ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Godrej Industries Limited, and Godrej Consumer Products Limited v. llaxmi narayan Case No. D2023-0971 1. The Parties The Complainants are Godrej Industries Limited, and Godrej Consumer Products Limited, India, represented by Scriboard Advocates & Legal Consultants, India. The Respondent is llaxmi narayan, India. 2. The Domain Name and Registrar The disputed domain name is registered with GoDaddy.com, LLC (the "Registrar"). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 3, 2023. On March 3, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 6, 2033, 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 (Domains by Proxy, LLC) and contact information in the Complaint. The Center sent an email communication to the Complainant on March 7, 2023, 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 March 10, 2023. 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 March 17, 2023. In accordance with the Rules, paragraph 5, the due date for Response was April 6, 2023. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 11, 2023. The Center appointed Harini Narayanswamy as the sole panelist in this matter on April 17, 2023. The Panel page 2 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 Complainants are companies of the Godrej group, an Indian multinational conglomerate with business interests in varied fields such as chemicals, real estate, consumer products, industrial engineering, appliances, furniture, security and agricultural products. The Complainants use the family name "Godrej" as part of their corporate name and tradename. The GODREJ trademark is widely used by the Complainants and the mark is protected by numerous trademark registrations in India and in other jurisdictions. Some of its Indian trademark registrations are: GODREJ (word mark) Registration No. 4773, Class3 date September 4, 1942 GODREJ (Device mark) Registration No. 4774, Class 3 date September 4, 1942 GODREJ (Device mark) Registration No. 315171, Class 3 date May 26, 1976 GODREJ (Device mark) Registration No. 1858599, Class 3 date September 4, 2009 GODREJ PROTEKT (word mark) Registration No. 897347, Class 3 date, January 12, 2000 The Respondent registered the disputed domain name on November 9, 2022. As per the Registrar's WhoIs record, the Respondent is located in Hyderabad, India. The Respondent uses the disputed domain name to host a website that offers pest control services such as termite treatment for offices and furniture. The website displays a statement that says Godrej Enterprises is a unit of Scientific Solution. 5. Parties' Contentions A. Complainants The Complainants state that they were founded more than a century ago in the year 1897 and are presently a globally ranked industrial conglomerate. The Complainants refer to media reports that feature their global rankings in leading international publications such as Fortune and Forbes. The Complainants claim that their combined revenue through their subsidiary companies is around USD 4.5 billion and their customer base comprises of about 1.1 billion consumers. The First Complainant, Godrej Industries Limited, is a leading manufacturer of oleo chemicals and edible oils. The Second Complainant, Godrej Consumer Products Limited, is a leading company in the area of household insecticides, hair care products and owns several brands including CINTHOL, GODREJ, GOOD NIGHT, HIT, GODREJ NO 1, GODREJ SHIKAKAI, GODREJ PROTEKT, GODREJ MAGIC, GODREJ EXPERT, RENEW and EZEE. The Complainants state that their products are available in eighty countries and have acquired several foreign businesses in countries such as the United Kingdom ("UK"), United States of America, Indonesia, Argentina, Chile and South Africa. The Complainants state that HIT is a leading insecticide brand that was introduced in the year 1991 and the brand has other variants such as LAL HIT and KALA HIT. The Complainants state that they have been a major player in the pest control solutions space for an extensive period with it brands HIT and GOOD NIGHT and its variants. The Complainants state that it divested its GODREJ HI CARE Pest Control Solutions, in the year 2000. The Complainants argue that the Respondent is attempting to ride on the Complainants' goodwill in the 'Pest Control Services space' by offering pest control services under the disputed domain name, by using the name "Godrej Enterprises". The Complainants state that enormous amounts are spent to promote the GODREJ mark and has provided figures for promotion of the mark and of its sales turnover for the past five years from the years 2018 to 2023. The Complainants state that they operate their website from the domain name , which page 3 was registered in 1998 and also owns several domain names that have active websites. The Complainants allege that the GODREJ mark is used on all its products, including their packaging and on their publicity material. The Complainants assert that due to extensive use, the mark is associated with their business. The Complainants claim that they have an enormous social media presence. The Complainants state that it takes continuous action to safeguard their rights in the GODREJ mark including filing UDRP cases, and previous UDRP decisions have recognized the mark as a well-known mark. The Complainants argue that the mere use of the GODREJ mark by the Respondent indicates the intention is cybersquatting with an objective to infringe and pass-off its services as that of the Complainants. The Complainants emphasize that the GODREJ mark has been declared a well-known mark by the Indian Trademark Office under Section 1[6] of the Indian Trade Marks Act, 1999. The Complainants have provided evidence showing the GODREJ mark is listed as a "well-known mark" on the list of well-known marks published by the Indian Trademark Registry. The Complainants request for the transfer of the disputed domain name on the grounds that it is confusingly similar to a trademark in which it has rights, the Respondent lacks rights or legitimate interests in the disputed domain name and the disputed domain name has been registered and is being used in bad faith by the Respondent. B. Respondent The Respondent did not reply to the Complainants' contentions. 6. Discussion and Findings The Complainants are required to establish three elements under paragraph 4 (a) of the Policy to obtain transfer of the disputed domain name, these are: (i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights; and (ii) The Respondent lacks rights or legitimate interests in the disputed domain name; and (iii) The disputed domain name was registered and is being used in bad faith by the Respondent. The First and the Second Complainants are part of the same group, the Godrej Group, a global conglomerate headquartered in India which was founded in 1897. The Complainants have a specific common grievance against the Respondent and it is equitable and procedurally efficient to permit the consolidation. A. Identical or Confusingly Similar The first element under paragraph 4(a) of the Policy requires the Complainant to establish the disputed domain name is confusingly similar to a trademark or a service mark in which it has rights. The Complainants have provided details of its numerous trademark registrations for the GODREJ mark and its variants in India and in other jurisdictions. The Panel finds that the provided trademark registrations establishes the Complainants' rights in the marks. The disputed domain name contains the GODREJ mark and the additional term "enterprises". The GODREJ mark is the recognizable in the disputed domain name, and the word "enterprises" does not prevent a finding of confusing similarity. The incorporation of the Complainant's entire mark in the disputed domain name is itself sufficient to find confusing similarity. For these reasons, the disputed domain name is found to be confusingly similar to the mark. See section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"). page 4 The Panel finds that the Complainants have fulfilled the requirements under the first element of the Policy, that the disputed domain name is confusingly similar to a mark in which the Complainants have established rights. B. Rights or Legitimate Interests The second element under paragraph 4(a) of the Policy requires the Complainants to make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name. The Respondent can rebut the Complainants' allegations with relevant submissions and supporting evidence to establish rights or legitimate interests in the disputed domain name. If the Respondent fails to do so, and the Complainants are found to have made a prima facie case, then the Complainants are deemed to have satisfied paragraph 4(a)(ii) of the Policy. See section 2.1 of the WIPO Overview 3.0. The Complainants have argued that the Respondent lacks rights or legitimate interests in the disputed domain name as the Respondent's use of the mark is misleading, and it does not constitute legitimate use. The Complainants further allege that the Respondent does not use the disputed domain name in connection with a bona fide offering of products but seeks to derive mileage from the use of the Complainants' mark. The Panel notes that the Respondent is not known by the name "Godrej" or any similar name, and the registration record shows the Respondent's name is "llaxmi Narayan". The Panel accepts that the Respondent has no connection or affiliation with the Complainant and is not authorized or licensed to use the mark in any manner, including using the mark to register a domain name. In the absence of any submissions claiming rights or legitimate interests by the Respondent or any rebuttal of the Complainants' allegations by the Respondent, the Panel accepts the Complainants' contentions. The Panel also finds the evidence submitted by the Complainants include screenshots of the Respondent's website that shows that the disputed domain name is being used by the Respondent for offering pest control services, under the name "Godrej Enterprises". The Complainants have argued that their mark is well-known in the area of pest control and the Respondent's use of its well know GODREJ mark in the disputed domain name is with an intention to bait Internet users and mislead customers based on the reputation of its mark. The Panel is of the view that it is reasonable to infer from the present circumstances, that the Respondent had knowledge of the association between the Complainants GODREJ mark and its pest control business when registering the disputed domain name for the purpose to derive unfair benefits from use of the wellknown mark. The Complainants have made a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. This satisfies the second element under paragraph 4 (a) of the Policy. C. Registered and Used in Bad Faith The third element requires the Complainant to establish the disputed domain name has been registered and is being used in bad faith by the Respondent. The Panel finds that the Complainants have established its prior adoption of the GODREJ mark. The Complainants have provided evidence of extensive and continuous use of the mark for a number of years in connection with their businesses covering various goods and services. The Complainants have submitted figures showing expenditure for promoting its mark and its sales turnover under the mark which are significant. Furthermore, evidence of third party media reports also highlight the fame, reputation and public awareness associated with the mark. Given the fame and reputation associated with the mark (see also Godrej Consumer Products Limited v. Registration Private, Domains By Proxy, LLC / Vishal Jain, fmcg, WIPO Case No. D2020-1616), it leaves no room for doubt that the Respondent ought to have known about the Complainants rights in the mark when registering the disputed domain name. The Panel finds that the Complainants' argument that the mere use page 5 of the mark in the disputed domain name indicates the Respondent's awareness of the mark. The Respondent's registration of the disputed domain name is found to be in bad faith. The Complainants evidence furthermore shows it is a well-established and leading market player in the area of pest control products. The Respondent's use of the disputed domain name for offering pest control services, i.e. the same business field where the Second Complainant has a well-established business, indicates that the disputed domain name is being used with an intention to attract for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainants mark, as to the source, sponsorship, affiliation, or endorsement of the Respondent's website or location of a product or service on the Respondent's website, which is bad faith use described under paragraph 4(b)(iv) under the Policy. The use of a domain name that is confusingly similar to a widely known mark by an unaffiliated entity, can by itself create a presumption of bad faith. See section 3.1.4 of WIPO Overview 3.0. In view of the present circumstances discussed and based on the preponderance of facts and material placed before the Panel, the reasonable conclusion is that the Respondent has knowingly used the Complainants mark in the disputed domain name to mislead consumers. The Panel finds that the Respondent has primarily registered and used the disputed domain name for purposes of attracting web traffic in a manner that is recognized as bad faith under paragraph 4(b)(iv) of the Policy. The Panel notes there are other facts and circumstances which do not indicate the Respondent's bona fide motives. For instance, the Respondent's use of privacy service, within the context of the case. The Respondent's failure to respond in these proceedings. The Respondent's lack of rights or legitimate interests in the disputed domain name. Furthermore, the Respondent is located in India, where the Complainant's rights in the GODREJ mark is well known. The entire set of facts and circumstances cumulatively, on balance, indicate a lack of good faith intention on the part of the Respondent for the registration and the use of the disputed domain name. The Panel concludes, for the reasons discussed, that the disputed domain name has been registered and is being used by the Respondent with bad faith intent of misleading customers based on the reputation associated with the GODREJ mark. The Panel finds that the Complainants have satisfied the requirements under paragraph 4(a)(iii) of the Policy, that the disputed domain name has been registered and is being used in bad faith by the Respondent. 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 be transferred to the Complainants. /Harini Narayanswamy/ Harini Narayanswamy Sole Panelist Date: May 1, 2023
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