The Complainant is Ganesh Hegde of Mumbai, India, represented by Gandhi & Associates, India.
The Respondent is Darshan Kapadia of New Jersey, United States of America.
The disputed domain name, <ganeshhegde.com> (the “Domain Name”), is registered with GoDaddy.com, Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 19, 2009. On January 21, 2009, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On January 21, 2009, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
In response to a preliminary communication from the Center, the Respondent filed additional submissions on January 30, 2009.
In response to a notification by the Center that the Complaint was administratively deficient, the Complainant submitted various e-mail communications on February 5, 2009. The Center verified that the Complaint together with the additional submissions to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for the UDRP (the “Rules”), and the WIPO Supplemental Rules for the UDRP (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 February 5, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was February 25, 2009. The Response was filed with the Center on February 25, 2009.
The Center appointed Tony Willoughby as the sole panelist in this matter on March 5, 2009. 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.
The Complainant is a well-known award-winning choreographer, singer and video director. He is based in India, but has an international reputation.
The Respondent has long been a fan of the Complainant and registered the Domain Name on October 31, 2005 with the Complainant in mind.
For some time, the Complainant (through friends and relatives) and the Respondent (in person and through a colleague) have been in email correspondence regarding the Domain Name, but the ‘negotiations' such as they have been have not resulted in settlement of the dispute.
There is no evidence before the Panel as to the Respondent's use of the Domain Name, save that the Respondent claims that the webpage to which it resolved featured a picture of the Complainant until some time in 2007 when the Complainant's sister asked him to take the picture off the site. The Respondent states that he acceded to that request. The Domain Name is not currently connected to an active website.
The Complainant has no registered trade mark rights in respect of his name, but relies on the extensive and undisputed international fame and goodwill that he has built up under and by reference to his name. The Complainant contends that the Domain Name is identical or confusingly similar to his name in which he claims trade mark rights.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. He contends that the Respondent registered the Domain Name for one reason only, namely to extort money from the Complainant.
On the same basis the Complainant contends that the Domain Name was registered and is being used in bad faith. The Complainant exhibits a series of emails exchanged in July 2008 in which an associate of the Respondent seeks first US$5000 for the Domain Name and then US$3500 + 4 front row tickets at the Complainant's next concert in New York/New Jersey.
The Respondent contends that he has long been a fan of the Complainant and registered the Domain Name for a fan site.
He contends that he was first approached by the Complainant's brother-in-law in March 2006 who wanted the Domain Name for a website being developed on behalf of the Complainant. The Respondent states that he explained why he registered the Domain Name, but said that he would be happy to transfer it to the Complainant provided that his costs were reimbursed. He states that he quoted a figure somewhere around US$100. He was told that someone would get back to him, but apart from some telephone conversations with Mr. Sathe and his wife, the Complainant's sister, which led nowhere, nothing happened for several months until some time in 2007 when Mrs. Sathe made contact and asked him to take a picture of the Complainant off the site. The Respondent states that he acceded to that request.
He then heard nothing more until February 20, 2008, when Mrs. Sathe emailed him expressing a renewed interest in the Domain Name. On February 24, 2008 the Respondent responded to the effect that he was a great fan of the Complainant and that he had no desire to make any money out of the Complainant or his family. He said that all he needed were the DNS server names. He apologized for his delay in responding, but explained that a close friend had died.
The following day he received a reply from Mr. Sathe expressing a desire that the Domain Name be transferred. He was told to expect a call from a Mr. Talauliker who was assisting Mr. Sathe. There then followed some telephone conversations with the Sathes in which he says he made it clear that the Domain Name would be transferred as soon as he received the necessary DNS information and he was reimbursed his initial costs of the Domain Name.
The Respondent heard nothing from Mr. Talauliker until an email arrived from him on July 10, 2008 telling the Respondent how to make the transfer, but making no reference to any reimbursement of the Respondent's costs. The Respondent says that he telephoned Mr. Talauliker and explained that he needed reimbursement of his costs.
The Respondent says that by now he had lost patience with the Complainant's associates with whom he had been dealing and whom he had been treating with the utmost respect over the previous two and a half years. He no longer had time to deal with the matter and referred them to an associate of his, Mr. Patel, who would handle it.
The Respondent contends that he had a legitimate, good faith reason for registering the Domain Name and never sought to extort anything other than his reasonable costs from the Complainant. He contends that the emails exhibited by the Complainant distort the picture unfairly. He complains of the Complainant's failure to exhibit the full set of email exchanges.
The Respondent denies that the Domain Name was registered and is being used in bad faith.
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a trade mark 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.
The Domain Name comprises the Complainant's name and the generic domain suffix. The Complainant claims no registered trade mark rights, but has done enough in the way of evidence exhibited to the Complaint to satisfy the Panel that he has unregistered trade mark rights in respect of his name.
The Panel finds that the Domain Name is identical or confusingly similar to a trade mark in which the Complainant has rights.
The Domain Name is in substance identical to the Complainant's name. It is not a name in respect of which the Respondent has any obvious connection.
The Respondent does not dispute that he registered the Domain Name precisely because it is identical to the Complainant's name. He says that he has been a major fan of the Complainant and registered the Domain Name with a view to using it for a fan site devoted to the Complainant. However, the Respondent has produced nothing in the way of evidence to demonstrate his plans for the fan site. All that the Panel has is the Respondent's bare assertion.
Whether or not registering someone else's name (without adornment) for the purposes of a fan site is sufficient to give the registrant a right or legitimate interest in respect of the Domain Name is a moot point. Paragraph 4(c) of the Policy calls for actual “use” of the Domain Name or demonstrable preparations to use the Domain Name. Bare statements of intent, on their own, demonstrate nothing. For a panel to consider coming to a positive conclusion in favour of a registrant on this topic, the panel would need to have some positive supporting evidence. The Panel has none.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
The Complainant contends that the Respondent registered the Domain Name with a view to selling the Domain Name to the Complainant at a profit and exhibits email exchanges in July 2008 between the Complainant's associates and an associate of the Respondent to prove the point. In those exchanges (referred to in Section 5A above) the Respondent's associate sought from the Complainant a sum far in excess of the Respondent's costs in respect of the Domain Name.
The Respondent denies that this was the reason why he registered the Domain Name. He says that he registered it for the purposes of a fan site devoted to the Complainant. He exhibits exchanges of emails with family members of the Complainant dating back to 2006 in which he seeks no more than what he claims to be his out-of-pocket costs, which he estimated at around US$100. He says that in failing to exhibit the earlier emails the Complainant has deliberately and unfairly set out to show the Respondent in a bad light.
Ordinarily, to succeed under this head, the Complainant has to prove to the satisfaction of the Panel that at time of registration of the Domain Name, the Respondent intended to damage and/or exploit unfairly the trade mark rights of the Complainant.
Proving a respondent's intentions at time of registration of a domain name can sometimes be difficult for a complainant. Often, as is the case on the provided record here, the assessment has to be made by reference to the respondent's subsequent behaviour.
Has the Respondent's behaviour since registration of the Domain Name been indicative of a bad faith intention at time of registration of the Domain Name?
The only evidence before the Panel are the email exchanges between the parties and/or their representatives, which are set out in some detail in Section 5 above.
The earlier exchanges (in 2006 and the first half of 2008), which were exhibited by the Respondent (but not the Complainant), tend to confirm the Respondent's story. There is nothing in those exchanges to indicate that the Respondent's intentions were necessarily mala fide. His expressed intention was to transfer the Domain Name provided that his costs in respect of the Domain Name were reimbursed. There is nothing in those exchanges to indicate what those costs were, but he volunteers in the Response that the estimate he gave the Complainant's brother-in-law in a telephone conversation in 2006 was in the region of US$100. While that is more perhaps than one would expect to be the cost of a domain name, on the evidence before the Panel in this case it is not an outrageous figure and there is nothing in the early email exchanges to indicate that the Complainant and his associates regarded it as an indication of any bad faith intent.
The later exchanges, which are exhibited to the Complaint, commence with the email of July 10, 2008 from the Complainant's web developer, which informs the Respondent as to what is required for the transfer of the Domain Name, but makes no mention of the reimbursement of the Respondent's costs. It was at this stage that the Respondent, who had heard nothing since February, 2008, claims that he lost patience. He had been corresponding with the Complainant's associates off and on for nearly two and a half years only to receive an email informing him how to effect the Domain Name change, something with which he was very familiar.
It is not surprising to the Panel that the Respondent lost patience at this stage and handed the matter over to an associate of his to deal with. Moreover, it is right to point out that at this stage the Complainant's sister-in-law was under the impression that she was “expected to pay [the Respondent] the charges for purchasing the domain” as is evidenced by her email to the Respondent of July 15, 2008. In other words, there was no indication at that stage that the Respondent was making any outrageous demands of the Complainant.
On July 16, 2008, the Complainant's sister-in-law emails the Respondent's associate, Mr. Patel, asking inter alia “how do we proceed to buy this domain back from you?”
Mr. Patel's response later the same day could not have been more different from the approach of the Respondent hitherto. Mr. Patel states “For some time Darshan [the Respondent] and myself have been collecting domain names. Since Darshan has always been a big fan of Ganesh we decided to purchase the domain for our own promotional purposes” [emphasis added]. The email goes on to state that the price for the Domain Name is US$5,000, a price which is reduced in a subsequent email to US$3,500 plus 4 front row seats at the Complainant's next concert in the New York/New Jersey area.
If Mr. Patel's approach is anything to go by, the Respondent's intentions at time of registration of the Domain Name were to use it for his own promotional purposes, a purpose, which does not sit entirely comfortably alongside the Respondent's claim that it was simply for a fan site. The prices for the Domain Name demanded by Mr. Patel are consistent with the Domain Name having been registered for a commercial purpose and appear to the Panel wholly inconsistent with the approach adopted hitherto by the Respondent.
If the approach adopted by Mr. Patel is fairly indicative of the Respondent's intentions all along, the Panel would have no hesitation in finding that the Domain Name was registered and is being used in bad faith within the meaning of paragraph 4(b)(i) of the Policy.
However, the problem for the Complainant is that he allowed the negotiations to drag out for nearly two and a half years and for all of that period, apart from the last couple of days, there was nothing to indicate any bad faith intent on the part of the Respondent. Quite the contrary, the emails that passed between him and the Complainant's sister and brother-in-law were friendly, undemanding and co-operative. The failure by the Complainant's associates to pursue the negotiations with expedition seems extraordinary.
Of course, it is possible that it was the Respondent's intention all along to seek to extort a large sum of money from the Complainant. If that is the case, an early email from the Complainant or those representing him seeking a precise figure could have exposed the Respondent's true position and there might then have been no room for doubt.
As it is, it seems to the Panel quite possible that the Respondent did, as he says, get exasperated with the delay on the part of the Complainant's associates and handed the matter over to an associate of his, Mr. Patel, to deal with. In his exasperation, he may even have told Mr. Patel to extract from the Complainant whatever he could, but if so that would merely be an indication of his state of mind in July 2008, not a mala fide state of mind back in October 2005.
While registering someone else's name for a fan site may not give to the registrant a right or legitimate interest in respect of a domain name, registering it for that purpose will not necessarily amount to bad faith on the part of the registrant within the meaning of paragraph 4(a)(iii) of the Policy. The Complainant's case is made more difficult where there is no clearly abusive use being made of the domain name from which possible inferences as to the Respondent's original intent at the time of registration might be drawn. The Policy was introduced to deal with cybersquatting.
In this case, there is scope for doubt as to what the Respondent's true intentions were at time of registration of the Domain Name, but the burden is on the Complainant to prove the three elements of paragraph 4(a) of the Policy to the satisfaction of the Panel. The Complainant has failed on the record before the Panel to satisfy the Panel that the Domain Name was registered and is being used in bad faith within the meaning of paragraph 4(a)(iii) of the Policy.
Finally, it has to be said that the Respondent is justified in his complaint that the Complainant's production of only a section of the inter party correspondence over transfer of the Domain Name was unfairly selective. As the Panel recently observed in SAP AG v. Reffael Caspi, WIPO Case No. D2009-0060,“ if parties are going to exhibit correspondence, they should be careful to ensure that either it is complete or, if it is not, that the selection fairly illustrates the complete picture.”
Recognizing that there is scope for doubt as to the Respondent's true intentions at time of registration of the Domain Name, the Panel feels it appropriate to observe that if at some stage after the rendering of this Decision the Complainant was to obtain evidence unavailable at the time the present Complaint was filed that the Respondent was not in fact telling the truth in relation to its claimed intended use of the disputed domain name as a fan site, there may be grounds for a re-filing of the Complaint1.
For all the foregoing reasons, the Complaint is denied.
Dated: March 17, 2009
1 For the applicable criteria, reference should be made to paragraph 4.4 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, which is published on the Center's website.