WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bharti Airtel Limited, Bharti Telemedia Limited v. Airteldigitaldish, Dipak Sharma
Case No. D2010-2270
1. The Parties
The Complainants are (1) Bharti Airtel Limited, and (2) Bharti Telemedia Limited (hereinafter “Complainant”, except where expressly indicated), both of New Delhi, India, represented internally.
The Respondent is Airteldigitaldish, Dipak Sharma of Kolkata, India.
2. The Domain Name and Registrar
The disputed domain name <airteldigitaldish.com> is registered with the Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 24, 2010. On December 28, 2010, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com a request for registrar verification in connection with the disputed domain name. On December 29, 2010, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com transmitted to the Center by email 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 on January 4, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was January 24, 2011. The Respondent was informed that if his response was not received by that date, he would be considered in default. The Center would still appoint a Panel to review the facts of the dispute and to decide the case. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 25, 2011.
The Center appointed Dr. Vinod K. Agarwal as the sole panelist in this matter on January 28, 2011. 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
From the Complaint and the various annexure to it, the Panel has found the following facts:
The present Complaint has been filed by two Complainants. The first Complainant is Bharti Airtel Limited. The second Complainant is Bharti Telemedia Limited. Both the Complainants are companies incorporated in India according to the Laws of India. The second Complainant is a subsidiary of the first Complainant.
The Complainant is the licensed provider of telecommunication services in 22 telecom circles in India. The services provided by the first Complainant includes cellular phones, broadband and Internet services, satellite, carrier, international services, calling card, e-business services, etc. The Complainant also operates in Sri Lanka, Bangladesh and in 16 countries of Africa. The Complainant offers an integrated suite of telecom solutions to its customers, in addition to providing long distance connectivity on both international level as well as national levels. The Complainant also offers DTH (Direct To Home) services through digital dish technology and IPTV services. All these services are rendered under a unified brand name, that is, AIRTEL.
The Complainant is also the owner of various domain names incorporating the words “airtel”, “digital” and “dish” such as <airtel.com>, <airtelworld.com>, <airtellive.com>, <airtelindia.in>, <airtelephone.in>, <airtelenterprise.com>, <airtel.co.in>, <airtelthree.com>, <airtel-broadband.com>, <airteldigitaldish.in>, <airteldigitaldish.net>, <airteldigitaldish.org>, etc.
Respondent’s Identity and Activities
The Respondent did not reply to the Complainant’s contentions. Hence, the Respondent’s activities are not known.
5. Parties’ Contentions
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are applicable to this dispute.
In relation to the first element under the Policy, the Complainant contends that the name of the Complainant is “Bharti Airtel Limited”. Bharti Airtel is a famous company and known as telephone service provider amongst consumers in the whole of India and some other countries of the world. The disputed domain name is <airteldigitaldish.com>. It contains the trademark AIRTEL of the Complainant. The suffixes “digital” and “dish” are generic and descriptive words describing one of the major services (i.e. DTH services using “digital” technology and a “dish” provided by the Complainant).
The first Complainant is the owner of the trademark AIRTEL. It is registered in India under various classes, such as class 9, class 16, class 28, and class 38. It appears that the said trademark AIRTEL is also registered in some countries and jurisdictions like Ethiopia, the European Union (under classes 38, 41 and 42), Hong Kong (since 2008), Singapore (since 2008), United States of America (since 2009), Zambia (under class 9 and 16), etc.
The disputed domain named <airteldigitaldish.com> is very much identical or confusingly similar to the name and trademarks of the Complainant.
In relation to the second element under the Policy, the Complainant contends that the Respondent (as an individual, business, or other organization) has not been commonly known by the disputed domain name <airteldigitaldish.com>. The acts of the Respondent constitute infringement/passing off of the trademark of the Complainant. Further, the Respondent is not making a legitimate or fair use of the said domain name for offering goods and services. The Respondent registered the disputed domain name for the sole purpose of creating confusion and misleading the general public and the customers of the Complainant. Thus, it is contended that there were no rights or legitimate interests of the Respondent in the disputed domain name.
Regarding the third element under the Policy, the Complainant contends that the main object of registering the domain name <airteldigitaldish.com> by the Respondent is to attract Internet users, for commercial gain to its website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the website.
The Complainant has stated that the use of a domain name that appropriates a well-known trademark to promote competing or infringing products cannot be considered a “bona fide offering of goods and services”. See the decisions of The Chip Merchant, Inc. v. Blue Star Electronics, d/b/a Memory World, WIPO Case No. D2000-0474 and Yamaha Corporation v. Zhoulei, WIPO Case No. D2004-0126 and Organization Committee for the World Championship of Alpine Ski in 2009 v. Kenny E. Granum, WIPO Case No. D2006-0264
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel as to the principles the Panel is to use in rendering its decision. It says that, “A panelist shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
According to paragraph 4(a) of the Policy, the Complainant must prove that:
(i) The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(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.
A. Identical or Confusingly Similar
The present dispute pertains to the domain name <airteldigitaldish.com>. The Panel notes that the Respondent has registered the disputed domain name on July 24, 2010 for a period of one year, that is, up to July 24, 2011. The word “airtel” is a part of the name of the Complainant. It is also a trademark of the Complainant. In the disputed domain name <airteldigitaldish.com> only the words “digital” and “dish” have been added. These are generic and descriptive words. The addition of generic and descriptive words does not create a different trademark in which the Respondent has rights and cannot be considered to avoid confusion between the domain name and the Complainant’s trademark. Further, the Complainant is already an owner of the domain names <airteldigitaldish.com>, <airteldigitaldish.net>, and <airteldigitaldish.org>, among others.
The Complainant has relied on the decision in the case of GA Modefine SA v. Riccardo Bin Kara-Mat, WIPO Case No. D2002-0195; Pafrums Christian Dior v. 1 Netpower Inc., WIPO Case No. D2000-0022; Nintendo of America, Inc. v. Gray West International, WIPO Case No. D2000-1219; Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation v. Distribution Purchasing & Logistics Corp., WIPO Case No. D2000-0464. Similar conclusions have been arrived at by the administrative panels in the cases of Pharmacia & Upjohn AB v. Dario H. Romero, WIPO Case No. D2000-1273 and Briefing.com Inc. v. Cost Net Domain Manager, WIPO Case No. D2001-0970.
Thus, the Panel finds that the disputed domain name is confusingly similar to the registered trademark of the Complainant and thus paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
According to paragraph 4(c) of the Policy, the Respondent may demonstrate its rights to or legitimate interest in the domain name by proving any of the following circumstances:
(i) before any notice to the Respondent 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 (as an individual, business or other organization) has been commonly known by the domain name, even if the Respondent 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 filed any response in this case. There is no evidence to suggest that the Respondent has become known by the disputed domain name anywhere in the world. Further, the disputed domain name is not used by the Respondent for the bona fide offering of goods or services. Based on the default and the evidence in the Complaint, the Panel finds that the above circumstances do not exist in this case and that the Respondent has no rights or legitimate interests in the disputed domain name.
“Airtel” is a mark of and a portion of the name of the Complainant. It would appear unlikely that the Respondent could have any rights or legitimate interests in the domain name. Further, in view of the fact that the Complainant has not licensed or otherwise permitted the Respondent to use its name or trademark or to apply for or use a domain name incorporating said name, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name and thus paragraph 4(a)(ii) of the Policy is satisfied.
See also Pavillion Agency, Inc., Cliff Greenhouse and Keith Greenhouse v. Greenhouse Agency Ltd. and Glenn Greenhouse, WIPO Case No. D2000-1221.
C. 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 or use of the domain name in bad faith:
(i) Circumstances indicating that the Respondent has registered or 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 documented out-of-pocket costs directly related to the domain name; or
(ii) The Respondent has 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 it has engaged in a pattern of such conduct; or
(iii) The Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) By using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 the Respondent’s website or location or of a product or service on its website or location.
The Complainant contends that the disputed domain name was registered or acquired primarily for the purpose of selling the domain name to the owners of the trademarks, the Complainant, or to the competitors of the Complainant, for valuable consideration. Also, it is claimed the Respondent has registered the disputed domain name as a “phishing” scheme to induce and divert the customers of the Complainant. The Complainant has stated that the modus operandi of the Respondent is to send sms to customers inviting them to the website under the disputed domain name to avail free AIRTEL digital services. Once the customer logs into the website, it asks the customer to pay RS 440 as sales tax in a given account. The customer deposits the money in the account and loses the money. Copies of some of the complaints received by the Complainant in this respect are attached with the Complaint.
This and other information submitted by the Complainant leads to the conclusion that the disputed domain name was registered and used by the Respondent in bad faith. Accordingly the Panel finds that the Respondent registered and used the domain name in bad faith, and thus paragraph 4(a)(iii) of the Policy is satisfied.
In light of the forgoing findings, namely, that the disputed domain name is confusingly similar to a mark in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and that the disputed domain name was registered in bad faith and is being used in bad faith, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <airteldigitaldish.com> be transferred to the Complainant.
Vinod K. Agarwal
Dated: February 10, 2011