The Complainant is Housing Development Finance Corporation Ltd. (“HDFC”), India, represented by Samvad Partners, India.
The Respondent is Somasundaram Ramkumar, Ramkumar Corporation, India, self-represented. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 4, 2020. On May 4, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 4, 2020, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that 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 6, 2020. In accordance with the Rules, paragraph 5, the due date for Response was May 26, 2020. The Response was filed with the Center on May 25, 2020. On May 25, 2020, the Center informed the Parties that it would proceed to panel appointment. The Center appointed Maninder Singh as the sole panelist in this matter on June 4, 2020. 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, Housing Development Finance Corporation Ltd. (HDFC), stated to be a housing finance company, claims to have been established in 1977 as the first specialised mortgage company in India for promoting housing. The Complainant claims to be a world-class financial conglomerate with presence in banking, life insurance, non-life insurance, asset management, real estate fund, real estate finance, and trading solutions. The Complainant has a distribution network of 546 offices and also has tie-ups with banks, viz. IndusInd Bank, RBL Bank, and a few Non Banking Financial Companies to distribute its home loan products. The Complainant, with a view to cater to Non-Resident Indians (NRIs) and Persons of Indian Origin (PIOs), states to have representative offices in London, United Kingdom; Dubai, United Arab Emirates (UAE); Singapore; and, the Middle East. According to the Complainant, it is the owner of multiple trademark registrations for the mark HDFC in multiple jurisdictions (e.g., Indian Trade Mark No. 2466372 for HDFC registered on January 24, 2013, in international class 16). The acronym “HDFC” plays a prominent part in all the trademarks registered by the Complainant. The trademark HDFC is well known globally and enjoys immense goodwill and reputation of international character. The Complainant also claims to own approximately 223 domains, the vast majority of which incorporate the acronym “HDFC”. The Respondent claims himself to be an inventor and his inventions are related to mobile phone, television, telephone, compact disc mobile phone, satellite mobile phone, block unwanted SMS, MMS and other communication service, projector mobile phone, computer comprising mobile phone, electronic camera comprising mobile phone, etc. The Respondent also claims that his intellectual property is protected in the United States of America (“USA”). The Respondent further claims to have registered the disputed domain name in September 2018. 5. Parties’ Contentions A. Complainant In its Complaint, the Complainant has, inter-alia, raised the following contentions: The Complainant claims that it is a housing finance company. It has stated that it was established in 1977 as the first specialised mortgage company in India and for promoting housing and making India a “property owning democracy”. The Complainant claims it has consistently striven for and developed an excellent reputation for professionalism, integrity, and an impeccable record of customer-friendly services. It claims that through its continued efforts of 41 years it has helped build the reputed and well-known brand/mark HDFC. Contentions of the Complainant regarding the disputed domain name being identical or confusingly similar to the Trademark or Service Mark of the Complainant: - The Complainant claims that it owns approximately 223 domains and a vast majority thereof incorporate the acronym “HDFC”. The Complainant also claims that its websites at “www.hdfcfund.co.in” and “www.hdfc.com” have an Alexa Ranking of 1078, and ten other domain names owned by the Complainant have an Alexa Ranking of 2349. - The Complainant also claims that it is the owner of the Top-Level Domain “.hdfc”. - In order to show that the disputed domain name Contentions regarding the Respondent having no rights or legitimate interests in the disputed domain name: - The Complainant contends that the Respondent does not have the prior use of the disputed domain name. The Complainant contends that the disputed domain name was registered by the Respondent on November 3, 2017. It has further been contended by the Complainant that the Respondent has never made any use whatsoever of the disputed domain name at any time in the period between the date of registration and the date of this Complaint. The disputed domain name merely directs to a page which ambiguously states that it is the “Future home of something quite cool”. - The Complainant further states that that the Respondent is a resident of Madurai, India, and the Respondent is well aware of the Complainant, its rights in the HDFC mark, and the global reach of the Complainant. The Complainant contends that despite that knowledge, the Respondent had filed an application for trademark protection with the serial number 87458804 before the United States Patent and Trademark Office (“USPTO”) and was granted trademark number 5556615 on September 4, 2018, to obtain rights HDFC in the USA, in order to commercially exploit the Complainant. - The Complainant contends that the Respondent neither has any legitimate use or interest in the disputed domain name whatsoever. The Complainant contends that the sole purpose for registering the disputed domain name is to extort the Complainant for unjust enrichment. - The Complainant further contends that in the “Statement of Use” of the said trademark application, the Respondent had listed the disputed domain name as the sole basis for the use of the trademark. This demonstrates that the only purpose for registering the disputed domain name was for it to be used as a basis for the “Statement of Use” for the said trademark application. - The Complainant contends that trademark is now being used by the Respondent maliciously to seek monetary gains in the form of a licensing fee from the Complainant. The Complainant contends that by way of an email dated March 16, 2020, the Respondent had contacted the Complainant stating that he held a trademark over HDFC in the USA and had demanded that the Complainant license the same from him, in order to continue the use of its bona fide domain names such as - The Complainant has contended that the Respondent has no rights or legitimate interests in the disputed domain name and has not received any authorization or license from the Complainant to use the HDFC mark in any regard, nor is the Respondent affiliated with the Complainant in any manner whatsoever. The Respondent has also failed to mention any demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services in the email communication with the Complainant. - The Complainant contends that it has global business presence and good-will. It further contends that the clientele of the Complainant includes several NRIs from multiple countries including the USA, Europe, Singapore, and UAE amongst others and to a large extent, this is made possible only due to the digital presence of the Complainant through its websites. The Complainant is the prior user and the only legitimate user of the trademark HDFC. The Complainant also contends that in California, USA, alone, a single domain name of the Complainant receives a monthly average of an approximate of 10,000 page-views. - The Complainant contends that the disputed domain name is clearly creating a likelihood of confusion among Internet users and potential clients of the Complainant that the Respondent and or the disputed domain name is affiliated with or endorsed by the Complainant, which will cause disruption to the business and good-will of the Complainant across countries. - The Respondent has failed to prove any legitimate “use” of the trademark whatsoever, besides the registration of the disputed domain name. - The Complainant contends that neither is the Respondent, nor the company as set out as his company in the WhoIs database, known by or have any bona fide connection with the disputed domain name whatsoever. - It has also been contended that the disputed domain name is not being used in any manner whatsoever by the Respondent and the Respondent does not offer any goods or services under the disputed domain name nor does he offer any goods or services under the name “HDFC”. - The Complainant also contends that although the WhoIs database mentions “Ramkumar Corporation” located in Madurai, India, as the company of the Respondent, there is no such company validly incorporated or existing under the laws of India. Further, a Google search for “HDFC” provides results to pages that either belong to or refer to the Complainant or to one of its group companies and not to “Ramkumar” or “Ramkumar Corporation”. - The Complainant contends that a Google search for “hdfc.trade”, provides results to pages that either belong to or refer to HDFC Bank Limited or HDFC Securities Limited, which are group companies of the Complainant which provide trading solutions among other services. Apart from the fact that there is no reference to the Respondent, this further establishes the fact that the disputed domain name is confusingly similar and has been registered by the Respondent to pass-off as the Complainant and or any of its group companies. - The Complainant further contends that the Respondent is widely known as an intellectual property troll and he has lost several cases against other companies whose intellectual property he has infringed in one way or another for wrongful commercial gain. Contentions regarding bad faith registration and use of the disputed domain name by the Respondent - The Complainant contends that the Respondent has a history, pattern, and record of infringing the intellectual property of corporations solely for the purposes of unjust enrichment. Details of a few of the relevant cases before different judicial /administrative forums are as under: a. Flipkart Internet Private Limited v. Somasundaram Ramkumar before the High Court of Judicature, Madras. - The respondent therein (“Ramkumar”) had filed an application for the registration of the trademark FLIPKART in the USA, which failed due to the opposition by Flipkart Internet Private Limited. Thereafter, Ramkumar applied for the registration of the mark FLIPPINGKART in India and registered a website “www.FlippingKart.com”. The Court granted a decree of permanent injunction restraining Ramkumar from infringing and passing off of Flipkart’s mark by using a deceptively similar mark. The Court also made an observation that Ramkumar had adopted the mark with a mala-fide intention to harm the goodwill and reputation of Flipkart. b. S Ramkumar v. Samsung India Electronics Pvt. Ltd, Spice Mobiles Limited and others before multiple judicial forums in India - The respondent therein (“Ramkumar”) filed a patent application in India for dual sim phones claiming to be the inventor of the said technology. Thereafter, the respondent demanded royalty payments from companies that sold, manufactured, or imported phones using the dual sim technology. When his demands were not met with, he filed a slew of cases before multiple forums such as the Customs Authority of India and different High Courts in India to force the companies into meeting his demands. - Finally, the Intellectual Property Appellate Board of India (IPAB), revoked the patent held by Ramkumar on the grounds that there was no inventive step or novelty, as the claims had already been disclosed in an earlier patent application filed by Siemens. This clearly exposed the modus operandi of respondent; that is to get a rapidly growing technology patented and use it to extort money from large corporations without developing upon the patent himself. B. Respondent The Respondent in his response to the Complaint, inter-alia, submits the following: - The Respondent has trademark rights in the mark HDFC, USPTO Registration No.5556615, and that his trademark was registered in class 38 on September 4, 2018, and the Respondent had submitted a “Statement of Use in Commerce” for his trademark HDFC in class 38 on June13, 2018, before the USPTO. - The Respondent contends that he has rights to register ICANN related domain names “.com”, “.net”, “.org”, “.biz”, “.trade”, and so on for his trademark HDFC and therefore, he has registered the disputed domain name - The Respondent contends that the Complainant has no trademark for HDFC in class 38 in the USA, nor in various countries in Europe. He further contends that Complainant has no rights to transfer the disputed domain name to itself, since the USPTO has officially issued the trademark registration for HDFC to the Respondent. - The Respondent contends that the Complainant has no company incorporated under the laws of the USA and has no registered office in the USA. However, the Complainant is only incorporated under the laws of India. - The Respondent contends that the disputed domain name fully incorporates, and is identical and/or similar to the Respondent’s trademark HDFC. - The Respondent also contends that he has rights or legitimate interest in the disputed domain name. - The Respondent further contends that the Respondent's registration and use of the disputed domain name does not constitute bad faith. - The Respondent has denied all the averments and annexures exhibited by the Complainant to establish the Complainant’s global recognition. - The Respondent has denied that he is a serial trademark and domain squatter who has poached multiple well-known third party trademarks in domain registrations and trademark applications worldwide. The Respondent contends that its registration and use of the disputed domain name does not constitute bad faith. - The Respondent has contended that in accordance with the UDRP Policy, the disputed domain name should not be transferred to the Complainant. C. Complainant’s supplemental filings The Complainant, while reiterating contents of Complaint, has contended that Respondent’s claim that the registration of HDFC in the USA entitles the Respondent to the disputed domain name is flawed and misrepresented and is made solely to obtain the disputed domain name to pass off as the Complainant and commercially exploit the Complainant. The Complainant has also contended that the Respondent has filed for a trademark in the USPTO despite the fact that he has no legitimate interest or right to use the trademark HDFC, which solely and exclusively belongs to the Complainant. While the Respondent resides and allegedly has a company in Madurai, India, the Respondent has malafidely and dishonestly registered the impugned trademark in the USPTO without providing any legitimate use of the trademark. This action clearly evinces that the sole intention of the Respondent is to ride on the extensive goodwill and reputation of the Complainant built over a period of more than four decades. In response to the Respondent’s contention that a “Statement of Use” has been submitted to USPTO with regard to his trademark application in order to establish legitimate use of the disputed domain name, the Complainant has denied the validity and veracity of all statements made in the “Statement of Use”. The Complainant contends that in the “Statement of Use”, the Respondent has not listed any business entities or activities performed by him or his company, but has only relied on and submitted that the registration of the disputed domain name is the sole basis of the use of the impugned trademark. Whereas in his Response, the Respondent attempts to justify the registration of the disputed domain name (which had been submitted as a “Statement of Use” before the USPTO) on the basis of the impugned registered trademark. It has been contended by the Complainant that by making contradictory submissions, the Respondent has clearly established that the Respondent’s sole intent is to misguide UDRP panels, as the Respondent neither has any legitimate use of the trademark or the disputed domain name nor any right to use either of the above. The Complainant further contends that it reserves the right to proceed under the relevant trademark laws against the Respondent with regard to his trademark over HDFC for the reasons stated above. The Complainant has denied the Respondent’s claim that the Complainant does not have a registered trademark in the USA and therefore, the disputed domain name cannot be transferred to the Complainant as it is both factually nor legally sound and tenable. The Complainant in this regard, has referred to and relied upon the decisions of the previous UDRP panels in the proceedings below: (i) Thaigem Global Marketing Limited v. Sanchai Aree,WIPO Case No. D2002-0358, holding that due to the global nature of the Internet and Domain Name System, the jurisdiction(s) where the trademark is valid or registered does not determine the rights over the disputed domain name; and (ii) Housing Development Finance Corporation Ltd. v. Shomprakash Sinha Roy,WIPO Case No. D2019‑2567, observing that the Complainant’s trademark HDFC has no established meaning or generic value but is a well-established brand and is distinctive only of the Complainant and its services. The Complainant has further submitted that the Complainant is part of a financial conglomerate and several of the entities that form a part of the financial conglomerate have registered trademarks in the USA. The Complainant also contends that the Respondent cannot claim any right over the disputed domain name solely on the basis of a trademark that is registered before the USPTO on misrepresented facts and faulty reasoning. The Complainant points out that the Respondent has failed to establish any bona fide presence in the USA besides the trademark registration on misrepresented facts and faulty reasoning. The Complainant submits that the Internet and the domain name system are global in nature and therefore the physical presence of the Complainant in a particular country is not material in order to establish a bona fide claim over the disputed domain name. The Complainant submits that it has evidenced its global presence through Annexes 3-11 of the Complainant which are also provided as Annex 2 to its rejoinder submissions. The Complainant contends that it has a digital presence in the USA and several NRIs residing in the United States and other countries obtain the services of the Complainant through the Complainant’s website. Further, various other companies that are a part of the same financial conglomerate operate under the name and style of HDFC and have presence and business in the USA and other countries as well and also have registered trademarks with the USPTO. The Complainant submits that the Respondent is not allowed to exploit the goodwill, reputation, and the global presence of the Complaint through use of the disputed domain name. 6. Discussion and Findings Preliminary Consideration: Complainant’s Supplemental Filing Neither the Policy nor the Rules provide a party with an automatic right to submit additional arguments or evidence. Under paragraph 10 of the Rules, panels enjoy broad powers for conducting administrative proceedings, provided that the parties are treated fairly and the proceedings are conducted expeditiously. Within this framework, a panel can determine within its sole discretion whether to admit or reject supplemental submissions. In exercising this discretion, many panels have made clear that additional evidence or submissions should only be admitted in exceptional circumstances, such as, by way of example, where new pertinent facts arise after the submission of the complaint or where a party could not have reasonably known of the existence, relevance or veracity of further material when it made its primary submission. See, e.g., Office Club, Ltd. v. John Adem,WIPO Case No. D2000-1480; Gordon Sumner, p/k/a Sting v. Michael Urvan,WIPO Case No. D2000-0596; The E.W. Scripps Company v. Sinologic Industries,WIPO Case No. D2003-0447; Cerulean Studios, LLC v. Hexuan Cai,WIPO Case No. D2013-0902. The Panel agrees with this position and adds that further material should only be admitted to the extent necessary in a proceeding and when such is essential in reaching a fair decision on the facts of the matter. In the instant case, the Panel does not believe there are exceptional circumstances in this matter that warrant the acceptance of the Complainant’s supplemental filing. The Panel therefore declines to accept the supplemental filing and has disregarded such in reaching its decision. B. Identical or Confusingly Similar The Complainant has furnished evidence of its rights in the trademarks HDFC through details of some of its trademark registrations tabulated in the Complaint and common law rights have accrued to it through its long and substantial use of the mark. The Panel observes that the contention of the Complainant of extensive and substantial use of the mark HDFC all over India and other parts of the world is sound. The Panel has considered the documents submitted by the Complainant in support of its claim that the Complainant has been using and has various registrations for the trademark HDFC. There does not appear to be any doubt that the Complainant is the owner of trademark HDFC. The Panel has no doubt that the disputed domain name In this regard, the Panel refers to a prior UDRP decision. In the case of Advance Magazine Publishers Inc. v. Voguechen, WIPO Case No. D2014-0657, it had been held that “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”. Further, in the prior UDRP decision, Thaigem Global Marketing Limited v. Sanchai Aree,WIPO Case No. D2002-0358, wherein the panel noted that, given the global nature of the Internet and Domain Name System, the jurisdiction(s) where the trademark is valid is not considered relevant to panel assessment under the first element. The Panel finds no merit in the Respondent’s contention that since the Complainant has no trademark for HDFC in class 38 in USA and in various countries in Europe, that the Complainant is preempted from transferring the disputed domain name. The contention of the Respondent that the Complainant has no rights to transfer the disputed domain name to the Complainant deserves to be rejected. The Panel finds it is a settled precedent, as enshrined in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.2, that where a complainant holds a nationally or regionally registered trademark, this prima facie satisfied the threshold requirement of having trademark rights for purposes of standing to file a UDRP case. The Complainant has therefore succeeded in establishing the first element of the test in paragraph 4(a) of the Policy. C. Rights or Legitimate Interests The Panel observes that the Complainant has made out a case proving its rights in the trademark HDFC. The Complainant enjoys goodwill and reputation for the marks/names registered by it. The Panel has no doubt that the disputed domain name incorporates the trademark HDFC of the Complainant by adding the Top-Level Domain “.trade” to it. The Panel is of the view that such an attempt on the part of the Respondent is to create confusion and to profit from the name, goodwill, and reputation of the Complainant. The Panel observes that the Respondent is in no way related to the Complainant or its business activities – the Respondent is not an agent of the Complainant, nor does he carry out activities for the Complainant. The Panel finds merit in the Complainant’s contention that neither is the Respondent, nor the company as set out as his company in the WhoIs database, known by or have any bona fide connection with the disputed domain name whatsoever as the disputed domain name is not being used in any manner whatsoever by the Respondent and the Respondent also does not offer any goods or services under the disputed domain name nor does he offer any goods or services under the name “HDFC”. The Panel notes that the Respondent has trademark rights for HDFC in the USA. However, the Panel notes also that the existence of a respondent trademark does not however automatically confer rights or legitimate interests on the respondent. UDRP panels have generally declined to find respondent rights or legitimate interests in a domain name on the basis of a corresponding trademark registration where the overall circumstances demonstrate that such trademark was obtained primarily to circumvent the application of the UDRP or otherwise prevent the complainant’s exercise of its rights (even if only in a particular jurisdiction). See section 2.12.2 of the WIPO Overview 3.0. Furthermore, the attention of the Panel has been drawn to following decisions: (i) In the case of Madonna Ciccone, p/k/a Madonna v. Dan Parisi and "Madonna.com",WIPO Case No. D2000-0847, the panel observed that, it would be a mistake to conclude that mere registration of a trademark creates a legitimate interest under the Policy and that to establish cognizable rights, the overall circumstances should demonstrate that the registration was obtained in good faith for the purpose of making bona fide use of the mark in the jurisdiction where the mark is registered, and not obtained merely to circumvent the application of the Policy. (ii) In the case of Chemical Works of Gedeon Richter Plc v. Covex Farma S.L.,WIPO Case No. D2008-1379, the respondent argued that it did not register and use the disputed domain names in bad faith because it owned a registered identical trademark that entitled it to own the corresponding domain names. However, the panel determined that respondent's trademark registration did not establish that Respondent was known by the disputed domain names within the meaning of paragraph 4(c)(ii) of the Policy, nor does it otherwise establish that the Respondent has rights or legitimate interests in the disputed domain names. (iii) In the case of Housing Development Finance Corporation Ltd. v. Shomprakash Sinha Roy, supra., the panel observed that, “the Complainant’s trademark HDFC has no established meaning or generic value but is a well-established brand and is distinctive only of the Complainant and its services”. (iv) In the case of Fifth Street Capital LLC v. Fluder,WIPO Case No. D2014-1747, the panel took the view that the generic Top-Level Domain also plays a role in creating the risk of deception and confusion and that the domain name needs to be read and interpreted as a whole to determine if there is a risk of deception or confusion. The Panel has no doubt that registration of disputed domain name by the Respondent is not bona fide. In the circumstances of the present case, the Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, and the Respondent has failed to submit an appropriate and proper response with relevant evidence to the contentions made by the Complainant. The Respondent has no legitimate interests or rights in the disputed domain name. D. Registered and Used in Bad Faith The Panel observes that the mark/name of the Complainant HDFC are well known in India and also in various parts of the world. The Panel also observes, that the Respondent has neither submitted any rebuttal of the Complainant’s contention that the Respondent has never made any use of the disputed domain name at any time in the period between the date of registration and the date of this Complaint, nor has it placed on record any evidence of carrying out any commercial activity in the above said period. The Panel has also perused the Respondent’s email dated March 16, 2020, asking Complainant to obtain a license from the Respondent to use, service, and sell the goods using the trademark HDFC in the USA. The Panel, in the circumstances of the present case, accepts the contention of the Complainant that apparently the sole purpose for registering the disputed domain name was to create a likelihood of confusion, believing that there is some connection, affiliation, or association between the Complainant and the Respondent thereby extracting undue gains to Respondent and further having the effect of damaging the goodwill, reputation, and business interests of the Complainant The Panel observes that there is virtually no possibility that the Respondent was unaware of Complainant’s trademark, its existence or presence in the market. In this regard, the Panel refers to and relies upon the UDRP decision in Consitex S.A. Lanificio Ermenegildo Zegna & Figli S.p.A. Ermenegildo Zegna Corporation v. Mr. Lian Ming,WIPO Case No. DWS2003-0001, holding that the respondent could not ignore the existence of a well-known trademarks at the time of registering a domain name. The Panel observes that the disputed domain name was registered by the Respondent in September 2018. The Panel has no hesitation in holding that being fully aware of the commercial value and significance of the Complainant’s trademark/name HDFC and incorporation thereof in the disputed domain name, the Respondent has registered the disputed domain name to take commercial advantage of the trademark by riding over the substantial goodwill and reputation of the Complainant. The Panel further observes that the Respondent, Ramkumar, has a history, pattern, and record of infringing the intellectual property of corporations solely for the purposes for wrongful commercial gain and unjust enrichment. The Panel has gone through the decisions before the Indian courts cited by the Complainant in this regard. The Panel, therefore, finds that the disputed domain name was registered and being used in bad faith by the Respondent. 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 Maninder Singh
Sole Panelist
Date: June 17, 2020
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