The Complainant is Kalyani Strategic Management Services Ltd., India, represented by Jehangir Gulabbhai & Bilimoria & Daruwalla, India.
The Respondent is Anjela Mcvay, United States of America (“United States”).
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 3, 2021. On September 3, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 3, 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 September 6, 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 September 9, 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 September 20, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 10, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 12, 2021.
The Center appointed Assen Alexiev as the sole panelist in this matter on October 20, 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 BackgroundThe Complainant is a member of the Bharat Forge Group, a supplier of forged and machined engine and chassis components, with subsidiaries and manufacturing facilities in India, Germany, Sweden, North America and France. According to the official website of the Bharat Forge Group at www.bharatforge.com, referred to by the Complainant, the Bharat Forge Group is itself part of the Kalyani Group conglomerate.
The Indian company Kalyani Technologies Limited is the owner of the following trademark registrations for the sign “BHARAT FORGE” (the “BHARAT FORGE trademark”):
− the Indian trademark BHARAT FORGE with registration No. 1501610, registered on November 6, 2006 for goods in International Class 6;
− the Indian trademark BHARAT FORGE with registration No. 1501611, registered on November 6, 2006 for goods in International Class 7;
− the Indian trademark BHARAT FORGE with registration No. 1501612, registered on November 6, 2006 for goods in International Class 12; and
− the International trademark BHARAT FORGE with registration No. 1521193, registered on January 20, 2020 for goods and services in International Classes 6, 7 and 12.
The disputed domain name was registered on March 30, 2021. It is inactive.
5. Parties’ Contentions A. ComplainantThe Complainant states that the disputed domain name is confusingly similar to the BHARAT FORGE trademark, because it is visually, phonetically and structurally identical to the trademark, in which the Complainant has rights.
According to the Complainant, the Respondent has no rights or legitimate interests in respect of the disputed domain name, which was registered 55 years after the Bharat Forge Group started its business under the name “Bharat Forge”. The Complainant maintains that the Respondent must therefore have been aware of the BHARAT FORGE trademark when registering the disputed domain name, and has registered it with a view to exploit the goodwill and reputation of the trademark.
The Complainant contends that the disputed domain name was registered and is being used in bad faith. According to the Complainant, the Respondent has registered the disputed domain name primarily for the purpose of disrupting the Complainant’s business and with the mala fide intention to mislead Internet users that the disputed domain name is associated to the Complainant and to attract them for commercial gain.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsPursuant to the Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the disputed domain name:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the Respondent has registered and is using the disputed domain name in bad faith.
By the Rules, paragraph 5(c)(i), it is expected of a respondent to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name […].”
The Respondent has however not submitted a formal Response or disputed the Complainant’s contentions and evidence in this proceeding.
A. Identical or Confusingly SimilarThe Complainant has provided evidence that the Indian company Kalyani Technologies Limited is the owner of the BHARAT FORGE trademark. The Complainant and the registrant of the BHARAT FORGE trademark have the name “Kalyani” as the distinctive part of their corporate names, and the registration information for this trademark shows that Kalyani Technologies Limited has the same address as the Complainant and is represented by the same law firm. The official website of the Bharat Forge Group at www.bharatforge.com, referred to by the Complainant, states that this group is itself part of the Kalyani Group conglomerate, and specifies the same address. This is sufficient for the Panel to conclude that the Complainant and Kalyani Technologies Limited are affiliates. As discussed in section 1.4.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), a trademark owner’s affiliate such as a subsidiary of a parent or of a holding company, or an exclusive trademark licensee, is considered to have rights in a trademark under the UDRP for purposes of standing to file a complaint. In view of this, the Panel accepts that the Complainant has rights in the BHARAT FORGE trademark for the purposes of the present proceeding.
The Panel notes that a common practice has emerged under the Policy to disregard in appropriate circumstances the Top-Level Domain (“TLD”) section of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i). See section 1.11.1 of the WIPO Overview 3.0. The Panel sees no reason not to follow the same approach here, so it will disregard the “.com” gTLD of the disputed domain name.
The disputed domain name incorporates the BHARAT FORGE trademark in its entirety with the addition of a second letter “t” after “bharat” and before “forge”. This addition has a very low effect and may well remain unnoticed by Internet users, and in any case the BHARAT FORGE trademark remains easily recognizable in the disputed domain name. Overall, the disputed domain name appears as a misspelling of this trademark. As discussed in section 1.7 of the WIPO Overview 3.0, in cases where a domain name incorporates the entirety of a trademark, the domain name will normally be considered confusingly similar to it for purposes of UDRP standing.
In view of the above, the Panel finds that the disputed domain name is confusingly similar to the BHARAT FORGE trademark in which the Complainant has rights.
B. Rights or Legitimate InterestsWhile the overall burden of proof in UDRP proceedings is on the complainant, UDRP panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often-impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, 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 domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. See section 2.1 of the WIPO Overview 3.0.
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name, because it was registered 55 years after the Bharat Forge Group started its business under the name “Bharat Forge”. The Complainant maintains that the Respondent must therefore have been aware of the BHARAT FORGE trademark when registering the disputed domain name, and has registered it with a view to exploit for commercial gain the goodwill and reputation of the trademark by misleading Internet users that the disputed domain name is associated to the Complainant. Thus, the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
The Respondent has not submitted a Response. It has not provided any arguments in support of the existence of any rights and legitimate interests in the disputed domain name, and has not denied the allegations of the Complainant or disputed the evidence that it has brought forward.
The disputed domain name incorporates the BHARAT FORGE trademark, which was first registered 15 years earlier, and since the Respondent has not provided any explanation why it has chosen to register it, it appears to the Panel as a typosquatted version of the trademark. The disputed domain name is inactive.
In view of the above, and in the lack of any arguments or evidence to the contrary, the Panel concludes that it is more likely than not that the Respondent has targeted the BHARAT FORGE trademark with the registration of the disputed domain name in an attempt to improperly capitalize on the reputation and goodwill associated with this trademark by confusing and attracting to the disputed domain name Internet users looking for the Bharat Forge Group. In the Panel’s view, such conduct does not appear as legitimate and does not give rise to rights or legitimate interests of the Respondent in the disputed domain name.
Therefore, the Panel finds that the Respondent does not have rights and legitimate interests in the disputed domain name.
C. Registered and Used in Bad FaithParagraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(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 disputed domain name is a confusingly similar misspelling of the BHARAT FORGE trademark and was registered 15 years after it. The Respondent has not provided any plausible explanation for its registration, and the disputed domain name is inactive.
In view of the above and in the lack of a denial by the Respondent of the arguments and evidence brought forward by the Complainant, the Panel concludes that the Respondent must have been well aware of the goodwill of the BHARAT FORGE trademark when it registered the disputed domain name, and that by targeting this trademark, the Respondent has attempted to improperly capitalize on the reputation and goodwill associated with it by confusing Internet users looking for the Bharat Forge Group or for its products and services that they are reaching an official online location where they can find the necessary information.
The disputed domain name does not resolve to an active website. However, taking into account the distinctiveness of the BHARAT FORGE trademark and the fact that the disputed domain name appears as a typosquatted version of it, the Panel is not aware of any legitimate use to which the Respondent can put the disputed domain name, and regards its registration is suggestive of the Respondent’s intent to seek unjust benefit from the popularity of the BHARAT FORGE trademark.
On the basis of all the above, the Panel finds that the disputed domain name has been registered and is being used in bad faith.
7. DecisionFor 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
Assen Alexiev
Sole Panelist
Date: November 4, 2021