The Complainant is Welspun India Limited, India, represented by Khaitan & Co., India.
The Respondent is Contact Privacy Inc. Customer 124780924, Canada / Rohan Shetty, United States of America (“US”). 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with Google LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 5, 2019. On May 6, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 7, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 9, 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 amended Complaint on May 10, 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 May 13, 2019. In accordance with the Rules, paragraph 5, the due date for Response was June 2, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 3, 2019.
The Center appointed Geert Glas as the sole panelist in this matter on June 12, 2019. 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, Welspun India Limited, is an Indian company with a foothold in various countries and is active in different construction sectors such as pipes, steel, textiles and flooring. One of the Complainant’s subsidiaries is “Welspun Flooring Limited”, a company in the flooring sector known for its flooring solutions.
The Complainant is the owner of numerous trademark registrations that consist of or include the term “welspun” in many jurisdictions. For example, the Complainant is the registered proprietor of the US trademark WELSPUN (registered on August 21, 2001 with number 2479400 for goods and services in classes 6, 24, 25 and 26).
The Complainant also registered its domain name on July 22, 2005 and its domain name on September 4, 2015.
According to the Registrar’s WhoIs database, the Respondent has registered the Domain Name on November 10, 2017. The Domain Name does not resolve to any website. 5. Parties’ Contentions A. Complainant
The following is a summary of the Complainant’s contentions.
The Complainant requests that the Domain Name be transferred to it on the following grounds:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights
The Complainant argues that the Domain Name is identical or at least confusingly similar to the Complainant’s trademark. More specifically, the Complainant contends that the Domain Name captures in its entirety its WELSPUN trademark and that the words “Welspun Flooring” of which the Domain Name consists are also the dominant part of the Complainant’s subsidiary’s name “Welspun Flooring Limited”.
The Complainant states that “Welspun / Welspun Flooring” is the dominant feature of the Domain Name and that the only difference between the Domain Name and the Complainant’s WELSPUN trademark is the adjunction of the generic Top-Level Domain (“gTLD”) “.com”. The Complainant contends that the mere addition of the gTLD “.com” to its trademark does not negate the confusing similarity between the Domain Name and the Complainant’s trademark.
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name
According to the Complainant, the Respondent has no rights or legitimate interests in respect of the Domain Name.
According to the Complainant, the Respondent has not demonstrated any use of the Domain Name, as it does not resolve to an active website and the Respondent did not respond to the Complainant’s cease and desist letter.
Subsequently, the Complainant argues that the Respondent is not commonly known by the Domain Name and does not engage in any business under the Domain Name.
The Complainant also states that it is the prior adopter and user of its Trademark and that it has not authorized the Respondent to use the trademark in any manner.
Finally, the Complainant contends that the Respondent cannot have any rights or legitimate interests in the Domain Name as it incorporates the entire WELSPUN trademark of the Complainant.
(iii) The Domain Name was registered and used in bad faith
The Complainant holds that its trademark is known internationally and that it is therefore inconceivable that the Respondent was not aware of the Complainant’s trademark. According to the Complainant, the Respondent had no other purpose in registering and using the Domain Name but to trade-off on the reputation of the Complainant’s trademark. In addition, the Complainant states that it was the Respondent’s responsibility to conduct a prior availability search before the registration of the Domain Name.
The Complainant also contends that the Respondent registered the Domain Name in order to prevent the Complainant from reflecting the Complainant’s trademark in a corresponding domain name. The Complainant argues that, even though the Domain Name leads to an inactive website, one may assume that the WELSPUN trademark and the Domain Name belong to the Respondent or that the Respondent is connected, associated or affiliated with the Complainant.
In addition, the Complainant states that the Domain Name is registered in order to attract Internet users to the proposed websites for commercial gain by creating a likelihood of confusion with the Complainant’s trademark.
Lastly, the Complainant contends that the registration and use of the Domain Name constitute a trademark infringement and leads to the dilution of the Complainant’s reputed trademark. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy requires that the Complainant proves each and all of the following three elements in order to be successful in these proceedings:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interest in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant has demonstrated that it is the owner of numerous registered trademarks for WELSPUN.
The Domain Name incorporates the Complainant’s WELSPUN trademark in its entirety and differs from it only in the addition of the suffix “flooring”. Several UDRP decisions have stated that wholly incorporating a complainant’s registered trademark in a domain name may be sufficient to establish confusing similarity and that the addition of a suffix does not prevent a finding of confusing similarity, when a descriptive term is added to the trademark (see e.g. GA Modeline S.A. v. Mark O’Flynn,WIPO Case No. D2000-1424; Viacom International Inc. v. Erwin Tan,WIPO Case No. D2001-1440; and eBay Inc. v. ebayMoving / Izik Apo,WIPO Case No. D2006-1307).
Accordingly, the Panel finds that the first element under paragraph 4(a)(i) of the Policy has been established. B. Rights or Legitimate Interests
The Panel finds that there is no evidence that the Respondent (i) would be commonly known by the Domain Name, (ii) has made a legitimate noncommercial use of the Domain Name, (iii) would have used the Domain Name with a bona fide offering of goods and services or (iv) has been authorized by the Complainant to use the WELSPUN trademark.
To the contrary, the Complainant confirms not to have authorized the Respondent to use its WELSPUN trademark or be otherwise linked in any way to the Complainant or its trademark. Moreover, it appears from the evidence provided by the Complainant that the Domain Name is not linked to any website.
Given that the Respondent did not reply to the Complainant’s contentions and did not offer any explanation for its contemplated use of the Domain Name, the Panel considers that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name and has satisfied its burden of proof under this element of the Policy.
Accordingly, the Panel finds that the second element under paragraph 4(a) of the Policy has been established. C. Registered and Used in Bad Faith
The Panel notes that the Domain Name consists entirely of the Complainant’s WELSPUN trademark as well as the suffix “flooring”, which corresponds to one of the Complainant’s areas of business. In addition, “Welspun Flooring” is the name of one of the Complainant’s subsidiaries. Given the fact that the Complainant’s trademark is distinctive and is generally known in the sector, the Respondent cannot credibly claim to have been unaware of the trademark and the Complainant’s activities in the flooring sector when registering the Domain Name. This leads the Panel to conclude that the domain name has been registered in bad faith.
Although the Domain Name does not resolve to an active web site or other on-line presence, UDRP panels have frequently found that the apparent lack of so-called active use of the domain name (i.e. passive holding) does not prevent a finding of use in bad faith and that inactivity can in some circumstances also amount to a domain name being used in bad faith (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 3.3 and e.g. Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003; Polaroid Corporation v. Jay Strommen,WIPO Case No. D2005-1005; Virgin Enterprises Limited v. Cesar Alvarez,WIPO Case No. D2016-2140; “Dr. Martens” International Trading GmbH and “Dr. Maertens” Marketing GmbH v. G, Inc.,WIPO Case No. D2017-0246).
In this case, the Panel is convinced that the overall circumstances strongly suggest that the Respondent’s passive holding of the Domain Name is in bad faith. Such circumstances include the distinctiveness and reputation of the Complainant’s trademark, the corresponding name of the Complainant’s subsidiary, the Respondent’s failure to provide any evidence whatsoever of any actual or contemplated good faith use by it of the Domain Name, as well as the Respondent’s failure to take part in the present proceedings. Besides, the suffix “flooring” refers to one of the sectors in which the Complainant is active and therefore contributes to the likelihood of confusion.
In light of these circumstances, the Panel concludes that the Respondent’s passive holding of the Domain Name satisfies the requirement that the Domain Name “is being used in bad faith”.
Consequently, the Panel finds that the Respondent has registered and used the Domain Name 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 Domain Name be transferred to the Complainant.
Geert Glas
Sole Panelist
Date: June 26, 2019
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