an authorized association between the Complainant and the Respondent, which, does not exist. By registering the disputed domain name the Respondent attempts to attract Internet users for commercial gains to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website. The Respondent being well aware of the Complainant created the disputed domain name , which gives the false impression of a direct association with the Complainant and its services including its recruitment process, fresher drive and career opportunities when in reality it does not do so. The Respondent’s registration and use of the disputed domain name is thus in bad faith.
In Wipro Limited and Wipro Trademarks Holding Limited v. Global Link.Com, Ltd/d/b/a/Global Online, supra it was held that in view of the prior existence of well-known trademark “the Respondent knew or should have known of the registration and use of the trademark prior to registering the domain name.”
In Intel Corporation v. The Pentium Group,WIPO Case No. D2009-0273 it was held that “[t]he incorporation of a well-known trademark into a domain name by a registrant having no plausible explanation for doing so may be, in and of itself, an indication of bad faith”.
In Wipro Limited v. Big Shi, supra it was held that “[t]he panel is satisfied that the Respondent must have been aware of the Complainant’s WIPRO trade mark when it registered the Domain Name. The fact that the Domain Name incorporates the Complainant’s well-known trademark in its entirety is in the Panel’s view evidence that the registration of the Domain Name was in bad faith. The panel also concludes that the actual use of the Domain Name was in bad faith…….The Domain Name is calculated to confuse Internet Users that the Respondent is an authorized franchisee, licensee or somehow connected with the Complainant when this is not the case.”
The Panel therefore hold that registration and use of the disputed domain name by the Respondent was in bad faith and the requirement of paragraph 4(a)(iii) has been clearly established. 7. Decision
In accordance with paragraph 4(i) of the Policy, the Panel directs that the disputed domain name be transferred to the Complainant.
Amarjit Singh
Sole Panelist
Date: October 22, 2018
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