WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
R.E. Rogers India Pvt. Ltd. v. Wang Zhi Zhu Ce Yong Hu/Ying ter Wang Ju Le Bu Ltd.
Case No. D2003-0926
1. The Parties
The Complainant is R.E. Rogers India Pvt. Ltd., New Delhi, India, represented by Pavan Duggal & Associates, India.
The Respondent is Wang Zhi Zhu Ce Yong Hu/Ying ter Wang Ju Le Bu Ltd., Beijing the People’s Republic of China.
2. The Domain Name and Registrar
The disputed domain name <rerogersindia.com> is registered with Go Daddy Software.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 21, 2003. On November 21, 2003, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On November 25, 2003, Go Daddy Software transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 December 5, 2003. In accordance with the Rules, paragraph 5(a), the due date for Respondent's response was December 25, 2003.
The Respondent on December 11, 2003, contacted the Complainant, offering to transfer the disputed domain name to the Complainant. Consequently, on December 18, 2003, the Complainant requested that the Center suspend the administrative proceedings for 21 days. The Center on December 22, 2003, confirmed that the proceedings were suspended until January 12, 2004. However, the Respondent did not transfer the domain name to the Complainant. On January 12, 2004, the Complainant requested that the administrative proceedings continue. Accordingly, the Center, on January 12, 2004, notified the parties that the proceedings were to continue and that the due date for the Respondent's response was January 15, 2004.
The Respondent did not submit any response. The Center notified the Respondent’s default on January 16, 2004.
The Center appointed Michael C. Pryles as the sole panelist in this matter on January 22, 2004. 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.
The Respondent wrote on January 23, 2004, again indicating that it was happy to transfer the domain name to the Complainant. However the Respondent stated that the Registrar was unable to affect the transfer because the domain name was under “dispute” status. The Panel wrote to the parties on January 30, 2004, taking note of Respondent’s offer and assertion and suggesting that the Panel could issue a decision by consent in this matter. The Panel requested the parties’ comments in this regard. The Complainant replied on January 31, 2004, giving its express consent to a decision by consent of the parties. The Respondent replied on January 31, 2004, stating again that it would be willing to transfer the domain name once the “dispute” status had been removed.
Although the Respondent seems to indicate assent to the disputed domain name being transferred to the Complainant, it did not unequivocally authorize me to issue a decision by consent. The Panel shall therefore assess and determine the case on its merits.
4. Factual Background
The Complainant R.E. Rogers India Pvt. Ltd. provides services in relation to the movement of exhibition cargo. It is affiliated with Rogers Worldwide which has headquarters in London and offices in some 12 countries. The international group has the infrastructure and expertise necessary to transport exhibition exhibits around the world. R.E. Rogers India Pvt. Ltd. provides such services within India and also as part of the global network. Correspondence and documentation provided by the Complainant indicate that it has been trading under the name of R.E. Rogers India Pvt. Ltd. since about 1986. However, although it has used this name for some 17 years, it applied for registration of the trade/service mark only on June 24, 2003.
The disputed domain name <rerogersindia.com> was registered by the Complainant through Business India Info Pvt. Ltd. in about June 1999. Correspondence and a brochure indicate that this domain name was regularly used by the Complainant.
However, the Complainant’s registration of the disputed domain name lapsed in June 2003. It seems that this was due to a certain employee leaving the company (Business India Info Pvt. Ltd.) which had registered the domain name. Subsequently, Business India Info Pvt. Ltd. closed down. It seems that the Complainant was not sent any request for renewal request concerning the domain registration. In any case it is clear that the domain registration lapsed due to non-payment, or non-request for renewal by the Complainant. The Complainant contends that this was through no fault of its own, given the circumstances at the company which had registered the domain name.
On October 19, 2003, the Respondent registered the disputed domain name through the Registrar Go Daddy Software. Since then, the Respondent has been using the disputed domain name for the exhibition of explicit and hardcore pornographic content. The disputed domain name has also diverted Internet users to various other sites containing explicit pornographic material.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is identical or confusingly similar to the trade mark or service mark “R.E. ROGERS INDIA” in which the Complainant has rights. It contends that the Respondent registered the disputed domain name without any legitimate basis for the purposes of attracting internet traffic intended for the Complainant’s company, and with the added motive of trying to capitalize on the Complainant’s goodwill and reputation. The Complainant further contends that there is no proof that the Respondent has any legitimate reason for registering the disputed domain name.
The Respondent did not reply to the Complainant’s contentions. It is clear, however, that the Respondent was made fully aware of the grounds and bases of the Complainant’s claims. The Respondent did not contest those assertions.
6. Discussion and Findings
A. Identical or Confusingly Similar
It is not clear from the materials provided by the Complainant whether its application to register the trade mark “R.E. ROGERS INDIA” has been successful. In any case such application was not made until about June 2003. This was about the same time that the Complainant's registration of the disputed domain name lapsed.
However, although the trade or service mark was not registered, I find from the evidence that the Complainant has traded under this name for some 15 years. There is ample correspondence, including official documentation and Indian Government material, showing that the Complainant has a reputation and a business built up under the name R.E. Rogers India. Therefore the Complainant has established it has a common law trade/service mark of “R.E. ROGERS INDIA”.
It is well established that the addition of a top level domain name “.com” and the removal of spaces between letters and words is irrelevant for the purposes of domain name analysis. On that basis the disputed domain name is identical to the trade or service name that the Complainant has built up by reputation.
The Panel finds that the Respondent has registered a domain name identical to a service or trade mark in which the Complainant has common law rights.
B. Rights or Legitimate Interests
Respondent has had the opportunity to comment and has not asserted that there is any legitimate association between the domain name <rerogersindia.com> and the Respondents business. The Complainant states that there is no legitimate association whatsoever between it and the Respondent. Therefore, it is difficult to conceive of a legitimate purpose for which the Respondent has registered the domain name. The Complainant has contended, and I have verified, that the domain name is used by the Respondent to exhibit pornographic material and to link to other domain names offering various types of pornographic services. As will be discussed further below, using the Complainant’s goodwill and reputation to attract unsuspecting visitors to a pornographic website does not qualify as a legitimate right or interest under the Policy. It infringes the Complainant's common law trade/service mark rights.
C. Registered and Used in Bad Faith
The Complainant's business name is being used to display pornographic material, to divert Internet traffic to other pornographic sites, and to “mouse-trap” Internet users in order to prevent visitors from leaving the website. Even at the time of drafting this administrative decision, the website is still being used in this way. Several WIPO decisions have found that the mere use of a domain name in this way is prima facie evidence of bad faith (see Ty, Inc., v. O.Z. Names, WIPO Case No. D2000-0370, Six Continents Hotels, Inc. v. Seweryn Nowak, WIPO Case No. D2003-0022 and Sparco S.p.A. v. Mr. Oleg Filipov-Guevreyan, WIPO Case No. DLA2003-0001).
It appears that the only reason the Respondent is using the Complainant’s trade mark/service mark is to attract customers to their sites. It is thus attempting to use the reputation and name of the Complainant to attract clients to its paid pornography site. This violates paragraph 4(b)(iv) of the Policy, which states that evidence of the registration and use of a domain name in bad faith includes that the Respondent has “intentionally attempted to attract, for commercial gain, internet users to [its] website or other online location, by creating a likelihood of confusion…”.
Moreover, I note that the Respondent, in bad faith, is tarnishing the Complainant’s reputation by associating it without permission with commercial pornography.
Finally, the Respondent’s bad faith conduct has continued through these proceedings. As noted above in the procedural outline, the Respondent on several occasions intimated that it would transfer the disputed domain name back to the Complainant. This caused delays in the proceedings. When the Respondent was asked by the Panel whether it would agree to the issuing of a decision by consent, it did not explicitly agree to this. It continued to take the same position it has taken, which appears to have been taken for the purposes of delaying the administrative decision.
For the above reasons, the Panel finds that the Respondent registered and used the disputed domain name in bad faith.
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <rerogersindia.com> be transferred to the Complainant.
Michael C. Pryles
Dated: February 4, 2004