The Complainant is Asianet Satellite Communications Limited, India, represented by DePenning & DePenning, India.
The Respondent is Contact Privacy Inc. Customer 0152815360, Canada / Milen Radumilo, Romania. 2. The Domain Name and Registrar
The disputed domain name is registered with Tucows Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 17, 2019. On July 17, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 17, 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 July 22, 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 July 24, 2019.
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 July 25, 2019. In accordance with the Rules, paragraph 5, the due date for Response was August 14, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 16, 2019.
The Center appointed Gabriel F. Leonardos as the sole panelist in this matter on August 26, 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 is Asianet Satellite Communications Limited, which is one of the most well-known Indian entertainment channels broadcasting in the Malayalan language. The Complainant launched its services on September 29, 1992 and has a legacy of over 25 years as a service provider in Kerala, India.
The Complainant alleges that since its inception in the year 1993, it has used the mark ASIANET as inherent part of its trade name and as a trademark extensively and continuously with success. In addition, the Complainant argues that by virtue of priority in adoption, long, continuous, uninterrupted, and extensive usage of the mark ASIANET since 1993, it has acquired statutory and common law rights in the mark ASIANET.
The Complainant states that its trade name/trademark ASIANET is inherently distinctive and is associated exclusively with the Complainant and its business. The Complainant owns several registrations for the trademark ASIANET and its variants in India, e.g., Indian trademark registration no. 1280268, applied on April 22, 2004 and which remains registered. The Complainant is also the registrant of eight domain names containing its trademark ASIANET.
The disputed domain name was registered on September 30, 2018 and resolves to a pay-per-click website displaying links related to TV channels. 5. Parties’ Contentions A. Complainant
The Complainant submits that the disputed domain name is identical or confusingly similar to the trademark of the Complainant, ASIANET. The Complainant also submits that it has statutory, as well as, common law rights in its trademark ASIANET, being the sole and legitimate owner of the trademark ASIANET.
The Complainant contends that the disputed domain name is confusing to the trademark owned by the Complainant, being bound to induce members of the public and the trade to believe that the Respondent has a trade connection, association, relationship or approval with/of the Complainant.
Moreover, the Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name , since (i) the Complainant has not licensed or permitted the use of its trademark ASIANET by the Respondent or to apply for any domain name incorporating the said trademark; (ii) the Respondent has not made any legitimate offering of goods or services under the trademark ASIANET through the disputed domain name , reason why there is no plausible explanation for its use by the Respondent other than to misappropriate the reputation of the Complainant’s trademark ASIANET and to divert traffic from the Complainant’s official websites.
Moreover, the Complainant claims that the Respondent had notice of the Complainant’s rights before the trademark ASIANET by virtue of the Complainant’s well spread reputation, which means that the Respondent registered and is using the disputed domain name in bad faith, falling under the provision of Policy, paragraphs 4(a)(iii), 4(b) and Rules, paragraph 3(b)(ix)(3).
In view of the above, the Complainant requests the disputed domain name to be transferred to the Complainant, Asianet Satellite Communications Limited. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
To succeed, the Complainant must demonstrate that all the elements listed in paragraph 4(a) of the Policy have been satisfied, as following:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) 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.
The burden of proving these elements is on the Complainant. A. Identical or Confusingly Similar
The Complainant has duly proven that the first element under paragraph 4(a) of the Policy is met by evidencing that it owns several trademark registrations for ASIANET and its variants in India, and that such trademark is contained in its entirety in the disputed domain name . See, section 1.8 of the WIPO Overview of WIPO Panel View on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Thus, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark.
Therefore, the Panel considers the requirements of the first element of paragraph 4(a) of the Policy satisfied. B. Rights or Legitimate Interests
The Respondent had twenty days to submit a response according to paragraph 5(a) of the Rules and failed to do so. Paragraph 5(f) of the Rules establishes that if a respondent does not respond to the complaint, the panel’s decision shall be based upon the complaint in the absence of exceptional circumstances.
The consensus view of UDRP panels on the burden of proof under paragraph 4(a)(ii) of the Policy is summarized in section 2.1 of the WIPO Overview 3.0 as follows: “[W]here 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 disputed domain name was registered on September 20, 2018, that is, several years after the registration of the Complainant’s first trademark ASIANET and some of its domain names, such as registered in 2005 for example. The Panel acknowledges that the Complainant’s trademark is widely known, and, as a result thereof, the Panel holds that the Respondent must have been aware of the Complainant’s trademark at the time of registration.
The Panel finds that the Complainant has never entered into any agreement with the Respondent nor granted any authorization or license to the Respondent regarding the use of the Complainant’s trademark, nor is the Respondent affiliated with the Complainant.
Accordingly, the Complainant established a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name. Since the Respondent has not replied to the Complainant’s contentions and, thus, has not presented any evidence or elements to justify any rights or legitimate interests in connection with the disputed domain name, the Panel has found no indication that any of the circumstances described in paragraph 4(c)(i)-(iii) of the Policy could apply to the present matter.
Therefore, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name (Policy, paragraph 4(a)(ii)). C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists several circumstances that, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. Those circumstances include: “(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
The Panel finds it highly unlikely that the Respondent had no knowledge of the Complainant’s rights to the trademark ASIANET at the time of registration of the disputed domain name, taking into consideration the Complainant’s widespread reputation; on the contrary, the evidence shows that the Respondent was likely deliberately trying to create and profit form the confusion with the Complainant’s well-known trademark.
The Panel acknowledges that Asianet Satellite Communications Limited is a widely known company and believes the disputed domain name may cause confusion, since its feature, namely “asianetdigital”, reproduces not only the Complainant’s trademark, but also the main part of the domain name registered in 2007 and currently used by the Complainant.
Furthermore, the addition of the dictionary term “digital” in the Respondent’s domain name does not avoid the risk of confusion; on the contrary, as the Complainant is also engaged in “digital” activities (as entertainment channels broadcasting may also be considered), the confusion is even stronger due to the use of such element.
The Panel notes that the content found on the website at the disputed domain name (pay-per-click advertisements related to digital TV) confirms that the Respondent registered the disputed domain name with the intention to wrongly attract the Complainant’s clients and pursue commercial gains with their access to the website. Considering the circumstances of this case, the Panel is of the opinion that such use of the disputed domain name is evidence of bad faith.
Thus, the Panel concludes that the Respondent acts in bad faith for the following reasons:
(i) the widespread reputation of the Complainant’s products and services makes it highly unlikely that the Respondent had no prior knowledge of the Complainant’s rights in its registered trademarks at the moment of the disputed domain name registration;
(ii) the Respondent has no legitimate interests in the disputed domain name;
(iii) the Respondent’s disputed domain name reproduces the Complainant’s word trademark; and
(iv) the disputed domain name misrepresents the Complainant and deceives their customers or potential customers by leading them to think that they are accessing Asianet’s official website, while instead they are redirected to a parking page with commercial links.
Lastly, the Panel notes that, in conjunction with all of the abovementioned, the fact that the Respondent did not present any response to the Complaint reinforces the conclusion that the Respondent acted in bad faith.
Accordingly, the Panel concludes that the disputed domain name was registered and is being used in bad faith under paragraph 4(b)(iv) of the Policy.
As such, the Panel finds that the Complainant has satisfied paragraph 4(a)(iii) of the Policy. 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, Asianet Satellite Communications Limited.
Gabriel F. Leonardos
Sole Panelist
Date: September 9, 2019
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