WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Videsh Sanchar Nigam Limited v. vsnlinternet.com c/o Whois IDentity Shield
Case No. D2007-0522
1. The Parties
The Complainant is Videsh Sanchar Nigam Limited, Mumbai, India, represented by Anand & Anand, India.
The Respondents are vsnlinternet.com c/o Whois IDentity Shield, Vancouver, British Columbia, Canada; and “Administrator, Domain / Videsh Sanchar Nigam Limited”, New Delhi, India.
The Panel has determined that the entity described as “Administrator, Domain / Videsh Sanchar Nigam Limited” of New Delhi, India in the registrar’s Whois (or alternately, “Videsh Sanchar Bhavan”, as apparently described in the registrar’s verification response) is a sham and in fact is one and the same entity as “vsnlinternet.com c/o Whois IDentity Shield”. Consequently, the Respondent is referred to in the singular throughout this decision.
2. The Domain Name and Registrar
The disputed domain name <vsnlinternet.com> is registered with Nameview Inc..
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 4, 2007 and the hardcopy was received on April 5, 2007.
On April 10, 2007, the Center transmitted by email to Nameview Inc. a request for registrar verification in connection with the domain name at issue.
On April 10, 2007, Nameview Inc. transmitted by email to the Center its verification response confirming that it is the registrar of the domain name in issue but stating that the domain name is not registered in the name of vsnlinternet.com c/o Whois IDentity Shield, i.e., the Respondent named in the Complaint, and providing what is stated to be the “Registrant Contact Info” for “Videsh Sanchar Bhavan, Bangla Saheb Rd., New Delhi”. The Whois data (as of May 25, 2007) indicated the registrant of record of the disputed domain name as “Administrator, Domain / Videsh Sanchar Nigam Limited”, with an address on Bangla Saheb Rd, India.
On April 17, 2007 the Center sent a Complaint Deficiency Notice to the Complainant stating that there was a formal deficiency in the Complaint viz. that the Complaint did not include a submission by the Complainant to the jurisdiction of the courts in at least one specified Mutual Jurisdiction as required by paragraph 3(b)(xiii) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”)
In response to the Complaint Deficiency Notice and because of the registrant information provided by the registrar, the Complainant submitted an amendment to the Complaint on April 22, 2007 and a further amendment to the Complaint on May 8, 2005, submitting to the mutual jurisdiction as required by paragraph 3(b)(xiii) of the Rules and seeking relief against the homonymous said “Videsh Sanchar Nigam Limited” of New Delhi, India.
The Center verified that the Complaint together with the amendments to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “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 May 25, 2007.
In accordance with the Rules, paragraph 5(a), the due date for Response was June 14, 2007. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on June 18, 2007.
The Center appointed James Bridgeman as the sole panelist in this matter on June 21, 2007. 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 and is a leading telecommunications and Internet based services provider in India.
The Complainant traces its history to as far back as 1872 when The Eastern Telegraph Company was created that merged with the Indian Radio Telegraph Company of 1927 to form the Indian Radio and Cable Communications Company in 1932.
Following India’s independence in 1947, the Government of India took over the Indian Radio and Cable Communications Company giving birth to the Overseas Communications Service (OCS), a Government Department.
The Complainant was incorporated on March 19, 1986 as a wholly Indian Government-owned company that assumed control and management of all the assets of OCS. Subsequently, in the course of privatisation in stages, the Complainant was listed on the London Stock Exchange and in 2000, it became the first public sector undertaking of India to be listed on the New York Stock Exchange (NYSE). In 2002, the Indian Government released further equity in the Complainant, as a result of which the Complainant became part of the TATA group, one of India’s largest business conglomerates.
The Complainant is the owner of the following Indian registered trademarks for VSNL:
Telecommunication services, providing telecommunications connections to the internet or data bases, computer aided transmission of messages and images, electronic mail services, message sending, paging services, satellite communication services, provision of telecommunication access to signal coding and decoding apparatus, cable television broadcasting, providing access to digital music web sites on the internet, consultancy, information and advisory services in relation to the aforesaid services, providing for telecom systems integration, telemarketing, toll-free customer care management
The Complainant and its group is the owner of the following domain names and have established websites to which these domain names resolve: <vsnl.com>, <vsnl.in> and <vsnlinternational.com>.
At the time of filing of the Complaint, the domain name in issue was registered in the name of VSNLINTERNET.COM, c/o Whois IDentity Shield of Vancouver, British Columbia, Canada. Subsequently in the course of these Administrative Proceedings, when verification was sought by the Center from the Registrar, the Complainant became aware that the domain name had been listed as registered in the name of “Videsh Sanchar Nigam Limited” with an address in New Delhi, India.
While on the face of it, the domain name has been transferred into the name of the Complainant, this homonymous name and the apparent transfer appears to be a sham as the Complainant states that it does not have any control over the domain name.
In the absence of a Response or any communication from the Respondent, there are no other details available about the Respondent.
The date of registration of the domain name in dispute does not appear in the Complaint or the file, however, the Registrar has confirmed that the registration expires on January 12, 2008.
5. Parties’ Contentions
Complainant’s submissions relating to the identity of the Respondent.
In the First and Second Amendments to the Complaint, the Complainant submits that at the time of filing of the Complaint, the domain name was registered in the name of vsnlinternet.com c/o Whois IDentity Shield.
According to the details received from the Registrar during the verification process, the domain name is at present registered in a name identical to the Complainant’s own name viz. “Videsh Sanchar Nigam Limited”.
The Complainant submits that it does not have any control over the said domain name and the Respondent “has mirrored the Complainant’s details”.
The Complainant wishes to place reliance on the reasoning of the panel in Schomburg Gmbh & Co. KG v. aquafin.com c/o WHOIS Identity Shield, WIPO Case No. D2006-1136 (November 23, 2006), wherein the panel found “the appropriate respondent is the entity listed as the registrant in the Whois at the time of filing of the Complaint”.
Submissions on substantive issues
The Complainant requests this Panel to issue a decision that the contested domain name <vsnlinternet.com> be transferred to the Complainant.
Addressing its rights in the VSNL mark, the Complainant submits that the trademark and service mark VSNL is an acronym coined from the Complainant’s corporate name, Videsh Sanchar Nigam Limited, and was adopted by the Complainant in 1987. Elsewhere in the Complaint, it submits that it has used the house mark VSNL since 1986.
In 2003, the Complainant launched a new range of personal and corporate services for its customers under the house mark VSNL including: Internet services offering a range of data and voice services on the Internet with instant access, flexible email and superior quality net telephony; calling cards provided across the globe; Wi-Fi services providing Wi-Fi access in select public locations such as hotels, airports etc.; net telephony services offering international calls at tariffs at extremely low rates, as well as superior voice quality and customised softphones; PC security providing filters unwanted content, and minimising spam, also featuring home network control and Wi-Fi intrusion detection; global roaming connectivity allowing the user to access an Internet connection from anywhere in the world; international private leased circuits, high capacity, high speed digital circuits that provide corporations and other entities an opportunity to combine a variety of telecommunication applications, including the transmission of digitized voice, high speed data, high speed fax and graphics for video phones; broadcast/uplinking facilities providing uplinking and broadcast facilities to many prestigious TV channels; IP-VPN services allowing easy connectivity between for company associates, business partners or employees with the corporate LAN on a highly reliable, robust, state-of-the-art infrastructure and secured network.
The Complainant has a strong global presence with various subsidiaries incorporated in different countries. The acronym VSNL forms an essential and conspicuous feature of the corporate name of these companies that include VSNL International Pte. Ltd., VSNL Lanka Ltd., VSNL America Inc. and VSNL Bermuda Ltd., VSNL UK Ltd., VSNL Netherlands B.V., VSNL Hong Kong Ltd., VSNL Japan K.K., VSNL Portugal Unipessoal Limitida, VSNL France SAS, VSNL Telecommunications (UK) Ltd., VSNL (Germany) GMBH, VSNL Networks (GUAM) L.L.C., VSNL Belgium BVBA, VSNL Spain SRL and VSNL Telecommunications (US) Inc. Through these subsidiaries, the Complainant has an operating presence in the United States of America, United Kingdom, Hong Kong and Singapore, Sri Lanka, the Bermudas, Spain, Netherlands, Japan, Portugal and France. The Complainant’s network spans across almost a hundred different locations in the world.
The Complainant has been India’s representative at various international organisations, such as the International Telecommunications Union, the Commonwealth Telecommunications Organisation, the International Telecommunications Satellite Organisation, the International Mobile Satellite Organization, and the Asia Pacific Telecommunity.
The Complainant has a considerable presence on the Internet through its vast collection of websites including “www.vsnl.com” that resolves to the website “www.vsnl.in”. Said websites detail the Complainant’s products and services as well as corporate information and contain a brief history of the Complainant, its corporate statement, background information on the Complainant’s Board of Directors and the milestones achieved by the Complainant and its predecessors. Printouts from the Complainant’s website “www.vsnl.com” are annexed to the Complaint. The international arm of the Complainant also maintains a website namely, “www.vsnlinternational.com”. The said website carries articles and press releases relating to the Complainant’s activities and business profiles. Printouts from the Complainant’s website “www.vsnlinternational.com” have been provided as an annex to the Complaint.
The Complainant submits that it is a leading Internet service provider with an all India license including Internet Telephony license serving over 8,000,000 customers in 3000 towns and cities throughout India. Having introduced Internet services in India in 1995, the Complainant plans to be a significant, large-volume, triple-play broadband player offering integrated voice, data and video services. Towards that end, the Complainant took over the broadband businesses of Dishnet’s ISP division in March 2004.
The Complainant submits that it has rights in the trademark VSNL both through registration and at common law.
The Complainant refers to and relies upon its rights in its above-listed registered trademarks and has provided copies of the registration certificates pertaining to the aforesaid registrations in an annex to the Complaint.
The Complainant submits that being a coined mark with no obvious meaning, VSNL is an inherently distinctive trademark. Having been conspicuously and pervasively used in relation to the entire range of the goods and services, the trademark VSNL has come to be recognised as a well-known and reputed house-mark of the Complainant.
More specifically, the trademark and service mark VSNL has been used by the Complainant in relation to various products and services as described hereinabove including the broadband services offered by the Complainant and also upon related goods including printed manuals, publications, magazines, and study materials. The said trademark has also been used by the Complainant on all its articles of stationery, including letterheads, visiting cards, order forms, bill books, envelopes, application forms and in relation to sales promotional materials such as brochures and catalogues. Examples of the Complainant’s brochures, catalogues and other promotional material have been furnished in an annex to the Complaint.
The Complainant has expended vast resources in the form of time, money and effort for the promotion and publicity of its products and services under the trademark VSNL in print and electronic media. The advertisement expenses incurred by the Complainant in respect of the trademark VSNL are being detailed hereunder:
(In Rs. Million)
The Complainant has provided sample invoices pertaining to the advertisements placed by the Complainant in various newspapers annexed as an exhibit to the Complaint.
As a result of the extensive, exclusive and continuous use and promotion of the trademarks/service mark VSNL by the Complainant, the said trademark have come to acquire immense reputation and goodwill that is truly trans-border in nature and transcends across the world. The reputation and goodwill that has accrued in the trademark VSNL in relation to the Complainant’s business is reflected in the turnover figures of the Complainant as detailed hereunder:
(In Rs. Million)
The Complainant has annexed copies of its Annual Reports for 2003-04 and 2004-05 to the Complaint.
The Complainant submits that as a cumulative result of the aforesaid factors namely prior adoption, long, continuous and extensive use and promotion, the trademark VSNL has come to be exclusively associated with the Complainant who has acquired common law rights to the exclusive use of the said trademark. Thus, the use by any other person of the trademark VSNL or any other phonetically, visually or deceptively similar mark would not only result in immense confusion and deception but would also be in violation of the Complainant’s rights.
The Complainant submits that its trademark VSNL has as a result of the innate distinctiveness, wide-ranging and extensive business activities, widespread promotion and publicity given thereto, exclusive and continuous use over a long period of time acquired the status of a “well-known” trademark, as understood under Article 6 bis of the Paris Convention.
Arguing that the domain name is confusingly similar to the Complainant’s VSNL trademark, the Complainant asserts that the domain name <vsnlinternet.com> incorporates the Complainant’s trademark, service mark and trading style VSNL and is hence confusingly similar to the Complainant’s trademark. That part of the domain name, which consists of the element “VSNL” is identical to the Complainant’s trademark. The addition of the generic term “INTERNET” to the Complainant well-known and famous trademark VSNL does not make the disputed domain name <vsnlinternet.com> dissimilar to the trademark VSNL in which the Complainant has statutory rights as well as rights in common law. The Complainant wishes to place reliance on Habib Bank AG Zurich v. Jay Smith, WIPO Case No. D2003-0216; Merck KGaA v. Blue Sea Co. Inc., WIPO Case No. D2003-0394 wherein it has been held that addition of generic terms does not differentiate the disputed domain name from the Complainant’s trademark.
Further. the scope of confusion with regard to the Respondent’s registration and use of the disputed domain name is compounded by the fact that the Complainant is India’s largest service provider of services related to the Internet such as broadband, lease line connection, and DSL, and users of the Internet would get confused regarding the source, sponsorship and affiliation of the disputed domain name <vsnlinternet.com> and believe it to be in some manner associated with the Complainant..
Addressing its claim that the Respondent lacks rights or legitimate interest in domain name <vsnlinternet.com>, the Complainant submits that the sole purpose of the registration was to misappropriate the reputation associated with the Complainant’s well-known and famous trademark, service mark and trading style VSNL. In this regard, the Complainant submits that:-
- firstly, the Respondent is not, either as an individual, business or other association commonly known by the name VSNL;
- secondly, the Complainant has not licensed or otherwise permitted the Respondent to use its trademark/service mark VSNL or to apply for any domain name incorporating the said trademark; and
- thirdly, there could be no plausible explanation for the use of the domain name <vsnlinternet.com> by the Respondent that comprises the Complainant’s coined trademark/house mark VSNL.
The Complainant submits that it is therefore apparent that the Respondent has no rights or legitimate interest in the domain name.
Bad Faith Registration and Use
The Complainant further submits that the Respondent registered and is using the domain name in bad faith. The Complainant submits that by registering the domain name <vsnlinternet.com>. the Respondent has misappropriated the Complainant’s VSNL trademark illegally and without authority.
The disputed domain name <vsnlinternet.com.> incorporates the Complainant’s well-known and famous marks VSNL in circumstances where the Respondent can have no rights or legitimate interest in the domain name and rather the sole purpose of the adoption of the Complainant’s trademarks in its entirety by the Respondent is to misappropriate the Complainant’s well-known and famous trademarks VSNL.
The Complainant’s mark VSNL is solely associated, recognised and identified with the Complainant’s business and has acquired the status of well-known trademark worldwide. Being so, the Respondent was bound to be aware of the Complainant’s trademark VSNL. Thus, the registration and use of the domain name incorporating the Complainant’s well-known trademark is bound to be in bad faith. The Complainant would like to place reliance on the following decisions: Marie Claire Album v. Marie-Claire Apparel, Inc., WIPO Case No. D2003-0767, Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163, Adidas-Salomon AG v. Domain Locations, WIPO Case No. D2003-0489, wherein it has been held that registration of a well-known trademark of which the Respondent must reasonably have been aware is in itself sufficient to amount to bad faith.
The Respondent has no legitimate interests or rights in the domain name <vsnlinternet.com> and that fact by itself establishes that the Respondent’s registration and use of the domain name is in bad faith. Moreover, as aforesaid, the Respondent is obviously aware of the Complainant’s trademark and is solely guided by the ulterior motive to misappropriate the said trademark.
As of the date of filing the Complaint, the Respondent had not resolved the disputed domain name <vsnlinternet.com> to an active website, but has merely put sponsored links on the web page to which the disputed domain name resolves. A copy of the webpage to which the disputed domain name resolves is annexed to the Complaint. Hence it is evident that the Respondent is deriving commercial benefit from misrepresenting itself as the Complainant and inducing users to believe that it has some kind of affiliation with the Complainant. This conduct of the Respondent is evidence of registration and use of the domain name in bad faith. A notable decision that has held that such a conduct of the Respondent amounts to bad faith is Zinsser Co. Inc., Zinsser Brands, Co. v. Henry Tsung and Micro Electronics, Inc. v. J Lee, WIPO Case No. D2005-0170.
The Respondent has registered the impugned domain name <vsnlinternet.com> in order to disrupt the business of the Complainant. It is apparent that the Respondent has attempted to attract for commercial gain Internet users to the website to which the impugned domain name resolves by creating confusion with the Complainant’s well-known and famous trademarks VSNL.
Further, there is a great likelihood that an actual or potential visitor to the Respondent’s present web page, or any future web page that the subject domain name resolves to, will be induced to believe that the Complainant has licensed its trademarks VSNL to the Respondent or has authorized the Respondent to register the disputed domain name. Internet users are also likely to believe that the Respondent has some connection with the Complainant in terms of a direct nexus or affiliation with the Complainant or has been authorised or has been authorised by the Complainant and or that the website to which the impugned domain name resolves is affiliated to the Complainant
It is therefore submitted that the disputed domain name has been registered and is being used in bad faith.
The Respondent did not file any Response or make any submissions.
6. Discussion and Findings
Preliminary Procedural Issue relating to the Identity of the Respondent
This Panel is satisfied that these Administrative Proceedings have been issued against the correct entity and that the correct entity has been properly served with the appropriate notices by the Center.
While on the face of it, the domain name <vsnlinternet.com> is now registered in the name of the Complainant, given that the Complainant is apparently not in control of the domain name, that the new name of the registrant is a sham, the findings in relation to the Respondent’s lack of legitimate interests in the domain name infra and the findings that the domain name was registered and is being used in bad faith infra, this Panel is satisfied on the balance of probabilities that the entity that first described itself as “vsnlinternet.com” using an identity shield is in fact one and the same as the entity that now calls itself “Videsh Sanchar Nigam Limited” (or “Videsh Sanchar Bhavan”) with a New Delhi address.
This Panel is further satisfied that the Respondent is using the homonymous name of the Complainant with the intention of undermining the operation of these proceedings and the Policy generally.
Furthermore, the Panel is satisfied that since the same entity remains in control of the domain name registration, the service of documents by the Center on the contacts provided to the Registrar is satisfactory for these proceedings.
Paragraph 4(a) of the Policy places on the Complainant the onus of proving that:
(i) the domain name in dispute 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 said domain name; and
(iii) the said domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has provided ample evidence that it is the owner of the trademark and service mark VSNL both by its Indian registered trademarks and by extensive use of the mark in association with the sale of its goods and provision of telecommunications and Internet related services in India and elsewhere since around 1987.
This Panel accepts the Complainant’s submissions that the domain name <vsnlinternet.com> incorporates the Complainant’s trademark, service mark and trading style VSNL and is hence confusingly similar to the Complainant’s trademark. The element of the domain name consisting of the letters “VSNL” is identical to the Complainant’s trademark.
The addition of the generic term “Internet” to the Complainant’s trademark VSNL does not distinguish the disputed domain name <vsnlinternet.com> in any way. In this case, it adds to the confusion given that the Complainant has such a significant reputation and goodwill in the provision of telecommunications and Internet services in India
B. Rights or Legitimate Interests
The Complainant has put forward a credible prima facie case that the Respondent has no rights or legitimate interest in the domain name. In such circumstances, the onus shifts to the Respondent to establish that it has such rights or interest. In casu, the Respondent has not filed any Response and, the Complainant is entitled to succeed on the second part of the test in paragraph 4(a) of the Policy.
The VSNL trademark is widely known in India. The Respondent apparently has some knowledge of or connection with India, as it has purported to transfer the domain name into the eponymous name of the Complainant with an address in New Dehli. The Respondent is clearly taking unfair advantage of the Complainant’s reputation, there is not connection between the Respondent and the Complainant, and the Complainant has not permitted the Respondent to make any use of the VSNL trademark
C. Registered and Used in Bad Faith
The Respondent was clearly aware of the Complainant, its goodwill and reputation in its VSNL mark when selecting and registering the domain name. Given the distinctive coined character of the mark VSNL and given the fact that the Complainant is engaged in telecommunications and Internet services, it is very likely more than a coincidence that the Respondent selected the domain name that is a combination of the distinctive VSNL mark and the descriptive element “Internet”.
This Panel accepts the Complainants submission that the Respondent must have been guided by an ulterior motive to misappropriate the said trademark when registering the domain name. The Respondent appears to be deriving commercial benefit from the domain name by misrepresenting itself as the Complainant and inducing Internet users to believe that there is some affiliation or connection between the Complainant and the Respondent, or at least is intentionally creating initial interest confusion for the purposes of taking predatory advantage of the Complainant’s goodwill in its mark.
Furthermore the Respondent has clearly intentionally provided incorrect registration details and the Panel is entitled to take an inference that the domain name was registered and is being used in bad faith.
In the circumstances, this Panel is satisfied that the domain name has been registered and is being used 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, <vsnlinternet.com>, be transferred to the Complainant.
Date: July 5, 2007