The Complainant is Nippon Life India Asset Management Limited, India, represented by Scriboard Advocates & Legal Consultants, India.
The Respondent is Private Registrant, Digital Privacy Corporation, United States of America (“United States”) / Abhishek Rai, Amplinno India Pvt. Ltd., India, self-represented. 2. The Domain Names and Registrar
The disputed domain names The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 13, 2020. On November 16, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On November 18, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 18, 2020, 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 November 20, 2020. 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 November 23, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 13, 2020. On December 13, 2020, the Respondent requested an extension to the Response filing period. On December 14, 2020, the Response due date was automatically extended until December 17, 2020, pursuant to paragraph 5(b) of the Rules. The Response was filed with the Center on December 16, 2020. On December 20, 2020, the Complainant filed an unsolicited supplemental filing with the Center. The Center appointed Shwetasree Majumder as the sole panelist in this matter on December 28, 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, formerly known as Reliance Nippon Life Asset Management Limited, was incorporated on February 24, 1995. The Complainant has been the asset management company of Nippon India Mutual Fund (“NIMF”) since 1995. NIMF claims to be one of India’s leading mutual funds with a distribution network of over 76,000 distributors and 300 offices across India. Weblinks to the Complainant’s past annual reports and list of subsidiaries in India and other countries have been provided in the Complaint. The Complainant underwent a corporate name change from Reliance Nippon Life Asset Management Limited to Nippon Life India Asset Management Limited on January 13, 2020. A proof of name change is attached with the Complaint. Similarly, NIMF was earlier known as Reliance Mutual Fund and the name was changed on September 28, 2019. Prior to the name change, the Complainant claims to have been using its trade marks RELIANCE NIPPON and pursuant to the name change, has filed trade marks for NIPPON INDIA and NIPPON INDIA MUTUAL FUND. The Complainant has accounts under NIPPON INDIA MUTUAL FUND on popular social media platforms and mobile apps on Google Playstore and App Store with over 500,000 installations. The Complainant is the registered proprietor of the trade mark RELIANCE NIPPON LIFE ASSET MANAGEMENT under Indian Registration No. 3599328 dated July 26, 2017. Subsequent to the name change, the Complainant filed approximately 100 Indian trade mark applications for several of its trade marks including NIPPON INDIA, NIPPON INDIA MUTUAL FUND, NIPPON LIFE INDIA ASSET MANAGEMENT LIMITED, and NIPPON INDIA ETF. These marks are yet to be granted registration and the earliest of these trade marks applications were filed on February 12, 2020 (see as examples, Application Nos. 4437914, 4437964, and 4437915). A table showing the complete list of the trade marks owned by the Complainant along with extracts from the Indian Trade Marks Office website are attached as Annexure F to the Complaint. Details of the seven disputed domain names are as under: Sr.no Disputed Domain Name Registration Date Status of domains 1 August 14, 2019 Redirects to the Complainant’s website at “www.mf.nipponindiaim.com” 2 August 20, 2019 Parked page 3 August 20, 2019 Redirects to the Complainant’s website at“www.etf.nipponindiaim.com” 4 November 29, 2019 Parked page 5 August 20, 2019 Redirects to the Complainant’s website at “www.aif.nipponindiaim.com” 6 August 16, 2019 Parked page 7 August 16, 2019 Parked page Screen shots of the websites have been attached with the Complaint as Annexure O. 5. Parties’ Contentions A. Complainant The Complainant states that to ensure that its revised corporate name and brand name had a proper presence on the Internet, it registered several domain names consisting of its trade marks NIPPON, NIPPON INDIA, and NIPPON INDIA MUTUAL FUND. The Complainant had instructed one of its employees, Mr. Hiren Shah, to register the disputed domain names, so that the Complainant could migrate its services from its existing domains. The Complainant was able to successfully migrate all content and develop fully functional websites and email functionality on the disputed domain names and hence contends that it had no reason to suspect that disputed domain names were not registered in its name. The Complainant states that Mr. Shah submitted his resignation in December 2019 (Annexure I to the Complaint). Mr. Shah was requested to provide the login details for the disputed domain names which were registered through the Registrar. It was then that the Mr. Shah informed the Complainant that the disputed domain names were registered by him through his personal email ID “[...]@hiren.biz”. The Complainant has contended that on Mr. Shah’s last day of employment on December 19, 2019, Mr. Shah confirmed to Mr. Warankar (presently employed with the Complainant) that he had transferred the disputed domain names and that it would take a few days for it to reflect in the account that Mr. Warankar had created with the Registrar. Thereafter, multiple email exchanges took place between Mr. Warankar and the Registrar, where the Registrar informed that since the email ID associated with the account containing the disputed domain names was “[...]@hiren.biz” and that the account was registered in the name of Amplinno India Private Limited (“Amplinno”), they could not transfer the disputed domain names to Mr. Warankar’s account. Email exchanges between the Complainant’s employee Mr. Warankar and the Registrar’s customer care are attached as Annexure L to the Complaint. The Complainant also contends that they reached out telephonically to Mr. Shah requesting him to transfer the disputed domain names to Mr. Warankar’s account with the Registrar. However, Mr. Shah demanded an amount of “approximately INR 3 Crores” and threatened to deactivate the disputed domain names. The Complainant states that Mr. Shah and the Respondent are known associates and are conspiring and defrauding the Complainant. In support of this contention, the Complainant has attached (Annexure M to the Complaint) Mr. Shah’s rent reimbursement receipts which mention the Respondent as the landlord. Upon contacting the Respondent and sending the list of disputed domain names that the Complainant wanted to be transferred, the Respondent sent invoices (Annexure N of the Complaint) purportedly for domain rental service which included “an exorbitant rent” of INR 12,50,000 for each disputed domain name. The Complainant, in accordance with paragraph 4(a)(i) of the Policy, states that the disputed domain names are identical or confusingly similar to the Complainant’s well-known trademarks NIPPON, NIPPON INDIA, and NIPPON INDIA MUTUAL FUND. Citing previous UDRP panel decisions namely, Farouk Systems, Inc. v. Yishi,WIPO Case No. D2010-0006, and Havells India Limited, QRG Enterprises Limited v. Whois Foundation,WIPO Case No. D2016-1775, the Complainant contends that a domain name which wholly incorporates a Complainant’s registered mark may be sufficient to establish identicalness or confusing similarity, despite the addition of other words to such marks. The Complainant states that it has been using the trade mark/name NIPPON INDIA, along with RELIANCE NIPPON and NIPPON INDIA MUTUAL FUND, and other terms in an extensive and continuous manner for several decades and has thus acquired secondary meaning in these trade marks. The well-known marks RELIANCE NIPPON, NIPPON INDIA, NIPPON INDIA MUTUAL FUND, and related marks have been in extensive, continuous, and uninterrupted use. The marks have been used in relation to advertisements and related business information disseminated in print and digital media. By way of annexures P1, P2, and P3, the Complainant states the marks are prominently displayed and have become the focus of the Complainant’s entire business related to a wide range of services. The Complainant contends Panels have ruled in favour of complainants even where the mark was not registered. Towards this, the Complainant has relied on UDRP panel decisions namely, Satyam Computer Service Limited v. Vasudeva Varma Gokharaju,WIPO Case No. D2000-0835; Express Publications [Madurai] Ltd. v. Murali Ramakrishnan,WIPO Case No. D2001-0208; and, Hindustan Petroleum Corporation Limited v. Neel Punatar,WIPO Case No. D2004-0351. In relation to paragraph 4(a)(ii) of the Policy, the Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain names. The Complainant contends that the disputed domain names were registered by its former employee on the instructions of the Complainant and they should have been in the possession of the Complainant. The disputed domain names were never licensed to the Respondent and the Respondent and/or Mr Shah was never permitted to use the disputed domain names for its personal use or to register the disputed domain names through its personal account. The Complainant contends that former employees do not have rights to or legitimate interests in domain names incorporating the marks of their former employers. In support of this contention, the Complainant has relied on previous UDRP panel decisions namely, Ruby’s Diner, Inc. v. Joseph W. Popow,WIPO Case No. D2001-0868, and Piyush Kumar Parekh and Purvi Piyush Parekh v. Avanish Prasad,WIPO Case No. D2017-1252. The Complainant also states that the Respondent is not, either as an individual, business or other organization, commonly known by the name NIPPON INDIA or any other related names. The Complainant contends that the Respondent has never been commonly identified with the disputed domain names or any variation thereof prior to Respondent’s registration of the disputed domain names. Lastly under paragraph 4(a)(iii) of the Policy, the Complainant contends that the disputed domain names were registered in bad faith. The Complainant’s former employee Mr. Shah registered the disputed domain names on the instructions of the Complainant, but instead of using his official email ID, he used his personal email ID “[…]@hiren.biz”. Thereafter, the Complainant contends that Mr. Shah changed the email ID to the Respondent’s email “[...]@amplinno.com”. Additionally, Mr. Shah deployed a Privacy Shield at the time of registering the disputed domain names. The Complainant contends these actions indicate bad faith at the time of registering the disputed domain names. The Complainant places reliance on Topcon Positioning Systems, Inc. v. Jason W. Evans,WIPO Case No. D2015-0708. The Complainant also contends that when the Complainant asked Mr. Shah and the Respondent to transfer the disputed domain names to it, Mr. Shah and the Respondent instead started blackmailing the Complainant and this is indicative of the Respondent’s bad faith use of the disputed domain names. The Complainant has cited UDRP decisions in Havells India Limited, QRG Enterprises Limited v. Whois Foundation,WIPO Case No. D2016-1775; Playboy Enterprises International, Inc. v. Hector Rodriguez,WIPO Case No. D2000-1016; and, Charles Jourdan Holding AG v. AAIM,WIPO Case No. D2000-0403, in support of its contentions. B. Respondent The Respondent’s assertions in its Response, which was filed with the Center on December 16, 2020, are summarized hereunder: a) The disputed domain names are registered prior to the Complainant’s existence/formation and the same were renewed prior to the Complaint. b) The Complainant never wrote or informed the Respondent about ownership of the disputed domain names. The Complainant has waited a full year and the Complaint has been filed only after the renewal of disputed domain names. The disputed domain names were registered prior to the Complainant’s domain name c) The Complainant’s trade mark NIPPON INDIA under Application No. 4653358 was filed on September 12, 2020, is not yet registered. This application is filed for bleaching preparations and other substances for laundry use, cleaning, polishing, scouring, and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions, dentifrices. Thus, the Complainant’s business is not as stated in the Complaint. d) There are more than 137 company names in India, which have the word “nippon” and there is one such company by the name of “Nippon India”. Hence, the Complainant does not own the trade mark NIPPON INDIA. e) The disputed domain names have not been registered in bad faith. 6. Discussion and Findings Under paragraph 10(d) of the Rules, the Panel is empowered to determine the admissibility, relevance, materiality and weight of the evidence. In pursuance of the general powers and responsibilities of the Panel as have been set out in paragraph 10(b) of the Rules, that each party be treated equally and be given a fair opportunity to present its case, the Panel has reviewed and considered the Respondent’s Response of December 16, 2020, and the Complainant’s Supplemental Filing of December 20, 2020, in the interest of completeness of record and to ensure procedural fairness between parties. See, AT&T Corp. v. Randy Thompson,WIPO Case No. D2001-0830; Facebook Inc. v. Jeremy Williams, 3 Man Group,WIPO Case No. D2019-1535. Under paragraph 4(a) of the Policy, the Complainant must prove, each of the following three elements required under by a preponderance of evidence: i. the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights. The Panel finds that the Complainant has provided uncontested evidence to establish that it is the owner of and has common law rights in and to the Complainant’s trade marks, namely NIPPON INDIA and NIPPON INDIA MUTUAL FUND. The disputed domain names The Panel finds that the addition of the letters and acronyms “mf”, “amc”, “etf”, and “aif” in the disputed domain names do not avoid a finding of confusing similarity. See, Accenture Global Services Limited v. Jean Jacque / Luck Loic,WIPO Case No. D2016-1315; Wragge Lawrence Graham & Co LLP v. Registration Private, Domains by Proxy LLC / Ian Piggin, WIPO Case No. D2015-0135; and WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8 . The Panel notes that section 1.11 of the WIPO Overview 3.0, further provides that generic Top-Level Domains (e.g., “.com”, “.info”, “.net”, “.org”) are a standard registration requirement and have to be disregarded under the first element in the confusing similarity test. See, Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429. The fact that the disputed domain names were registered before the Complainant may have acquired trade mark rights does not by itself preclude the Panel’s finding of identity or confusing similarity under the first element. See WIPO Overview 3.0, section 1.1.3. Lastly, WIPO Overview 3.0, section 1.1.2, stipulates that the goods and/or services for which the mark is registered or used in commerce, the filing/priority date, date of registration, and date of claimed first use, are not considered relevant to the first element test. Hence, Respondent’s contention that the Complainant’s trade mark or business is different goods/services, is irrelevant to the Panel’s observations of identity or confusing similarity under the first element. In view of the above-mentioned findings, the Panel concludes that the disputed domain names are confusingly similar to the Complainant’s trade marks and that the requirement of paragraph 4(a)(i) of the Policy stands satisfied. B. Rights or Legitimate Interests The second element under paragraph 4(a) of the Policy requires the Complainant to establish on a prima facie basis that the Respondent lacks rights or legitimate interests in the disputed domain names. The Panel notes that the Complainant has already submitted evidence that it holds exclusive rights in the trade marks NIPPON INDIA and NIPPON INDIA MUTUAL FUND by common law use, which rights have accrued in the Complainant’s favour. The view of previous UDRP panels on the burden of proof under paragraph 4(a)(ii) of the Policy has been summarized in section 2.1 of the WIPO Overview 3.0, which states: “[…] where 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 disputed domain name.” According to paragraph 4(c) of the Policy, the Respondent may demonstrate its rights to or legitimate interests in the disputed domain names by proving any of the following circumstances: i. before any notice to the Respondent of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed domain names or a name corresponding to the disputed domain names in connection with a bona fide offering of goods or services; or ii. the Respondent (as an individual, business or other organization) has been commonly known by the disputed domain names, even if the Respondent has acquired no trademark or service mark rights; or iii. the Respondent is making a legitimate noncommercial or fair use of the disputed domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. The Panel has perused the Respondent’s Response and the annexures furnished by the Respondent to arrive at the following conclusions: i. At no point during the email exchanges (Annexures J and N of the Complaint) with the Complainant, did the Respondent or Mr. Shah claim rights to or legitimate interests in the disputed domain names. ii. The Respondent has remained silent on the Complainant’s claim that its former employee under Complainant’s instructions registered the disputed domain names but used his personal email ID instead of his official work email and then changed it to the Respondent’s email ID. The Panel draws adverse inferences therefrom and finds truth in the Complainant’s claims. Previous UDRP decisions have held that former employees do not have any rights to or legitimate interests in the domain names incorporating the marks of their former employers. See Ruby’s Diner, Inc. v. Joseph W. Popow,WIPO Case No. D2001-0868; Piyush Kumar Parekh and Purvi Piyush Parekh v. Avanish Prasad, WIPO Case No. D2017-1252. iii. The Respondent has not shown any use of, or demonstrable preparations to use, the disputed domain names. In fact, some of the disputed domain names namely, iv. The Complainant’s claim that Respondent and Mr. Shah demanded an exorbitant amount of money in excess of their out-of-pocket expenses to transfer the disputed domain names remains unrebutted. The Panel draws an adverse inference therefrom and finds that Complainant’s claims are true. Respondent did not use the disputed domain names and had no interest in their legitimate use in the future as well. The sole intent of the registration of the disputed domain names in the Respondent’s name, instead of the Complainant’s name, was to resell/rent the disputed domain names to the Complainant. The Respondent therefore does not have any rights or legitimate interests in the disputed domain names. v. The Respondent has not been commonly known by the disputed domain names. Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith In order to prevail under the Policy, the Complainant must demonstrate that the disputed domain names have been registered and are being used in bad faith according to paragraph 4(a)(iii) of the Policy. 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). The Panel observes that the Respondent must have known of the Complainant’s ongoing corporate name change process and the rights in the trade marks NIPPON INDIA and NIPPON INDIA MUTUAL FUND. Previous UDRP decisions have held that registration of a trade mark related domain name by an employee with knowledge of the trade mark owner’s rights in the mark constitute bad faith. See Piyush Kumar Parekh and Purvi Piyush Parekh v. Avanish Prasad, WIPO Case No. D2017-1252. Given that these domains were registered by an ex-employee and thereafter transferred to the Respondent who even raised an invoice in respect of “domain rental service” (Annexure N) despite never having been contracted to be the custodian of the disputed domain names by the Complainant is evidence of the Respondent’s bad faith. Against this backdrop, the Panel is convinced that the Respondent registered disputed domain names primarily for the purpose of selling, renting, or otherwise transferring the disputed domain names to the Complainant who is the owner of the trademark or service mark, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain names. The Panel also determines that the Respondent’s use of a Privacy Shield in the circumstances of the present case constitutes additional evidence of bad faith. Absent any explanation from the Respondent, aside from its conclusory statement of not having registered the disputed domain names in bad faith, the Panel cannot conceive of any plausible good faith use of the disputed domains that could be made by the Respondent. The Respondent’s conduct in registering the disputed domain names therefore constitutes opportunistic bad faith. Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of 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 names Shwetasree Majumder
ii. the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
iii. the disputed domain names have been registered and are being used in bad faith A. Identical or Confusingly Similar
Sole Panelist
Date: January 11, 2021
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