ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Godrej Industries Limited and Godrej Seeds and Genetics Limited v. godrej seed Case No. D2023-1395 1. The Parties The Complainants are Godrej Industries Limited, India, and Godrej Seeds and Genetics Limited, India, represented by Scriboard Advocates & Legal Consultants, India. The Respondent is godrej seed, India. 2. The Domain Name and Registrar The disputed domain name is registered with Key-Systems GmbH (the "Registrar"). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 31, 2023. On March 31, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 3, 2023, 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 (On behalf of godrejseeds.com OWNER, c/o whoisproxy.com) and contact information in the Complaint. The Center sent an email communication to the Complainant on April 3, 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 April 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 April 11, 2023. In accordance with the Rules, paragraph 5, the due date for Response was May 1, 2023. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 5, 2023. page 2 The Center appointed Meera Chature Sankhari as the sole panelist in this matter on May 22, 2023. 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 disputed domain name, was registered on November 15, 2022. The Complaint has been filed on behalf of both Godrej Industries Limited ("Complainant No. 1") and Godrej Seeds and Genetics Limited ("Complainant No. 2") (referred to collectively as "the Complainants"). Complainant No. 1 is a leading oleochemicals company with operations in Asia, Europe, Latin America and Africa whereas Complainant No. 2 is an agribusiness company, which operates in the fields of agriculture and animal husbandry services. Both the Complainants are incorporated in India and are the subsidiary companies belonging to the Godrej Group, a global conglomerate headquartered in Mumbai, India. The Godrej Group, through their subsidiary Godrej Consumer Products Ltd., owns at least 12 trademark registrations for "GODREJ" and its variants in Class 3 in India, including Reg. Nos. 4773 and 4774, both of which have been registered and remain valid since September 4, 1942. In addition, they own trademark Reg. Nos. 315171 (registered on May 26, 1976), 779649 (registered on November 26, 1997), and 1858599 (registered on September 4, 2009) as well as registrations in other jurisdictions. The trademark GODREJ has been held to be a well-known mark and included in the list of well-known trademarks by the Indian Trade Marks Registry. 5. Parties' Contentions A. Complainant The Godrej Group was founded in 1897 and operates worldwide in several sectors including real estate, consumer products, industrial engineering, appliances, furniture, security and agricultural products. It has been conducting business throughout the world for the past 125 years and has a combined revenue of over USD 4.5 billion through its various subsidiaries. The Godrej Group, which is a family-owned business, has been featured and ranked in leading publications including Fortune and Forbes. The Complainants claim that the brand "Godrej" is extremely famous and that the enormous amounts of monies have been expended in its promotion. The Complainants consider their corporate name and trade/service name / mark as an important and an extremely valuable asset, which are also secured in various jurisdictions through trademark registrations. The Complainants' GODREJ mark is a corporate name as well as the primary brand name of the Complainants and their group companies and has become their corporate identity. Likewise, the Complainants claim that the Godrej Group also owns the official website "www.godrej.com" since 1998. In addition, the Complainants, through the group of companies, own several other domain names, including , , , , , etc. The Complainants also claim that the brand "Godrej" has a large social media presence, including on Facebook, where they have over three million followers. The Complainants learned of the registration of the disputed domain name , which consists of the well-known trademark/service mark GODREJ in addition to the generic term "seeds". The Complainants allege that the disputed domain name has been registered with the intent of confusing and misleading people into believing that the same is a part of the Godrej Group. In this regard, the Complainants allege that: page 3 A. The disputed domain name is confusingly similar to the Complainants' mark GODREJ. i) The disputed domain name is confusingly similar to the Complainants' mark GODREJ as it consists of the Complainants' well-known trademark GODREJ followed by the term "seeds". ii) The website of the disputed domain name relates to agricultural services, which is also one of the businesses of the Complainants and that the general public might be mistaken into believing that the disputed domain name is associated with the Complainants' business. iii) The registration of the disputed domain name amounts to cybersquatting and trademark/service mark/name infringement and passing off. B. The Respondent has no rights or legitimate interests and this regard, the Complainants state that: i) the Respondent has no connection with the Complainants, or any company licensed by the Complainants; ii) the Respondent is not commonly known by the disputed domain name or the trademark; iii) the Respondent was not and is not authorized by the Complainants to register, hold, or use the disputed domain name. C. The Respondent has registered and is using the disputed domain name in bad faith and in this regard, the Complainants aver that: i) that mere registration and use of the disputed domain name by the Respondent, which is so obviously connected with a well-known mark, amount to bad faith; ii) it is inconceivable that the registration of the disputed domain name was made without full knowledge of the existence of the Complainants' well-known trademark; iii) the Respondent is misrepresenting as the representative of the Complainants and is using the disputed domain name to cash-in on the reputation of the Complainants' mark by using the disputed domain name for advertisements or bolstering their business; iv) the Internet users who would want to search for farming and agricultural solutions of the Complainants' group would search for the term "Godrej seeds", which would inadvertently lead the users to the disputed domain name, who may mistakenly assume that it is being offered by the Complainants; v) the Respondent's use of a privacy shield constitutes bad faith under the circumstances of the case. B. Respondent The Respondent did not reply to the Complainants' contentions. 6. Discussion and Findings To transfer the disputed domain name from the Respondent, the Complainants must prove the following element as per Paragraph 4(a) of the Policy: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights; and (ii) that 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 15(a) of the Rules instructs the Panel to decide a complaint "on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable". page 4 Further, since the Respondent has not submitted its reply in the case at hand, this Panel finds it appropriate case to "decide the dispute based upon the complaint" as per paragraphs 14(a) and 14(b) of the Rules. Having considered the Complainants' case and the evidence available, the Panel finds as follows. A. Identical or Confusingly Similar The Complainants have established their rights in and to the trademarks GODREJ which is owned by one of the subsidiary companies of the Godrej Group. Section 1.4.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), states that "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". The well-known status of the trademark GODREJ is established, which is identified as such by the Indian Trade Marks Registry. Further, the disputed domain name is identical to the Complainants' websites "www.godrej.com" and "www.godrej.in". Per section 1.7 of the WIPO Overview 3.0, "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". There is no doubt that the disputed domain name contains the Complainants' well-known mark GODREJ in its entirety and it can easily be identified. Further, section 1.8 of the WIPO Overview 3.0, states that "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". The mark GODREJ is clearly recognizable in the disputed domain name in the present case and the Panel finds that the addition of a term "seeds" to the disputed domain name is insufficient to avoid a finding of confusing similarity to the Complainants' mark. The Panel concludes that the Complainants have satisfied the elements required in paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests As per section 2.1 of the WIPO Overview 3.0, "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". The Complainants here have prima facie established that the Respondent lacks rights or legitimate interests in the disputed domain name and in this relation, the Complainants have contended that: i) they are the legitimate owners of the well-known trademark GODREJ and have statutory, as well as common law rights therein; ii) they have not licensed or otherwise permitted the Respondent to use their registered and well-known trade/service mark GODREJ or to apply for any domain incorporating the same; and iii) the Respondent has no rights or legitimate interests in the disputed domain name and that it was registered solely with the motive to make unjust gains by depriving the Complainants of their legitimate rights of registering an identical domain name. page 5 The Respondent has not replied and failed to introduce evidence to rebut these contentions. The Panel finds that the Complainants have established the second element of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith As per section 3.1.4 of the WIPO Overview 3.0, 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. The Panel has already acknowledged that the Complainants' registered trademark GODREJ is widely-known in India and internationally. The Respondent has no relation whatsoever with the trademark GODREJ and yet has obtained the registration of the disputed domain name, using the Complainants' registered trademark GODREJ in its entirety. The Panel is left with no doubt that by doing so, the Respondent has deliberately and knowingly attempted to trade upon the goodwill enjoyed by these renowned trademarks, with the ulterior motive of gaining unlawful commercial gains. Moreover, section 3.2.1 of the WIPO Overview 3.0 includes additional circumstances and particular factors, which the Panel may consider in assessing whether the respondent's registration of a domain name is in bad faith. One such circumstance includes: "(i) the nature of the domain name (e.g., [.] a domain name incorporating the complainant's mark plus an additional term such as a descriptive or geographic term, or one that corresponds to the complainant's area of activity or natural zone of expansion)". The present case is a classic example of the circumstance being described here. The Respondent in the case at hand, has registered the disputed domain name incorporating the Complainants' mark GODREJ plus an additional term "seeds", which corresponds to the Complainants' area of activity. See Barclays Bank PLC v. PrivacyProtect.org / Sylvia Paras, WIPO Case No. D2011-2011 and Swarovski Aktiengesellschaft v. WhoisGuard Protected / Peter D. Person, WIPO Case No. D2014-1447. Lastly, the Panel finds bad faith also on the ground that it is inconceivable that the Respondent, who resides in India, could not have known of the Complainants' well-known trademark GODREJ. In fact, and as rightly contended by the Complainants, the disputed domain name was registered and is being used in bad faith also because of the following: i) the Respondent should have known of the Complainants' well-known trademark also because of its wide presence in India; ii) registering the disputed domain name despite such knowledge is an indicator of bad faith there is a great likelihood that actual or potential unwary visitors to the Respondent's present web page resolving on this disputed domain name, will be induced to believe that the Complainants have authorised or licensed the actions of the Respondent or authorized the Respondent to register the disputed domain name. The Panel has no hesitation in finding that the disputed domain name is registered and used by the Respondent in bad faith and is therefore, a classic case of domain name squatting. The Panel finds the Complainant has succeeded under the third element of paragraph 4(a) of the 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 name, be transferred to the Complainant. /Meera Chature Sankhari/ Meera Chature Sankhari Sole Panelist Date: June 7, 2023
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