WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
eBay India Pvt. Ltd. v. Protected Domain Services / Software Market
Case No. D2011-0213
1. The Parties
The Complainant is eBay India Pvt. Ltd of Mumbai, Maharashtra, India, represented by Saikrishna & Associates, India.
The Respondent is Protected Domain Services / Software Market of Denver, Colorado, the United States of America and India, respectively.
2. The Domain Name and Registrar
The disputed domain name <paisapay.org> is registered with Name.com LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 2, 2011. On February 3, 2011, the Center transmitted by email to Name.com LLC a request for registrar verification in connection with the disputed domain name. On February 3, 2011 Name.com LLC 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 15, 2011 providing the registrant and contact information disclosed by the Name.com LLC., and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on February 24, 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 25, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was March 17, 2011. The Respondent was informed that if its response was not received by that date, it 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 March 21, 2011.
The Center appointed Vinod K. Agarwal as the sole panelist in this matter on April 1, 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 Complainant’s Activities
The Complainant was incorporated on January 14, 2000 as Baazee.com India Private Limited under the Companies Act, 1956 of India. The Complainant is a subsidiary of eBay Inc. On March 11, 2005 the Complainant changed its name to “eBay India Private Limited” and a fresh certificate of incorporation was issued by the Registrar of Companies of India in consequence upon the change of name of the Complainant.
The Complainant provides an international platform facilitating online trade. In fact, eBay Inc. ., (the Complainants’ parent company) is an online platform that enables buyers and sellers to interact and trade with one another. eBay Inc. facilitates in creating, maintaining and expanding the functionality, safety, ease-of-use and reliability of its platforms. At any given time, eBay users trade in large numbers in various items, such as, collectibles, antiques, sports memorabilia, computers, toys, magazines, comics, pottery, glass, photography, electronics, jewellery, etc.
The Complainant operates the best-known online person-to-person trading facility on the Internet. It has several websites at domain names such as, <ebay.com>; <ebay.com>, < ebay.co.uk>, <ebay.co.in>, <ebay.in> and similar localized URLs in over 39 countries. They are fully automated, topically arranged, and easy-to-use online services that seek to provide availability 24 hours a day, seven days a week, enabling sellers to list items for sale in either auction or fixed-price formats, facilitating buyers to bid for and purchase items of interest.
The 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 element (i) of paragraph 4 (a) of the Policy, the Complainant contends that to facilitate the online trading through its websites the Complainant also offers online payment services under the trademark/service mark PAISAPAY . “PaisaPay” is a service offered by eBay to its members on the website”www.ebay.in”. “PaisaPay” is the easiest way to accept online payments from buyers who have credit cards or online bank accounts. “PaisaPay” works in the following manner:
a. Seller offers “PaisaPay” as mode of payment;
b. Buyer may choose to pay through “PaisaPay” by using various online payments mode such as through Credit Card or Online Bank Transfer;
c. Buyer’s money gets credited into sellers “PaisaPay” account;
d. Buyer confirms receipt of item to the Complainant and normally post buyer confirmation about receipt of item, the transaction amount post deduction of “PaisaPay” service charges gets credited into seller account;
e. To avail of the “PaisaPay” service, a seller has to provide some additional document to the Complainant.
The Complainant does online remittance to the seller through its bank account associated with “PaisaPay” system. “PaisaPay” service thus eliminates the delay and hassle of a conventional cheque/ demand draft payment mechanism.
Further, one of the group companies of the Complainant, eBay International AG got the domain name <paisapay.co.in> registered in its name on April 13, 2006. The domain name <paisapay.com> was registered by the Complainant’s parent company eBay Inc. on October 2, 2002. In addition, the Complainant has 40 other domain name registrations with the word “paisa pay”, including <paisapay.com>. The said trademarks/service marks have come to be exclusively identified and associated with the Complainant.
Thus, the disputed domain named <paisapay.org> is very much identical or confusingly similar to the name and trademarks of the Complainant.
In relation to element (ii) of paragraph 4(a) of the Policy, the Complainant contends that the Respondent (as an individual, business, or other organization) has not been commonly known by the domain name <paisapay.org>. The acts of the Respondent constitute infringement/passing off of trademark of the Complainant. Further, the Respondent is not making a legitimate or fair use of the disputed 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 contends that the Respondent has no rights or legitimate interests of the respondent in the disputed domain name.
Regarding the element (iii) of paragraph 4(a) of the Policy, the Complainant contends that “paisapay” is a coined word which has no denotative meaning. The PAISAPAY trademark/service mark is inherently distinctive. The main object of registering the domain name <paisapay.org> by the Respondent is to attract Internet users, for commercial gains to its website, by creating a likelyhood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the website.
The Complainant states 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. Zhoulai, 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 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 <paisapay.org>. Indian currency consists of two parts, namely “rupee” and “paisa”. “Paisa” is the lowest unit of the Indian currency just as cents in the case of United States Dollars and pence in the case of United Kingdom Pounds. “Pay” is an English word. Further, words or expressions “paisa Pay” and “Paisa pay” and “paisapay” are identical, have the same meaning and are inherently distinctive.
The Respondent has acquired the disputed domain name on December 7, 2010. The trademark PAISAPAY was registered by the Complainant in the year 2002. The predecessor of the Complainant Baazee.com India Pvt. Limited filed trademark applications in respect of the trademark PAISAPAY. The said applications were granted registrations in India by the Registrar of Trade Marks on May 14, 2003. The trademark PAISAPAY was registered under the Certificate of Registrations Nos. 1198993 and 1198994 respectively in classes 9 (computer, computer programmes, computer softwares and web based programmes, etc.) and in class 16 (printed matter, namely electronic publications, books, periodicals, computer hardware, computer software, computer peripherals, computer related services, etc.).
Thereafter, in 2004 the eBay Inc. acquired Bazee.com India Private Limited and all rights in the trademark PAISAPAY vested, and currently vest, with the Complainant. The Complainant has taken steps to record the change with the Trade Marks Registry in India. The trademark PAISAPAY is also pending registration under classes 35, 36 and 38 and 42.
The Internet users, who enter the domain name <paisapay.org>, enter the same with the intention of visiting the site of the Complainant, believing that it is associated/ affiliated with the Complainant. Thus, the Panel finds that the domain name is confusingly similar to the registered trademark of the Complainant. Paragraph 4(a)(i) of the Policy is satisfied
B. Rights or Legitimate Interests
According to the Complaint, the Complainant has not licensed or otherwise permitted the Respondent to use its name or trademark or to apply for or use the domain name incorporating said name.
According to Paragraph 4(c) of the Policy, the Respondent may demonstrate its rights to or legitimate interests in the disputed 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 disputed domain name or a name corresponding to the disputed 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 disputed 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 disputed 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 a bona fide offering of goods or services. PAISAPAY is the mark of the Complainant. It is evident that the Respondent has no legitimate interest in the disputed domain name. As such the Complainant has made a prima facie case that the Respondent lacks rights and legitimate interests in respect of the domain name. Consequently the burden of production shifts to the Respondent to show it has rights or legitimate interests in the domain name.
Further, the Complainant has not licensed or otherwise permitted the Respondent to use its name or trademark or to apply for or use the domain name incorporating said name.
See also Pavillion Agency Inc., Cliff Greenhouse and Keith Greenhouse v. Greenhouse Agency Ltd., and Glenn Greenhouse, WIPO Case No. D2000-1221.
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. Paragraph 4(a)(ii) of the Policy is satisfied.
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 Panel is satisfied with the contention of the Complainant that the above circumstances are present in this case. There are circumstances indicating that the Respondent has intentionally attempted to attract, Internet users to its websites, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its websites.
Further, in this Panel’s view, the registration of the domain name < paisapay.org> by the Respondent cannot be incidental noting the notoriety of the Complainant’s trademark. The intention of the Respondent appears to be primarily to register the domain name so as to offer it for sale to the Complainant or to the Complainant’s competitors for valuable consideration. Therefore, the registration of the disputed domain name is in bad faith. The Panel further notes that the disputed domain name is not actively used. This apparent lack of so-called active use of the disputed domain name does not as such prevent a finding of bad faith.
This and other evidence submitted by the Complainant, which were not denied by the Respondent, leads to the presumption that the disputed domain name in dispute 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. Paragraph 4(a)(iii) of the Policy is satisfied
In light of the forgoing findings, namely, that the 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 domain name, and that the domain name was registered in bad faith and is being used in bad faith, in accordance with Paragraphs 4(i) of the Policy and Rule 15 of the Rules, the Panel orders that the domain name <paisapay.org> be transferred to the Complainant.
Vinod K. Agarwal
Dated: April 12, 2011