WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
DB Corp. Ltd. v. Above.com Pty. Ltd. Domain Privacy / Host Master, Transure Enterprise Ltd
Case No. D2010-1581
1. The Parties
The Complainant is DB Corp. Ltd. of Gujarat, India, represented by TNT Law Practice, India.
The Respondent is Above.com Pty. Ltd. Domain Privacy / Host Master, Transure Enterprise Ltd of Beaumaris, Victoria, Australia and Tortola, Virgin Islands (British), United Kingdom of Great Britain and Northern Ireland, respectively.
2. The Domain Name and Registrar
The disputed domain name <dailybhaskar.com> is registered with Above.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 17, 2010. On September 17, 2010, the Center transmitted by email to Above.com, Inc. a request for registrar verification in connection with the disputed domain name. On September 20, 2010, Above.com, Inc. 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 22, 2010 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on September 24, 2010.
The Center verified that the amended 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 amendment, and the proceedings commenced on October 26, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was November 15, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 17, 2010.
The Center appointed William R. Towns as the sole panelist in this matter on November 26, 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 media house in India engaged in the publishing business for more than fifty (50) years. The Complainant publishes the daily newspapers “Dainik Bhaskar” and “Divya Bhaskar”. “Dainik” is a Hindi word that means “Daily”. Both of the Complainant’s daily newspapers enjoy a wide print circulation, and electronic versions of the newspapers are available online at the Complainant’s websites as “www.bhaskar.com”, “www.dainikbhaskar.com”, and “www.divyabhaskar.co.in”. The Complainant owns national trademark registrations in India for DAINIK BHASKAR and DIVYA BHASKAR in International Class 16 for “printed publications”, and also asserts common law trademark rights these registered marks as well as in BHASKAR, based on extensive and continuous use.
The disputed domain name <dailybhaskar.com> was registered on January 23, 2010. At the time of the filing of the Complaint, the domain name registrant as indentified in the concerned registrar Above.com, Inc.’s WhoIs records was Above.com Domain Privacy. However, in response to the Center’s registrar verification request the registrar Above.com, Inc. indicated that the disputed domain name is registered to Host Master, Transure Enterprise Ltd.1 The disputed domain name resolves to a parking website containing advertising links (“sponsored listings”) to third party sites relating to investments, stock trading, and newspapers. The Respondent’s website also contains “related searches” primarily related to newspapers, including “Hindi Newspapers of India”, “Gujarati Newspapers”, “Daily News”, and “Daily Newspapers Online”. The Complainant’s daily newspapers are published in both Hindi and Gujarati languages.
5. Parties’ Contentions
The Complaint maintains that the disputed domain name is identical to the Complainant’s DAINIK BHASKAR and DIVYA BHASKAR marks, in which the Complainants assert rights based on registration and long and substantially continuous use. According to the Complainant the two daily publications with which the marks correspond have circulations, respectively, of about 963 million and 372 million copies annually. The Complainant indicates that the publications are also available online, and accessible anywhere in the world from websites generating more than a quarter of a million hits a day. The Complainant further asserts rights in BHASKAR as a trademark based on use for more than 50 years.
The Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain name, which according to the Complainant was registered without the Complainant’s authorization or approval, is deceptively similar to the Complainant’s registered marks, and is being used to trade on the goodwill associated with the Complainant’s marks. The Complainant alleges that the Respondent’s website on its face reflects a clear attempt to create an association with the Complainant, and that the Respondent’s website targets the Complainant’s reading audience with searches in Hindi and Gujarati languages, the main languages in which the Complainant publishes its newspapers. In addition to using the disputed domain name to redirect Internet visitors looking for information about the Complainant or its publications to the Respondent’s pay-per-click website, the Complainant further alleges that the Respondent is offering the disputed domain name for sale on the website.
In view of the foregoing, the Complainant contends that the Respondent registered and is using the disputed domain name in bad faith, in an attempt for commercial gain to attract Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s marks as to sponsorship, source, or affiliation. The Complainant also alleges that the Respondent has engaged in a bad faith practice of registering other domain names incorporating the trademarks of others, citing the domain name <wikipedfia.com>.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Scope of the Policy
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See Final Report of the WIPO Internet Domain Name Process, paragraphs 169 and 170.
Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.
Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) 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) The Respondent has no rights or legitimate interests with respect to the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
Cancellation or transfer of the domain name is the sole remedy provided to the Complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in the domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) shifts the burden to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
B. Identical or Confusingly Similar
The Panel finds for purposes of paragraph 4(a)(i) of the Policy that the Complainant has established trademark rights in DAINIK BHASKAR and DIVYA BHASKAR through registration and use in connection with daily newspapers and online publications. The Panel further finds that the disputed domain name is confusingly similar to the Complainant’s marks. Regarding the question of identity or confusing similarity, the inquiry under the first element of the Policy is largely framed in terms of whether the mark and domain name, when directly compared, are identical or confusingly similar. See Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662.
In this instance, the disputed domain name incorporates the BHASKAR portion of the Complainant’s marks in its entirety. This is a common element and the dominant portion of both marks. The confusing similarity between the disputed domain name and the Complainant’s marks is not diminished by the addition of common word “daily”, which could be further associated by consumers with the Complainant’s daily newspapers. See National Association for Stock Car Auto Racing, Inc. v. Racing Connection / The Racin’ Connection, Inc., WIPO Case No. D2007-1524. In addition, as noted earlier, “Dainik” is Hindi for “Daily”, making the disputed domain name virtually identical to the Complainant’s DAINIK BHASKAR mark.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of proof to the respondent to come forward with evidence of rights or legitimate interests in a disputed domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) has been made. The disputed domain name is confusingly similar to the Complainant’s marks. The Respondent is using the disputed domain name to attract Internet users to what by all appearances is a pay-per-click website with advertising links and searches, a number of which seem to target Indian readers of daily newspapers and other publications. There is no indication that the Respondent has been commonly known by the disputed domain name, nor is there any evidence that the Respondent has been authorized by the Complainant to use the Complainant’s marks.
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights to or legitimate interests in the disputed domain names by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a 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 has not submitted a formal Response to the Complaint, in the absence of which the Panel may accept all reasonable inferences and allegations in the Complaint as true. See Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009. Regardless, the Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondent’s registration and use of the disputed domain name within any of the “safe harbors” of paragraph 4(c) of the Policy.
The Panel concludes that the Respondent most likely registered the disputed domain name in order to trade on the likely confusion between the disputed domain name and the Complainant’s marks, intending to attract Internet users to the Respondent’s pay-per-click website. This does not constitute use of the disputed domain name in connection with a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy. See, e.g., Barceló Corporación Empresarial, S.A. v. Hello Domain, WIPO Case No. D2007-1380. The Respondent has not been authorized to use the Complaint’s marks, and is there no evidence that the Respondent has been commonly known by the disputed domain name. Nor in view of the foregoing can it be said that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name within the meaning of paragraph 4(c)(iii) of the Policy.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent 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 the respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is “to curb the abusive registration of domain names in the circumstances where the registrant is seeking to profit from and exploit the trademark of another”. Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.
For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent’s conduct in this case constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(a)(iii) of the Policy. The Panel finds it more likely than not that the Respondent’s primary motive in relation to the registration and use of the disputed domain name was to capitalize on or otherwise take advantage of the Complainant’s trademark rights. The Panel further is of the view that the Respondent registered and has used the disputed domain name in bad faith under paragraph 4(b)(iv) of the Policy, to intentionally attract Internet users to its website for commercial gain, by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship or affiliation. See Edmunds.com, Inc. v. Ult. Search Inc., WIPO Case No. D2001-1319.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.
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 <dailybhaskar.com> be transferred to the Complainant.
William R. Towns
Date: December 10, 2010
1 It appears most likely from the record that Above.com Domain Privacy is a privacy protection service affiliated with the concerned registrar, and that Host Master, Transure Enterprise Ltd. is the underlying domain name registrant. Unless otherwise indicated, the term “Respondent” as used herein refers to the latter underlying registrant.