WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Rediff.com India Limited v. Domain Name Proxy, LLC/ Navigation Catalyst Systems, Inc.
Case No. D2010-1458
1. The Parties
The Complainant is Rediff.com India Limited of Mumbai, India, represented by Anand & Anand, India.
The Respondent is Domain Name Proxy, LLC of Scottsdale, Arizona, United States of America/ Navigation Catalyst Systems of El Segundo, California, United States of America.
2. The Domain Name and Registrar
The Disputed Domain Name <redifffmailpro.com> is registered with Basic Fusion, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 31, 2010. On September 1, 2010, the Center transmitted by email to Basic Fusion, Inc. a request for registrar verification in connection with the Disputed Domain Name. On the same date, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 6, 2010 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On the same date, the Center also sent an email communication informing the Complainant that the Complaint was administratively deficient. On September 13, 2010, the Complainant filed an amendment to the Complaint.
The Center verified that the Complaint together with the amendment to 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 on September 14, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was October 4, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 5, 2010.
The Center appointed Charné Le Roux as the sole panelist in this matter on October 15, 2010. 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 worldwide online provider of news, information, communication, entertainment and shopping services, and has been operational since 1996. It is the owner of the trade mark REDIFF as well as derivative names such as “Rediff.com”, “Rediff Mail”, “Rediffmailpro”, “Rediff Shopping”, “Rediffiland”, “Rediffishare” and the like.
The Complainant registered the trade marks REDIFF, REDIFF.COM, REDIFFMAIL, REDIFFBOL, REDIFF ON THE NET and design in India, as well as in the United States where the Respondent is located. The first trade mark registration for WWW.REDIFF.COM was filed in India in 1998. The first registration for REDDIFF.COM in the United States was filed in 2003. The Complainant also owns several domain names including the trade mark REDIFF such as <rediff.com> and <rediffmailpro.com>.
The Complainant was one of the first Indian companies to have commenced trading on Nasdaq in June 2000 and has a current market capitalization of USD 53.52 million. The Complainant has also in the past successfully restrained other parties from using the trade mark REDIFF and other deceptively similar marks, in relation to services identical or similar to those provided by it and protected by its registrations, not only through High Court Proceedings but also UDRP proceedings.
The Respondent registered the Disputed Domain Name on July 1, 2005. The website at <redifffmailpro.com> resolves to a classic pay-per-click advertising website and includes various sponsored links to a range of categories of goods and services.
5. Parties’ Contentions
The Complainant contends that it is a famous and global provider of a range of e-service and e-commerce products, that it has been in existence since 1996, and that it is one of the first Indian companies to have commenced trading on Nasdaq. The Complainant contends that it owns the trade mark REDIFF and several variations including REDIFF.COM, REDIFFMAIL, REDIFFBOL, REDIFFPRO and the like. Many of these trade marks are registered in both India and the United States. The Complainant submits that previous UDRP decisions held that the Complainant had rights in the trade mark REDIFF as well as trade marks consisting of or incorporating the mark REDIFF.
The Complainant contends that the Disputed Domain Name is confusingly similar to its REDIFF, REDIFFMAIL and REDIFFMAILPRO trade marks, in that it incorporates its primary trade mark REDIFF in its entirety, with the only difference being the extra letter “f” in the Disputed Domain Name. The Complainant contends that the Disputed Domain Name is designed to lead consumers who are searching for the Complainant’s goods to the Respondent’s website.
The Complainant also contends that the Respondent lacks rights or legitimate interests in the Disputed Domain Name in that:
a) the Respondent is not known under the name “redifffmailpro.com”;
b) the Respondent intentionally adopted the trade marks REDIFFF and REDIFFMAILPRO to misappropriate the reputation associated with the Complainant’s famous REDIFF trade mark;
c) the website to which the Disputed Domain Name resolves is a pay-per-click website, which constitutes non legitimate commercial use and that the objective of the Respondent is simply to attract, for commercial gain, users to its website.
The Complainant further contends that the Disputed Domain Name was registered and is being used in bad faith. According to the Complainant and given its prominence worldwide and on the Internet, the Respondent must have known that the incorporation of its REDIFF trade mark in the Disputed Domain Name would be likely to cause Internet users to believe that the website at <redifffmailpro.com> was affiliated with the Complainant. The Complainant also submits that the Respondent attempts to attract, for commercial gain, Internet users to the website to which the Disputed Domain Name resolves, by creating a likelihood of confusion with the Complainant’s well known REDIFF trade mark.
The Complainant requested that the Disputed Domain Name be transferred to it.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding, the Complainant must prove:
i) that the Disputed Domain Name is identical or confusingly similar to the mark in which it has rights;
ii) that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name;
iii) that the Disputed Domain Name was registered and is being used in bad faith.
In accordance with paragraph 14(b) of the Rules the Panel will draw such inferences from the Respondent’s default as it considers appropriate. This will include the acceptance of plausible evidence of the Complainant which has not been disputed.
A. Identical or Confusingly Similar
The Panel finds on the evidence and as established by previous panels in matters concerning this Complainant’s trade marks (Rediff.com India Ltd. v. Abadaba S.A., Domain Admin, WIPO Case No. D2008-0803, which ordered the transfer of <rediffbol.com>; Rediff.com India Ltd. v. Laksh Internet Solutions Private Limited, WIPO Case No. D2008-0804, which ordered the transfer of <wwwrediff.com>; and Rediff.com India Ltd. v. REDIFFMOBILE.COM/ c/o “Whois Identity Shield, WIPO Case No. D2008-0806, which ordered the transfer of <rediffmobile.com>), that the Complainant owns both registered and common law rights in the trade mark REDIFF as well as derivatives such as REDIFFMAIL and REDIFFMAILPRO.COM.
The Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s REDIFF and REDIFFMAILPRO.COM trade marks. The only difference between the Complainant’s and Respondent’s domain names is the addition of the extra letter “f” in the Disputed Domain Name and this does not assist the Respondent in escaping a finding of confusing similarity. Thus the first requirement of paragraph 4(a) of the Policy is satisfied.
B. Rights or Legitimate Interests
Given the circumstances of this case, the Panel considers that the Respondent’s use of the Disputed Domain Name is not in connection with a bona fide offering of goods and services, such as to confer on the Respondent rights or legitimate interests for the purposes of the Policy. On the contrary, its use of the Disputed Domain Name takes unfair advantage of the reputation of the Complainant’s various REDIFF trade marks and of the Disputed Domain Name’s identity to or confusing similarity with that trade mark, in order to divert Internet users seeking information about the Complainant and its services to the Respondent’s website and the goods and services promoted through it.
The Panel further finds that the Respondent is not commonly known by the Disputed Domain Name, that it is not making legitimate noncommercial or fair use of the Disputed Domain Name, that it is not authorized by the Complainant to use the Disputed Domain Name and that there is no other basis on which it could claim to have rights or legitimate interests in the Disputed Domain Name in this case.
The Panel holds that the second requirement of paragraph 4(a) of the Policy is satisfied.
C. Registered and Used in Bad Faith
The Panel finds on the evidence that the Respondent is using the Disputed Domain Name intentionally to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s trade mark as to the source, sponsorship and affiliation or endorsement of the Respondent’s website and the products and services offered and promoted through it. In the Panel’s view, Internet users seeking information about the Complainant’s e-commerce and e-service activities are liable to be diverted by confusion between the Disputed Domain Name and the Complainant’s mark, to the Respondent’s website where services and products relating to various goods and services are offered and promoted for commercial gain and in which the Respondent no doubt shares.
In accordance with paragraph 4(b)(iv) of the Policy these circumstances constitute evidence of registration and use of the Disputed Domain Name in bad faith. There is no evidence displacing this presumption. Thus the Panel finds that the third requirement of paragraph 4(a) of the Policy is satisfied.
For all the a foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name <redifffmailpro.com> be transferred to the Complainant.
Charné Le Roux
Dated: October 28, 2010