The Complainant is Patanjali Paridhan Pvt. Ltd. of Haridwar, India, internally-represented.
The Respondent is Domains by Proxy, LLC of Scottsdale, Arizona, United States of America / Manojeet Karmakar of Kanker, 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 March 14, 2019. On March 14, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 14, 2019, 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 March 15, 2019 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 March 19, 2019.
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 March 26, 2019. In accordance with the Rules, paragraph 5, the due date for Response was April 15, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 16, 2019. Further in pursuance of Rules, paragraphs 11(a), 11(b) and an examination of the Domain Name Registration Agreement of the “Registrar”, Annex 6 to the Complaint, the language of the present administrative proceeding is held to be English.
The Center appointed Shwetasree Majumder as the sole panelist in this matter on April 24, 2019. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and the Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
On May 14, 2019 the Panel issued Procedural Order No. 1 requesting the Complainant to file provide evidence of being part of the same group of companies with Patanjali Ayurved Ltd, owner of the PATANJALI trademark, or provide an express authorization from Patanjali Ayurved Ltd to base its Complaint on said mark. The Respondent was also granted three days to submit any comments it may have to the Complainant’s filing. The Complainant filed a letter of authorization from Patanjali Ayurved Ltd on May 16, 2019. The Respondent did not submit any comments. 4. Factual Background
The Complainant namely Patanjali Paridhan Pvt. Ltd. is a company duly incorporated and registered under the Indian Companies Act 1956. The Complainant is an associated/group company of Patanjali Ayurved Ltd (“associated/group company”) which has also been incorporated and registered under the Indian Companies Act, 1956.
The Complainant’s associated/group company is the registered owner of the trademark PATANJALI in various countries across the world including India (registration no. 2254699, registered on December 22, 2011) while the Complainant is the registered proprietor of the trademark PATANJALI PARIDHAN in India (registration no. 3885323, registered on July 11, 2018). Copies of the trademark registration certificates for the trademarks PATANJALI and PATANJALI PARIDHAN in India are attached as Annex 4 and 5 of the Complaint.
The Complainant’s associated/group company, being the registered owner of the trademark PATANJALI has granted the Complainant a license to use the said trademark by virtue of a trademark license agreement dated March 2, 2018 (Annex 2 of the Complaint) which is valid for a term of five years from the date of its execution.
The disputed domain name was registered by the Respondent on January 22, 2018 and does not resolve to an active website. 5. Parties’ Contentions A. Complainant
The Complainant states that it is carrying on a well-established business inter alia as manufacturers, processors, marketers, dealers, retailers and exporters of wide range of textile goods including fabrics, suiting, shirting, dress materials, readymade garments, bed linen, shoes, accessories, etc., while its associated/group company is dealing in procuring, processing, manufacturing and marketing of herbal products including medicines, cosmetics and food products, beverages, personal and home care products, extracts and other similar commodities.
The Complainant contends that its associated/group company is the registered owner of the trademark PATANJALI and has secured numerous trademark registrations for the same in various countries across the world namely Australia, Switzerland, European Union, Republic of Korea, Norway, New Zealand, Oman, Philippines, Russian Federation, Singapore, United Arab Emirates and Mauritius. The Complainant further states that its associated/group company also has pending applications for the PATANJALI trademark in the following countries – Bangladesh, Nepal, Sri Lanka, Bhutan, Thailand, Malaysia, Kuwait, Indonesia, United Kingdom, United Arab Emirates, Canada, United States of America, Australia, New Zealand, etc.
The Complainant places reliance on a valid and subsisting trademark registration in its favour for the trademark PATANJALI PARIDHAN (registration No. 3885323 dated July 11, 2018) and in favour of the Complainant’s associated/group company for the trademark PATANJALI (registration No. 2254699 dated December 22, 2018) and asserts its rights in the latter through a trademark license agreement dated March 2, 2018.
The Patanjali group of companies, which include both the associated/group company of the Complainant and the Complainant claim to have been using the trademark PATANJALI since 2006. The Complainant as well as its associated/group company have common law rights in the PATANJALI and PATANJALI PARIDHAN trademarks and all other intellectual property rights associated with the said trademarks.
The Complainant submits that the disputed domain name was registered by the Respondent on January 22, 2018 well after the Complainant and its associated/group company commenced the use of its trademarks PATANJALI and PATANJALI PARIDHAN in commerce. The Complainant contends that the disputed domain name wholly incorporates the trademark PATANJALI and is therefore identical or confusingly similar to its trademarks, upon which it has prior established rights. The Complainant further states that the Respondent has falsely indicated an association with the Complainant and its associated/group company when no such connection in fact exists between the parties. Neither the associated/group company of the Complainant nor the Complainant have authorised the Respondent to use an identical and/or confusingly similar name as its registered and well-known trademarks PATANJALI and PATANJALI PARIDHAN either in relation to registration of domain names or for the operation of the websites.
The Complainant argues that the Respondent has no rights or legitimate interests in the disputed domain name and has no permission to use its registered and well-known trademarks, PATANJALI and PATANJALI PARIDHAN as a part of the disputed domain name. The Complainant submits that the Respondent is not making a bona-fide offering of goods or services or using the disputed domain name for legitimate fair use purposes without the intention of making unsolicited commercial gains, of misleading internet users and tarnishing the reputation and goodwill associated with the PATANJALI and PATANJALI PARIDHAN trademarks. The Complainant asserts that the Respondent is a resident of India and is not commonly known by the disputed domain name. It states that the Respondent has registered the disputed domain name only to confuse internet users by taking undue advantage of the goodwill associated with the PATANJALI and PATANJALI PARIDHAN trademarks of the Complainant and its associated/group company.
The Complainant contends that the Respondent has primarily registered and used the disputed domain name in bad faith for the purpose of disrupting a competitor’s business. The Complainant submits that the Respondent has reserved the disputed domain name with a mala fide intent to attract internet users for personal gains by creating a likelihood of confusion as regards the source, sponsorship, affiliation or endorsement of the Respondent’s disputed domain name and activities by incorporating the registered and well-known trademarks PATANJALI and PATANJALI PARIDHAN of the Complainant and its associated/group company. The Complainant in light of the said submissions requests for the transfer of the disputed domain name in its favour. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings:
The Respondent did not file any response. However, as set out in section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the consensus view of UDRP panels is that the Respondent’s default does not automatically result in a decision in favour of the Complainant. The Complainant has to still establish, each of the three elements required by paragraph 4(a) of the Policy.
Although the Panel may draw appropriate inferences from the Respondent’s default, paragraph 4 of the Policy requires the Complainant to support its assertions with actual evidence in order to succeed in these proceedings. Paragraph 14(b) of the Rules provides that in the absence of exceptional circumstances, the Panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules. The Panel finds that in this case there are no such exceptional circumstances.
Under 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
The Panel notes that the Complainant has produced two registration certificates issued by the Indian Trade Marks Registry for a logo incorporating the mark PATANJALI PARIDHAN registered in favour of the Complainant and for the mark PATANJALI registered in favour of the Complainant’s associated/group company Patanjali Ayurved Ltd., of which the Complainant is a licensee. A perusal of the license agreement filed as Annex 2 to the Complaint, demonstrates, in clause 2 that the licensor Patanjali Ayurved Ltd. asserts sole and exclusive ownership of 23 trademarks, which are licensed to the Complainant for use under the agreement, which include both the mark PATANJALI and the mark PATANJALI PARIDHAN.
Although there is no evidence filed by the Complainant of the registration status and current ownership of the said 23 marks, the Panel has independently visited the Internet in order to obtain additional light on the matter, which power of the Panel has been read into paragraph 10(a) of the Rules by several UDRP decisions (see Société des Produits Nestlé SA v. Telmex Management Services,WIPO Case No. D2002-0070, InfoS, Inc. v. Hari Prakash,WIPO Case No. D2000-0076).
The Panel notes that the registration for the mark PATANJALI PARIDHAN (word in English) under No. 3469080 in Class 22, is valid and subsisting since January 30, 2017 in favour of Patanjali Ayurved Ltd. The marks identified at Serial Nos. 20 and 21 of the table at paragraph 2 in Annex 2 to the Complaint are vernacular registrations for the said word, which are also valid and subsisting in Classes 22 and 24 in favour of Patanjali Ayurved Ltd. The logo mark incorporating the words PATANJALI PARIDHAN under registration No. 3885323 in favour of the Complainant is dated July 11, 2018.
Based on the mark PATANJALI PARIDHAN, in which the Complainant has rights, the Complainant has standing to file this Complaint (see section 1.2 of the WIPO Overview 3.0 ). For completeness, the Complainant has not furnished evidence of any specific authorization from Patanjali Ayurved Ltd. to institute the present proceedings based on the latter’s PATANJALI trademark. The Panel notes that paragraph 4(a)(i) of the Policy requires that the disputed domain name be identical or confusingly similar to a trademark or service mark in which the Complainant has rights. These words do not require that the Complainant be the owner of the mark and would include, for example, an exclusive licensee of the mark. It has been accepted in several UDRP decisions that a company related as subsidiary or parent to the registered holder of a mark may be considered to have rights in the mark. (See Miele, Inc. v. Absolute Air Cleaners and Purifiers,WIPO Case No. D2000-0756 and Grupo Televisa, S.A., Televisa, S.A. de C.V., Estrategia Televisa, S.A. de C.V., Videoserpel, Ltd. v. Party Night Inc., a/k/a Peter Carrington, WIPO Case No. D2003-0796). However, it is noted that the relationship between the Complainant and Patanjali Ayurved Ltd. has been described as that of group and associated companies and not that of a parent and subsidiary. A search in the online database of the Registrar of Companies in India did not reveal any particulars of the Complainant although it is pleaded that the Complainant is a private limited company. The license agreement filed as Annex 2 to the Complaint does not identify the Complainant as an exclusive licensee of Patanjali Ayurved Ltd.
In this backdrop, the Panel felt it could be useful to seek additional material from the Complainant to affirm its locus standi to base the present Complaint on the PATANJALI mark in the form of a specific authorization from Patanjali Ayurved Ltd. A procedural order was issued to the said effect, requesting that the Complainant provide evidence of being part of the same group of companies with Patanjali Ayurved Ltd. or provide an express authorization from Patanjali Ayurved Ltd to base its Complaint on the PATANJALI mark.
In response to the procedural order, the Complainant filed an authority letter dated March 1, 2019, on the letterhead of Patanjali Ayurved Ltd. which expressly authorized the Complainant to file and institute the present proceedings in respect of the PATANJALI mark.
In light of the authority letter so filed, the Panel finds that the Complainant has removed any doubt and satisfied the requirement to establish that in addition to its own rights in the PATANJALI PARIDHAN mark, it also has rights in the trademark PATANJALI for the purposes of the present matter. The Panel has hereafter referenced the Complainant and Patanjali Ayurved Ltd. as the “Complainant Group”.
In several UDRP panel decisions, various panels have found that the fact that a domain name wholly incorporates a Complainant’s registered trademark is sufficient to establish identity or confusingly similarity for the purpose of the Policy. (See Oki Data Americas, Inc. v. the ASD, Inc,WIPO Case No. D2001-0903; Go D, Inc. v. Shoneye’s Enterprise,WIPO Case No. D2007-1090; and Magnum Piering Inc v. The Mudjackers,WIPO Case No. D2000-1525).
In the said backdrop, the Panel finds that the disputed domain name is identical or confusingly similar to the registered trademarks PATANJALI/PATANJALI PARIDHAN, which are proprietary to the Complainant Group.
The Panel therefore finds that the Complainant has satisfied the first requirement of paragraph 4(a) of the Policy that the disputed domain name namely is identical and/or confusingly similar to the registered trademarks PATANJALI and PATANJALI PARIDHAN in which the Complainant Group has rights. B. Rights or Legitimate Interests
The Complainant must demonstrate prima facie that the Respondent lacks rights or legitimate interests in the disputed domain name, which the Respondent may rebut, once the Complainant has made such a prima facie showing (see Croatia Airlines d.d. v. Modern Empire Internet Ltd,WIPO Case No. D2003-0455; Document Technologies, Inc. v International Electronic Communications Inc.,WIPO Case No. D2000-0270).
Given that the Respondent was duly notified of the Complaint and has chosen not to rebut it on merits, the Panel draws an adverse inference against the Respondent with respect to the allegations made by the Complainant, from the silence of the Respondent. (See Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009). In any event, the Panel has also carefully reviewed the material on record and arrived at the following conclusions:
(i) The Respondent has no rights or legitimate interests in the disputed domain name as the Complainant has never granted any permission, license or authorisation of any kind to the Respondent to use its registered trademarks, PATANJALI and PATANJALI PARIDHAN as a part of the disputed domain name.
(ii) The Respondent is a resident of India and is not commonly known by the disputed domain name. The Respondent appears to be a cybersquatter who seems to have registered the disputed domain name only to confuse internet users by taking undue advantage of the PATANJALI and PATANJALI PARIDHAN trademarks of the Complainant and its associated/group company.
(iii) The Respondent is not making a bona fide offering of goods or services or using the disputed domain name for legitimate fair use purposes without the intention of making unsolicited commercial gains or misleading internet users or tarnishing the reputation and goodwill of the PATANJALI and PATANJALI PARIDHAN trademarks.
Consequently, the Panel finds that the Respondent has no rights or legitimate interests to use the disputed domain name. Therefore, the second element in paragraph 4(a) of the Policy has been duly satisfied by the Complainant. C. Registered and Used in Bad Faith:
According to the Policy, bad faith is understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark (see section 3.1 of the WIPO Overview 3.0). According to section 3.1.4 of the WIPO Overview 3.0, the mere registration of a domain name that is identical to a registered and widely-known trademark, by an unaffiliated entity can itself create a presumption of bad faith. UDRP panels have consistently found that it ought to be presumed that the respondent should have known of the complainant’s trademark if it is shown to be in wide use on the Internet or otherwise (see Research In Motion Limited v. Privacy Locked LLC/Nat Collicot,WIPO Case No. D2009-0320; and The Gap, Inc. v. Deng Youqian, WIPO Case No. D2009-0113).
In the backdrop of the Complainant’s use and trademark registrations, the Panel finds it clear that the Respondent ought to have constructive notice of the rights of the Complainant and its associated/group company in the PATANJALI and PATANJALI PARIDHAN trademarks at the time of registration of the disputed domain name. It is by the Panel that the impending launch of a clothing line and stores by the Complainant Group had received significant media coverage (proof of which is noted online) at the time of registration of the disputed domain name by the Respondent. The Panel takes note of the Complainant’s submission that in order to expand its business, it wanted to launch an ecommerce website on the disputed domain name however was unable to do so as said disputed domain name had already been registered by the Respondent.
The Panel takes note of the fact that the disputed domain name was registered by the Respondent on January, 22 2018 well after the Complainant Group had publicly announced the use of the PATANJALI/PATANJALI PARIDHAN marks in commerce. A perusal of the news report dated January 16, 2018 at “/article/companies/patanjali-to-soon-roll-out-textile-portfolio-patanjali-paridhan-ramdev-118011600883_1.html” (independently researched by the Panel) bears testimony to this fact.
Further, it is apparent from the record that the Complainant Group had not authorised the Respondent to use its registered trademarks PATANJALI/PATANJALI PARIDHAN either in relation to the registration of domain names or for the operation of the websites.
In light of the above, the Panel therefore finds merit in the submissions of the Complainant that the Respondent has primarily registered the disputed domain name in bad faith for the purpose of disrupting the brand and business of the Complainant Group.
The Respondent has registered the disputed domain name with a mala fide intent to attract Internet users for personal gains by creating a likelihood of confusion as regards the source, sponsorship, affiliation or endorsement of the Respondent’s disputed domain name and activities by incorporating the registered trademarks PATANJALI and PATANJALI PARIDHAN of the Complainant Group.
The Panel also considers that in the absence of any license or permission from the Complainant Group to use its registered trademarks, no actual or contemplated bona fide or legitimate use of the disputed domain name could reasonably be claimed by the Respondent. (See: Guerlain S.A. v. Peikang, WIPO Case No. D2000-0055 and Alstom, Bouygues v. Webmaster,WIPO Case No. D2008-0281).
The Panel observes that the disputed domain name at present does not resolve to an active website and there is no evidence on file that it has been used in any way. A state of inactivity does not mean that the disputed domain name is being used in good faith. Previous UDRP panels have opined that a passive holding of a disputed domain name can still satisfy the third requirement of bad faith stipulated in paragraph 4(a) of the Policy and that in such cases, the panel must consider all the circumstances of the respondent’s behaviour. (See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).
The Panel therefore concludes that the Respondent’s passive holding of the disputed domain name satisfied the requirement of paragraph 4(a)(iii) of the Policy that the domain name was being used in bad faith by the Respondent because:
(i) The trademarks PATANJALI and PATANJALI PARIDHAN of the Complainant Group are widely known in India. The Complainant Group also holds trademark registrations for the said trademarks which pre-date the registration of the domain by the Respondent.
(ii) The Respondent has provided no evidence of any actual or contemplated good faith use by it of the disputed domain name;
(iii) The Respondent appears to have registered the disputed domain name to prevent the Complainant and its associated/group company from using its trademark in the disputed domain name. (See L’oreal v. Chenxiansheng,WIPO Case No. D2009-0242).
(iv) Lastly, the Respondent, at the time of filing of the Complaint, had employed a privacy service to hide its identity. The Panel finds that the Respondent’s use of a privacy or proxy service which may be used to block or intentionally delay disclosure of the identity of the actual underlying registrant supports an inference of bad faith. The Panel finds the said view to be consistent with previous UDRP panel decisions and WIPO Overview 3.0, section 3.6.
Therefore, the third element in paragraph 4(a) of the Policy has been duly satisfied by the Complainant. 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.
Shwetasree Majumder
Sole Panelist
Date: May 27, 2019
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