WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
HDFC Bank Limited, HDFC Securities Limited v. Whois ID Theft Protection
Case No. D2007-0529
1. The Parties
The Complainants are HDFC Bank Limited and HDFC Securities Limited, Mumbai India, represented by Wadia Ghandy & Co., India.
The Respondent is Whois ID Theft Protection, Georgetown, Cayman Islands, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <hdfcsecurities.com> is registered with Rebel.com Services Corp.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 5, 2007. On April 5, 2007, the Center transmitted by email to Rebel.com Services Corp a request for registrar verification in connection with the domain name at issue. On April 11, 2007, Rebel.com Services Corp 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 April 19, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was May 9, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 10, 2007.
The Center appointed Knud Wallberg as the sole panelist in this matter on May 22, 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
Complainant 1 is a leading private sector bank and financial services company in India with more than 535 branches in 228 cities in India as well as through alternative direct banking channels like ATMs, phone banking services, net-banking and mobile-banking.
Complainant 1 was founded by the Housing Development Finance Company Limited (popularly known as HDFC Ltd.), in 1977. In 1994, Complainant 1 commenced its business under the name and style of HDFC BANK LTD.
Complainant 1 is the owner of a series of the trade marks incorporating the letters “HDFC” in class 9, 16 and 36, including HDFC BANK and HDFC SECURITIES. Complainant 1 is also the Registrant of several domain names incorporating the letters “HDFC”.
Complainant 2, which was established and incorporated in the year 2000, has been carrying on the business of securities broking and securities trading services including over the Internet under the trading name and trade mark/service mark HDFC SECURITIES through a licence from Complainant 1. The Complainants contends that Complainant 2 has developed an unprecedented level of goodwill and enjoys a very high reputation in the Indian market in respect of the services provided by it under the said trade mark.
Complainant 2 is prevented from registering the said trademark as its domain name on account of the domain name <hdfcsecurities.com> (the “disputed domain name”) being already registered. Complainant 2 has therefore been compelled to adopt and register the domain name <hdfcsec.com> for the purposes of providing the Services online to its customers through its website “www.hdfcsec.com”.
5. Parties’ Contentions
The disputed domain name is identical or confusingly similar a trade mark in which the Complainants have rights
The letters “HDFC” form the prominent part of the corporate names and of the trademarks of the Complainants and is identical to the trademark HDFC SECURITIES, which customers and members of the financial services sector associate exclusively with the Complainants.
The inclusion of the top-level domain designation “.com” in the disputed domain name, does not in any way affect the confusing similarity that the disputed domain name has with the Complainants’ trademark HDFC SECURITIES.
The Respondent has no rights or legitimate interests in respect of the disputed domain name
The Complainants have neither authorized nor licensed the Respondent to register or use the disputed domain name and the Complainants contend that the Respondent has no rights or legitimate interest in the disputed domain name. The sole purpose of the registration of the disputed domain name can therefore only be to misappropriate the reputation and goodwill associated with the Complainants’ well-known and registered trade mark HDFC SECURITIES.
The Respondent is not and has never been commonly known under the name ”hdfcsecurities” or any other similar name or mark. The Respondent has no activities relating to securities and/or in the fields of brokerage services including online brokerage and securities trading services.
Further, the Respondent has not used nor has it made any demonstrable preparations to use the disputed domain name in connection with any bona fide offering of goods/services. The website to which the disputed domain name resolves, namely “www.hdfcsecurities.com” does not offer any online brokerage or securities trading services but is being used to direct web traffic to other websites by hosting links which, when clicked, connect the Internet user to such other websites. Some of these websites host content on a variety of subjects such as travel, entertainment and lifestyle, which have no relation whatsoever to the Services provided by Complainant No.2 under the trademark HDFC SECURITIES. Other websites purport to offer services relating to finance and online broking and trading. The Complainants submit that the Respondent is deriving financial benefit from the web traffic that is being diverted to other websites through the links hosted on the Respondent’s website “www.hdfcsecurities.com”.
The disputed domain name has been registered and adopted by the Respondent in bad faith:
The Complainants submit that the Respondent was well aware when it registered the disputed domain name that the domain name consisted of the Complainants’ well known trademark HDFC SECURITIES and the Respondent has no reason to use the designation “hdfcsecurities” other than to ride on the Complainants’ reputation in the said trade mark.
The Complainants further submit that it is not possible that the Respondent was and is not aware of the fact that the Complainants trading name ‘HDFC’ possesses a strong reputation and is widely and substantially used in India and is well-known and used also outside India.
The Complainants state that the Respondent’s intentional, dishonest and mala fide registration of the disputed domain name <hdfcsecurities.com> has prevented the Complainants from reflecting their well-known and registered trademark HDFC SECURITIES in a corresponding domain name.
Also, potential and/or actual customers of the Complainants, who are not aware of the website “hdfcsec.com” and who are seeking to access the website of Complainant No.2, will be confused when they arrive at the Respondent’s website “hdfcsecurities.com” which does not offer any of the services provided by Complainant No. 2 under their trademark.
The Complainants have addressed a legal notice on March 22, 2007, via e-mail to the Respondent calling upon the Respondent to cease and desist from using the trademarks HDFC and/or HDFC SECURITIES or any confusingly or deceptively similar variation thereof as and for its domain name and/or website and to transfer the disputed domain name in favour of the Complainants. The Complainants had, at the date of submitting this Complaint, not received any response from the Respondent.
All these aforesaid elements clearly indicate that the Respondent has registered the disputed domain name <hdfcsecurities.com> with a mala fide intention, much to the financial loss, detriment and disadvantage of the Complainants and the continued use of the disputed domain name by the Respondent as its website is disrupting the business of the Complainants. Therefore, with regard to Paragraph 3(b)(ix)(3) of the Rules and Paragraph 4(a)(iii) of the Policy, the Complainants asserts that the Respondent has registered and is using the disputed domain name in bad faith.
The Respondent did not reply to the Complainants’ contentions.
6. Discussion and Findings
According to paragraph 15(a) of the Rules the panel shall decide a complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Paragraph 4(a) of the Policy directs that Complainant must prove each of the following:
(1) that the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) that Respondent has no rights or legitimate interests in respects of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Paragraph 4(a) of the Policy states that the burden of proving that all these elements are present lies with Complainant. At the same time, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules, or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.
A. Identical or Confusingly Similar
The contested domain name <hdfcsecurities.com> contains as its distinctive part the designation “hdfcsecurities”, which is identical to Complainants distinctive trademark HDFC SECURITIES. The inclusion of the GTLD denomination “.com” shall be disregarded for the purpose of these proceedings.
The Panel finds that the conditions in paragraph 4(a)(i) of the Policy are therefore fulfilled.
B. Rights or Legitimate Interests
According to the Complaints, Complainants have not licensed or otherwise permitted Respondent to use its trademark or to apply for any domain name incorporating the mark.
The Complainants have established a prima facie case that the Respondent has no rights or legitimate interests in the domain name. The Respondent has not rebutted this and the way the Respondent has been using and is still using the contested domain name (see below) does not support a finding of rights or legitimate interests.
Consequently the Panel finds that the conditions in paragraph 4(a)(ii) of the Policy, with reference to paragraph 4(c) of the Policy, are also fulfilled.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy further provides that Complainant must prove the Respondent’s registration and use of the domain names in bad faith. Paragraph 4(b) of the Policy sets out, by way of example, the kind of evidence that may be put forward.
The Complainants’ trademark was registered and used well in advance of the date of registration of the disputed domain name. The mark is registered in India but is also and used outside India. Given the notoriety use of the Complainants’ trademark and the distinctive nature of the mark, in particular through the combination of letters HDFC, it is inconceivable to the Panel in the circumstances that the Respondent registered the domain name without prior knowledge of the Complainants and the Complainants’ mark.
This is underlined by the fact that the disputed domain name is used for a website that contains information on and links to links to other sites that offer products or services some of which are similar to those offered by Complainant 2 and some of which are not related to those of the Complainant. The Panel therefore finds that the Respondent by registering and using the domain name, intentionally created a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the domain name in dispute with the purpose of attracting Internet users to the website for commercial gain.
Considering all the facts and evidence, the Panel therefore finds that the requirements of paragraph 4(a)(iii) of the Policy are also fulfilled in this case.
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, <hdfcsecurities.com> be transferred as requested to Complainant 1, HDFC BANK LIMITED.
Dated: June 4, 2007