WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Godrej Consumer Products Private Limited v. David Michaud
Case No. D2011-0024
1. The Parties
The Complainant is Godrej Consumer Products Private Limited of Mumbai, India, represented by ANM Global, India.
The Respondent is David Michaud of St-Bruno, Quebec, Canada.
2. The Domain Name and Registrar
The disputed domain name <godrej.tel> is registered with Webnames.ca Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on January 6, 2011. On January 6, 2011, the Center transmitted by email to Webnames.ca Inc. a request for registrar verification in connection with the disputed domain name. On January 6, 2011, Webnames.ca 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 February 8, 2011, 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 February 8, 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 February 14, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was March 6, 2011. The Response was filed with the Center on February 17, 2011.
The Center appointed George R. F. Souter as the sole panelist in this matter on March 14, 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
The Complainant, Godrej Consumer Products Private Limited, is a member of the Godrej Group of Companies, which can trace its origin back to the establishment of the company Godrej & Boyce Mfg. Co. Ltd. in 1897. The Godrej Group is one of India’s largest conglomerates, based in Mumbai, India, it is involved in various industries that include: appliances, precision equipment, machine tools, furniture, personal care, hygiene and healthcare, insecticides, Interior solutions, office equipment, food-processing, security, materials handling and industrial storage solutions, construction and information technology. The group trades internationally, including in North America. The group’s turnover is now in advance of USD 2.6 billion.
The Complainant has provided the Panel with evidence of a significant number of trade mark registrations, in India and abroad, of the GODREJ mark, the earliest being an Indian registration, dated 1942.
The Complainant has provided the Panel with evidence of considerable activity, over many years, on the promotion and advertisement of its services and products under the trade mark GODREJ. A Google search of the Internet using the key word “Godrej” discloses a wide presence of the Complainant’s commercial activities.
The disputed domain name was registered on March 24, 2009.
5. Parties’ Contentions
The Complainant alleges that the disputed domain name is identical to the trademark “Godrej” in which it has exclusive rights. The Complainant alleges that the Respondent is not, either as an individual, businesses or other organization, commonly known by the name “Godrej”. Nor has it licensed or otherwise permitted the Respondent to use its mark GODREJ or to apply for any domain name incorporating this mark. The Complainant further contends that the Respondent has both registered and is using the disputed domain name in bad faith.
The Respondent wrote the Center on February 17, 2011, stating merely that it was his intention not to renew the disputed domain name and let it go completely.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists three elements that the Complainant must prove to merit a finding that the domain name of the Respondent be transferred to the Complainant or be cancelled:
(iii) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(iii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The only difference between the Complainant’s trade mark GODREJ and the disputed domain name <godrej.tel> is the domain identifier “.tel”. It is well established in UDRP proceedings that, in comparing a trade mark and a domain name, the domain identifier is legally irrelevant. Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
As the Respondent did not avail himself of the opportunity to argue that he possessed rights or legitimate interests in the disputed domain name, the Panel finds that the Complainant has made out a prima facie case that the Respondent lacks such interests. It is well established in UDRP proceedings that a prima facie case is sufficient for a Complainant to succeed under paragraph 4(a)(ii) of the Policy, and the Panel so finds in the present case.
C. Registered and Used in Bad Faith
In the Panel’s view, a finding in favour of the Complainant under paragraph 4(a)(ii) may lead to a finding that the disputed domain name was registered in bad faith, and the Panel so finds in this case.
The Panel acknowledges the Complainant’s considerable reputation in its trade mark GODREJ.
The Complainant has provided the Panel with evidence that the disputed domain name has been taken into use. As a result of the Respondent’s actions, in the Panel’s view, a potential consumer accessing the disputed domain name would have the legitimate expectation that he was communicating with the Complainant, and would, consequently be misled, to the possible detriment of the Complainant. This justifies the Panel’s finding that the disputed domain name has been used in bad faith. In the circumstances of this case the Panel takes the view that it would be equitable that the disputed domain name be transferred to the Complainant, as requested by the Complainant and taking into consideration the Respondent’s wish to not renew the disputed domain name. The Panel, accordingly, 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 <godrej.tel> be transferred to the Complainant.
George R F Souter
Dated: March 23, 2011