WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Videsh Sanchar Nigam Ltd. v. Admin Maltuzi
Case No. D2007-0859
1. The Parties
The Complainant is Videsh Sanchar Nigam Ltd., India, represented by Anand & Anand, India.
The Respondent is Admin Maltuzi of United States of America.
2. The Domain Name and Registrar
The disputed domain name <vsnlinternet.net> is registered with NameKing.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 12, 2007. On June 14, 2007, the Center transmitted by email to NameKing.com a request for registrar verification in connection with the domain name(s) at issue. On June 14, 2007 and June 15, 2007, NameKing.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. 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 June 21, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was July 11, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 12, 2007.
The Center appointed Adam Taylor as the sole panelist in this matter on July 25, 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 traces its history back to 1872 when The Eastern Telegraph Co. was created. That company merged with the Indian Radio Telegraph Co. in 1932 to form the Indian Radio and Cable Communications Co. Following India’s independence in 1947, the Government of India took over the Indian Radio and Cable Communications Co. 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 which assumed control and management of all the assets of OCS. The Complainant has been divested of its Government shareholding over the years.
The Complainant has been using the mark VSNL since 1986.
The Complainant is now the leading telecommunications services provider in India and offers a range of telecommunications services including international telephony, leased channels, dial-up internet, broadband, net telephony, national long distance, enterprise data, frame relay and Inmarsat services. As an internet service provider with an all India license, the Complainant serves over 8,00,000 customers in 3000 towns and cities.
The Complainant has spent substantial sums promoting its products and services under the trademark VSNL in print and electronic media as follows:
(In Rs. Million)
The Complainant’s turnover is as follows:
(In Rs. Million)
The Complainant also operates under the brand VSNL in the United States of America, United Kingdom, Hong Kong, SAR of China, Singapore, Sri Lanka, the Bermudas, Spain, Netherlands, Japan, Portugal and France.
The Complainant owns Indian trademark 1253456 dated December 5, 2003, for a logo consisting of the stylized term “vsnl” and a small device. The Complainant also owns Indian trade mark 1331383 dated January 11, 2005, for a logo identical to the earlier mark except that it adds the words “ALWAYS THERE”. Both marks are registered in class 38.
The Complainant operates various websites including at “www.vsnl.in” and “www.vsnl.com”.
The Respondent registered the disputed domain name on December 25, 2006.
As of March 30, 2007, the disputed domain name forwarded to a directory website at <vsnlinternet.com> with a list of affiliate categories such as “E-mail services”, “Internet dial up access”, “Broadband Internet access”, “Internet Phone” and “Internet Service Provider”.
5. Parties’ Contentions
The Complainant contends as follows:
Identical or Confusingly Similar
As a result of the extensive, exclusive and continuous use and promotion of the mark VSNL by the Complainant, it has acquired immense reputation and goodwill in India and internationally. It is a “well-known” trademark in accordance with Article 6 bis of the Paris Convention.
The use by any other person of the trademark VSNL or any other phonetically, visually or deceptively similar mark would result in substantial confusion and deception.
The disputed domain name includes the word “vsnl”. It is identical in part and confusingly similar as a whole to the Complainant’s well-known trademark VSNL. The addition of the generic term “internet” to the Complainant well-known and famous trademark VSNL does not make the disputed domain name dissimilar to the trademark VSNL
Further, the scope of confusion is compounded by the fact that the Complainant is India’s largest service provider of services related to the internet and internet users are likely to consider the disputed domain name to be associated with the Complainant.
Rights or Legitimate Interests
The Respondent has no rights or legitimate interest in the disputed domain name as the sole purpose of the registration is to misappropriate the reputation associated with the Complainant’s well-known and famous trademark or service mark/trading style VSNL.
The Respondent is not, either as an individual, business or other association commonly known by the name “Vsnl”.
The Complainant has not licensed or otherwise permitted the Respondent to use its trademark or service mark VSNL or to apply for any domain name incorporating the said trademark.
There could be no plausible explanation for the use of the disputed domain name by the Respondent.
Registered and Used in Bad Faith
The Complainant further contends that:
The Respondent has registered and is using the disputed domain name in bad faith.
The domain name incorporates the Complainant’s well-known mark VSNL. The Respondent can have no rights or legitimate interest in the domain name. The sole purpose of the adoption of the Complainant’s trademarks by the Respondent is to misappropriate the Complainant’s well-known and famous trademarks VSNL
The mark VSNL is solely associated, recognized 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 and the registration and use of the domain name incorporating the Complainant’s well-known trademark is bound to be in bad faith.
The Respondent has placed sponsored links on the web page to which the disputed domain name resolves. 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.
The Respondent has registered the domain name 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 its website by creating confusion with the Complainant’s well-known and famous trademark VSNL.
Further, there is a high 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 Respondent or its website is connected with the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant owns common law rights in the term “vsnl” by virtue of its extensive use over many years in India and other countries.
The Complainant also owns two registered trademarks, the most prominent feature of which is the stylized term “vsnl”.
The disputed domain name differs from the trademark VSNL only by the addition of the generic word internet. This term is insufficient to differentiate domain name and trade mark. Indeed it enhances the likelihood of confusion as the combination of “vnsl” and “internet” is obviously referable to the internet related services offered by the Complainant.
The Panel concludes that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. The Panel therefore finds that the Complainant has established the first element of the Policy.
B. Rights or Legitimate Interests
The Complainant must establish at least a prima facie case under this heading and, if that is made out, the evidential onus shifts to the Respondent to rebut the presumption of absence of rights or legitimate interests thereby created. See, e.g., Atlas Copco Aktiebolag v. Accurate Air Engineering, Inc., WIPO Case No. D2003-0070.
The Complainant has not licensed or otherwise authorized the Respondent to use its trademark.
As to paragraph 4(c)(i) of the Policy, the Panel has concluded below that the Respondent has used the disputed domain name to intentionally attempt to attract, confuse and profit from internet users seeking the Complainant. Such use of the disputed domain name could not be said to be bona fide.
There is no evidence before the Panel that paragraphs 4(c)(ii) or (iii) of the Policy apply.
The Panel finds that the Complainant has established a prima facie case of lack of rights and legitimate interests and there is no rebuttal by the Respondent.
The Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name and that the Complainant has therefore established the second element of the Policy.
C. Registered and Used in Bad Faith
The Panel is satisfied that the Respondent registered the disputed domain name with the Complainant in mind. Not only has the Complainant established a substantial international reputation in its distinctive mark VSNL but the provided evidence indicates that the Respondent has used the disputed domain name for a website with affiliate links in categories such as “Broadband Internet access” and “Internet Service Provider”, being the kinds of services supplied by the Complainant.
It is difficult to conceive of any genuine reason why the Respondent would wish to register a domain name including the letters (or acronym) vsnl plus the word “internet”.
The Respondent has not come forward to deny that the Complainant’s assertions of bad faith let alone offer any explanation for its registration and use of the disputed domain name.
The Panel concludes from the foregoing that the Respondent has registered and used the disputed domain name in bad faith in accordance with paragraph 4(b)(iv) of the Policy. The Panel is satisfied that the Respondent has in all likelihood intentionally attempted to attract internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s trademark. The Panel therefore finds that the Complainant has established the third element of the Policy.
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.net> be transferred to the Complainant.
Dated: August 6, 2007