ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Bennett Coleman & Co. Ltd. v. Madhusudhan Reddy Case No. D2023-4211 1. The Parties The Complainant is Bennett Coleman & Co. Ltd., India - represented by Inttl Advocare, India. The Respondent is Madhusudhan Reddy, India. 2. The Domain Name and Registrar The disputed domain name
is registered with Big Rock Solutions Ltd (the "Registrar"). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 10, 2023. On October 11, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. The Registrar transmitted by email to the Center its verification response, confirming that the Respondent is listed as the registrant and providing the contact details. 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 October 19, 2023. On the same day, the Respondent submitted an email to the Center. In accordance with the Rules, paragraph 5, the due date for Response was November 8, 2023. The Respondent did not submit any formal Response. Accordingly, the Center notified the Respondent with the Commencement of Panel Appointment Process on November 30, 2023. The Center appointed Vinod K. Agarwal, as the sole panelist in this matter on December 1, 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. page 2 4. Factual Background The Complainant is a Company incorporated under the provisions of The Companies Act, 1913. The Registered Office of the Complainant is in Mumbai, Maharashtra, India. The Complainant has several offices in different parts of India including Delhi and Mumbai. The Complainant is known as "The Times Group" and started 184 years ago with the business of publishing newspapers, journals, magazines, and books. The Complainant has more than 45 dailies and periodicals in 6 languages with 150 editions having 33 publishing centers across the country providing a combine readership of over 40 million. The Complainant and its subsidiaries are present in every existing media platform - newspapers, magazines, books, television, radio, internet, event management, outdoor display, music, movies and more. Further the Complainant comprises various independent companies involved in a variety of businesses such as Media and Entertainment including Radio Broadcast, Event Management, Outdoor, Advertising, Motion Pictures, Television Broadcast, Financial Services, Educational Services, Syndication Services, Internet Services. The disputed domain name was registered on June 1, 2016. Before the filling of the Complaint, the disputed domain name was resolving to a website displaying "Times now India" and disseminating of news. At the time of drafting this Decision, it does not resolve to any active website. 5. Parties' Contentions A. Complainant The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are applicable to the present dispute. In relation to first element, the Complainant contends the Complainant is the largest publishing company in India and South Asia. Starting off with the newspaper "The Times of India", which is now one of the largest English publications in the world popularly known as "TOI". The newspaper attracts a daily circulation level of more than a million copies. The newspaper "The Times of India" is published from Mumbai, Delhi, Bangalore, Kolkata, Pune, Chennai, Lucknow, Ahmedabad, Hyderabad, Jaipur, Kanpur, Nagpur, Goa, Mysore and Mangalore. The Complainant is the proprietor of the well-known trademark TIMES NOW, THE TIMES, THE TIMES OF INDIA PRESS, THE TIMES OF INDIA, which has been used since at least 1838, and which is exclusively associated with the Complainant, especially for news, print media and telecommunications and broadcasting services. The disputed domain name gives rise to enormous confusion as to its origin on account of use of the trademark TIMES in its entirety and on account of the disputed domain name being confusingly similar to the TIMES NOW, TIMES OF INDIA, and TIMES trademarks of the Complainant. Further, the website under the disputed domain name makes a false reference to the Complainant and therefore, consumers would be misled into believing that it is the official business website of the Complainant at the disputed domain name, which is not the case. The registration of the disputed domain name solely for the purpose of misleading and defrauding the public into believing that the disputed domain name and their impugned services originate or emanate from the Complainant to the detriment of both the public at large as well as the stellar goodwill and reputation of the Complainant herein. page 3 Considering the extensive use and/or registrations of the TIMES NOW, TIMES OF INDIA, and/or TIMES trademarks and domain names throughout the world, the public at large associates the trademark TIMES with the Complainant alone. The Complainant has conspicuously and extensively advertised their services under the trademarks TIMES NOW, TIMES OF INDIA, and/or TIMES in several print and electronic media worldwide. Internationally, the Complainant is the proprietor and owner of registered trademarks in relation to the mark TIMES NOW, some of which are under: Trademark No. Trademark Registration Date Country Class UK00003145599 TIMES NOW June 17, 2016 United Kingdom 38, 41 UK00003145611 TIMES NOW June 17, 2016 United Kingdom 38, 41 835010 TIMES NOW September 5, 2011 New Zealand 38, 41 1400398 TIMES NOW December 17, 2010 Australia 38, 41 UK00905239413 TIMES NOW October 8, 2009 United Kingdom 38, 41 005239413 TIMES NOW October 8, 2009 European Union 38, 41 The trademark registrations issued in favour of the Complainant are annexed to the Complaint as Annex 6. Additionally, the Complainant has also filed several applications in India, as well as globally, which some are pending registrations. The Complainant also has domain name registrations for , and which is accessible all over the world since 1996 and 2008 respectively. The Complainant is the registrant of over 100 domain names, including those that contain its well-known trademark TIMES. An illustrative printout of the reverse WhoIs search is attached herewith as Annex 7 to the Complaint. The following is an illustrative list of such domain name registration 2008 respectively. The following is an illustrative list of such domain name registrations: Domain Name No. Domain Name Date 1. April 8, 1996 2. April 12, 1996 3. November 12, 1996 4. November 22, 1996 5. November 22, 1996 6. September 26, 1997 7. September 26, 1997 8. May 11, 1998 9. January 22, 2023 10 March 6, 2000 11. April 6, 2000 12. August 19, 2004 13. December 27, 2006 14. May 12, 2008 15. May 22, 2008 16. May 26, 2008 17. July 1, 2008 18. May 5, 2009 19. June 29, 2011 page 4 20. February 25, 2016 21. July 12, 2017 22. August 3, 2017 23. March 20, 2018 24. October 7, 2019 In relation to second element, the Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has registered the disputed domain name with the sole intention of duping and cheating customers of the Complainant as well as public at large at the cost and risk of not only the Complainant but also the public at large. The Respondent's registration of the disputed domain name is contrary to the conditions outlined under paragraph 4(c) of the Policy and thus clearly shows that the Respondent has no rights or legitimate interests in the disputed domain name but to tarnish the image of the Complainant and derive undue and illicit gains therefrom. The Respondent's activities also prejudicially affect the credibility of the Complainant and their enviable goodwill. A perusal of the disputed domain name will show that the Respondent has registered the disputed domain name in the absence of any business connection, approval or consent from the Complainant and has mislead people/customers into believing the website of the Respondent has association with the Complainant. It is submitted that the Respondent has no business connection, approval or consent from the Complainant in any manner to use the trademark TIMES NOW, TIMES OF INDIA, and/or TIMES marks as part of the disputed domain name. The Complainant has not authorized, permitted or licensed the Respondent to use any of its trademarks in any way. Such unlicensed and unauthorized use of domain incorporating the Complainant's trademark is solely with a view to hoard the domain name, misleadingly divert consumers, to tarnish the trademark of the Complainant. In relation to third element, the Complainant contends that the Respondent's conduct clearly establishes that the disputed domain name was registered with the sole intention to falsely imply nexus with the Complainant, proprietary and legitimate legal rights in which vest with the Complainant alone. Further that, the Respondent had falsely claimed that they are a part of the Complainant's group companies. Such false claim and false association amounts to deliberate misrepresentation and misappropriation of the Complainant's goodwill. There cannot be any possible reason the Respondent happened to register a domain name which fully incorporates the trademark TIMES of the Complainant which has only done to deliberately deceive the public at large into believing that the disputed domain name has association with or trade nexus with the Complainant. The Respondent was using the disputed domain name for providing identical services i.e., dissemination of news and made false claim on the website that they have a connection/affiliation with the Complainant's group. The disputed domain name could be used by the Respondent to extract huge sums of money from the Complainant who has legitimate interests in the said disputed domain name. B. Respondent The Respondent did not formally reply to the Complainant's contentions, but he submitted an email on October 19, 2023, in which he offered to transfer the disputed domain name to the Complainant. 6. Discussion and Findings According to paragraph 4(a) of the Policy, the Complainant must prove that: (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 page 5 (iii) The disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar According to the information submitted by the Complainant, the Complainant is the owner of several trademark registrations for TIMES NOW in many jurisdictions in India and abroad. The disputed domain name includes the trademark of the Complainant in its entirety together with the term "india". The Panel finds the addition of such term does not prevent a finding of confusing similarity between the disputed domain name and the Complainant's trademark for the purposes of the Policy. WIPO Overview 3.0, section 1.8. Therefore, the Panel finds that the disputed domain name is confusingly similar to the trademarks of the Complainant. B. Rights or Legitimate Interests According to paragraph 4(c) of the Policy, the Respondent may demonstrate its rights to or legitimate interests in the disputed domain name by proving any of the following circumstances: (i) before any notice to [the Respondent] of the dispute, [the Respondent's] use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or (ii) [the Respondent] (as an individual, business or other organization) has been commonly known by the disputed domain name, even if [the Respondent] has acquired no trademark or service mark rights; or (iii) [the Respondent] is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. There is no evidence to suggest that the Respondent has become known by the disputed domain name anywhere in the world. As was confirmed by the Registrar, the Respondent is known as Madhusudhan Reddy. The Complainant has not authorized the Respondent to use the name and their trademark TIMES NOW. It is evident that the Respondent does not have legitimate interests in the disputed domain name. Further, in view of the fact that the Complainant has not licensed or otherwise permitted the Respondent to use its trademark or to apply for or use the disputed domain name incorporating the trademark of the Complainant. Having reviewed the available record, the Panel finds 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 rebutted the Complainant's prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise. Based on the evidence in the Complaint, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration or use of the domain name in bad faith: page 6 (i) circumstances indicating that [the Respondent] has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that the Complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or (ii) [the Respondent] has registered the disputed 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 it has engaged in a pattern of such conduct; or (iii) [the Respondent] has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the disputed domain name, [the Respondent] has intentionally attempted to attract, for commercial gain, internet users to its web site or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of [the Respondent's] website or location or of a product or service on its web site or location. The Complainant contends that the disputed domain name was registered or acquired by the Respondent primarily for the purpose of carrying on some of the business competitive to the Complainant. The disputed domain name was resolving to a website displaying news and falsely claiming association with the Complainant, this is bad faith as described under paragraph 4(b)(iv) of the Policy. In addition, at the time when the website under the disputed domain name, was active, the mentioned website contained a copyright disclaimer, indicating that: "Copyright c Timesnowindia.com Latest news headlines from India & around the world. Check out today's news coverage live. The Times of India is an Indian English language daily newspaper and digital news media owned and managed by The Times Group. It is the third largest newspaper in India by circulation and largest selling English language daily in the world. Bennett, Coleman and Company Limited, is an Indian media conglomerate headquartered in Mumbai, Maharashtra. The company remains a family-owned business with Sahu Jain family owning a majority stake in The Times Group." Panels have moreover found the following types of evidence to support a finding that a respondent has registered a domain name to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant's mark: [ ] (iv) redirecting the domain name to a different respondent-owned website, even where such website contains a disclaimer [.]. WIPO Overview 3.0, section 3.1.4. The Panel concludes that the registration of the disputed domain name amounts to the registration and use of the disputed domain name in bad faith and that paragraph 4(a)(iii) of the Policy is satisfied. 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. /Vinod K. Agarwal/ Vinod K. Agarwal Sole Panelist December 15, 2023
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