The Complainant is Patanjali Ayurved Ltd. of Pushpanjali, Bijwasan, New Delhi, India, represented by Amit Thareja, India.
The Respondent is M/S. Sr associate, SukhP of Noida, India / SR Associate, S R Associate of Noida, Uttar Pradesh, India, represented by The Veritas Chambers Law Offices, India. 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 October 29, 2018. On October 29, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 30, 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 October 31, 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 amendment to the Complaint on November 1, 2018.
The Center verified that the Complaint, together with the amendment to 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 November 5, 2018. In accordance with the Rules, paragraph 5, the due date for Response was November 25, 2018. The Respondent sent an email on November 20, 2018, through his counsel to the Center, stating that his client did not receive a copy of the Complaint and the documents except the letter dated November 5, 2018. The Center replied by email on November 21, 2018, to the Respondent, as well as his counsel, that it had attached a copy of the Complaint, its annexes, and the amendment to the Complaint, along with letter dated November 5, 2018, to all contact details (email, post and fax) made known to the Center by the Complainant, and by the Registrar of the disputed domain name. Track DHL Express Shipments confirmed the delivery of the package sent by the Center to the Respondent on November 12, 2018. Hence, the Respondent was duly delivered the Complaint and the documents. But, he did not file a Response to the allegations made in the Complaint.
The Center appointed Ashwinie Kumar Bansal as the sole panelist in this matter on December 3, 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 company formed and registered under the Indian Companies Act, 1956. The Complainant is the owner of the Trademark PATANJALI. The Complainant is in the business of procuring, processing, manufacturing and marketing of herbal products including medicines, cosmetics and food products, beverages, personal and home care products, extracts and so many similar commodities. The Complainant is the owner of several trademark registrations for the word mark PATANJALI, including Trademark No. 1661258, registred on March 5, 2008, in India.
The disputed domain name was registered by the Respondent on November 20, 2017. The disputed domain name is being used to sell products similar to those of the Complainant, namely herbal products for medicinal and personal use. 5. Parties’ Contentions A. Complainant
The Complainant has registered the Trademark PATANJALI in Australia, Switzerland, European Union, Republic of Korea, Norway, New Zealand, Oman, Philippines, Russian Federation, Singapore, United Arab Emirates, and Mauritius. The Complainant has made applications for registration of the Trademark PATANJALI in the following countries: Bangladesh, Nepal, Sri Lanka, Bhutan, Thailand, Malaysia, Kuwait, Indonesia, the United Kingdom of Great Britain and Northern Ireland, United Arab Emirates, Canada, United States of America, Australia, and New Zealand. The Complainant has used the Trademark PATANJALI since 2006. The Complainant has common law rights in the Trademark PATANJALI and all other intellectual property rights associated with the Trademark.
The disputed domain name was registered by the Respondent in 2017, after the Complainant had already started using the Trademark PATANJALI in 2006. The Respondent filed the trademark application number 3735143 on January 23, 2018, for the term SUKHPATANJALI, and providing the user detail: “Proposed to be Used”, whereas the Complainant has been continuously using the Trademark PATANJALI since 2006.
The Complainant is engaged in the business of procuring, processing, manufacturing, and marketing of herbal products including medicines, cosmetics and food products, beverages, personal and home care products, extracts and so many similar commodities. The Respondent has no association with the Complainant but he is using the Trademark of the Complainant on his website as well as he is selling products similar to the products in which the Complainant deals.
The Respondent has no “rights or legitimate interest” in the disputed domain name because the Complainant has not granted any permission to the Respondent to use its Trademark in the disputed domain name. The Complainant has not given the Respondent any authority to register, maintain or operate the disputed domain name or the website incorporating the Trademark.
The disputed domain name of the Respondent is identical to the Trademark of the Complainant. The Trademark PATANJALI of the Complainant is incorporated in the disputed domain name along with prefix “sukh” which causes confusion to the public. Such use of the disputed domain name violates the rights of the Complainant in the Trademark. The disputed domain name is identical and/or confusingly similar to the Trademark in which the Complainant has earlier rights.
The website of the Respondent is involved in online selling of Ayurvedic Medicines and other Medicated Products, which fall in same category of products as the Complainant’s. By using the disputed domain name, the Respondent intends to confuse the public and take undue advantage of the goodwill of the Trademark PATANJALI.
The Respondent is using the disputed domain name to mislead and divert consumers and he has tarnished the Trademark of the Complainant as he has made malicious statements about the food products. The Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. The Respondent has no rights or legitimate interests in the disputed domain name.
The Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of the Complainant. The Respondent is selling the products related to Ayurvedic Medicines, which are similar to the products in which the Complainant is dealing. The Respondent is using the disputed domain name to attract Internet users for personal gain by creating a likelihood of confusion with the Complainant’s Trademark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website. Moreover, the disputed domain name confuses the public as to the source of the information given on the website. The Respondent is using the disputed domain name in bad faith. The Respondent has no rights or legitimate interests in the disputed domain name. B. Respondent
Despite the letter of November 20, 2018, the Respondent has failed to address the allegations made in the Complaint. 6. Discussion and Findings
As per paragraph 5(e) of the Rules, where a respondent does not submit a substantive response, in the absence of exceptional circumstances, the panel may decide the dispute based upon the Complaint. The Panel does not find any exceptional circumstances in this case preventing it from determining the dispute based upon the Complaint, notwithstanding the failure of the Respondent to file a substantive response. As per paragraph 14(b) of the Rules, where a party does not comply with any provision of the Rules, the Panel is to draw such inferences there from as it considers appropriate. It remains incumbent on the Complainant to make out its case in all respects under paragraph 4(a) of the Policy, which sets out the three elements that must be present for the proceeding to be brought against the Respondent, which the Complainant must prove to obtain a requested remedy. It provides as follows:
“4(a). Applicable Disputes. You are required to submit to a mandatory administrative proceeding in the event that a third party (a “complainant”) asserts to the applicable Provider, in compliance with the Rules of Procedure, that
(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.
In the administrative proceeding, the complainant must prove that each of these three elements are present.”
The Panel will address the three aspects of the Policy listed above. A. Identical or Confusingly Similar
The Complainant has produced two registration certificates granted by the Trade Marks Registry of India, in its favour in respect of the Trademark PATANJALI. The Complainant has been using the Trademark PATANJALI since 2006.
The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) section 1.7 provides the consensus view of panelists: “While each case is judged on its own merits, in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.”
The disputed domain name incorporates the Complainant’s Trademark PATANJALI in its entirety, with the prefix “sukh”. The Complainant’s Trademark PATANJALI is clearly recognizable in the disputed domain name, and the prefix of “sukh” does not serve to avoid a finding of confusing similarity. The generic Top-Level Domain “.com” may be disregarded for the purposes of comparison under this element.
The Panel finds that the disputed domain name is confusingly similar to the Trademark PATANJALI. B. Rights or Legitimate Interests
The Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in the disputed domain name . Nevertheless, it is well settled that the Complainant needs only to make out a prima facie case, after which the burden of production shifts to the Respondent to rebut such prima facie case by demonstrating rights or legitimate interests in the disputed domain name.
The Respondent has registered the disputed domain name consisting of the entire Trademark PATANJALI with prefix “sukh”. The Complainant has been using the Trademark for a long time since 2006 and it has trademark registrations in its favour. The Complainant has not authorized or permitted the Respondent to use the Trademark PATANJALI.
Paragraph 4(c) of the Policy lists circumstances, in particular but without limitation, which, if found by the Panel to be proved, may demonstrate the respondent’s rights or legitimate interests in a disputed domain name for the purposes of paragraph 4(a)(ii) of the Policy. Section 2.1 of WIPO Overview 3.0 provides:
“While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of ‘proving a negative’, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”
The Respondent has failed to file a substantive response to rebut the Complainant’s prima facie case or to explain its rights or legitimate interests. The Respondent has thus failed to demonstrate any rights or legitimate interests in the disputed domain name as per paragraph 4(c) of the Policy.
The Complainant refers to a pending trademark application for SUKHPATANJALI made by the Respondent. The Panel notes that the Respondent has not submitted an evidence of such trademark registration. Furthermore, as stated in section 2.12.2 of the WIPO Overview 3.0, the evidence of a respondent’s trademark does not automatically confer rights or legitimate interests to a respondent, specifically where the overall circumstances demonstrate that such trademark was obtained primarily to prevent a complainant’s exercise of its rights.
Based on the facts as stated above, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name . C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy identifies, in particular but without limitation, four circumstances which, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. Each of the four circumstances in paragraph 4(b) of the Policy, if found, is evidence of “registration and use of a domain name in bad faith”. The Complainant is required to prove both that the disputed domain name was registered in bad faith and that it is being used in bad faith. Hence, circumstances at the time of registration and thereafter have to be considered by the Panel.
Section 3.1.1 of WIPO Overview 3.0 provides:
“If on the other hand circumstances indicate that the respondent’s intent in registering the disputed domain name was in fact to profit in some fashion from or otherwise exploit the complainant’s Trademark, panels will find bad faith on the part of the respondent. While panel assessment remains fact-specific, generally speaking such circumstances, alone or together, include: (i) the respondent’s likely knowledge of the complainant’s rights, (ii) the distinctiveness of the complainant’s mark, (iii) a pattern of abusive registrations by the respondent, (iv) website content targeting the complainant’s trademark, e.g., through links to the complainant’s competitors, (v) threats to point or actually pointing the domain name to trademark-abusive content, (vi) threats to “sell to the highest bidder” or otherwise transfer the domain name to a third party, (vii) failure of a respondent to present a credible evidence-backed rationale for registering the domain name, (viii) a respondent’s request for goods or services in exchange for the domain name, (ix) a respondent’s attempt to force the complainant into an unwanted business arrangement, (x) a respondent’s past conduct or business dealings, or (xi) a respondent’s registration of additional domain names corresponding to the complainant’s mark subsequent to being put on notice of its potentially abusive activity.”
The Complainant has produced evidence of registration of the Trademark PATANJALI in its favour given by the Trademark Registry in India. The Respondent has registered the disputed domain name recently on November 20, 2017, incorporating the Trademark PATANJALI of the Complainant with prefix “sukh”. The disputed domain name resolves to a website online selling of Ayurvedic Medicines and other Medicated Products which falls in same category as category of products of the Complainant. Such use of the disputed domain name is bound to lead to confusion amongst the public, particularly when the Complainant itself is involved in similar products relating to Ayurvedic Medicines. The Respondent is neither making a bona fide offering of goods or services nor a legitimate, noncommercial or fair use of the disputed domain name.
In view of these facts, the disputed domain name is likely to cause confusion as to source, sponsorship, or affiliation, which constitutes bad faith registration and use under paragraph 4(b)(iv) of the Policy.
The Complainant has not granted the Respondent permission or a license of any kind to use its Trademark and register the disputed domain name . Such unauthorized registration by the Respondent suggests opportunistic bad faith. The Respondent’s true purpose in registering and using the disputed domain name , which incorporates the entire trademark of the Complainant, is, in the Panel’s view, to capitalize on the reputation of the Trademark.
The Panel therefore finds that the disputed domain name has been registered and is being used by the Respondent 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.
Ashwinie Kumar Bansal
Sole Panelist
Date: December 6, 2018
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