The Complainants are Kent Ro Systems Limited, India (“First Complainant”) and Mr. Mahesh Gupta, India (“Second Complainant”), represented by Vutts & Associates LLP, India.
The Respondent is Shyam Pandey, DULBIZ.COM, United Arab Emirates. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 27, 2020. On July 27, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 28, 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 August 3, 2020. In accordance with the Rules, paragraph 5, the due date for Response was August 23, 2020. The Center received two non substantive email communications from the Respondent on August 5, 2020 and August 7, 2020. The Center notified the Commencement of Panel appointment process on August 24, 2020. The Center appointed Dawn Osborne as the sole panelist in this matter on August 27, 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 First Complainant works on manufacturing and marketing of Hi-Tech Oil Conservation and measuring equipment on latest and modern technologies. The Second Complainant is a technocrat and alumni of the engineering institution IIT-Kanpur. The Second Complainant is an inventor and has developed several products. The Complainants are the owners of many registered trade marks including the marks KENT and KENT RO. The Complainants are also the owners of the trade mark KENT RO WATER MAKER No. 883459 registered in India since October 26, 1999. The Complainants submit they own common law rights in these marks through substantial trade. The Complainants are jointly referred hereafter as “the Complainant”. The Domain Name was registered in 2011 and has been used for a site offering competing products using images of the Complainant’s brand ambassador to suggest it is affiliated or an official site of the Complainant when it is not. 5. Parties’ Contentions A. Complainant The Complainant’s contentions can be summarised as follows: The Complainants are the owners of many registered trade marks (as defined above) including the marks KENT and KENT RO. The Domain Name, registered in 2011, is confusingly similar to the Complainant’s trade mark KENT RO adding only the generic term ‘uae’ and the generic Top-Level Domain (“gTLD”) “.com” which does not prevent confusing similarity between the Domain Name and the KENT RO trade mark. The Respondent does not have rights or legitimate interests in the Domain Name, is not commonly known by it and is not authorised by the Complainant. The Domain Name has been used to offer competing products using pictures of the Complainant’s famous brand ambassador Indian actor Hema Malini. This is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. It is registration and use in bad faith diverting Internet users for commercial gain and disrupting the business of the Complainant. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar The Domain Name, registered in 2011, consists of the Complainant’s KENT RO mark (used in substantial trade since 1999 and registered in India as, inter alia, KENT RO WATER MAKER), the geographical term “uae” indicating United Arab Emirates and the gTLD “.com”. Previous panels have found confusing similarity when a respondent merely adds generic terms including designations indicating a country to a Complainant’s mark. The Panel agrees that the addition of the geographical term “uae” and/or the gTLD “.com” to the Complainant’s mark does not prevent confusing similarity between the Domain Name and the Complainant’s trade mark pursuant to the Policy. Accordingly, the Panel holds that the Domain Name is confusingly similar for the purposes of the Policy with a mark in which the Complainant has rights. As such the Panel holds that paragraph 4(a)(i) of the Policy has been satisfied. B. Rights or Legitimate Interests The Complainant has not authorised the use of its mark. The Respondent has not answered this Complaint and there is no evidence or reason to suggest the Respondent is, in fact, commonly known by the Domain Name. The use made of the Domain Name is commercial so it is not legitimate noncommercial fair use. The website to which the Domain Name redirects offers water filter products in competition with those of the Complainant. It uses pictures of the Complainant’s brand ambassador in such a way as to represent that its website is affiliated with the official website of the Complainant, when it is not. This is deceptive and confusing and amounts to passing off. As such it cannot amount to the bona fide offering of goods or services. As such the Panelist finds that the Respondent does not have rights or a legitimate interest in the Domain Name and that the Complainant has satisfied the second limb of the Policy. C. Registered and Used in Bad Faith In the opinion of the Panelist, the use made of the Domain Name in relation to the website is confusing and disruptive in that visitors to the website will reasonably believe it is connected to or approved by the Complainant as it uses an image of the Complainant’s brand ambassador to offer competing water filter products and suggests it is an official website of the Complainant or affiliated to them when it is not. The use of images of the Complainant’s brand ambassador by the Respondent shows that the Respondent was aware of the Complainant, its rights, business and products at the time of registration. Accordingly, the Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating a likelihood of confusion with the Complainant’s trade marks as to the source, sponsorship, affiliation or endorsement of the Respondent’s website and products offered on it likely to disrupt the business of the Complainant. As such, the Panelist believes that the Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb of the Policy under para 4(b)(iv) and 4 (b)(iii). 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 Dawn Osborne
Sole Panelist
Date: August 27, 2020
Full & Egal Universal Law Academy