WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Kotak Mahindra Bank Limited v. WhoIs Privacy Services Pty Ltd / Bridge Port Enterprises Limited
Case No. D2011-0134
1. The Parties
The Complainant is Kotak Mahindra Bank Limited of Mumbai, India; represented by M/s. Manilal Kher Ambalal & Co., India.
The Respondent is WhoIs Privacy Services Pty Ltd / Bridge Port Enterprises Limited of Fortitude Valley, Australia and St. Johns, Antigua and Barbuda, respectively.
2. The Domain Name and Registrar
The disputed domain name <kodakmahindrabank.com> is registered with Fabulous.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 25, 2011. On January 25, 2011, the Center transmitted by email to Fabulous.com a request for registrar verification in connection with the disputed domain name. On January 27, 2011, Fabulous.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. The Center sent an email communication to the Complainant on February 7, 2011. The Complainant filed an amendment to the Complaint on February 10, 2011.
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 February 18, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was March 10, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 18, 2011.
The Center appointed Edoardo Fano as the sole panelist in this matter on March 21, 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.
The Panel, in accordance with the Rules, paragraphs 10 and 12, requested the Complainant to provide copies of some of the Annexes to the Complaint by April 9, 2011 and the Respondent was given the opportunity to respond to such further evidence by April 11, 2011. The Complainant filed the requested copies of the Annexes on April 7, 2011. The Respondent did not submit any reply by the due date.
The Panel has not received any requests from the Complainant or the Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel, apart from the above, has not found it necessary to request any further information from the parties (taking note of the Respondent’s default in responding to the Complaint).
Having reviewed the communication records in the case file provided by the Center, the Panel finds that the Center has discharged its responsibility under the Rules, paragraph 2(a), “to employ reasonably available means calculated to achieve actual notice to Respondent”. Therefore, the Panel shall issue its decision based upon the Complaint, the Policy, the Rules and the Supplemental Rules and without the benefit of the Respondent’s response.
The language of the proceeding is English, being the language of the Registration Agreement.
4. Factual Background
The Complainant is Kotak Mahindra Bank Limited, one if India’s leading financial institutions, created in 1956 and then taking the names of two of its founders, Kotak and Mahindra, in 1985.
The Complainant is the owner of numerous trademark registrations for KOTAK, KOTAK MAHINDRA and KOTAK MAHINDRA BANK in India and elsewhere, including:
Indian Trademark Registration for KOTAK MAHINDRA, No. 754,111, registered in 1997;
Indian Trademark Registration for KOTAK MAHINDRA BANK AND DEVICE, No. 1,245,689, registered in 2003;
Indian Trademark Registration for KOTAK MAHINDRA, No. 1,283,988, registered in 2004;
United States Trademark Registration for KOTAK MAHINDRA, No. 2,531,760, registered in 2002;
United States Trademark Registration for KOTAK, No. 2,549,547, registered in 2002;
The Complainant provided evidence in support of the above-mentioned trademark registrations.
The Respondent’s domain name <kodakmahindrabank.com> was registered on October 18, 2010, and at the time of the filing of the present Complaint it pointed to a webpage displaying several links to services like “online banking”, “loans”, “credit cards”, etc.
5. Parties’ Contentions
The Complainant states that the disputed domain name <kodakmahindrabank.com> is confusingly similar to its trademark KOTAK MAHINDRA BANK.
Moreover, the Respondent has no rights or legitimate interests in respect of the disputed domain name since it has not been authorized by the Complainant to register and use the disputed domain name and is not making a legitimate noncommercial or fair use of the disputed domain name.
The Complainant submits that the Respondent has registered, used, and continues to use the disputed domain name in bad faith.
In fact, the Complainant’s trademark KOTAK MAHINDRA BANK enjoys considerable reputation especially in India, and therefore the Respondent could not have registered the disputed domain name without knowledge of the Complainant’s trademark rights, especially because in the website at the disputed domain name are offered the same services as the Complainant’s ones.
Further proof of the Respondent’s bad faith is the fact that the Complainant cease and desist mail to the original registrant of the disputed domain name remained unanswered.
The Respondent did not reply to the Complainant’s contentions and is in default: no exceptional circumstances explaining the default have been put forward.
A respondent is not obliged to participate in a proceeding under the Policy but if it fails to do so, facts asserted by a complainant may be taken as true, and reasonable inferences by the panel, in accordance with paragraph 14(b) of the Rules, may be drawn (see also Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441; Microsoft Corporation v. Freak Films Oy, WIPO Case No. D2003-0109; SSL INTERNATIONAL PLC v. MARK FREEMAN, WIPO Case No. D2000-1080; ALTAVISTA COMPANY v. GRANDTOTAL FINANCES LIMITED et. al., WIPO Case No. D2000-0848; Confédération Nationale du Crédit Mutuel, Caisse Fédérale du Crédit Mutuel Nord Europe v. Marketing Total S.A., WIPO Case No. D2007-0288).
6. Discussion and Findings
Paragraph 4(a) of the Policy lists three elements, which the Complainant must satisfy in order to succeed:
(i) the disputed domain name 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 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 Panel finds that the Complainant is the owner of the trademark KOTAK MAHINDRA BANK both by registration and acquired reputation and that the disputed domain name <kodakmahindrabank.com> is confusingly similar to the trademark KOTAK MAHINDRA BANK.
The fact that the second consonant of the disputed domain name is a “d” instead of the “t” of the Complainant’s trademark does not change the overall impression of confusing similarity between the two signs.
It can be considered both a misspelling of the word “kotak”, and therefore a “typosquatting” behaviour of the Respondent, and a phonetical similarity being the sound of the two consonants “d” and “t” very similar (see, e.g., Xerox Corp. v. Stonybrook Investments Ltd , WIPO Case No. D2001-0380).
It is well accepted that a top-level domain, in this case “.com”, may be ignored when assessing identity of a mark and domain name (see, e.g., VAT Holding AG v. Vat.com, WIPO Case No. D2000-0607).
The Complainant has therefore met its burden of proving that the disputed domain name is confusingly similar to the Complainant’s trademark, pursuant to the Policy, paragraph 4(a)(i).
B. Rights or Legitimate Interests
The Respondent has failed to file a Response in accordance with the Rules, paragraph 5.
The Complainant in its Complaint and as set out above has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not using the disputed domain name for a legitimate noncommercial or fair use or in connection with a bona fide offering of goods or services.
The prima facie case presented by the Complainant is enough to shift the burden to the Respondent to demonstrate that it has a right or legitimate interest in the disputed domain name. However, the Respondent has not presented any evidence of any rights or legitimate interests it may have in the disputed domain name.
The Panel therefore finds that the Policy, paragraph 4(a)(ii), has been satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that for the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, 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:
“(i) circumstances indicating that the Respondent has registered or has 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 its documented out-of-pocket costs directly related to the domain name; or
(ii) that 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 the Respondent has engaged in a pattern of such conduct; or
(iii) that the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the domain name, the Respondent had intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s 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 the Respondent’s website or location.”
As regards the registration in bad faith of the disputed domain name, the reputation of the Complainant’s trademark is clearly established and the Panel finds that the Respondent knew or must have known that the disputed domain name <kodakmahindrabank.com> was confusingly similar to a trademark of a third party.
The links to banking and financial services in the webpage at the disputed domain name further suggests that the Respondent was aware of the fact that the trademark KOTAK MAHINDRA BANK is well-known in the banking field.
As regards the use in bad faith of the disputed domain name, by incorporating the Complainant’s widely known trademark in the disputed domain name, the Respondent is clearly and intentionally attempting to make commercial gain by both free-riding on the Complainant’s trademark reputation and diverting Internet users to other websites (see, e.g., Pfizer, Inc. v. Seocho and Vladimir Snezko, WIPO Case No. D2001-1199; Pfizer, Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004-0784; AVENTIS Pharma S.A. and Merrell Pharmaceuticals Inc. v. Rx USA, WIPO Case No. D2002-0290).
Considering the above, the Panel finds that the Complainant has presented sufficient evidence to satisfy its burden of proof with respect to the issue of whether the Respondent has registered and is using the disputed domain name in bad faith.
The Panel therefore finds that the Policy, paragraph 4(a)(iii) has been satisfied.
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 <kodakmahindrabank.com> be cancelled as requested in the Complaint.
Dated.: April 13, 2011