The Complainant is Voltas Limited, India, represented by Ira Law, India.
The Respondent is Bharat Suthar, India.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 20, 2021. On December 20, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 21, 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 December 21, 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 January 5, 2022.
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 January 21, 2022. In accordance with the Rules, paragraph 5, the due date for Response was February 10, 2022. On January 29, 2022, the Respondent sent an email communication to the Center but did not submit any formal response. Accordingly, the Center informed the Commencement of Panel Appointment Process on February 11, 2022.
The Center appointed Shwetasree Majumder as the sole panelist in this matter on March 2, 2022. 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 company incorporated in India and is manufacturer of air conditioners and air conditioning solutions. The Complainant is the registered owner, user, and proprietor of the mark VOLTAS, a coined mark, in India as well as in several jurisdictions worldwide. Indian trademark registration number 276224, dated November 12, 1971, is the Complainant’s earliest registration for its mark VOLTAS. The Complainant also holds registration for the figurative mark VOLTAS in India dated May 31, 1955.
The disputed domain name
The Complainant claims to be India’s largest manufacturer of air conditioners and air conditioning solutions and one of the world’s premier engineering solution providers and project specialists under its mark VOLTAS which it claims to have conceived, invented, and coined in the year 1954.
The Complainant’s mark VOLTAS and several VOLTAS figurative marks are registered in India as well as in other jurisdictions. The Complainant’s earliest Indian registration in respect of the mark VOLTAS under number 276224 dates back to November 12, 1971. The Complainant has filed copies of Indian trademark registration certificates for its mark VOLTAS. The Complainant has registered various domain names incorporating its mark VOLTAS. WhoIs print outs of such registrations have been submitted with the Complaint.
The Complainant claims that its mark VOLTAS is a well-known mark. The Complainant has relied on past UDRP panel decisions where its rights in the mark VOLTAS were recognised and its complaints were successful.
The Complainant argues that the disputed domain name uses its mark VOLTAS in its entirety and hence is confusingly similar to the Complainant’s mark VOLTAS. The Complainant argues that the Respondent has no rights or legitimate interests in the disputed domain name and has registered it with the intent for wrongful commercial gain. The Complainant has overwhelming common law and statutory rights in its mark VOLTAS. The Complainant alleges that registering and commercially using the disputed domain name could be a manifestation of the Respondent’s ulterior motive to prevent the Complainant from making a legitimate commercial use of the same for offering its products and services.
Claiming that its mark VOLTAS is well known, the Complainant has relied on the general proposition that the registration of a domain name incorporating a well-known mark is probative of bad faith.
B. RespondentThe Respondent did not formally reply to the Complainant’s contentions. However, the Center received an informal communication from the Respondent on January 29, 2022, to the following effect:
“this domine is an expired date of 24/12/2021”.
As per paragraph 5(f) of the Rules where a Respondent does not submit a response, in the absence of exceptional circumstances, the panel may decide the dispute based upon the Complaint. The Panel does not find any exceptional circumstances in this case preventing it from determining the dispute based upon the Complaint, notwithstanding the failure of the Respondent to file a response. As per paragraph 14(b) of the Rules, where a party does not comply with any provision of the Rules, the panel may draw such inferences as it considers appropriate. It remains incumbent on the Complainant to make out its case in all respects under paragraph 4(a) of the Policy.
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 name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
ii. the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
iii. the disputed domain name has been registered and is being used in bad faith.
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant’s mark VOLTAS is a coined mark. The Complainant has produced trademark registration certificates in India, and other jurisdictions, in respect of the mark VOLTAS. The disputed domain name incorporates the Complainant’s mark VOLTAS in its entirety, together with the term “energy”. Referring to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), sections 1.7 and 1.8, this Panel notes that where the relevant trademark is recognizable within the disputed domain name, the addition of other terms would not prevent a finding of confusing similarity under the first element. In the present case, the Complainant’s mark VOLTAS is clearly recognizable in the disputed domain name
The WIPO Overview 3.0, section 1.7, provides the consensus view of UDRP panels: “While each case is judged on its own merits, in cases 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”.
The generic Top-Level Domain (“gTLD”) “.com” is generally disregarded for the purposes of comparison under this element.
In view of the above-mentioned findings, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trademarks and that the requirement of paragraph 4(a)(i) of the Policy stands satisfied.
B. Rights or Legitimate InterestsThe consensus view of 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 name. The Panel notes that the Complainant has already submitted evidence that it holds exclusive rights in the trademark VOLTAS by virtue of statutory registrations and 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: “While the overall burden of proof in UDRP proceedings is on the complainant, […] 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 its rights or legitimate interests in the domain name”.
The Respondent has failed to file a response to rebut the Complainant’s prima facie case or to advance any claim as to rights or legitimate interests in the disputed domain name (particularly, in accordance with paragraph 4(c) of the Policy).
C. Registered and Used in Bad FaithIn order to prevail, the Complainant must demonstrate that the disputed domain name has been registered and is being used in bad faith according to paragraph 4(a)(iii) of 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 Respondent on its website on the disputed domain name
The Panel notes that the Complainant has extensively used its VOLTAS trademark for a long time before the registration of the disputed domain name, including using it on the Internet. The Respondent’s probable purpose in registering the disputed domain name which incorporates the entire mark of the Complainant is, in the Panel’s view, to capitalize on the reputation of the Complainant’s mark.
As set out in the WIPO Overview 3.0, section 3.1.4, UDRP panels have consistently found that the mere registration of a domain name that is identical or confusingly similar to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith. Here, there is no doubt that the Complainant’s mark VOLTAS is a recognised and popular mark, in particular in India where the Parties are located. Hence, the Panel is satisfied that the Respondent knew, or in any event ought to have known, of the mark’s existence.
The Panel therefore concludes that the disputed domain name was registered and is being used in bad faith.
Absent any formal response from the Respondent, little is known about the Respondent. The Respondent has not availed himself of the opportunity to present any case of good faith that it might have had, and, in view of the circumstances, the Panel cannot conceive of any. The Panel finds that on the balance of probabilities, the Respondent’s conduct in registering and using the disputed domain name constitutes opportunistic bad faith under the Policy.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of Policy.
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
Shwetasree Majumder
Sole Panelist
Date: March 16, 2022