The Complainant is R India Ltd. of Mumbai, India, represented by Anand & Anand, India.
The Respondent is Contact Privacy Inc. Customer / zhijun shen of Toronto, Canada and Henan, China, respectively. 2. The Domain Name and Registrar
The Disputed Domain Name is registered with Tucows Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 23, 2012. On May 24, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On May 24, 2012, 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 May 30, 2012, 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 amendment to the Complaint on May 30, 2012.
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 June 7, 2012. On June 27, 2012, due to an error made in the electronic notification of the Complaint, the Center extended the response due date until July 7, 2012. Throughout the proceedings, the Respondent communicated (on several occasions) with the Center in Chinese and English and requested to file its submissions in Chinese. The Center informed the Respondent that the language of the proceedings was English in this case as this is the language of the Registration Agreement and that the Center would endeavor to appoint a Panel familiar with both English and Chinese. Further, the Center advised that all of the Respondent’s communications would be forwarded to the Panel (upon its appointment) for its consideration. The Respondent did not ultimately submit any formal response. Accordingly, the Center notified the Parties that it would be proceeding to Panel Appointment on July 9, 2012.
The Center appointed Kar Liang Soh as the sole panelist in this matter on July 18, 2012. 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.
On August 6, 2012, the Respondent informed the Center that it had commenced a law suit against the Complainant before the Intermediate People’s Court in Henan Province of China and requested that the proceeding be terminated. The Panel issued Administrative Procedural Order No, 1 requiring the Complainant to respond to the Respondent’s request to terminate the proceeding following which the Complainant submitted a response on August 23, 2012. Comments on the Complainant’s response were received from the Respondent on August 24, 2012. 4. Factual Background
The Complainant was set up in 1996, and is an online provider of news, information, communication, entertainment and shopping services. The Complainant’s market capitalization as of May 23, 2012, was USD 133.86 million. The Complainant reported revenues of USD 21.70 million for the fiscal year ending on March 31, 2011. Since June 14, 2000, the Complainant’s stock has been traded on NASDAQ.
The Complainant has been using the trademark REDIFF.COM in relation to its online services and e-commerce activities. The Complainant uses various trademarks comprising the word “Rediff”, including REDIFFMAIL and REDIFFMAILPRO for email services, REDIFF SHOPPING for shopping and REDIFF ISHARE for online video sharing, among other things. The Complainant owns trade mark registrations for REDIFF.COM and other REDIFF marks including REDIFF MAIL, REDIFFPRO and REDIFF BOL. These include:
Jurisdiction Trademark Trademark No. Application Date
India
WWW.REDIFF.COM
822870
October 13, 1998 (expired)
India
REDIFF.COM
138321
May 19, 2005
United States
REDIFF.COM
2,779,891
November 4, 2003
United States
REDIFF
3,101,026
June 6, 2006
The users of the Complainant’s services are able to enjoy them using a single login facility on the Complainant’s website at “www.r”. The Complainant has registered the domain names , and . The Complainant’s trademark REDIFF has previously been incorporated in domain names, which were the subject of prior domain name disputes (i.e., in R India Ltd. v. Abadaba S.A., Domain Admin,WIPO Case No. D2008-0803; in R India Ltd. v. Laksh Internet Solutions Private Limited,WIPO Case No. D2008-0804; and in R India Ltd. v. REDIFFMOBILE.COM/ c/o “Whois Identity Shield”,WIPO Case No. D2008-0806).
The Disputed Domain Name was registered on September 15, 2010. Before the Complaint was filed, it resolved to what appeared to be a parking website. There is no information regarding the Respondent at this website. Nothing much is known about the Respondent. The Respondent had used a privacy service and his/her identity was only disclosed by the Registrar after the Complaint was filed with the Center. 5. Parties’ Contentions A. Complainant
The Complainant contended that:
1) The Disputed Domain Name is identical or confusingly similar to the Complainant’s REDIFF trade mark;
2) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant has not licensed or otherwise permitted the Respondent to use the REDIFF trademark. The Respondent has not made any legitimate offering of goods or services through the Disputed Domain Name;
3) The Disputed Domain Name was registered and is being used in bad faith. The word “rediff” is an invented word. The Respondent was aware of the commercial value and significance of the Disputed Domain Name and has shown opportunistic bad faith in registering the same. The Complainant believes the Respondent is enjoying the benefits of “pay-per-click” revenue generated through sponsored links on the website to which the Disputed Domain Name resolves. There is a great likelihood that visitors to that website might be induced to believe that the Complainant has licensed or authorized the Respondent to use the trademark REDIFF or that the Respondent has some connection with the Complainant. B. Respondent
The Respondent did not formally reply to the Complainant’s contentions in this proceeding. 6. Discussion and Findings 6.1. Termination of proceeding
In requesting the termination of the proceeding, the Respondent advised that he/she has commenced legal proceedings against the Complainant before the Intermediate People’s Court in Henan Province of China in relation to the Disputed Domain Name. The Complainant, in reply, submitted that no documents regarding the legal proceeding have been served and it was hitherto unaware of such proceeding.
The Respondent, in registering the Disputed Domain Name, is bound by the Policy and the Rules. Paragraph 4(a) of the Policy requires the Respondent to submit to the present proceeding and paragraph 8 of the Rules provides that “[i]n the event of any legal proceedings initiated prior to or during an administrative proceeding in respect of a domain-name dispute that is the subject of the complaint, the Panel shall have the discretion to decide whether to suspend or terminate the administrative proceeding, or to proceed to a decision.” At the same time, paragraph 4(k) of the Policy, provides that either party may submit the dispute to a court of competent jurisdiction before commencement of this proceeding or after conclusion of this proceeding. Implementation of a decision hereunder will be stayed by the concerned registrar if official documentation of a suit in a jurisdiction to which the Complainant has submitted under paragraph 3(b)(xiii) of the Rules is received. Paragraph 3(b)(xiii) of the Rules identifies the jurisdiction to which the Complainant may submit as that of a court at the location of either the principal office of the concerned registrar or the Respondent’s address. The Complainant has opted to submit to the jurisdiction of the federal court of Canada, being the court at the location of the principal office of the Registrar.
On the face of the Complaint, the Complainant has not submitted to the jurisdiction of the Intermediate People’s Court in Henan Province of China. There is nothing in the evidence to suggest that the Complainant has otherwise submitted to the jurisdiction of the Intermediate People’s Court in Henan Province.
In light of the above, the Panel does not find it appropriate to terminate the proceeding. The legal proceeding was initiated after the commencement of the present proceeding and the Complainant did not submit to the jurisdiction of Intermediate People’s Court in Henan Province. The Respondent’s law suit against the Complainant does not trigger the application of paragraph 4(k) of the Policy in the present case and shall therefore not operate to stay the implementation of the Panel’s decision hereunder.
In any event, a decision of the Panel is not binding on the Intermediate People’s Court in Henan Province of China. Paragraph 4.14 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition states:
“Courts are not bound by UDRP panel determinations; where a domain name subject to a UDRP panel decision becomes subject to a court proceeding (for example, because a respondent elects to take the matter to court under paragraph 4(k) of the UDRP); such court case is generally acknowledged to represent a De novo hearing of the case under national law.”
Having set out the above, the Panel will therefore proceed to make its determination. 6.2. Discussion
The Panel notes that the Respondent has communicated with the Center in Chinese and occasionally in English, although it has been cautioned on several occasions that the language of the proceedings is English only. The Panel has reviewed all the Respondent’s Communications in this case and has considered them in rendering its decision. The Panel finds that the Respondent has had a fair opportunity to the respond to the substantive points of the Complaint but has not done so.
To succeed in this proceeding, the Complainant must establish all 3 limbs of paragraph 4(a) of the Policy. A. Identical or Confusingly Similar
In view of the Complainant’s various trademark registrations for REDIFF, the Complainant clearly has rights in the same. For the purpose of comparing a trademark with a disputed domain name, it is the consensus view of past panels that the top level domain name (e.g., “.com”, “.biz”, and in this case, “.co”) may be excluded in the comparison. In the circumstances, the Disputed Domain Name incorporates the trademark REDIFF in its entirety. The Panel therefore finds that the Disputed Domain Name is identical to the Complainant’s trademark REDIFF. The first limb of paragraph 4(a) of the Policy is established on the facts. B. Rights or Legitimate Interests
The Complainant has confirmed that it has not permitted or authorized the Respondent to use the trademark. There is no evidence to suggest that the Respondent is known by the Disputed Domain Name or that the Respondent is making a bona fide offering of goods or services. The evidence provided by the Complainant supports a prima facie case that the Respondent does not have rights or legitimate interests in the Disputed Domain Name and thus the burden has shifted to the Respondent to show otherwise. Since no formal Response was filed, the Respondent has failed to rebut the prima facie determination that the Respondent has no rights or legitimate interests in the Disputed Domain Name. C. Registered and Used in Bad Faith
The Panel accepts that REDIFF is an invented word. It is inconceivable to the Panel that the Respondent’s selection of the Disputed Domain Name could be coincidental. The Disputed Domain Name, even taking into account the top level domain name, is nearly identical to the Complainant’s domain name . The only identifiable difference is the omission of the final letter “m” in the Disputed Domain Name. The Disputed Domain Name, having been registered for almost 2 years, appears to serve no purpose other than to host a parking site. The factual circumstances lead the Panel to the belief that the Respondent must have known of the Complainant’s trademark and is internationally attempting to attract Internet users to the parking site for commercial gain by creating a likelihood of confusion with the Complainant’s mark. Such a situation falls squarely within the form of bad faith registration and use identified by paragraph 4(b)(iv) of the Policy.
Although the use of a privacy service per se is not an indication of bad faith, it can constitute a factor in determining whether bad faith exists. In the present case, the conclusion above is made even stronger when the Respondent’s attempt to cloak his/her identity under a privacy service is taken into account.
Based on the available evidence, the Panel finds that on a balance of probabilities, the Respondent has registered and used the Disputed Domain Name in bad faith. 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.
Kar Liang Soh
Sole Panelist
Dated: September 10, 2012
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