The Complainant is Brandopus LLP, United Kingdom, represented by Lewis Silkin LLP, United Kingdom.
The Respondent is Domain Administrator, See PrivacyGuardian.org, United States of America (“United States”) / Anurag Mishra, Blindwink Solutions Pvt Ltd, India, internally 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 February 16, 2021. On February 16, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On February 16, 2021, 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 February 16, 2021, 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 February 17, 2021. 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 February 18, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 10, 2021. The Center received an email communication from the Respondent on February 18, 2021. On February 19, 2021, the Complainant contacted the Center in connection with a request to suspend the proceeding. On February 22, 2021, pursuant to paragraph 17 of the Rules, the proceeding was suspended until March 24, 2021. On March 24, 2021, the Complainant requested the reinstitution of the proceeding and also submitted a supplemental filing with the Center. On March 24, 2021, the Center informed the Parties of the reinstitution of the proceeding and the Response due date was recalculated as April 9, 2021. The Response was filed with the Center on April 8, 2021. The Center appointed Lynda M. Braun as the sole panelist in this matter on April 16, 2021. 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 a full-service branding company in the United Kingdom, established to help startup companies, entrepreneurs, and growing businesses enhance their brands through innovation and creativity. The Complainant owns registered trademarks for BRANDOPUS, including, but not limited to: BRANDOPUS, United Kingdom Trade Mark Registration No. UK00002438441, registered on February 8, 2008, in international classes 35, 41, and 42; and BRANDOPUS, International Trade Mark Registration No. 1216139, registered on December 18, 2013 (designating Australia, New Zealand, Singapore, United States, and India, where the Respondent purportedly resides) in international classes 35, 41, 42, and 45 (hereinafter collectively referred to as the “BRANDOPUS Mark”). The Complainant owns the domain name The Disputed Domain Name The following are the Complainant’s contentions: - the Disputed Domain Name is confusingly similar to the Complainant’s trademark or trademarks in which it has rights; and - the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name, as the Complainant contends (i) that it has not authorized, licensed or otherwise permitted the Respondent to use the BRANDOPUS Mark; and (ii) that there is no evidence that the Respondent was commonly known by the Disputed Domain Name or by any name corresponding to it at the time the Disputed Domain Name was registered; and - the Disputed Domain Name was registered and is being used in bad faith since the Respondent registered and used the Disputed Domain Name for commercial gain, and the Respondent had knowledge of the BRANDOPUS Mark before registering the Disputed Domain Name. The Complainant seeks the transfer of the Disputed Domain Name from the Respondent in accordance with paragraph 4(i) of the Policy. B. Respondent The following are the Respondent’s contentions: - the company names of the Complainant and the Respondent are different as the Complainant’s name is Brandopus LLP (“Brandopus” used as a single word) and the Respondent’s name is Brand Opus India Pvt Ltd (“Brand Opus” used with a space between “Brand” and “Opus”); and - the Respondent has the right to use the Disputed Domain Name because it is a legally registered Indian corporation named Brand Opus India Pvt Ltd, with the same name as the Disputed Domain Name; and - the Respondent began using the Disputed Domain Name after the corporation was formed on September 4, 2019, and until then, the Disputed Domain Name was parked at the Registrar; and - the Respondent did not register the Disputed Domain Name in bad faith because the only reason for registering the Disputed Domain Name was to have the Disputed Domain Name reflect the same name as that of its company. 6. Discussion and Findings A. Identical or Confusingly Similar This element consists of two parts: first, does the Complainant have rights in a relevant trademark or trademarks and, second, is the Disputed Domain Name identical or confusingly similar to the trademark or trademarks. The Panel concludes that the Disputed Domain Name is confusingly similar to the BRANDOPUS Mark. It is uncontroverted that the Complainant has established rights in the BRANDOPUS Mark based on its years of use as well as its registered trademark for the BRANDOPUS Mark in the United Kingdom and other jurisdictions worldwide, including Australia, New Zealand, Singapore, United States, and India. The general consensus is that “registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive”. See CWI, Inc. v. Domain Administrator c/o Dynadot,WIPO Case No. D2015-1734. The Respondent has not rebutted this presumption, and therefore the Panel finds that the Complainant has enforceable rights in the BRANDOPUS Mark. The Disputed Domain Name consists of the BRANDOPUS Mark in its entirety followed by the geographic term “India” and then followed by the generic Top-Level Domain (“gTLD”) “.com”. It is well established that a domain name that wholly incorporates a trademark may be confusingly similar to that trademark for purposes of the Policy despite the addition of other terms. As stated in section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), “where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”. See also Gannett Co., Inc. v. Henry Chan,WIPO Case No. D2004-0117 (a domain name incorporating a well-known trademark combined with a geographically descriptive term is confusingly similar to the trademark); Inter-IKEA Systems B.V. v. Hoon Huh,WIPO Case No. D2000-0438 (the addition of the term “korea” in Further, the addition of a gTLD such as “.com” in a domain name is technically required. Thus, it is well established that such element may typically be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. See Proactiva Medio Ambiente, S.A. v. Proactiva,WIPO Case No. D2012-0182 and WIPO Overview 3.0, section 1.11. Accordingly, the Panel finds that the first element of paragraph 4(a) of the Policy has been met by the Complainant. B. Rights or Legitimate Interests Under the Policy, a complainant has to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the respondent carries the burden of production of evidence that demonstrates rights or legitimate interests in the disputed domain name. If the respondent fails to do so, the complainant may be deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview 3.0, section 2.1. The Complainant has shown that it has not authorized, licensed or otherwise permitted the Respondent to use the BRANDOPUS Mark and that it does not have any type of business relationship with the Respondent. Based on the use made of the Disputed Domain Name to resolve to a website offering the same type of services as the Complainant’s official website, the Panel finds that the Respondent is not making a bona fide offering of goods or services nor making a legitimate noncommercial or fair use of the Disputed Domain Name. See SoftCom Technology Consulting Inc. v. Olariu Romeo/Orv Fin Group S.L.,WIPO Case No. D2008-0792 (the close proximity between the goods and services offered by the Complainant and the Respondent indicates that the Respondent is taking advantage of the similarity between the Complainant’s mark and the domain name and is doing so for commercial gain). Finally, noting also the composition of the Disputed Domain Name, the Panel agrees with the Complainant that Internet users will view the website to which the Disputed Domain Name resolves and mistakenly believe they have either arrived at another of the Complainant’s websites or are dealing with a subsidiary of the Complainant dedicated to the Indian market. Thus, the Panel finds that the Complainant has made out a prima facie case. The Respondent then submitted arguments and evidence as a justification for registering the Disputed Domain Name. Among other arguments, the Respondent states that the company names of the Complainant and the Respondent are different due to the space used by the Respondent between “Brand” and “Opus”). However, the Panel finds such argument to be irrelevant for the purposes of this proceeding, noting that spaces are not susceptible to being represented in a domain name, and such difference does not show that the Respondent created its corporate name (and the Disputed Domain Name) independently of the Complainant. The Respondent maintains that by registering its corporate name in India on September 4, 2019, as Brand Opus India Pvt Ltd, it proves the proposition that the Respondent is commonly known by the Disputed Domain Name. However, the Panel finds this argument flawed. See Neteller plc v. Prostoprom,WIPO Case No. D2007-1713. (“It cannot be the case that a cybersquatter who registers a domain name in bad faith, and then operates a business under that domain name long enough for the business to become ‘commonly known by’ the domain name, thereby acquires a complete defense under Paragraph 4(c)(ii). That would not make any sense. If that were the correct interpretation of Paragraph 4(c)(ii), every cybersquatter who registered a domain name in bad faith would be able to ‘create’ a defense under Paragraph 4(c)(ii) by the simple expedient of adopting the domain name as the name of his/her business or organization, thereby defeating the intended operation of the Policy.”). Here, the Respondent created the Disputed Domain Name on August 24, 2019, and on September 4, 2019, registered an Indian corporation with a name similar to the Disputed Domain Name. The Panel rejects the Respondent’s argument that it was commonly known by the Disputed Domain Name because the Panel considers that the Respondent registered the Disputed Domain Name in bad faith, and the Respondent subsequently registered a corporation in India with the same name. The Panel concludes that to prevail under paragraph 4(c)(ii), the Respondent must prove that it was commonly known by the Disputed Domain Name at the time the Disputed Domain Name was registered (and the registration of the domain name should be done in good faith), not afterwards, and the Respondent has not done so. The Panel notes the composition of the Disputed Domain Name (reproducing the BRANDOPUS Mark with the added term “India”), and the fact that the Respondent provides the same type of services that the Complainant. The Panel finds unlikely that the Respondent has developed its business independently, genuinely, and without knowledge of the Complainant. In the Panel’s view, it seems more likely than not that, the Respondent had the Complainant’s business in mind at the time of the registration of the Disputed Domain Name, and through the Disputed Domain Name has attempted to take advantage of the risk of association with the Complainant due to the similarity with the BRANDOPUS Mark. Therefore, in view of the circumstances of the case, the Panel finds that the Respondent’s incorporation of its company does not give rise to rights or legitimate interests in the Disputed Domain Name under the Policy. Accordingly, the Panel finds that the second element of paragraph 4(a) of the Policy has been met by the Complainant. C. Registered and Used in Bad Faith The Panel finds that, based on the record, the Complainant has demonstrated the existence of the Respondent’s bad faith pursuant to paragraph 4(b) of the Policy. First, based on the circumstances here, the Panel concludes that the Respondent registered and used the Disputed Domain Name in bad faith in an attempt to attract Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s BRANDOPUS Mark as to the source, sponsorship, affiliation or endorsement of the Disputed Domain Name’s resolving webpage. The Respondent’s registration and use of the Disputed Domain Name indicate that such registration and use had been done for the specific purpose of trading on the name and reputation of the Complainant and its BRANDOPUS Mark. See Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”,WIPO Case No. D2000-0847 (“[t]he only plausible explanation for Respondent’s actions appears to be an intentional effort to trade upon the fame of Complainant’s name and mark for commercial gain”). Second, the Panel concludes that the Respondent is using the Disputed Domain Name for an illegitimate purpose that demonstrates knowledge of the Complainant’s trademark rights and a bad faith intent to register and use the Disputed Domain Name. By registering a disputed domain name confusingly similar to the Complainant’s BRANDOPUS Mark to provide similar services to the ones provided by the Complainant, it is evident that the Respondent had knowledge of the Complainant, its business, and its BRANDOPUS Mark when registering the Disputed Domain Name and the Indian corporation. In light of the circumstances in this case, it is not possible to conceive of a plausible situation in which the Respondent would have been unaware of the Complainant’s BRANDOPUS Mark at the time the Disputed Domain Name was registered. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. Third, the Disputed Domain Name was registered several years after the Complainant first began using its BRANDOPUS Mark. Therefore, the Panel finds it likely that the Respondent had the Complainant’s BRANDOPUS Mark in mind when registering the Disputed Domain Name, demonstrating bad faith. Finally, the registration of a domain name that reproduces a trademark in its entirety (being identical or confusingly similar to such trademark) by an individual or entity that has no relationship to that mark, without any reasonable explanation on the motives for the registration, may be sufficient in certain circumstances to infer opportunistic bad faith. See Ebay Inc. v. Wangming,WIPO Case No. D2006-1107; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163. Thus, the Respondent registered and is using the Disputed Domain Name in bad faith to target the Complainant’s BRANDOPUS Mark. Accordingly, the Panel finds that the third element of paragraph 4(a) of the Policy has been met by the Complainant. 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 Lynda M. Braun
Sole Panelist
Date: April 23, 2021
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