The Complainant is Bundl Technologies Private Limited of Bangalore, India, represented by King Stubb & Kasiva, India.
The Respondents are Domains By Proxy, LLC of Scottsdale, Arizona, United States of America / Shomprakash Sinha Roy of Bangalore, India, represented by IP LEX GLOBAL SERVICES. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 25, 2018. On September 25, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 25, 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 Complainant filed an amended Complaint on September 27, 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 October 15, 2018. In accordance with the Rules, paragraph 5, the due date for Response was November 4, 2018. A number of Responses were filed with the Center on November 4, 2018 from both claimed Respondents, and/or their respective counsel.
The Center appointed Harini Narayanswamy as the sole panelist in this matter on November 12, 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 an Indian company that is in the business of providing on-demand food delivery. The Complainant operates its business through a platform under the SWIGGY trademark. The registered trademarks owned by the Complainant are:
Country
Application No.
Filing Date
Classes
Applied for
Status
India
3078340
October 13, 2015
39
SWIGGY
Registered
India
2773664
October 13, 2015
43
SWIGGY
Registered
India
3078323
July 14, 2014
39, 43
S (figurative)
Registered
India
3077443
October 13, 2015
39, 43
SWIGGY (figurative)
Registered
The Respondent, Shomprakash Sinha Roy, is an individual who is not connected with a second claimed respondent. The second claimed respondent is Cure Foods Private Limited, an Indian company that is engaged in the business of providing health related products and services including the delivery of health food orders that are placed through its online portal.
The Complainant registered the domain name on March 28, 2013 and operates its website from the domain name. The Respondent registered the dispute domain name on October 3, 2017. The disputed domain name has been redirected to the website of the second claimed respondent “/eat/” by the Respondent. 5. Parties’ Contentions A. Complainant
The Complainant alleges that it has been in the food delivery business since August 7, 2014. Its customers place food orders using a mobile smart phone application called “SWIGGY”. The Complainant states that its SWIGGY application has been downloaded by more than 10,000,000 users from Google’s Android Play Store. Menus of local restaurants can be accessed from its online ordering menu, and orders placed by its customers are fulfilled by a fleet of delivery personnel. The Complainant states that it is presently operating in 26 cities in India and its website “www.” is ranked 4,464 in the world and in India it is ranked 251. The Complainant states it has won the “Startup of the Year Award” at ET Startup Awards 2017 and has provided figures that show significant revenue growth of its business in the three years from 2014 to 2017.
The Complainant states that the SWIGGY mark is exclusively associated with its business and it has expended substantial amounts towards promoting and advertising the mark (INR 2,324,575,338 over the last three years). The Complainant states that the disputed domain name is identical and confusing similar to its mark and it has been registered by the Respondent to divert its customers to the second claimed respondent’s portal “/eat” and it targets the fame and reputation associated with its mark.
The Complainant argues that users may be mislead to believe that services offered through the disputed domain name are either licensed, endorsed or authorized by the Complainant, whereas no such authorization has been given. The Complainant argues that the Respondents have no rights or legitimate interests in the disputed domain name and the paragraph 4(c) provisions do not apply here. The Complainant argues that the disputed domain name was registered and is being used in bad faith. Further it is asserted that since the second claimed respondent is a recent entrant in a similar line of business as the Complainant, it is likely to benefit from the redirection of the disputed domain name and acquire customers unlawfully. The Complainant requests the transfer of the disputed domain name. B. Respondents Respondent
The Respondent states that he is a published author, communicator, awardee from Subash Ghai’s Institute, a Forbes celebrity list nominee, a blogger and fitness enthusiast with a “decent” social following for his nutrition and fitness advice. He states that the disputed domain name initially pointed to a list of restaurants tagged under the “Health Food” filter on SWIGGY. When this redirection stopped working, he states that he contacted the Complainant by email in March 2018 and April 2018 with the intention of selling the disputed domain name to the Complainant. As no response was received from the Complainant, the Respondent states that he redirected the disputed domain name to the second claimed respondent’s website for readers to order health food directly. He states that the second claimed respondent did not “incentivize” him for this re-direction and has nothing to do with the disputed domain name or its redirection.
The Respondent alleges that he bought the disputed domain name along with other “.fit” domain names. He adds that no revenue has been earned from it and that he did not intend to infringe the SWIGGY mark. He further argues that word “Swiggy” is a dictionary word that was mentioned in the 1985 Hollywood movie “The Breakfast Club”. The First Respondent states that he has registered the disputed domain name after conducting a search for SWIGGY FIT under class 43 and found it was not “trademarked”. He argues Internet bloggers can legitimately buy domain names for commentary and fair-use, like publishing reviews.
The Respondent argues that he had brought the disputed domain name “fair and square” as it was legally available for purchase and that other “Swiggy” domain names like , and are still available for sale. He further argues that every possible domain name combination is not “trademarked” especially if the original word is not a proper noun and if not, the registrars ought to be notified to stop selling domain names that have the word “Swiggy”.
The Respondent then states that he understands now why “Swiggy” would want to control interest in the disputed domain name and states he has no objection to the Complainant acquiring it but requests for a fair compensation. He then expressed his sincere apologies for any inconvenience or distress to people involved. As the attempt to settle the dispute between the parties failed, the Respondent explained that he was open to the settlement but did not agree with the terms of settlement proposed as by Complainant. He alleges the terms of settlement were not discussed with him or his legal representative and was unilaterally decided by the Complainant and was not mutually agreed to.
In the “final and official response”, submitted by the Respondent through his counsel on November 4, 2018, he again emphasizes that “Swiggy” is not a coined word but is a dictionary word. The Respondent argues that the mark is not a well-known mark as defined under the trademark statute and alleges it lacks substantial reputation all over India and that the Complainant’s trademarks are registered under classes 39 and 43 and not under class 41. The Respondent again reiterates that the second claimed respondent has no role in this dispute, and that the Respondent had by mistake redirected the disputed domain name to the “/eat” website.
The Respondent denies all allegations made in the Complaint and requests that the remedy sought for by the Complainant be denied. Finally, in contradiction to the previous statement, the Respondent states that he has no objection to the remedy requested for by the Complainant as it has neither rights or vested interest in the disputed domain name. (The Panel assumes that the last contradictory statement has been made in error, which is not consistent with the other submissions made by the Respondent). Second Claimed Respondent
The second claimed respondent states that it has no knowledge of the Respondent’s disputed domain name or its redirection to its website and has no role to play in this dispute. The second claimed respondent states it is in the business of preparing healthy and fresh meals and it marketed through multiple channels under the EAT.FIT trademark. The second claimed respondent adds that it has other marks for its healthcare and wellness products including the CURE.FIT mark and related website and mobile phone applications. The “” mobile application has about 500,000 downloads on the Google Play Store states the second claimed respondent.
The second claimed respondent argues that the Rules, define a “respondent” as the holder of the domain name against which a complaint is initiated under the UDRP Policy. The second claimed respondent states it is not the registrant or the holder of the disputed domain name and does not excise any control over the registrant of the disputed domain name.
The second claimed respondent states it has no interest in the legal outcome of the proceeding and has no objection to the remedy requested for by the Complainant. The second claimed respondent requests for declaration that it has no role to play in the dispute and is innocent of all allegations levelled against it by the Complainant. The second claimed respondent adds that due to the actions of the Respondent, it has been “wrongly impleaded” as a party and is burdened with unnecessary legal costs and disruption to its business and states that it shall not hesitate to take legal action against the Respondent, should the need arise. 6. Discussion and Findings General Observations regarding Parties Submissions
The Policy does not envisage numerous or multiple submission by the parties to a dispute due to the expeditious nature of the proceedings under the Policy. Generally, each party is given one opportunity to make its submission, unless the panel specifically requests the parties to make further submissions. To be fair to all the parties, it is appropriate that the parties to the dispute are treated with equality and that each party is given a fair opportunity to present its case. Against this background, it needs to be mentioned that the Respondent has sent numerous email communications and has also submitted a formal Response in these proceedings. Although the Policy and the Rules do not provide for numerous submissions by any one party to the dispute, the Panel has nonetheless addressed and discussed the arguments and submissions made by the Respondent and has not restricted the findings in this case to only the official Response submitted by the Respondent. The Parties to the Dispute
A respondent is defined as the registrant of the disputed domain name and is required to submit to a mandatory proceeding in the event that a complaint is filed in accordance with the Policy. The Panel finds the Respondent, Domains By Proxy, LLC / Shomprakash Sinha Roy, who is the registrant of the disputed domain name is the Respondent of this dispute.
The Respondent has admitted to redirecting the disputed domain name to the second claimed respondent’s website, of which the second claimed respondent had no knowledge. This fact has been admitted and acknowledged by both the claimed Respondents. It is therefore found that the second claimed respondent who is not the registrant of the disputed domain name and has no connection with the Respondent, has been unwittingly drawn into this dispute. The Panel acknowledges that the second claimed respondent is not liable or responsible for the actions of the Respondent. The present dispute therefore is between the Complainant and the Respondent, Domains By Proxy, LLC / Shomprakash Sinha Roy, who are the concerned parties to this dispute. Where the term “the Respondent” is used, it shall imply and refer only to the Respondent, Domains By Proxy, LLC / Shomprakash Sinha Roy. The Merits of the case
The Complainant is required to establish three elements to obtain the remedy of transfer of the disputed domain name, 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.
The Complainant has provided details of ownership of its registered SWIGGY trademarks. 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, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). Accordingly, it is found that the Complainant has established that it has rights in the SWIGGY trademark.
The disputed domain name contains the SWIGGY trademark with the generic Top‑Level Domain (“gTLD”) “.fit” . It is well established that the use of the entire mark with a gTLD in a disputed domain name does not eliminate confusing similarity with the mark in question. The Respondent’s arguments seem to suggest that the gTLD is a word and therefore distinguishes it from the trademark. The gTLD is generally not considered a word appended to the trademark, as the gTLD is a standard technical requirement for a domain name and the gTLD does not hinder finding confusing similarity with the mark.
Accordingly, it is found that the disputed domain name is identical or confusingly similar to the mark in which the Complainant has rights. 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 argued that the provisions mentioned under paragraph 4(c) of the Policy are not applicable in the present case and the Respondents lacks rights and legitimate interests in the disputed domain name. The Complainant has further argued that the Respondent has registered and used the disputed domain name for purposes of misleading and diverting its customers based on the reputation associated with its mark and has used its SWGGY mark without any approval or authorization to do so.
The Respondent has argued that the disputed domain name was legally available for purchase and that it is legitimate for Internet bloggers to buy domain names to provide content such as for legitimate commentary or to publish reviews and cited an example of . No evidence has however been adduced by the Respondent to shows that the disputed domain name is being used for purposes of commentary or for posting reviews or any other legitimate noncommercial fair use purposes that may be considered non-infringing.
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 especially noting the nature of the disputed domain name and, in this case, that the disputed domain name is identical to the Complainant’s trademark. See section 2.5.1 of the WIPO Overview 3.0. 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 name or mark per se as part of its addresses for such a website.
It has been consistently held by UDRP panels that the use of the trademark per se in the disputed domain name is likely to mislead Internet users due to the high possibility of affiliation with the trademark in view of the nature of the disputed domain name. UDRP 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 a respondent for commentary (considering the nature of the disputed domain name). See Puravankara Projects Limited v. Saurabh Singh,WIPO Case No. D2014-2054. 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.
The Panel finds that the Respondent has not provided evidence to show any rights or legitimate interests in the disputed domain name, such as being commonly known by the disputed domain or using the disputed domain name in connection with a bona fide offering of goods or services or for any legitimate or fair use purposes. The disputed domain name has been admittedly diverted by the Respondent to the second claimed respondent’s website, which the Panel finds, misleads Internet users based on the Complainant’s mark.
It is found that the Respondent has not demonstrated or shown rights or legitimate interests in the disputed domain name. The second claimed respondent is not the registrant of the disputed domain name and is not connected with the Respondent and the Panel acknowledges that the second claimed respondent is not required to submit any explanations under the three elements of paragraph 4(a) of the Policy. The Complainant has successfully made a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name under the second element. 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.
The Respondent has argued that the word “Swiggy” is a dictionary word or a proper noun and has also argued that the SWIGGY trademark is not a well-known mark. The Panel finds there is no basis for the Respondent’s arguments as the Complainant has provided evidence of extensive use of its SWIGGY mark in commerce and therefore Internet users are likely to associate the mark with the Complainant and its business. The Complainant has provided evidence of revenue figures for the past three years which show the scale of its business operations under the mark. The mobile phone downloads of Complainant’s SWIGGY application are over 10,000,000, which demonstrates that a significantly large number of people are aware of the mark. The Complainant has shown that its website is ranked as 4,464 in the world, and 251 in India. The Complainant has been recognized as the “Startup of the Year” at the ET Startup Awards 2017. The Panel finds from the evidence, that the Respondent’s arguments of the SWIGGY mark not being well‑known are unfounded.
The Respondent’s arguments seem to indicate a mistaken notion that if a trademark is a dictionary word, or if it is not a coined word or proper noun it can be violated with impunity. Such arguments by the Respondent does not help his case. The strength of a trademark is gained from its extensive use in commerce and the reputation associated with the mark, which the Complainant has established in these proceedings.
The Panel finds the Respondent has used the trademark, in a manner in which it is likely to be widely assumed by the public and Internet users that the trademark used in the disputed domain name is associated with the Complainant, which is considered bad faith registration and use of the disputed domain name under paragraph 4 (b) (iv) of the Policy. The Respondent has admitted to redirecting the disputed domain name to the second claimed respondent’s website, a business competitor of the Complainant. In the Panel’s view, the admission by the Respondent of trying to sell the disputed domain name to the owner of the trademark, and then redirecting it to the website of the Complainant’s competitor is evidence of classic cybersquatting.
The Panel finds the Complainant has 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. 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: November 27, 2018
Full & Egal Universal Law Academy