The Complainant is India Infoline Ltd. of Mumbai, India, represented by McKenna Long & Aldridge LLP, United States of America.
The Respondent is Myles Hare of Canada, represented by John Berryhill, United States of America.
The disputed domain name <iifl.com> is registered with Moniker Online Services, LLC.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 9, 2010. On April 12, 2010, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the disputed domain name. On April 13, 2010, Moniker Online Services, LLC 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” or “UDRP”), 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 April 15, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response May 5, 2010. The Response was filed with the Center on May 5, 2010.
The Center appointed Lynda J. Zadra-Symes, Harini Narayanswamy and Alan L. Limbury as Panelists in this matter on June 2, 2010. 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.
On May 27, 2010, Complainant filed a Request to File a Reply as well as a Reply in support of its Complaint together with a declaration from an Executive Director of Complainant stating that “Our company has been using the IIFL mark since 2007” and submitting a “daily report” dated October 4, 2007 and a brochure entitled India – Software dated November 2 2007. Complainant also submitted with its Reply several pages from “http://in.reuters.com” referencing “India Infoline Ltd. (IIFL.BO)” and excerpts from audited financial results for the year ended September 30, 2007 and December 2007, with the headline “IndiaInfoline – It's All About Money, Honey!” in which the small print at the end of the document lists IIFL Asia Pty Ltd in Singapore as a wholly owned subsidiary of Complainant.
On June 8, 2010, Respondent filed a Response to the arguments in Complainant's Reply. Although the Policy makes no express provision for Supplemental Filings by either party, except in response to a deficiency notification or if requested by the Center or the Panel, the Panel in its discretion has considered the Supplemental Filings from both parties in this case.
Complainant is a provider of financial services, including equity research, equities and derivatives trading, commodities trading, portfolio management services, mutual funds, life insurance, fixed deposits, goi bonds and other small savings instruments to loan products and investment banking.
Complainant is the owner of the following Indian trademark registration for a logo design that includes the letters IIFL:
Registration No. 1639738, registered on January 9, 2008, for use in connection with investment banking, institutional equities and wealth management.
Complainant owns the domain names: <iifl.in>, <iiflcap.com>, <iifw.com>, which it asserts that it has used since 2007. As evidence of use of the mark IIFL, Complainant submitted one undated page from www.bloomberg.com referencing “IIFL: IN India Infoline Ltd,” two pages from “www.reuters.com” printed April 8, 2010, referencing “India Infoline Limited (IIFL.BO),” one advertisement stating “India Infoline is the best broker in India, Says FinanceAsia Country Awards (June 2007 – May 2008),” an advertisement for Enterprising India Global Investors' Conference, February 3rd – 5th 2010 and an announcement for an “offering of Anant Raj Industries Ltd. February 2008” listing IIFL as “sole placement advisor.” Complainant did not submit any materials evidencing its use of the mark IIFL prior to 2007.
The disputed domain name was registered on July 28, 2003. Respondent acquired the domain name in September 2007.
Complainant contends that the disputed domain name is confusingly similar to the Complainant's IIFL service mark, that Respondent's business cannot be considered legitimate and that Respondent is trying to exploit the goodwill associated with the Complainant's mark. Complainant further contends that Respondent is a career cybersquatter who is the registered owner of more than 1,400 domains. Complainant further contends that, even if Respondent did not have Complainant in mind when he first registered the disputed domain name, Respondent's current and recent use of the disputed domain name to advertise financial services indicates bad faith registration of the disputed domain name.
Respondent contends that Complainant's trademark registration is for a complex geometric pattern of triangles adjacent to a reverse-color image of the letters IIFL in serif font, that Complainant only recently adopted the brand IIFL in 2009 and did not submit any evidence that it had developed rights in the mark IIFL prior to 2007. Respondent submitted a page from Complainant's website at “www.indiainfoline.com” displaying an announcement dated March 16, 2010 with the heading “India Infoline group's brand identity now is IIFL.” The announcement states, in pertinent part:
“To cut a long story short we have shortened our name to IIFL. Short is great. But as far as the quality of our customer service, research and compliance is concerned, it will remain great as ever. So the next time you see IIFL, please remember that it is your own India Infoline. While we have shorted our brand name to IIFL, the company's name will remain India Infoline. . . .”
Respondent also submitted a screen capture of a television advertisement published on Complainant's website at “http://www.indiainfoline.com/Videos/Promo-Videos/IIFL-Rebranding-TVC/40020442”, which Complainant began running in April 2010 stating “India Infoline group's brand identity is now” followed by the registered IIFL logo.
Respondent contends that he acquired the disputed domain name in 2007 upon the expiration of a prior registration for the same domain name that was originally registered in 2002. Respondent further contends that his practice of registering domain names is not an illegitimate activity and that at the time the disputed domain name was registered it did not correspond to any known trade or service mark used or registered by Complainant. Respondent contends that he is a Canadian resident and was unaware of Complainant's services in India. Since becoming aware of Complainant's claim, Respondent has taken the disputed domain name out of automated status and directed the pay-per-click system not to provide financial links. Accordingly, Respondent contends that the disputed domain name has not been registered or used in bad faith.
Furthermore, Respondent submitted an email from a “Harshad Apte” that he received on September 14, 2007, just after he registered the domain name. Mr. Apte stated
“I am Harshad from Bombay, India.
As part of our final project in Commerce graduation studies we have to
create websites for our projects.
Our project is on Innovations in Freelancing landscape for which we
wanted the domain www.iifl.com”
I understand that you own the domain.
I want to find out if you would be willing to sell the particular domain.”
Respondent did not reply to this email because he was not interested in selling the disputed domain name. During the course of responding to the Complaint, Respondent discovered that Harshad Apte is an officer of Complainant (as listed in a June 2009 press release attached as an exhibit). Thus, the evidence appears to indicate that Complainant has been aware of Respondent's domain name since he first acquired it in September 2007.
Complainant's registered trademark is for a design mark that includes the letters IIFL accompanied by a design. The registration is effective from January 9, 2008. The disputed domain name incorporates the designation IIFL, the dominant portion of Complainant's registered mark, in its entirety.
Accordingly, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.
Complainant contends that Respondent is a “career cybersquatter” because he has registered 1400 domain names. Respondent admits that he registers domain names for speculative purposes and associates such domain names with a pay-per-click revenue system. Respondent contends, however, that registering domain names is not an illegitimate activity unless there is evidence of abusive bad faith registration for the purpose of profiting from the service marks or trademarks of others.
Complainant does not identify any domain names owned by Respondent that have been found to be registered or used in bad faith.
The WHOIS records indicate that the disputed domain name was first registered in 2003, and Respondent acknowledges that he acquired the registration in September 2007.
Complainant did not submit any evidence of use of the IIFL trademark prior to 2007, and only very minimal evidence of use since that date, most of which are recent stock quotations by third parties using “IIFL: IN” and “IIFL.BO” as stock ticker symbols. Such use is not demonstrative of Complainant's use of those terms as a trade or service mark. The Medicis Pharmaceutical Corporation v. MRX Technologies, Inc., and Neil Gerardo, WIPO Case No. D2002-0462; Staten Island Bancorp, Inc. and SIB Mortgage Corporation v. Ifg Inc., WIPO Case No. D2003-0384.
There is no evidence that, at the time the disputed domain name was acquired by Respondent, Complainant was using the designation IIFL as a trademark or servicemark. Rather, the record indicates that Complainant only recently re-branded itself as IIFL and invested significant advertising expenditures in that rebranding effort in 2009 and 2010.
Without evidence of bad faith, registering domain names is not an illegitimate activity under the Policy. GLB Servicos Interativos S.A. v. Ultimate Search Inc. (aka Ult. Search Inc.), WIPO Case No. D2002-0189; Dial-aMattress Operating Corp. v. Ultimate Search, WIPO Case No. D2000-0764. Although the current use of the disputed domain name (discussed further below) has given the Panel pause for thought with respect to assessing whether Respondent could be said to have present rights or legitimate interests in the disputed domain name, it is ultimately unnecessary for the Panel to enter a finding under the second element of the Policy, in light of its finding below under the third element.
When a domain name is registered before a trademark right is established, the registration of the domain name is not normally considered to have been in bad faith because the registrant could not have contemplated the complainant's non-existent right. John Ode dba ODE and ODE – Optimum Digital Enterprises v. Intership Limited, WIPO Case No. D2001-0074; Digital Vision, Ltd. v. Advanced Chemill Systems, WIPO Case No. D2001-0827; PrintforBusiness B.V. v. LBS Horticulture, WIPO Case No. D2001-1182.
In this case, the evidence indicates that Respondent acquired the disputed domain name in September 2007 prior to Complainant establishing unregistered, common law trademark rights in the mark IIFL. Although abbreviations of a trademark may in certain circumstances acquire trademark protection (see, e.g., Research In Motion Limited v. Privacy Protect.org/berry store, hery santosa, WIPO Case No. D2009-0469), Complainant has failed to submit sufficient evidence to establish that it had acquired rights to the mark IIFL as an abbreviation of its trademark when Respondent acquired the disputed domain name in 2007. Indeed, the evidence submitted indicates that Complainant only recently focused its advertising efforts on “re-branding” itself under the mark IIFL. There is no evidence in the record from which the Panel could reasonably infer that Complainant's trademark was known to or anticipated by Respondent at the time he registered the disputed domain name.
The cases on which Complainant relies for a finding of bad faith registration, such as City Views Limited v. Moniker Privacy Services / Xander, Jeduyu, ALGEBRALIVE, WIPO Case No. D2009-0643 and Octogen Pharmacal Company, Inc. v. Domains By Proxy, Inc. / Rich Sanders and Octogen e-Solutions, WIPO Case No. D2009-0786, have not been generally accepted by panelists within UDRP jurisprudence. See Eastman Sporto Group LLC v. Jim and Kenny, WIPO Case No. D2009-1688; Validas, LLC v. SMVS Consultancy Private Limited, WIPO Case No. D2009-1413; Camon S.p.A. v. Intelli-Pet, LLC, WIPO Case No. D2009-1716; and Tata Communications International Pte Ltd (f/k/a VSNL International Pte Ltd) v. Portmedia Inc. / TRUEROOTS.COM c/o Nameview Inc. Whois, WIPO Case No. D2010-0217.
Therefore, the Panel finds that Complainant has failed to establish that Respondent registered the disputed domain name in bad faith.
Respondent was aware that the disputed domain name was linked to websites providing financial services. Respondent asserts that, since he became aware of Complainant's claim, he has taken the disputed domain name out of automated status and directed the pay-per-click system not to provide financial links. Respondent admits, however, that he does not rely on his post dispute actions to absolve him from a finding of bad faith use.
Under the Domain Name Registration Agreement, the Registrant has a continuing duty to ensure that the domain name is not used in violation of third party trademark rights. Paragraph 12 of the Registration Agreement provides: “To the best of your knowledge and belief neither the registration of your domain name or the manner in which you intend to use the domain name will directly or indirectly infringe, or conflict with the legal rights of a third party including their intellectual property rights.”
The use of automated systems or allowing the registrar to place links on the website located at the domain name does not absolve the Respondent from a finding of bad faith use. See e.g., Villeroy & Boch AG v. Mario Pingerna, WIPO Case No. D2007-1912. Respondent is in contractual control of the disputed domain name and its website and therefore is responsible for the links placed on that website.
The Panel finds that Respondent's failure to abide by his continuing duty to ensure that the disputed domain name is not used in violation of third party intellectual property rights constitutes bad faith use.
The Panel finds, however, that Complainant has failed to establish that Respondent registered the disputed domain name in bad faith.
For all the foregoing reasons, the Complaint is denied.
Lynda J. Zadra-Symes
Alan L. Limbury
Dated: June 16, 2010