The Complainant is Flatworld Solutions Private Limited of Bangalore, India, represented by Swathi Sukumar, India.
The Respondent is Invensis Technologies Private Limited of Bangalore, India. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 8, 2011. On August 8, 2011, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain name. On the same day, GoD, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Complainant filed an amendment to the Complaint on August 10, 2011.
The Center verified that the Complaint together with the amendment to the 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 12, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was September 1, 2011. The Center received an email communication from the Respondent to the Complainant on August 26, 2011, stating that it would transfer the disputed domain name. The Center intimated the Complainant of the Respondent’s intention to settle the case but the Complainant opted for continuing with the proceedings. The Respondent did not submit any further response. Accordingly, the Center notified the parties regarding the next procedural step on September 2, 2011. On the same day, the Center received an email communication from the Respondent stating that it was still ready to transfer the disputed domain name.
The Center appointed Harini Narayanswamy as the sole panelist in this matter on September 7, 2011. 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 Complainant is an Indian company involved in the business of outsourced services and uses the mark OUTSOURCE2INDIA in connection with its services. The Complainant has a Community trademark registration number 009059494 dated May 25, 2011 for the device mark OUTSOURCE2INDIA and has an Indian trademark application number 1789814 dated February 26, 2009 under class 35 for the same mark.
The Respondent registered the disputed domain name on September 1, 2010. 5. Parties’ Contentions A. Complainant
The Complainant claims it coined its service mark OUTSOURCE2INDIA in the year 1999 and has used it in relation with its business since March 1, 1999. The Complainant states that the services it provides under the said mark are: call center services, telemarketing services, technical helpdesk services, data entry services, software development services, transcription services, engineering services, health care services, financial services, photo editing services, research services, creative services and Real Estate Owned (REO) property services. The Complainant states that it registered the domain name in 1999 and has used it continuously for conducting its business.
The Complainant has provided a screen shot from the website Web Worth, dated July 27, 2011, that purportedly shows the estimated value of its mark OUTSOURCE2INDIA at about USD 87,391. The Complainant states it has a vast customer base in many countries and has offices in New Jersey, United States and in Bangalore, India. The Complainant has filed some of its published advertisements in the Indian newspapers and a copy of an article in the magazine “Outsource APAC” about the Complainant’s business, a listing in the Global Offshore Directory, a recent invoice from an advertisement company and a copy of its company letterhead. Based on these documents, the Complainant claims its mark has become a distinct identifier of its services and has acquired secondary meaning. The Complainant states it has copyright registration for the artistic work in the device mark OUTSOURCE2INDIA MANAGING YOUR ENTIRE OUTSOURCING VENTURE and has submitted a copy of the document showing copyright registration number A-86994/2009.
The Complainant contends that the disputed domain name is identical to its mark except for the “.co” extension and refers to several decisions upholding the proposition that a domain name that incorporates a mark is found identical or confusingly similar to the mark and the gTLD extension .com does not affect the finding of confusing similarity.
The Complainant argues the Respondent has no rights and legitimate interests in the disputed domain name and states that the Respondent has been a vendor to the Complainant in the past and has provided a copy of the agreement between the parties. The Respondent, according to the Complainant founded “Invensis Technologies” in the year 2000 and uses the trade name Invensis for its business of outsourcing services. The Complainant believes the Respondent is not known by the disputed domain name and does not appear to have a trademark registration for the term “Outsource2india”.
The Complainant believes that the disputed domain name was registered with the object of diverting the Complainant’s customers and for making unlawful commercial gains by passing off the Respondent’s business as that of the Complainant’s or for selling it to a third party. The Complainant alleges that the Respondent has made no demonstrable preparations to use the domain name with a bona fide offering of goods or services as the disputed domain name is parked and is not used, and the website linked to the domain name is used to advertise many third party links that are not related to the Respondent’s business.
The Complainant argues the disputed domain name was registered and is being used in bad faith, as the Respondent who was a vendor to the Complainant ought to have been aware of the Complainant’s mark. The Complainant further states the agreement between the parties does not allow the Respondent to use the Complainant’s mark and the Complainant has not given the Respondent any other license or permission to use its mark. The Complainant states the Respondent has tried to approach its clients to solicit business using the Complainant’s email “m” and the Complainant had objected to the use of its mark and its domain name by the Respondent. The Complainant argues the use of the disputed domain name by the Respondent is likely to attract Internet users for commercial gain to the Respondent’s website or other online location by creating a likelihood of confusion with the Complainant’s mark as to the source, affiliation or endorsement of the Respondent’s website and requests for the transfer of the disputed domain name. B. Respondent
The Respondent has not filed a formal reply in these proceedings but has sent two email communications to the Center. Both the emails are from Anupa Rongala, the Vice President, Business Acquisitions, of Invensis Technologies Private Limited, and are dated August 26, 2011 and Sept 2, 2011 respectively. The emails state the Respondent is ready to hand over the disputed domain name to the Complainant. The Center responded to the email communications, stating that only the Complainant can request for suspension of the proceedings to explore the possibility of settlement, and since the Complainant had not requested for such a settlement, the proceedings would have to continue.
The materials on record show the communications between the parties and their inability to arrive at an amicable settlement. The Panel also notes from the correspondence between the parties that the Respondent’s emails have consistently shown its willingness to transfer the disputed domain name to the Complainant. 6. Discussion and Findings
To obtain the remedy of transfer of the disputed domain name, the Policy states that the Complainant has to establish three elements under paragraph 4(a).
(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 disputed domain name was registered and is being used in bad faith by the Respondent. A. Identical or Confusingly Similar
The first element under paragraph 4(a) of the Policy requires the Complainant to prove the disputed domain name is identical or confusingly similar to a mark in which it has rights.
The Complainant has filed a copy of its Community trademark registration number 009059494 dated May 25, 2011 for its device mark OUTSOURCE2INDIA. The Panel finds the mark OUTSOURCE2INDIA is a descriptive mark; although the Complainant has argued that the term “Outsource2india” is a coined one, the mark being descriptive makes it an inherently weak mark. The Panel also notes the Complainant has filed an Indian trademark application for the device mark OUTSOURCE2INDIA and has a copyright registration for the artistic work in the said mark. Other documents filed by the Complainant show the use of the mark over a period of time. Based on the Complainant’s Community trademark registration and the supporting documents the Panel is satisfied that the Complainant has demonstrated rights in the mark OUTSOURCE2INDIA for the purpose of these proceedings. A trademark registration constitutes prima facie evidence of validity of trademark rights. See Back Street Prods v. Zuccarini,WIPO Case No. D2001-0654.
The Panel finds the disputed domain name is identical to the mark in which the Complainant has rights except for the “.co” ccTLD. The use of the term “outsource2india” in the disputed domain name exactly replicates the Complainant’s mark by using the numeral “2” between the words “outsource” and “India”.
The Panel also notes that the “.co” ccTLD has been found to be particularly attractive for registrants as it closely resembles the popular “.com” gTLD generic top level domain extension. See Vanguard Trademark Holdings USA, LLC v. True Energy Ventures, LLC,WIPO Case No. DCO2011-0040. (The Columbian authorities opened the “.co” domain for use by registrants regardless of geographic location and did so in part because ”.co” abbreviates “company” and “corporation” in English and in Spanish. The “.co” registration is attractive to domain name registrants operating businesses and for the reason that “.com” and “.co” are substantially similar in appearance).
For the reasons discussed the Panel finds the disputed domain name is found identical or confusingly similar to the mark in which the Complainant has rights. The Complainant has satisfied the first element under paragraph 4 (a) of the Policy. B. Rights or Legitimate Interests
The second element under paragraph 4(a) of the Policy requires the Complainant to make a prima facie case that the Respondent lacks rights and legitimate interest in the disputed domain name.
Paragraph 4(c) of the Policy provides a non-exhaustive list of circumstances by which the Respondent can demonstrate rights or legitimate interests in the disputed domain. The Respondent can establish under Paragraph 4(c) of the Policy that:
(i) The Respondent has used or made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services;
(ii) The Respondent has been commonly known by the disputed domain name;
(iii) The Respondent is making legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers or tarnish the trademark of the Complainant.
The Respondent did not file any formal response in these proceedings or provide any materials that show rights in the disputed domain name. The Panel finds from the material on record that there is no indication that the Respondent has been known by the disputed domain name or that the Respondent is making any legitimate noncommercial fair use of the disputed domain name. Further, the unchallenged submissions of the Complainant are that the Respondent has not been authorized or licensed to use its mark.
The Complainant has filed a copy of the “Execution Partner Agreement” dated June 12, 2009 between the parties and the agreement does not mention the Respondent has been given an authorization to use the Complainant’s mark. The Respondent has not contested the averments made in the Complaint, but has merely stated that it wishes to transfer the disputed domain name to the Complainant.
It has been found in previous cases, where a past relationship has existed between the parties and the respondent does not contest the allegations in the complaint but has merely indicated willingness to transfer the domain name, that this leads to an inference that the respondent under such circumstances could lack rights or legitimate interests in the domain name. See Maree Gaye Miller v. Peter Horner,WIPO Case No. D2008-1492. Based on the email communications of the Respondent dated August 26, 2011 and Sept 2, 2011 where the Respondent has indicated its willingness to transfer to the disputed domain name to the Complainant and given the unchallenged submissions of the Complainant that the Respondent has not been authorized or licensed to use its mark, it is reasonable to infer that the Respondent lacks rights or legitimate interests in the disputed domain name.
For the reasons discussed the Panel is satisfied that the Respondent has no rights or legitimate interests in the disputed domain name as required under the second element of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
The third element under paragraph 4(a) of the Policy requires the Complainant to prove that the disputed domain name has been registered and is being used in bad faith.
The Respondent has not denied that it was a vendor to the Complainant and had knowledge of the Complainant’s mark when the disputed domain name was registered. Given the circumstances in the present case, the plausible inferences that can be drawn are: that the Respondent most likely registered the disputed domain name with the Complainant’s mark in mind and also that the Respondent has not registered the domain name in a descriptive sense since the disputed domain name uses the words “outsource” and “India” with the numeral “2”, as used in the Complainant’s mark, rather than using the word “to”. The Panel also notes the Complainant’s claim that its trademark OUTSOURCE2INDIA has been used in relation to its business since March 1, 1999, and that it registered the domain name in 1999 and has used it continuously for its business.
Registration of a domain name where the circumstances indicate among others, that the respondent has registered the domain name with the complainant’s mark in mind is recognized in similar circumstances, as bad faith registration under the Policy. Particularly if it is found that the respondent has no rights or authorization to use the mark, the common inference is that the domain name was registered in bad faith for the trademark value associated with the mark. See for instance Baccarat SA v. MSL International, Inc.,WIPO Case No. D2005-0048.
The Complainant has argued that bad faith use is indicated in the circumstances of the present case as the disputed domain name is not being used by the Respondent but is currently parked and diverts Internet users to other third party sites. Such use under the circumstances described in the present case has been recognized as bad faith use of the domain name. See for instance Burberry Limited v. Ruo Chang, WIPO Case No. D2010-1034 (where the domain name registered under similar circumstances was merely parked on the SEDO website and was found to be bad faith use of the domain name).
The Complainant has asserted that the Respondent has tried to solicit clients of the Complainant and as the Respondent is in direct competition with the business of the Complainant, the disputed domain name is likely to disrupt the Complainant’s business. The Panel notes the Respondent has not denied or challenged these allegations made in the Complaint but has accepted to transfer the dispute domain name to the Complainant which in the previous section the Panel found is indicative of the Respondent’s lack of rights in the disputed domain name. The Panel finds that although there is insufficient material to substantiate the allegations of the Respondent soliciting or trying to disrupt the business of the Complainant, in the light of all that has been discussed, the Panel finds the Respondent has registered the disputed domain name with the intention of attracting Internet users for creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement. Such use of the disputed domain name is indicative of bad faith registration and use under paragraph 4 (b)(iv) of the Policy.
For the reasons discussed, the Panel finds that the Complainant has successfully established the disputed domain name was registered in bad faith and is being used in bad faith. The parties to the dispute are in concurrence regarding the transfer of the disputed domain name to the Complainant. As the requirements under the Policy have been met, accordingly the Panel finds it proper to transfer the disputed domain name to the Complainant. 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 domain name be transferred to the Complainant.
Harini Narayanswamy
Sole Panelist
Dated: September 21, 2011
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