WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
eBay India Pvt. Ltd. v. Gateway, Paisa
Case No. D2010-2273
1. The Parties
The Complainant is eBay India Pvt. Ltd. of Mumbai Maharashtra, India, represented by Saikrishna & Associates, India.
The Respondent is Gateway, Paisa of Sydney, New South Wales, Australia.
2. The Domain Name and Registrar
The disputed domain name <paisapay.mobi> is registered with 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 27, 2010. On January 4, 2011, 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 January 4, 2011, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on January 10, 2011. The Center verified that the Complaint together with 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 the proceedings commenced on January 10, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was January 30, 2011. An informal Response was filed with the Center on January 12, 2011.
The Center appointed David Perkins as the sole panelist in this matter on January 25, 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
4.1. The Complainant
eBay, Inc and the Complainant
4.1.1 The Complainant was incorporated on January 14, 2000 as Baazee.com India Private Ltd. On March 11, 2005 that name was changed to EBay India Private Ltd. It is a wholly owned subsidiary of eBay, Inc which itself was founded in the United States of America in 1995. The Complainant was acquired by eBay, Inc in 2004.
4.1.2 The Complaint states that eBay and its group companies, which include the Complainant, is the world’s most well known online marketplace, which provides an international platform facilitating online trade. What the Complaint describes as “the eBay community” has more than 93 million registered members worldwide. In the third quarter of 2010 the total value of all successfully closed items on eBay Inc’s trading platform was US$14.7 billion.
4.1.3 The principal address is located at the website “www.ebay.com” and that format website is also accessible at URLs in over 39 countries, including the Complainant at “www.ebay.in”. According to a 2008 eBay Census Guide on India, the Complainant then had an over 2 million strong community covering 670 cities in India. A. C. Nielsen International Research reported that in 2006 at any given time there were over 100,000 live listings on the Complainant’s website across 2,000 categories of goods. Some 12,800 sellers were reported as using the Complainant as a primary or secondary source of income.
The Complainant’s “PaisaPay” Service
4.1.4 The Complainant started its operations in India in 2000 and in 2002 it launched its “PaisaPay” service. This is available to eBay’s members in India. “PaisaPay” has been described as India’s version of “Pay Pal”. “Paisapay” is the easiest way to accept online payments from buyers who have credit cards or online accounts. It works in the following manner. First, the seller offers “PaisaPay” as a method of payment, the buyer may then choose to pay through “PaisaPay” by using various online payment modes, for example by credit card or online bank transfer. The purchase price is credited to the seller’s “PaisaPay” account. The buyer confirms receipt of the item to the Complainant. There is no service fee for buyers to use “PaisaPay” but a “PaisaPay” service charge is deducted by the Complainant when the transaction amount is credited to the seller’s “PaisaPay” account.
The “PaisaPay” trademark and domain names
4.1.5 The Complainant is the proprietor of the following registered trademarks for “PaisaPay”
Class(es) of Goods and Services
Dates if Application and Registration
Filed: May 14, 2003
Registered: July 27, 2006
Filed: May 14, 2003
Registered: June 30, 2006
4.1.6 The domain name <paisapay.co.in> was registered on April 13, 2006 and is held in the name of another eBay Group company, eBay International AG.
4.1.7 The domain name <paisapay.com> was registered on October 2, 2002 by the Complainant’s parent company, eBay, Inc.
The Complainant’s “www.ebay.in” website
4.1.8 The Complainant states that there are now some 2.5 million members of its community and that over 150000 hits per day are recorded on the website. The Complaint further states that the Complainant’s website contains extensive information about the services provided under its “PaisaPay” trademark. The Complaint also exhibits examples of advertisements and write ups of the “PaisaPay” service.
4.2. The Respondent
4.2.1 The original registrant of the disputed domain name was Mr Subhash of Hyderabad, India. That registration was on October 16, 2006.
4.2.2 On December 30, 2006 the domain name was transferred to the Respondent, with an address in Sydney, Australia.
4.2.3. As noted in paragraph 3 above, an informal Response to the Complaint was received by the Center on January 12, 2011. That response was in the form of an email from Subhash Vadapally, CEO of Paisapay Gateway Solutions, Hyderabad.
4.2.4 Mr Subhash states that on October 5, 2002 he incorporated a software development firm by the name of Paisapay Gateway Solutions. That is confirmed by an Acknowledgment of Registration of Firm from the Registrar of Firms Hyderabad on behalf of the Government of Audhara Pradesh, the State in India in which Hyderabad is located. That Acknowledgement is dated October 5, 2002 and a copy was attached to Mr Subhash’s email to the Center of January 12, 2011.
4.2.5 Mr Subhash explains that he established the Firm with a friend and business partner, Mr PeddaPuli Jivitesh who lives in Australia. His email states:
“We both together planned to develop a online mobile payment gateway website in association with government sector and private banks in India and registered PaisaPay.mobi on 16 October 2006. We spent time and money to complete the project along with our technical team and planned to launch the website within couple of months.”
Mr Subhash explains that those plans were interrupted by a “cease and desist” letter from the Complainant’s lawyers dated 27 December 2010.
4.2.6 The background to this is a letter which was in fact dated December 1, 2010 from the Complainant’s attorneys addressed to Mr Subhash putting him on notice of the Complainant’s rights in the “PaisaPay” trademark and requesting, inter alia, transfer of the disputed domain name to the Complainant. That letter is exhibited to the Complaint. Also exhibited is Mr Subhash’s email reply of December 3, 2010 which reads as follows:
This will be my first and last email reply to you afterwards I never respond to any email. If ebay got patent rights for paisapay then ebay got privilege to proceed further legally.
If you need any further clarification then call me on my mobile.
Mr Subhash’s mobile number was given beneath his name.
4.2.7 The Complaint says that the Complainant’s attorneys then duly contacted Mr Subhash by telephone on December 4, 2010. Mr Subhash is reported as saying that he was not prepared to transfer the disputed domain name to the Complainant and threatened to transfer it instead to a friend based in Australia.
4.2.8 Mr Subhash then ends his email Response of January 12, 2010 in the following terms
“As we registered above said firm in 2002 and for our online mobile payment gateway website we registered paisapay.mobi on 16th October 2006 and it simply indicates Ebay ignorance to register PaisaPay.mobi when .mobi launched in 2006 (sunrise period time) if they got trademark for ‘PaisaPay’. Ebay realised after 4 years and raised issue regarding PaisaPay.mobi domain name.
Note: Paisa (Hindi word) means cents (100 paisa equal to 1 rupee)
Subhash Vadapally, CEO
PAISAPAY GATEWAY SOLUTIONS …”
4.2.9 In response to an email dated January 17, 2011 from the Center enquiring whether the email of January 12, 2011 was his “complete Response”, on January 19, 2011 Mr Subhash confirmed that it was and that the Center should “proceed to appoint a panel to determine the matter.”
5. Parties’ Contentions
5.A. Identical or Confusingly Similar
5.A.1 The Complainant not only relies on its Indian registered trademarks for PAISAPAY filed in May 2003 but also on the reputation that its PaisaPay products and services has generated since those services were first introduced under and by reference to that mark in 2002. The Complainant also asserts that the mark “PaisaPay” is inherently distinctive.
5.A.2 The Complainant points to the fact that the disputed domain name is identical to the PAISAPAY / PaisaPay trademark.
Rights or Legitimate Interests
5.A.3 The Complainant says that there is no evidence that the Respondent can demonstrate that any of the circumstances set out in paragraph 4(c) of the Policy apply in this case. The disputed domain name was first registered on October 16, 2006 some 4 years after the Complainant launched its “PaisaPay” service in 2002. Following the input on notice of the Complainant’s rights in the PAISAPAY / PaisaPay trademarks in early December 2010 [see, paragraph 4.2.6 above], the original registrant, Mr Subhash implemented his threat and later that month transferred the disputed domain name to his colleague in Australia [see, paragraph 4.2.7 above].
Registered and Used in Bad Faith
5.A.4 The Complainant repeats that the disputed domain name was originally registered in October 2006 some 4 years after introduction of its “PaisaPay” service in 2002, by which time that service had become very well known in India.
5.A.5 As to use, the Complainant asserts that, in the circumstances, registration of the disputed domain name amounts to bad faith use. This is, presumably, because the original registrant could not have made any legitimate use of that registration, since any use would clearly infringe the Complainant’s rights in the PAISAPAY / PaisaPay trademarks. Hence, the Complainant submits that the Respondent “… has no apparent use for the domain name other than to profit from squatting on the same”. This, the Complainant says demonstrates circumstances under paragraph 4(b)(i) of the Policy.
5.A.6 The Complainant also relies on paragraph 4(b)(iv) of the Policy and submits that any Internet user coming across the disputed domain name would be confused into believing that they were, in fact, performing a transaction using their “PaisaPay” payment services. This is because such user would believe that a website resolving to the disputed domain name was in some way connected to or affiliated with the Complainant or was being endorsed or promoted by the Complainant.
5.B.1 The original registrant’s position is set out in his email of December 3, 2010 to the Complainant’s attorneys and his email to the Center of January 12, 2011. As to the former, see paragraph 4.2.6 above and as to the latter, see paragraphs 4.2.5 and 4.2.8 above. No response was received from the Respondent to the Complaint.
5.B.2 Mr Subhash’s position appears to be as follows.
First, he registered a firm in Hyderabad in the name of Paisapay Gateway Solutions on October 5, 2002.
Second, he and the Respondent had made plans at some time between that date and the December 1, 2010 letter from the Complainant’s attorneys to develop an online mobile payment gateway website. This would have been ready to be launched within a couple of months of receiving that letter.
Third, if the Complainant or its parent company had trademark rights in the PAISAPAY / PaisaPay mark in 2006 then they should have made a Premium Name application to register <paisapay.mobi> at that time, namely during “Sunrise” period [September 15 to October 13, 2002] for registering “PaisaPay” as a Mobile Top Level Domain. As it is, neither the Complainant nor eBay, Inc did so apply and they have only woken up to this failure on their part some 4 years later. Presumably, Mr Subhash’s case is that, having slept on its rights, the Complainant should now be precluded from succeeding with this Complaint.
Fourth, Mr Subhash had already secured a right to use “PaisaPay” through registration of the firm Paisapay Gateway Solutions in October 2005.
Fifth, in any event, the Complainant should not be permitted to monopolise “PaisaPay”, since it is a descriptive mark, the “paisa” component meaning “cents” in Indian, 1000 paisa having the value of 1 rupee.
6. Discussion and Findings
6.1 The Policy paragraph 4(a) provides that the Complainant must prove each of the following in order to succeed in an administrative proceeding
(i) that the Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
6.2 The Policy paragraph 4(c) sets out circumstances which, in particular but without limitation, if found by the Panel to be proved shall demonstrate the Respondent’s rights or legitimate interest in the domain name in issue.
6.3 The Policy paragraph 4(b) sets out circumstances which, again in particular but without limitation, if found by the Panel to be present shall be evidence of the registration and use of a domain name in bad faith.
6.4 As stated, the circumstances set out in paragraph 4(b) and 4(c) of the Policy are not exclusionary. They are without limitation. That is, the Policy expressly recognizes that other circumstances can be evidence relevant to the requirements of paragraphs 4(a)(ii) and (iii) of the Policy.
Identical or Confusingly Similar
6.5 The Complainant has demonstrated that it has registered trademark rights in the mark PAISAPAY [paragraph 4.1.5 above]. The disputed domain name is identical to that registered trademark. Consequently, the Complainant has satisfied both component parts of paragraph 4(a)(i) of the Policy.
Rights or Legitimate Interests
6.6. As to paragraph 4(c)(i) of the Policy, the first issue is whether Mr Subhash and/or the Respondent made demonstrable preparations to use the disputed domain name before being put on notice of the Complainant’s claim by its attorneys’ letter of December 1, 2010. In that respect, the Respondent has failed to submit a Response. If one takes Mr Subhash’s email of January 12, 2011 as a Response, he asserts but provides no evidence of plans made to develop an online mobile payment gateway website for which the disputed domain name would be used. If that website was to have been launched within a couple of months from the date of the December 1, 2010 “cease and desist” letter, it is not unreasonable to expect evidence of that website to have been exhibited to a Response. There is, however, no such evidence.
6.7 However, could such proposed use of the disputed domain name ever have been bona fide in the context of the Complainant’s use of the PaisaPay trademark since 2002 and registration of PAISAPAY as a trademark dating from applications made in May 2003? On the available facts, the Panel is not satisfied that such use could have been bona fide and consequently the Respondent cannot show rights to or legitimate interests in the disputed domain name.
6.8 Registration by Mr Subhash of the firm Paisapay Gateway Solutions in October 2002 does not, in the Panel’s view, change this conclusion. Not only have Mr Subhash and the Respondent failed to provide any evidence of activity by that Firm under the “PaisaPay” name, but the Complainant had launched its “PaisaPay” system in 2002 [paragraph 4.1.3 above]. Precisely when in 2002 is not stated in the Complaint. But, in the light of all the evidence before the Panel, the Panel’s inclination is to conclude that registration of the Firm in October 2002 probably occurred after the Complainant had launched its “PaisaPay” service.
6.9 There is no suggestion that Mr Subhash or the Respondent can demonstrate rights or a legitimate interest under paragraph 4(c)(ii) of the Policy.
6.10 As to paragraph 4(c)(iii) of the Policy, this cannot apply since it appears from Mr Subhash’s January 12, 2011 email that no actual use has been made of the disputed domain name.
6.11 In the circumstances, the Complaint succeeds under paragraph 4(a)(ii) of the Policy.
Registered and Used in Bad Faith
6.12 It may be that, as the Complainant asserts, Mr Subhash and/or the Respondent have “… no apparent use for the disputed domain name other than to profit by squatting on the same” [paragraph 5.A.5 above] but there is, in the Panel’s view, just insufficient evidence to demonstrate that the circumstances of this case fall within paragraph 4(b)(i) of the Policy.
6.13 However, it seems highly probable that, at the time when Mr Subhash registered the disputed domain name in October 2006, he was aware of the Complainant’s “PaisaPay” services. The Complainant had by then been operating in India since 2000 and had launched its “PaisaPay” service in 2002, some 4 years earlier. In the Panel’s view it is just not credible that in October 2006 a party with the stated aim of developing an online mobile payment gateway in India could have been unaware of the Complainant’s “PaisaPay” service. The Complainant is the Indian subsidiary of the very well known eBay, its business was clearly very well established in India by October 2006 [see, the Nielsen Report referred to in paragraph 4.1.3 above] and the “PaisaPay” service had been extensively advertised and promoted on the Complainant’s “www.ebay.in” website [see, paragraph 4.1.7 above]. In the circumstances, the Panel’s view is that the disputed domain name was registered in bad faith in October 2006 and this was compounded by transfer of that domain name by Mr Subhash to the Respondent on December 30, 2010 [see, paragraphs 4.2.2; 4.2.7 and 5.A.3 above].
6.14 As to use, it is well established by decisions under the Policy that lack of use of a disputed domain name does not, as such, prevent a finding of bad faith. Here, relevant circumstances are that (1) PaisaPay / PAISAPAY appears to have been a widely known trademark in India by October 2006 when the disputed domain name was first registered; (2) the Respondent has failed to submit a Response to this Complaint (other than Mr Subhash’s email of January 12, 2011) and (3) the impossibility of conceiving a good faith use of the disputed domain name; see, Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
6.15 In the circumstances, the Panel has no hesitation in finding that the Complaint satisfies the requirements of paragraph 4(a)(iii) of the Policy. There is also a suggestion in the Complaint that there has been actual confusion in the form of mails from the Complainant’s users enquiring whether the website “www.paisapay.mobi” or the disputed <paispay.mobi> domain name belongs to the Complainant. No evidence of such actual confusion was, however, provided with the Complaint. Indeed, it appears from Mr Subhash’s email of January 12, 2011 that no actual use has been made of the disputed domain name although he suggested that launch of a website under that domain name was imminent when he received the cease and desist letter from the Complainant’s attorneys on December 1, 2010. Whatever the true position is in that respect, the Panel’s decision would not be altered. Indeed, had Mr Subhash used the disputed domain name as proposed, on the evidence before the Panel such use would have fallen within the circumstances of paragraph 4(b)(iv) of the Policy on the basis of a likelihood of confusion with the Complainant’s PAISAPAY / PaisaPay mark.
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 <paisapay.mobi> be transferred to the Complainant.
Dated: February 8, 2010