WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bharatiya Janata Party (BJP) v. Iahead, Vinay KM / WhoisGuard/ Namecheap.com / Enom Inc.
Case No. D2011-0768
1. The Parties
The Complainant is Bharatiya Janata Party (BJP) of New Delhi, India, represented by Singh & Singh Advocates, India.
The Respondents are Iahead, Vinay KM of Bangalore, India, WhoisGuard of Westchester, United States of America, Namecheap.com of Los Angeles, United States of America and Enom Inc.of Bellevue, United States of America (hereinafter, the “Respondent”), represented by The-Internet-Lawyers.com, P.C, United States of America.
2. The Domain Name and Registrar
The disputed domain name <bjp.com> is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 3, 2011. On May 4, 2011 and May 9, 2011, the Center transmitted by email to NameCheap, Inc. a request for registrar verification in connection with the disputed domain name. The Center received no response from NameCheap, Inc. On May 13, 2011 the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On May 16, 2011, eNom transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name that differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 30, 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 June 3, 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 June 7, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was June 27, 2011. The Response was filed with the Center on June 28, 2011.
The Center appointed Harini Narayanswamy as the sole panelist in this matter on July 8, 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, Bharatiya Janata Party, is a leading political party in India, popularly referred to as BJP. The Complainant in alliance with other parties was in power between the years 1998 – 2004 with Mr. Atal Bihari Vajpayee as the Prime Minister and Mr. Lal Krishna Advani as the deputy. The Complainant is the biggest constituent of the National Democratic Alliance (NDA) that is currently the major opposition party in India. The Complainant owns the domain name <bjp.org> since the year 1995.
The Respondent registered the disputed domain name <bjp.com> on October 30, 1997. The disputed domain name was directly linked to the website of All India Congress Committee (AICC) but is no longer linked to the AICC website. The Respondent’s website currently displays the message: “we will be back shortly with new look and feel, Bharath Journals and Publishers Team”.
5. Parties’ Contentions
The Complainant states it was first established as Bhartiya Jana Sangh in 1951 and emerged as one of the four nationally recognized parties in the first general elections in India. In the year 1980, the Complainant states it was reorganized as the Bharatiya Janata Party and came to be known as “BJP”. Since then the party is known by its mark BJP in India and internationally. The Complainant alleges that being a political party it registered its domain name <bjp.org> under the “.org” gTLD and its website is visited by millions of party workers and its supporters. The Complainant owns other domain names such as <bjpscmorcha.org>, <bjp25.org>, and the state wings of its party have registered several domain names bearing its BJP mark. The Complainant alleges that it enjoys a mass following and several of its supporters have registered domain names such as <friendsofbjp.org>, <ofbjp.org> and <bjpnris.com>.
The Complainant asserts that BJP is a name and mark that is exclusively associated with the Complainant and carries an enormous reputation. That BJP has become a household name due to three decades of use and is entitled to a high degree of protection. The Complainant states that names of political parties are protectable as trademarks and refers to the RPC decision in Burge Vs. Haycock R.P.C 2002 (28) 553.
The Complainant states BJP is an ellipsis of its full name, taken from the first three letters of its name. This unique combination of three letters has acquired distinctiveness and secondary meaning due to continuous use over many decades. The Complainant claims common law rights in its mark and states it is entitled to bring action against a person or entity attempting to impinge upon its mark. The mark is well known not merely among Indians but the entire Indian diaspora in many countries. The Complainant contends the disputed domain name is identical to the mark in which it has rights.
The Complainant argues that the Respondent has no rights or legitimate interests in the disputed domain name, as the Complainant is the only legitimate claimant to its well-known mark that has immense reputation in India and foreign countries. The Respondent is not connected to the disputed domain name and the registration of the disputed domain name is an act of bad faith. The Respondent has not used the disputed domain name for any legitimate activity except to create links to the Complainant’s rival political party and there is no bona fide legitimate activity in connection with the disputed domain name.
The Complainant argues that the disputed domain name was registered and is being used in bad faith for the reasons that: the first Respondent has used a privacy shield to conceal its identity. The disputed domain name <bjp.com> was directly linked to the website of its rival party <congress.org.in> and the title of the page displayed: “ All India Congress Committee” (AICC). A search for the name of the Respondent’s business “Bharath Journals and Publishers” also shows up at the website of the Indian National Congress and is linked to AICC.
The Complainant states that when it conducted a Google search for “bjp.com” in September 2010 and was immediately directed to the official website of the Indian National Congress. A repeat search on March 28, 2011, showed that the hyper linking to the Congress party website has stopped and the Complainant furnishes a print out of the search result dated September 24, 2010 as evidence. The Complainant alleges that the hyper –linking stopped after a notice was sent. The use of the BJP name in the disputed domain name the Complainant fears, may be put to unlawful use and lists out several potential areas of misuse.
The Complainant cites the UDRP decision Buendnis 90 / Die Gruenen v. RJG Engineering Inc.., WIPO Case No. D2001-1111, where the domain name <diegruenen.net>, was found to be identical or confusingly similar to the name of a political party in Germany and the complainant in that case obtained the relief of cancelation of the domain name. The Complainant argues that bad faith is apparent from the Respondent’s conduct of having concealed its identity, misdirected users of the disputed domain name to its competitor and providing fictitious address and telephone details. The Complainant contends the disputed domain name registration is illegal and unlawful as the Respondent misuses the BJP mark, and requests for transfer of the disputed domain name.
The Respondent alleges that that the Complainant has not proven its case and refers to several UDRP cases to support its arguments. The Respondent argues that the UDRP was established for expedited disposal of clear cases of abuse and such abuse is not present in this case. The Respondent also argues that the Complainant has not provided proof of use of BJP as a trademark and further states that although the Complainant has provided some evidence of use of the three letters BJP, that usage of three-letter abbreviation does not establish trademark rights in favor of the Complainant.
The Respondent argues that the Complainant has not provided proof to support its claim of common law rights and does not have a registered trademark and has not provided proof of any services or products that the Complainant may market. The Respondent argues that the Complainant has not shown that the mark has achieved secondary meaning due to the efforts of the Complainant and argues that common law rights grow out of use and not from adoption of the trademark.
The Respondent states that it runs a bona fide publishing business and intends to use the disputed domain name in connection with the said business after the dispute is resolved. The Respondent states that at present he has posted a message on the website stating: “We will be back shortly with new look and feel, Bharath Journals and Publishers Team”.
The Respondent argues that mere assertion of bad faith without supporting evidence is not valid and that the Complainant has not provided evidence of bad faith registration and use. The Respondent alleges that the Complainant is required to prove bad faith at the time of registration and of the current use of the disputed domain name. The Respondent argues that since he has rights in the disputed domain name by running a bona fide publishing business there is no bad faith use of the disputed domain name. The Respondent further argues that none of the factors mentioned under paragraph 4(b) of the Policy have been violated. As the disputed domain name consists of only three letters the Respondent argues it is free to use the three letters and draws an analogy with other cases where the use of common terms was found legitimate use. The Respondent submits an affidavit of K.M Vinay, the fourth Respondent, who is the owner of Bharath Journals and Publishers Team business and a certificate under the Shops and Establishment Act, dated July 30, 2008 for the said business.
The affidavit of K.M Vinay dated June 29, 2011 states that he has a business under the name of “Bharat Journals and Publishers Team” and will continue to expand and utilize the domain name for this business as soon as this dispute is concluded. That he or his associates have no intention of misleading Internet users for commercial gain or to tarnish any alleged trademark/ service mark, or attempted to sell any domain name or prevent the owner of a trademark from reflecting the mark in a corresponding domain name or engaged in a pattern of such conduct. The Respondent finally states that in registering the domain name there was no intent to disrupt the business of the Complainant or any competitor or to create a likelihood of confusion with any alleged mark as to the source, sponsorship, affiliation or endorsement of a website or location or of a product or service on a website or location.
The Complainant filed a reply to the Respondent’s response and argues that the Response was filed a day late and ought not to be permitted. The Complainant states the reason for filing the supplemental submission was due to suppression of Respondent’s true identity and the nature of its business. As the Complainant could not have reasonably anticipated the disclosures made by the Respondent in its response at the time of the filing the Complaint, a reply to the Respondent’s averments was necessary.
The Complainant denies that it failed to establish a clear case of abuse in the present case and emphasizes that being one of the biggest political parties in India, the BJP acronym is well known and that it has established rights in the name. The Complainant refers to innumerable media reports and websites that allude to the Complainant as BJP, and states that if it were to file all references to BJP in the media it would run into millions of pages.
The Complainant further argues that the fourth Respondent ought to have known of the Complainant’s BJP mark as its response discloses that it is a resident of the city of Bangalore in the State of Karnataka, India. The Complainant’s party is the ruling party in the State of Karnataka since the year 2008 and prior to that it was part of the ruling coalition in that state. The Complainant emphasizes that a Google search for the business name of the fourth Respondent still continues to show “All India Congress Committee” as the first search result and thereby causes confusion and misleads Internet users. The Complainant also discusses and distinguishes the cases referred to by the Respondent in its Response.
The Complainant rebuts the Respondent’s allegation of not providing sufficient proof of its common law trademark rights, stating there are abundant references to the Complainant’s BJP mark running into millions of pages. The Complainant files print outs of some websites, articles and news reports and its election manifestos from the year 1984 and 2009 and provides links to the websites: List of former Lower House of Parliament of India (Lok Sabha) , Current leader of the Opposition in the Lok Sabha, Party wise past members of the Lower House of Parliament of India (Lok Sabha), Election Analysis Official Website of the Election Commission of India, Profile page of Chief Minister of Gujarat state on the official website of the State Government, Election Results for the year 2008 in the State of Karnataka.
The Complainant asserts that it is false to suggest that the BJP mark is derived from two generic words and asserts that its rights in the BJP mark has grown out of use and not out of adoption as alleged by the Respondent. The Complainant states that it has proven its rights in the mark and that the disputed domain name is identical to its mark. The Complainant asserts that it has made a prima facie case that the Respondent has no rights, whereas the Respondent has failed to meet its burden of proving any rights in the name. The Respondent has not filed any evidence to support its contentions except for a registration under the Shop and Establishments Act, which does not show or prove or show any activity. Further, there is no content on the website linked to the disputed domain name and the only use it seems to be put to is to redirect users to the All India Congress Committee (AICC) a political party competing with the Complainant and such use is not a bona fide business.
The name adopted by the Respondent appears to be merely to camouflage the illegal activity of registering the domain name argues the Complainant as a name search reveals no such entity or company exists. The list under paragraph 4(b) is not an exhaustive list under the Policy, and the Complainant asserts it has provided sufficient material to establish bad faith registration and use of the disputed domain name. Other circumstances that show bad faith are: that the Respondent is of Indian origin and ought to be aware of Complainant’s mark and the Respondent resides in a city where the Complainant runs the government.
The Complainant alleges that the Respondent has not provided evidence of actual or contemplated good faith use and has concealed its identity. Further, there is no explanation why the disputed domain name is redirected to the Complainant’s rival political party or why the search for the Respondent’s name leads to the website of the AICC. The Respondent has stated that two notarized affidavits are filed whereas only one has been filed. As the affidavit of the Respondent is not notarized it has no legal veracity argues the Complainant and further, the Respondent has not disclosed its complete identity in the affidavit. The Complainant submits its remarks and rebuttals to statements in the Respondent’s affidavit and points out that the ellipsis of the Respondent’s business name “Bharat Journals and Publishers Team” ought to be BJPT and not BJP.
The Respondent filed a reply to the Complainant’s supplemental submissions on July 20, 2011 that specifically addresses two points raised by the Complainant. First, regarding the Complainant’s allegation that the Respondent did not operate a publishing business and has not filed sufficient material in connection with its business. To defend this allegation, the Respondent filed screen shots of the archived images from the Way Back Machine at <archive.org> for the disputed domain name. The screen shots show the contents of the website linked to the disputed domain name for the period December 2008 till February 2009. The Respondent states that the images of the website prove that the Respondent has used the disputed domain name for publishing purposes and that publishing services were provided on the disputed domain name by the Respondent.
Second, regarding the allegation of the redirection of the disputed domain name to AICC, the Respondent states that it was unaware of the redirection. The reason stated by the Respondent is that its account was hacked and the redirection took place without the Respondent’s knowledge. As evidence of its account being hacked, the Respondent has submitted a copy of an email, dated October 5, 2010 that the Respondent received from the registrar of the domain name. The email states:
We have received an alert that your account may be possibly hacked. We will need to verify your ownership.
Please provide us with the list of accounts used for payment this year and the scanned copy of your photo ID sent as attachment in .pdf format.
The Respondent further states that when it discovered the hacking and redirection, it stopped the redirection. The Respondent adds that for sometime he stopped all activity on the website fearing some improper allegations may be made due to the misdirection of the dispute domain name. The Respondent argues that based on the submissions made it has established that the Complainant has not fulfilled the three requirements under paragraph 4 (a) of Policy and that the complaint ought to be denied.
6. Discussion and Findings
The Panel has considered the supplemental submissions made by the parties and finds the Complainant has given a valid reason to file the supplemental submissions. The disclosures made in the Respondent’s Response did raise some new facts that may have been unknown to the Complainant at the time of filing the Complaint. The Panel therefore accepts the supplemental submissions of the Complainant and in order to give the Respondent a fair chance to defend its case, the Respondent was given a week’s time to file its reply to the Complainant’s supplemental submission.
The doctrine of latches and delay in bringing action does not apply to trademark infringement actions, UDRP cases are deemed to be similar to trademark injunctive remedy. Delay in bringing action under the UDRP is not fatal to the complaint. See Tax Analysts v. eCorp, WIPO Case No. D2007-0040 (There is no limitation period under the Policy and the doctrine of latches and acquiescence does not apply).
The Policy is intended for abusive domain name registrations and to obtain the remedy of transfer of the disputed domain name, the Complainant has to establish three elements under paragraph 4(a).
(i) The disputed domain name is identical or confusingly similar to a 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 was registered and is being used in bad faith by the Respondent.
A. Identical or Confusingly Similar
The first element under paragraph 4(a) of the Policy requires the Complainant to prove the disputed domain name is identical or confusingly similar to a mark in which it has rights.
The Complainant has provided documents that show extensive media coverage, unsolicited media references and published news reports referring to the Complainant as BJP over a period of time. The Complainant has provided evidence of third party websites and public websites that refer to the Complainant as BJP. Based on this material it is clear that the public has come to associate the term BJP with the Complainant’s political party through long and continuous use. The Complainant has therefore successfully established in these proceedings that it is extensively referred to as BJP by the media and by the public at large. The Panel therefore finds the Complainant has established that it has acquired distinctiveness and secondary meaning in BJP as an unregistered trademark.
Under the Policy, social organizations such trade unions and political parties are recognized as having common law rights in their unregistered trademark based on length of use or of widespread use of their name. See for instance Workers United Union v. Wesley Perkins, WIPO Case No. D2010-0738 (where it was found that 150,000 members of the union knew of the mark and was considered adequate evidence of use of the name to develop goodwill and reputation to be treated as an unregistered trademark under the Policy). As mentioned by the Complainant the decision in the case Buendnis 90 / Die Gruenen v. RJG Engineering Inc, supra, the domain name <diegruenen.net> was found to be identical or confusingly similar to the name of the German political party. The Panel finds that similar to the Buendnis 90 / Die Gruenen v. RJG Engineering Inc, supra,, that books, articles and other published material are being distributed under the BJP name by the Complainant from its website at <bjp.org>. The Panel also notes that the Complainant has referred to the RPC case, Burge Vs. Haycock 2002 R.P.C (28) 553, where it was held that the names of political parties are protectable under trademark law.
The Complainant has shown substantial use of the abbreviation BJP as a trademark in order to claim rights and secondary meaning in the abbreviation. The evidence provided by the Complainant include documents that shows the mark is widely used in an abbreviated form by independent commentators in the media and by the public that refer to the Complainant only by its abbreviated form. This is sufficient to establish trademark rights in the three-letter abbreviation of the Complainant’s name.
Marks consisting of only letters can be strong marks subject to the length and extent of use of the mark. See for instance Société Nationale des Chemins de Fer Français, SNCF v. Mark Tatum, WIPO Case No. DCO2010-0053, (Where Société Nationale des Chemins de Fer Français, popularly known by its abbreviation SNCF was held to be a protectable mark under the Policy). Other examples of domain names consisting of just three letters are: TCN, Inc. v. 3v Networks, WIPO Case No. D2008-0134, (<tcn.com>) (where the complainant’s common law rights in the TCN mark was found identical to the TCN trademark), or in Imperial Chemical Industries PLC v. Rarenames, WIPO Case No. D2006-0124. (<icidulux.com>) where the three letter acronym ICI of the complainant’s name Imperial Chemicals Industries was recognized as a protectable mark due to the long and extensive of use of the mark by the complainant.
Based on the evidence and the facts and circumstances in the present case, the Panel finds the trademark BJP is well known in connection with the Complainant. The Panel finds the Complainant has established common law rights in its unregistered trademark BJP and that the Complainant has continuously and extensively used its BJP mark. The Panel finds the disputed domain name <bjp.com> is identical to the BJP mark in which the Complainant has rights.
For all the reasons discussed the Panel finds the Complainant has satisfied the first element under paragraph 4(a) of the Policy
B. Rights or Legitimate Interests
The second element under paragraph 4(a) of the Policy requires the Complainants to make a prima facie case that the Respondent lacks rights and legitimate interest in the disputed domain name. Once such a prima facie case is made, the burden shifts to the Respondent to demonstrate rights and legitimate interests in the domain name. See paragraph 2.1 WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition,(WIPO Overview 2.0)1.
The Complainant has argued that the Respondent has not used the disputed domain name for any legitimate activity except to create links to the Complainant’s rival political party and Respondent has not submitted sufficient evidence of bona fide legitimate activity under the name. As the Respondent is not authorized to use the Complainant’s mark, the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides a non-exhaustive list of circumstances by which the Respondent can demonstrate rights or legitimate interests in the disputed domain name. The Respondent can establish under Paragraph 4(c) of the Policy that:
(i) The Respondent has used or made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services;
(ii) The Respondent has been commonly known by the disputed domain name;
(iii) The Respondent is making legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers or tarnish the trademark of the Complainants.
Under Paragraph 4(c) the onus on the Respondent is to establish that its ownership and adoption of the domain name was in good faith and that it does not intentionally violate any third party rights. The Respondent has argued that he has shown “demonstrable preparations” to use the disputed domain name in connection with its publishing business, which is a bona fide offering of services. The term “demonstrable preparations” in paragraph 4(c)(i) is subject to interpretation of the expression “bona fide”. See Scania CV AB v. Leif Westlye, WIPO Case No. D2000-0169. In discussing the application of paragraph 4(c)(i), it is well established that it is meant for clear cases of non-infringing use by the Respondent and not every prior use in domain name disputes constitutes a bona fide use: See Madonna Ciccone, p/k/a Madonna v. Dan Parisi and "Madonna.com", WIPO Case No. D2000-0847.
Whether the Respondent had adopted the business name in good faith, as an honest adopter without any prior knowledge of the Complainant’s mark is a complex issue of fact. Within the ambit of the present dispute, the Panel can only determine whether there was an honest adoption of the name in connection with domain name in dispute. Based on the material presented in these proceedings, the Panel finds it is unlikely that the Respondent was unaware of the pre-existing rights of the Complainant’s mark when it registered the disputed domain name as the Respondent resides in the city of Bangalore where the Complainant is widely known.
The Respondent has not filed any evidence in these proceedings to show that he had a business prior to 1997 to justify honest adoption of the name and registration of the disputed domain name. The documents submitted by the Respondent pertaining to its business is a certificate under Shops and Establishment Act dated July 2008. Further, there is no evidence on record to show that the disputed domain name was used during the period 1997 to 2008, and from this the Panel infers that the Respondent till 2008 passively held the disputed domain name. In its response the Respondent has stated that it proposes to the use of the website in connection with its business once the dispute is over. Mere assertion of a contemplated business plan is insufficient to establish rights and legitimate interests, particularly when contradicted by evidence of abusive conduct (Helen Fielding v. Anthony Corbert aka Anthony Corbett, WIPO Case No. D2000-1000)
Exhibit A of the Respondent’s supplemental submission shows screen shots of the archived website linked to the disputed domain name. On scrutinizing these, the Panel finds that the screen shots show some advertisements for a Hindi film on December 10, 2008 and links to news items dated February 16, 2009 and February 17, 2009. What is significant is that there appears to be little no original content on the website. The Panel is not convinced that the screen shots of the Web pages provided by the Respondent show the Respondent runs a bona fide publishing business or has used the disputed domain name in connection with the said business. Further the purported documents showing use in connection with the publishing business is provided for a very short period of a few months, whereas the Respondent has held the disputed domain name for nearly fourteen years.
As rightly mentioned by the Complainant, no information or evidence about the nature of the Respondent’s business has been provided in these proceedings. The Respondent does not mentioned what type of publishing business it runs, whether it is publishing books or does some kind of online publishing. Nor has the Respondent provided any other evidence that may prove the existence of a bona fide business such as yearly accounts or a statement of turnover, the names of books or journals published by the Respondent. For the reasons discussed, the Panel finds that the Respondent has not established that it uses the disputed domain name in connection with a bona fide offering of goods and services.
The Respondent has claimed legitimate interest in the disputed domain name as it consists of just three letters. In trying to find any rights in domain name disputes, some relevant factors considered by panels are: Prior trademark rights of the parties, the length of use and the fame associated with a well known mark in the country, likelihood of Respondent’s knowledge when adopting the name or mark or circumstances to show that the Respondent knew or had knowledge of the Complainant’s mark See The Chip Merchant, Inc. v. Blue Star Electronics, d/b/a Memory World, WIPO Case No. D2000-0474. Given the Complainant’s preexisting rights, the circumstances in the present case indicate that the Respondent was not acting in pursuance of any rights or legitimate interest when the disputed domain name was registered. Such use, under the circumstances of the present case does not show legitimate interest in the disputed domain name under paragraph 4(c) of the Policy.
For the reasons discussed the Panel is satisfied that the Complainant has made a prima facie case that the Respondent has no rights and legitimate interests in the disputed domain name as required under the second element of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
The third element under paragraph 4(a) of the Policy requires the Complainant to prove that the disputed domain name has been registered and used in bad faith.
The evidence on record shows pervasive use of the Complainant’s BJP mark by the media and the Complainant has established in these proceedings that its mark is well known among Indians. The Panel finds that the Respondent’s adoption of the domain name has been long after the Complainant has established its rights in the mark. The facts and circumstances in the present dispute indicate that the Respondent registered the disputed domain name fully knowing of the Complainants right’s in the BJP mark.
Bad faith lies in the deliberate and misleading use of another’s trademark for the purpose of diverting Internet users looking for sites associated with the owner of that trademark to the respondent’s website. See Fox News Network, L.L.C. v. Kenneth A. Young, WIPO Case No. D2003-0407. (The circumstances described in paragraph 4(b) of the Policy are no more than examples of bad faith registration and use and do not limit finding circumstances other than those described at paragraph 4(b) that amount to bad faith registration and use).
The Panel finds the circumstances of this case show that the domain name was registered by the Respondent with an intention to attract Internet users to the Respondent’s website by creating a likelihood of affiliation with the Complainant’s well known mark and to mislead users. The circumstances and evidence presented in the case indicate that the Respondent has registered the disputed domain name with the intention of attracting Internet users to create a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, which is recognized as bad faith registration and use under paragraph 4(b)(iv) of the Policy.
The Respondent has argued it had no knowledge of the disputed domain name being linked to the congress party website and ascribes this misdirection due to hacking of its account. This argument seems unconvincing as the Respondent claims it runs its business from the website it is unlikely that it has not noticed that it has been directly linked to another site. This means one of two things that the Respondent is not actively using the disputed domain name and the website linked to the disputed domain name thereby any hacking or misdirection goes unnoticed by the Respondent or that the Respondent is willfully turning a blind eye to this misdirection from the disputed domain name. As the owner and registrant of the disputed domain name the Respondent has a continuing responsibility to ensure that the domain name does not infringe any third party rights or used in any improper manner.
Respondents in previous cases have not been absolved of responsibility for links placed on their websites although such links may have been placed without the knowledge of the respondent. The ultimate responsibility is that of the respondent as the respondent is in contractual control of the disputed domain name and its website and is therefore responsible for the links on the website corresponding to the domain name. Villeroy & Boch AG v. Mario Pingerna, WIPO Case No. D2007-1912.
The Respondent has owned the disputed domain name since 1997 and from the evidence it can be inferred that the Respondent did not actively use the disputed domain name. This can be inferred from the Respondent’s statement that it was unaware of the redirection of the disputed domain name to the Congress party website. If the Respondent had indeed been using the disputed domain name in connection with a bona fide business, as it has asserted in its pleadings, it ought to have known about the misdirection to the website to the Congress party. Therefore the Respondent’s submission that it came to know of the hacking and misdirection after receiving an email from the Registrar indicates that the Respondent has passively held the disputed domain name. Further the Panel notes the current use of the disputed domain name is a passive holding as is evident from the message posted on the website and the Respondent’s admissions that it proposes to use the domain name as soon as this dispute is concluded. It is well established that passive holding of a domain name that incorporates a well-known mark under certain circumstances is recognized as bad faith registration and bad faith use of the domain name. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
The Panel also notes the record shows there has been cyber-flight when the complaint was filed, the address and telephone details provided by the first Respondent appear to be false and spurious, Further, as argued by the Complainant, the Respondent is silent about why the search for the Respondent’s name diverts Internet users to the website of its rival political party. The Panel draws adverse inference from all these factors in addition to the other facts and circumstances showing bad faith registration and use of the disputed domain name.
For the reasons discussed, the Panel finds that the Complainant has successfully established the disputed domain name was registered and is being used in bad faith.
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 <bjp.com> be transferred to the Complainant.
Dated: July 28, 2011
1 http://www.wipo.int/amc/en/domains/search/overview2.0/index last visited July 28, 2011