WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
IDBI Fortis Life Insurance Company Limited v. Indian Wizards
Case No. D2007-1673
1. The Parties
The Complainant is IDBI Fortis Life Insurance Company Limited, Mumbai, Maharashtra, India, represented by AZB & Partners, India.
The Respondent is Indian Wizards, Thane, Maharashtra, India.
2. The Domain Name and Registrar
The disputed Domain Name <idbifortislife.com> is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 14, 2007. On November 14, 2007, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the Domain Name at issue. On November 15, 2007, GoDaddy.com, Inc. 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 November 26, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response December 16, 2007. The Response was filed with the Center December 13, 2007.
The Center appointed Pavan Duggal, Andrew Bridges and Terrell C. Birch as panelists in this matter on January 17, 2008. The Panel finds that it was properly constituted. Each member of 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 in this administrative proceeding is IDBI Fortis Life Insurance Company Limited, a company incorporated in India under the Companies Act, 1956 having its registered office in India. The Complainant came into existence through a Joint Venture Agreement dated November 23, 2006 between Industrial Development Bank of India Limited (“IDBI”), a company incorporated and registered in India under Companies Act, 1956, and also a banking company under Section 5(c) of the Banking Regulation Act, 1949; Fortis Insurance International N.V. (“Fortis”), a company incorporated under the laws of the Netherlands and Belgium, having its registered office at Archimedeslaan 6, 3584 Utrecht and Rue Royale 20 1000 Brussels, Belgium; and The Federal Bank Limited (“Federal Bank”), a company incorporated and registered in India under Companies Act, 1956, and also a banking company under Section 5(c) of the Banking Regulation Act, 1949.
The Complainant’s case is that the trademark IDBI has been used by IDBI for the last forty years. Fortis is a major insurance company worldwide and is part of the Fortis Group and operates in more than 50 countries worldwide, providing financial services in several countries in the European Union, Asia and North America. The Fortis Group has its trademark FORTIS registered in various countries, around the world in classes 35, 36 and 42.
The Complainant is in the business of designing, manufacturing, underwriting and distributing life insurance products and pursuant to Clause 14 of the Joint Venture Agreement dated November 23, 2006, IDBI and Fortis have agreed to license their respective trademarks and corporate name to the Complainant to enable it to offer its life insurance products to consumers in India.
The Respondent states that the Domain Name <idbifortislife.com> was registered on March 7, 2006.
5. Parties’ Contentions
The Complainant contends that in view of the open, extensive, long and continuous use by Fortis and its group companies of its trademark FORTIS in several jurisdictions, the trademark FORTIS and the services provided under it have came to be recognized as originating from Fortis and its group companies alone.
Similarly, IDBI is engaged in carrying out banking and related businesses in India and has secured trademark registrations in class 16 for the word mark IDBI FLEXIBONDS and device mark IDBI SUVIDHA FIXED DEPOSITS. The Complainant contends that the trademark IDBI is exclusively associated with IDBI and its group companies and the products and services offered by IDBI and its group companies.
The Complainant further contends that:
i) the Domain Name incorporates the essential elements of the Complainant’s corporate name and is identical or confusingly similar to the trademarks of IDBI and Fortis and that the addition of the term ‘life’ to the trademarks “IDBI” and “Fortis” which are owned by IDBI and Fortis respectively, is a non-distinctive alteration for the purpose of determining whether the Domain Name is identical or confusingly similar to the trademarks IDBI and FORTIS;
ii) the Respondent has no rights or legitimate interests in respect of the Domain Name and that the trademarks IDBI and FORTIS are so famous and well known that the Domain Name registered by the Respondent is likely to create a false impression in the minds of the public that the Domain Name is somehow associated with the various trademarks used and operated by the Complainant and the Respondent is not using the Domain Name in connection with a bona fide offering of goods or services; and
iii) the Domain Name was registered and is being used in bad faith. The Domain Name was created on March 7, 2006, several decades after IDBI started using the trademark IDBI and more than one decade after Fortis registered the trademark FORTIS in Class 36 across several countries. The Complainant submits that the Respondent can offer no bona fide reason for adopting the Domain Name and therefore registration of the Domain Name clearly amounts to cyber-squatting which in itself shows bad faith. The Complainant further contends that Respondent by registering the Domain Name, has intentionally attempted to attract, for commercial gain, consumers of the Complainant to its website, by riding upon the tremendous reputation of the Complainant, IDBI and Fortis and their group companies and by creating a confusion or likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of its website.
The Respondent submitted that the Domain Name <idbifortislife.com> was registered on March 7, 2006 before the joint venture came into being on November 23, 2006 and the Complainant was incorporated on January 22, 2007. He further states that for him the acronym IDBI did not stand for Industrial Development Bank of India and Fortis does not mean Fortis Insurance International N.V. As far as his business interests were concerned IDBIFORTIS stood for – Indian Database of Industrial and Fortified Information Services. He further contended that the addition of the word “life” was made because the prospective “Product/Service” was being formulated in a way that once bought, it would be accessible to his clients for a lifetime.
He further contended that the website would be a comprehensive India Centric Business/Trade Directory and the Slogan/Tag Line of idbifortislife.com is India Fortified as the Domain Name <idbifortislife.com> was supposed to be a B2B venture.
The Respondent further contends that concerning a Complaint filed by the Complainant with respect to domain names <idbifortis.com>, <idbifortislife.com> and <idbilife.com> in February 2007, he received an email from the Complainant requesting him to transfer the Domain Name to them. He stated that by the time he read the request email, the concerned registrar (Godaddy) had already put the Domain Name on “Registrar Lock”.
There were three domain names in the above-mentioned Complaint, <idbifortis.com>, <idbifortislife.com> and<idbilife.com> and on being informed that the a Complaint could be filed in respect of one domain name at a time as each of the domain names involved different respondents, the Complainant had given verbal instructions to the Center to drop out the domain names <idbifortislife.com> and <idbilife.com>.
The Respondent submits that enquiries about the case on the WIPO Center’s publicly accessible website listing the status of all filed cases revealed that WIPO Case No. D2007-0262 was showing only the domain name <idbifortis.com> as disputed. He further states that since his email address was included as one of the parties in all of the case-related communications sent by the Center, he was thus informed of the facts as to how the Complaint got initiated, got suspended for some days and then the case got terminated as a result of settlement.
The Respondent contends that, acting on the emails previously sent by the Center, the concerned registrar, Godaddy disabled the “Registrar-Lock” on the Domain Name <idbifortislife.com> only on September 13, 2007.
The Respondent further states that a copy of the Complaint in the present case was received by him on November 26, 2007 and contends that for almost 10 months the Domain Name <idbifortislife.com> was under “Registrar-Lock” for no fault of his. He further contends that the Domain Name was not used by him and as soon as he came to know about the pending dispute he put up a Hosted Page with the text:
“IDBIFORTISLIFE.COM is under Dispute”
The Respondent further contends that:
i) the Domain Name is not identical or confusingly similar to the trademark of the Complainant;
ii) the Respondent has a right and legitimate interest in respect of the Domain Name; and
iii) the Domain Name is not registered and used in bad faith.
iv. the Complaint, as per paragraph 15(e) of the Rules, has been brought in bad faith and the Complainant is indulging in reverse hijacking of Domain Name.
6. Discussion and Findings
To obtain relief under the ICANN Uniform Domain Name Dispute Resolution Policy, Paragraph 4(a) of the Policy requires the Complainant to prove each of the following:
(i) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) that the respondent has no rights or legitimate interest in the domain name; and
(iii) the domain name has been registered and used in bad faith.
A. Supplemental Filings
The Complainant sent the Center an email communication entitled “evidence of confusion” on January 19, 2008 seeking the attached email communication dated January 9, 2008 to be taken on record as an Exhibit. The Respondent’s reply to the Complainant’s communication followed on the same day. The Panel has taken the same on record as Exhibit XA to the Complaint and also considered the Respondent’s reply.
The Panel observes:
A perusal of the email dated January 9, 2008 reveals that the same is sent by one Mr. Manoj Gupta to the “HR Manager of IDBIFORTISLIFE.COM”. The contents of the said email clearly reveals that the mail has been sent by the sender under the notion that the same was being sent to a Life Insurance Company in India about to commence business in India.
B. Identical or Confusingly Similar
With regard to the contention of the Complainant that the Domain Name is identical or confusingly similar, it is observed that the trademarks IDBI and FORTIS have acquired a worldwide reputation. According to the Respondent, the Domain Name <idbifortislife.com> is proposed to be used in India. It is observed by the Panel that in India, the trademark IDBI is synonymous with Industrial Development Bank of India, which is engaged in banking functions and Fortis is an insurance company of worldwide repute. The Domain Name is therefore confusingly similar to the marks IDBI and FORTIS, which have acquired worldwide repute and have long predated the Domain Name both independently and together and which are combined in the Complainant’s name and mark. The Domain Name is therefore bound to create in the mind of the general public that the Domain Name is somehow associated with IDBI Fortis Life Insurance Company Limited. As such, the Panel is satisfied that the first requirement under the Policy is fully complied with, by the Complainant.
The same is further supported by the email dated January 9, 2008 as discussed above.
C. Rights or Legitimate Interests
The Panel is satisfied that the Complainant has made out a case that the Respondent lacks rights or legitimate interests in the disputed Domain Name.
Under Paragraph 4(c) of the Policy, the Respondent may demonstrate rights to or legitimate interest in the domain name by providing evidence of circumstances including:
(i) use or demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services prior to the dispute;
(ii) that the registrant has been commonly known by the domain name even if it has acquired no trademark or service mark rights; or
(iii) legitimate noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent’s submission states the he made preparations to use the Domain Name in connection with a fully functional, India centric Trade/Business Directory which requires a big database of contacts. He further stated that he was working on building his database of email addresses of prospective clients (Manufactures/Traders/Service Providers) as this Domain Name was supposed to be a B2B venture.
The claims of the Respondent as to his general plans seem to this Panel on the present record to be far fetched. In the circumstances, in the absence of other supporting evidence such as documents to corroborate his contention, the Panel finds that the Respondent has failed to prove his legitimate interest in the Domain Name. Therefore, the mere fact that Respondent desired to use the Domain Name for the reason cited above is insufficient to create a right or legitimate interest in the Respondent’s favor.
As such, on the basis of the documentary evidence on the record of the case, the Panel is satisfied that the Respondent has no legitimate interests in the Domain Name in question and that the second requirement under the Policy is fully complied with by the Complainant.
D. Registered and Used in Bad Faith
As per Paragraph 4(b) of the Policy, it provids as follows:
“b. Evidence of Registration and Use in Bad Faith. For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
The above are inclusive examples and panels may of course take into account other factors in assessing whether or not bad faith is present.
In this case, the Panel has examined all the documentation filed by the parties and has come to a conclusion that it can be reasonably inferred from the facts and circumstances of the present case that the Respondent was aware of the existence of the two major and well known trademarks, being IDBI and FORTIS. This can further be reasonably inferred from the fact that the Respondent is an Indian entity located in India and is working in the area of Information Technology. However, the Respondent has chosen to still go ahead and register the Domain Name <idbifortislife.com>. The Panel is of the opinion that by registering the Domain Name, the Respondent has registered the same in bad faith. This bad faith is evident to the Panel, irrespective of the fact that the current Complainant (as a combined or joint entity) was not in existence at the time of the registration of the said Domain Name. The Panel believes that the well-known trademarks IDBI and FORTIS, being famous and in prior use in point of time, in all likelihood provided a significant motivation for the Respondent’s registration of said Domain Name. Further, as noted, the contention of the Respondent regarding its reasons for registering the disputed Domain Name seem far fetched and lacks credibility in the circumstances.
The Panel therefore finds on the present record that the Respondent has registered the Domain Name in bad faith.
The next question to consider is as to whether the Respondent is using the Domain Name in bad faith. From the facts established on the record of the present case, it is clear that said Domain Name has been under “Registrar Lock”.
The Panel notes that the complainant is relying upon the language of Paragraph 4(b)(iv) of the Policy. The Panel observes that though the Domain Name has been under registrar lock, the Respondent admittedly is using the same as part of his email address, as stated in his reply, the relevant extract of which is reproduced below:
“The moment I realized that my Domain name was a point of a dispute and that I could not do anything with it, I put up a Hosted Page which has a text as follows :-
“IDBIFORTISLIFE.COM is under Dispute”
A case has been registered against us with the “World Intellectual Property Organization (WIPO), Switzerland.
We are awaiting a final judgment from WIPO.
In line with the above “Intellectual Property” related complaint, though we are working on the website, but our prospective clients would be able to view our website only after this case is resolved.
In the meantime, you can always write to us at the following address:-
The Panel has considered whether, in the circumstances of this particular case wherein the Domain Name <idbifortislife.com> has been under registrar lock it can be said to be used in bad faith.
Paragraph 4(b) of the Policy sets out, without limitation, circumstances that “shall be evidence of the registration and use of a domain name in bad faith”, for the purposes of Paragraph 4(a)(iii).
Paragraph 4(b)(iv) of the Policy reads as below:
“(iv) By using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
The Panel has taken note of the fact that though the domain name is under the registrar lock, the Respondent is admittedly using the Domain Name <idbifortislife.com> as part of his email address and has even received emails on the said email, a copy of which is placed on record by the Complainant’s request.
The Panel in this regard places reliance upon Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 wherein it has been held:
“The question that then arises is what circumstances of inaction (passive holding) other than those identified in paragraphs 4(b)(i), (ii) and (iii) can constitute a domain name being used in bad faith? This question cannot be answered in the abstract; the question can only be answered in respect of the particular facts of a specific case. That is to say, in considering whether the passive holding of a domain name, following a bad faith registration of it, satisfies the requirements of paragraph 4(a)(iii), the Panel must give close attention to all the circumstances of the Respondent’s behavior. A remedy can be obtained under the Uniform Policy only if those circumstances show that the Respondent’s passive holding amounts to acting in bad faith.”
The Panel further observes that in the facts and circumstances of the case, the passive holding of the domain name by the Respondent amounts to the Respondent acting in bad faith. The particular circumstances leading to this conclusion are:
(i) the Complainant’s trademarks, which are famous marks and have acquired a strong reputation and are widely known, as evidenced by its substantial use in India and in other countries.
(ii) though the domain name is under the registrar lock, the Respondent is admittedly using the Respondent domain name <idbifortislife.com> as part of his email address in communicating with third parties and by doing so creates a strongly likelihood of confusion.
In light of the circumstances enumerated above, the Panel concludes that the Respondent’s conduct in this particular case satisfies the requirement of paragraph 4(a)(iii) that the domain name has been registered and “is being used in bad faith” by the Respondent.
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 <idbifortislife.com> be transferred in favor of the Complainant.
Terrell C. Birch
Dated: March 19, 2008