WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Kotak Mahindra Bank Limited v. Jo Y.G.

Case No. D2007-1510

 

1. The Parties

The Complainant is Kotak Mahindra Bank Limited, 36-38A, of Mumbai, India, represented by Wadia Ghandy & Co., India.

The Respondent is Jo Y.G., of Seoul, Republic of Korea.

 

2. The Domain Name and Registrar

The disputed domain name <kotakbank.com> is registered with Cydentity, Inc. dba Cypack.com.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 15, 2007. On October 15, 2007, the Center transmitted by email to Cydentity, Inc. dba Cypack.com a request for registrar verification in connection with the domain name at issue. On October 17, 2007, Cydentity, Inc. dba Cypack.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 registrar also informed that the language of the registration agreement was in Korean. In response to the Center’s notification of the language of proceedings, the Complainant on October 26, 2007, submitted a request that English should be the language of proceedings, along with related evidence. 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 in both Korean and English, and the proceedings commenced on November 6, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was November 26, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 28, 2007.

The Center appointed Thomas P. Pinansky as the sole panelist in this matter on December 19, 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 a Public Limited Company carrying on the business of banking, incorporated under the provisions of the Companies Act, 1956 in India.

The Complainant became the first non-banking financial company in India to convert into a commercial bank in March 2003.

The Complainant incorporated the name/trademark KOTAK in its corporate name from the time of incorporation in 1985.

The Complainant is a part of Kotak Mahindra Group which is one of India’s leading financial groups.

The Complainant along with its subsidiary companies has a vast network of branches, franchisees and satellite offices across 300 cities and towns in India and offices in New York, London, Singapore, Dubai and Mauritius.

The Complainant is the registrant of the Generic Top Level Domain <name kotak.com> since November 3, 1995, and is also the registrant of over 200 domain names containing the name Kotak.

 

5. Parties’ Contentions

A. Complainant

The domain name is identical and/or confusingly and deceptively similar to the trademark in which the Complainant has rights.

The trademark KOTAK forms a prominent part of the corporate names of the Complainant, and its parent/promoter Kotak Mahindra Group.

The use of the domain name by the Respondent for its website infringes the Complainant’s ownership rights in the trademark KOTAK.

The Respondent’s website operating under the domain name is a fašade in that it does not provide any banking services, but merely contains links to other sites providing such services.

The word ‘.com’ does not in any way affect the confusing similarity that the domain name has with the Complainant’s trademark.

The Respondent is not in any way affiliated with the Complainant nor has the Complainant authorized the Respondent to use and register the trademark or to seek the registration of any domain name incorporating the trademark or any similar variation of the trademark.

The Respondent has no rights or legitimate interests in respect of the domain name.

The Respondent is not nor was it ever commonly known under the name ‘KOTAK’ or any other similar name or mark.

The Complainant has neither authorized or licensed the Respondent to register or use the domain name incorporating the trademark, nor authorized or licensed the Respondent to register or use the domain name or any trademark forming part of it.

The Respondent has not used nor has it made nay demonstrable preparations to use the domain name in connection with any bonafide offering of goods/services of its own. The website to which the disputed domain name resolves does not offer any banking business and/or financial services, but is being used to direct web traffic to other sites and provide links to sponsored websites and online services on a variety of topics, such as travel, lifestyle, entertainment, business, home and finance.

The domain name has been registered and adopted by the Respondent in bad faith.

The Respondent’s act of transferring the domain name from the then Registrar ‘DomainPro Inc.’ to the current Registrar ‘CyDentity Inc.’ is an attempt to thwart the proceedings initiated by the Complainant.

The transfer of registration of the domain name has been effected by the Respondent solely for the purpose of denying to the Complainant the ownership of the domain name to which the Complainant is legally entitled to.

The registration of a domain name that is confusingly similar or identical to a famous trademark by any entity, which has no relationship to that mark, is itself sufficient evidence of bad faith registration and use.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

 

6. Discussion and Findings

A. Language of Proceeding

The Complaint was originally filed in the English language. There was no Response. It is noted that the language of the registration agreement for the domain name in dispute is Korean.

According to Paragraph 11 of the Rules, the language of the administrative proceeding shall be the language of the registration agreement unless the Panel decides otherwise. The spirit of Paragraph 11 is to ensure fairness in the selection of language by giving full consideration to the Parties’ level of comfort with each language, the expenses to be incurred and the possibility of delay in the proceeding in the event translations are required and other relevant factors.

In the present case, the Respondent in his email of October 26, 2007 to the Center indicated his preference to proceed in Korean language but prior emails between the parties have shown an ability to communicate in English. Furthermore, the Complainant is not able to communicate efficiently in Korean. Therefore, in consideration of the above circumstances, the Panel hereby decides, under paragraph 11 of the Rules, that English shall be the language of administrative proceeding in this case.

B. Substantive Elements of The Policy

Paragraph 15(a) of the Rules instructs the Panel to decide the Complaint on the grounds of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

Moreover, under Paragraph 14(b) of the Rules, it is established that: “If a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.”

In light of the above, the Panel may draw such inferences from the Respondent’s failure to comply with the Rules as it considers appropriate (see Paragraph 14(b) of the Rules; see Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009).

Under Paragraph 4(a) of the Policy, the Complainant must prove each of the following:

(i) the domain name 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 domain name; and

(iii) the domain name has been registered and is being used in bad faith.

C. Identical or Confusingly Similar

The Complainant has registered the KOTAK marks and is the registrant of over 200 domain names containing the name “Kotak”. The domain name wholly incorporates the Complainant’s distinctive trademark and as such the Panel is satisfied that it creates sufficient similarity to be confusingly similar (Paragraph 4(a) of the Policy). The Panel notes that the term “bank” as a designation is descriptive and merely modifies “KOTAK”; its addition does not avoid confusion.

Therefore, the Panel finds that the domain name is confusingly similar to the Complainant’s trademark pursuant to the Policy, Paragraph 4(a)(i).

D. Rights or Legitimate Interests

According to Paragraph 4(a)(ii) of the Policy, the Complainant must prove that the Respondent has no rights or legitimate interests in the domain name. In connection with the burden of proof, several decisions of WIPO panels have held that “once a complainant establishes prima facie evidence showing that none of the three circumstances establishing legitimate interests or rights applies, the burden of production on this factor shifts to the Respondent to rebut the showing” (see among others, Universal City Studios, Inc. v. David Burns and Adam-12 Dot Com, WIPO Case No. D2001-0784; see also International Hospitality Management-IHM S.p.A. v. Enrico Callegari Ecostudio, WIPO Case No. D2002-0683).

The Complainant has asserted that the Respondent has no relationship with or authorization from the Complainant to use its marks; the Panel notes that there is nothing in the record to suggest that the Respondent has been commonly known by the domain name; the Panel further notes that there is no evidence that the Respondent has ever been commonly known by the domain name. The Panel’s view is that these facts may be taken as proven in the circumstances of this case provided that they have not been denied by the Respondent.

The Respondent has not submitted a proper response. Therefore, it has failed to invoke any circumstance that could have demonstrated any rights or legitimate interests in the domain name under Paragraph 4(c) of the Policy.

Accordingly the Panel holds that the Respondent has no legitimate interests or rights in the domain name pursuant to Paragraph 4(a)(ii) of the Policy.

E. Registered and Used in Bad Faith

Both under past UDRP decisions (see for instance Nike, Inc. v. B.B. de Boer, WIPO Case No. D2000-1397; and Carolina Herrera, Ltd. v. Alberto Rincon Garcia, WIPO Case No. D2002-0806) and under the Policy (see Paragraph 2), a well-established principle is that when someone registers a domain name, it represents and warrants to the registrar that, to its knowledge, the registration of the domain name will not infringe the rights of any third party. In the case at issue, the Panel reasonably finds that since the Complainant’s marks are widely known, especially in the international financial community, it is very unlikely that the Respondent, at the time of registration or purchase of the domain name, was not aware that it was infringing the Complainant’s trademarks.

Bad faith can in appropriate circumstances also be inferred based on the fame of the Complainant’s marks, such that the Respondent was aware or should have been aware of the Complainant’s mark and claims of rights thereto (particularly in view of the Complainant’s use of its mark on the Internet). The Panel also finds it highly doubtful that the Respondent would register a domain name combining the distinctive term “kotak” with the descriptive word “bank”, being the Complainants area of business, without having knowledge of the Complainant.

The registration of a domain name that is similar to a distinctive trademark by the Respondent, when the Respondent has no relationship to that mark, is also sufficient evidence of bad faith (see Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403; Centurion Bank of Punjab Limited v. West Coast Consulting, LLC, WIPO Case No. D2005-1319).

The Respondent is, in using the domain name, forwarding Internet users to other websites. The mere fact of diverting users in this misleading manner is further evidence of bad faith (see Big Dog Holding, Inc. v. Day, NAF Case No. FA 93554).

The conduct described above falls squarely within Paragraph 4(b)(iv) of the Policy and accordingly the Panel concludes that the Respondent registered and is using the domain name in bad faith.

 

7. Decision

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 <kotakbank.com> be transferred to the Complainant.


Thomas P. Pinansky
Sole Panelist

Dated: January 17, 2008