WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Volunteering Travel Solutions Pvt Ltd. v. Puran Tours
Case No. D2011-0865
1. The Parties
The Complainant is Volunteering Travel Solutions Pvt Ltd., New Delhi, India, represented by Sagar handra Associates, India.
The Respondent is Puran Tours, Rajasthan, India, self represented.
2. The Domain Name and Registrar
The disputed domain name <volunteeringindia.org> is registered with Melbourne IT Ltd.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 18, 2011. On May 19, 2011, the Center transmitted by email to Melbourne IT Ltd. a request for registrar verification in connection with the disputed domain name. On May 19, 2011, Melbourne IT Ltd transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that 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 May 24, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was June 13, 2011. The Response was filed with the Center on June 8, 2011.
The Center appointed Harini Narayanswamy as the sole panelist in this matter on June 20, 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 “Volunteering Travel Solutions Private Limited” was incorporated in June 2009. The Complainant owns the domain name <volunteeringindia.com> from October 8, 2007.
The Respondent, Puran Tours is a registered firm since 2007, and is part of a Non-Governmental Organization (NGO) called Alliance for Education and Development Society (AEDS). The Respondent registered the disputed domain name <volunteeringindia.org> on February 24, 2009.
5. Parties’ Contentions
The Complainant states it is in the business of promoting volunteer tourism in India since 2007 and was previously called Experienz Travels, a proprietary concern owned by Mr. Saurabh Sabharwal. The Complainant claims trademark rights in the term “Volunteering India” in connection with its services. The Complainant has applied for Indian trademark registration for the term “Volunteering India” and has also acquired other domain names with the term “Volunteering India” with different extensions such as <volunteeringindia.co.in>.
The Complainant claims common law trademark rights in the mark VOLUNTEERING INDIA due to prior adoption, use and advertisements. To support its contentions it has furnished Income tax returns of its predecessor in interest Experienz Travels, for the years 2009-2010 and 2010-2011, newspaper write-ups mentioning Experienz Travels and testimonials from its customers referring to its mark VOLUNTEERING INDIA. The Complainant states it is a member of the World Youth Student and Educational Travel Confederation, which is a global non profit trade association for promoting education traveling and it is also listed on Transitions Abroad, a resource for volunteer travelers and travel companies. The Complainant states that it extensively advertises online on websites such as “www.goabroad.com”, ”www.volunteerabroad.com” and ”www.volunteerabroadworld.com”.
The Complainant states the disputed domain name is identical to the Complainant’s domain name <volunteeringindia.com>. As the disputed domain name was registered subsequent to the Complainant’s adoption of its mark and is identical to its domain name except for the gTLD “.org”, it is likely to cause confusion for customers, especially as the Respondent uses the disputed domain name for identical services as that of the Complainant.
The Complainant states the Respondent has no rights or interests in the disputed domain name as it was registered subsequent to the Complainant’s adoption of its mark in 2007. The Respondent is not known by the disputed domain name but uses the trade names “Sankalp” and “Shake Hands India”. Further, no license or authorization has been given to the Respondent to use the Complainant’s mark.
The Complainant contends the Respondent’s lack of rights and interests in the disputed domain name shows it was registered in bad faith and is being used in bad faith. As the Respondent is in the same field of business, the Respondent ought to have known of the Complainant’s mark, and is trying to disrupt the Complainant’s business. The Respondent’s other websites “www.shakehands.org” and “www.volunteersindia.org” direct web traffic to the disputed domain name. The disputed domain name is being used to intentionally attract Internet users to the Respondent’s website for commercial gain, by creating a like hood of confusion with the Complainant’s trademark and domain name and is likely to mislead customers. As the Respondent competes with the Complainant, it fears the Respondent’s site poses a threat of diverting “actual” clients away from the Complainant. The Complainant therefore requests for transfer of the disputed domain name.
The Respondent states the Complainant has failed to prove trademark rights in the term VOLUNTEERING INDIA. The Complainant’s Indian trademark application has not yet been granted trademark registration and the Respondent argues that the Complainant cannot rely on common law rights. The Respondent alleges common law rights are “an internal matter”, within Indian jurisdiction and the Complainant cannot claim protection in international jurisdiction unless the trademark has been registered under the Madrid System for the International Registration of Marks.
The Respondent argues that to claim common law trademark rights the Complainant has to prove the mark has acquired secondary meaning and is distinctive of the Complainant’s business. As many organizations offer volunteering opportunities in India, this is unlikely to be proven. As the mark consists of a descriptive word “volunteering” and a geographic name “India”, the Complainant has no exclusive rights unless the mark has acquired secondary meaning among users in any city, state or country and that the phrase “volunteering India” has become intrinsic to the business reputation or goodwill of the Complainant. The Respondent argues that geographical names, personal names and abbreviations thereof cannot be registered as trademarks under Indian trademark laws. The Complainant’s common law rights are limited, contends the Respondent, as the parties reside in different states in India.
The Respondent argues that the Complainant has not provided strong evidence of unsolicited media coverage or of consumer or third party recognition to prove that the mark has acquired secondary meaning. Selected volunteer testimonials, mostly of the current year where only a few of the testimonials use the phrase “Volunteering India”. The online news text or advertisement expenses do not provide any indication of the usage of the trademark. The Complainant has no exclusive national or worldwide rights in the phrase, “Volunteering India” and as it lacks inherent distinctiveness or acquired distinctiveness through secondary meaning the alleged trademark is not protected in common law.
The Respondent then goes on to state that the Complainant has not provided any evidence that the said trademark label existed at the time the Respondent registered the disputed domain name or that the Complainant was commonly known by the mark or the mark had acquired secondary meaning. The Respondent states that the disputed domain name was first registered in 2004, three years prior to the Complainant’s domain name and argues that no secondary meaning could have existed when the domain name was first registered as it was before the Complainant’s domain name. The Respondent has filed Annexure E to support its contentions. Annexure E allegedly shows the disputed domain name was registered by prior registrants and was first registered in the year 2004.
As the present Complaint was filed within a short span of the Complainant filing its trademark application in January 2011, the Respondent apprehends the trademark application is being misused by the Complainant to win a competitive advantage over the Respondent. The Respondent argues that proving common law rights in a mark has a much higher bar than for proving rights in a registered mark and the Complainant has not met its burden of proof.
Claiming rights and interests in the disputed domain name, the Respondent states the disputed domain name <volunteeringindia.org> and Puran Tours are an “inherit” (sic) part of a registered Non Government Organization (NGO) called Alliance for Education & Development society (AEDS) that has been in existence from December 24, 1994. The Respondent states it is also the secretary of the organization (AEDS) and that Puran Tours and was previously known as “Shake Hands International”. Puran Tours provides food, accommodation, transportation and other services to volunteers who participate in the volunteer programs of AEDS. The Respondent states that SANKALP is the Respondent’s unregistered trademark and is also widely known by its domain names <volunteeringindia.org>, <volunteersindia.org> and <shakehands.org.in> and the disputed domain name promotes the “Shake Hands India Volunteer Programs” of the NGO, AEDS.
The Respondent states that the Complainant’s company works as a commission agent for volunteers and does not have its own social welfare programs. Whereas the Respondent has been created for a social cause and not for personal benefit. It is actively involved in social welfare programs for international volunteers and does not function as a travel agent. The Respondent further states that it has been in the area of providing services of volunteering since 2006 when it registered its domain name <shakehands.org.in> on May 24, 2006, which is prior to Complainant’s business.
The Respondent states its organization has three primary domain names, <volunteeringindia.org>, <shakehands.org> and <volunteersindia.org> and the Complainant has made no objection in the past. Further, the websites do not mislead or misdirect users or claim to be the VOLUNTEERING INDIA trademark. No evidence of loss of business due to the disputed domain name has been furnished by the Complainant states the Respondent. The Respondent provides web traffic figures for the website linked to the disputed domain name for the month of May 2011 and states that only a handful of users searching for the term “Volunteering India” reach the Respondent’s website.
The Respondent provides a list of other domain names owned by the Complainant, and states that the Complainant owns thirty such domain names. The Respondent argues that just as the Complainant has numerous domain names, so also the Respondent has the disputed domain name for the bona fide reasons of promoting its services through new websites. The Respondent further states that the website inked to the disputed domain name has an original layout.
The Respondent denies bad faith registration and use of the disputed domain name and states that it was not registered to prevent the Complainant of its trademark rights. A Google search for the term “Volunteering India” does not show the disputed domain name in any of the initial results, whereas the Complainant website ranked first on the search list. The Respondent claims it registered the disputed domain primarily for its descriptive words “Volunteering” and “India” and such use is fair use. This is because when a descriptive mark is used in good faith for its primary, rather than for its secondary meaning, no consumer confusion is likely to result. As the Respondent has registered the disputed domain name to promote volunteer programs of the NGO, AEDS, the “.org” gTLD fits the requirements of the Respondent’s volunteer services. The Respondent states it did not have knowledge of the Complainant’s trademark as it was promoting volunteering activities prior to the establishment of the Complainant’s company.
The Respondent argues that it is not a competitor to the Complainant as the Complainant operates only as a commissioned travel agent of placing persons with agencies who want to volunteer in India. The Respondent states it is linked to a registered NGO whereas the Complainant is only a tour operator and works as a commission agent and therefore the Respondent is not a direct competitor to the Complainant. The Complainant has not objected for the past two years since the registration of the disputed domain name, but is now interested in gaining control of the disputed domain name for commercial benefit, the domain name is establishing a name with volunteers.
The Respondent makes a claim of reverse domain name hijacking and submits the following arguments: Complainant’s trademark application was done just a few months before filing the present case, Complainant’s registration of domain names in several countries during the current year 2011 was under privacy protection, Complainant’s change of name of the registrant for the domain name <volulenteeringindia.com> from “Experienz Travels” to “Volunteering Travel Solutions P. Ltd., just a few days of filing the present Complainant. In the past few years Complainant is aggressively registering domain names and making proxy websites with fake P.O Box addresses in various countries like New Zealand and uses a privacy service and the Complainant’s trademark application being descriptive is likely to be rejected due to descriptive nature of the mark.
The Respondent remarks that the Complainant is a financially sound company and has put the Respondent in financial burden due to legal consultation expenses for the case. The Respondent therefore requests the Panel to deny the remedy of transfer sought for by the Complainant.
6. Discussion and Findings
Supplemental Submissions by the Parties
The Panel has the discretion based on facts and circumstances of each case whether to allow or accepted unsolicited supplemental filings from the parties. See Can I Do Better Internet Corp.v. Blastapplications, WIPO Case No. D2011-0055 or Delikomat, Betriebsverpflegung Gesellschaft, m.b.H v. Alexander Lehner, WIPO Case No. D2001-1447. If there are facts that are pertinent and relevant to the case and those facts could not be included in the initial filing made by the parties due to exceptional circumstances, the Panel at its discretion may allow such unsolicited supplemental filings.
In the present case the Panel has considered the contents of the supplemental submissions filed by the parties and finds that the main issue raised in the Complainant’s supplemental filing, is that the Respondent has forged and fabricated documents shown as Annexure E. As mentioned earlier, Annexure E of the Respondent’s response pertains to the alleged prior registrations of the disputed domain name, and shows the names and other details of previous registrants of the disputed domain name including the Respondent’s registration of the disputed domain name made on February 24, 2009.
The Respondent in its reply has denied that the document Annexure E is fabricated, and states that the data shown in Annexure E is authentic. The authenticity can be verified, as each domain name has a unique identification number when it is created, this number can be used to trace the first and subsequent holders of the domain name, argues the Respondent. The Respondent provides a summary of the details of Annexure E, giving the date, the names of previous registrants of the disputed domain name and the names of the corresponding registrars:
June 20, 2004 Vinod Meena/ registrar Direct Information PVT Ltd
October 26, 2005 Unknown /registrar Direct Information PVT Ltd
October 26, 2007 Amarjeet Singh / registrar GoDaddy.com,Inc
February 24, 2009 Puran Tours / registrar Melbourne IT, Ltd.
The other submissions made by the parties in their supplemental filings: The Complainant argues that two common dictionary words can be combined to form a trademark and provides the example of the RAY BAN trademark and further argues that geographical names are capable of being trademarks through long continued use. The Complainant states that it has acquired it rights through use and the Respondent in his response has admitted this by stating that a Google search for the term “Volunteering India”, shows the Complainant is ranked first on the search list.
The Respondent in its supplemental filing states the Complainant cannot claim common law rights in its mark as there are at least three other websites running with similar business and these are : <volunteering-india.org>, <volunteeringindia.org.in>, <volunteeringindia.co.uk>. A Google search for the term “Volunteering India” returns over seven million results and therefore the term is a commonly used one and cannot be exclusive to the Complainant. The Respondent provides further arguments in support of its case, which are on similar lines as those filed in the main response.
The Panel finds that the parties had the opportunity to make these submissions in their initial submissions. The Panel does not approve of parties using supplemental filings as a means to submit “after thought” arguments. Regarding the issue of the alleged forged documents filed by the Respondent as Annexure E in its response. The Panel states that forgery claims are not entertained under UDRP proceedings. See for instance, Music Plus Television Network, Inc. v. Dennis Tzeng, WIPO Case No. D2007-1486.
The Panel finds, for the reasons discussed, that there are no exceptional circumstances that justify allowing the additional submissions made by the parties. The supplemental submissions of both the parties are disallowed.
The Panel now takes up the merits of the case:
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order of transfer of the disputed domain name:
(i) The disputed domain name is identical or confusingly similar to a trademark in which the Complaint has rights; and
(ii) The Respondent does not have any rights or legitimate interests in the disputed domain name; and
(iii) The Respondent registered the disputed domain name in bad faith and is using it in bad faith.
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 Panel has noted that the Complainant has registered the domain name <volunteeringindia.com> on October 8, 2007 and has filed a trademark application in January 2011 for the mark VOLUNTEERING INDIA. The Complainant has claimed common law rights in the mark and to support its contentions, the Complainant has filed copies of Income tax returns for Experienz Travels, for the financial years 2009-2010 and 2010-2011, newspaper write-ups that mention Experienz Travels and selected testimonials from its customers over a period of four years 2008 to 2011, where some testimonials refer to the mark VOLUNTEERING INDIA. The Complainant also states that it extensively advertises online on websites such as “www.goabroad.com”, ”www.volunteerabroad.com” and ”www.volunteerabroadworld.com”, and cites its listing in the World Youth Student and Educational Travel Confederation and Transitions Abroad to demonstrate its rights in the mark.
It is well established that a complainant having common law rights can seek remedy under the Policy, as the term “trademark” in paragraph 4(a)(i) implies both registered and unregistered marks. In numerous cases common law trademark rights are recognized and are protected under the Policy. See, The Professional Golfers Association of America v. Golf Fitness Inc., a/k/a Golf Fitness Association, WIPO Case No. D2001-0218, (even in the absence of a trademark registration many marks have been protected under the policy based on demonstrated common law rights). Contrary to the Respondent’s averments that the trademark ought to be registered under the Madrid System of International Registration of Marks, in order to seek remedy under the Policy, there are no such limitations in the Policy, see Funskool (India) Ltd. v. funschool.com Corporation, WIPO Case No. D2000-0796 (“The Policy places no limitation on the operative extent of a trademark..”).
A complainant with a common law unregistered mark can succeed only if the complainant is able to establish that the name or mark is associated with the complainant and its goods or services and has acquired secondary meaning. Relevant evidence of such secondary meaning includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition. See WIPO Overview 2.0 of WIPO Panel Views on Selected UDRP Questions, paragraph 1.7., also see Patricia Kelly v. Innovation HQ Inc., WIPO Case No. D2009-1723 (<papersnowflakes.com>), where the panel in that case discusses what a complainant may need to establish in order to prove common law rights in a mark.
If the mark consists of descriptive words it requires a greater degree of proof and the onus on the Complainant is proportionally higher for establishing rights acquired through secondary meaning in the trademark. See Jason Hachkowski v Lucas Barnes WIPO Case No. D2009-1800, (<aidsdrugsonline.com> (the more descriptive the term the more extensive must be the use to show that the mark has acquired secondary meaning to become distinctive of a particular company). Evidence to establish that the mark has acquired secondary meaning would include the length of use of the mark and the sales turnover under the mark, figures for the advertisement and promotion of the mark and the nature of advertisement, media recognition of the mark.
A trademark can be inherently distinctiveness, even if it is a descriptive word, provided it is used in an arbitrary or fanciful manner. For instance the trademark APPLE used for computers is an often cited example of an inherently distinctive trademark due to the arbitrary or fanciful use of a descriptive word. Marks that are descriptive of the goods or services are considered inherently weak marks. See Tax Analysts v. eCorp, WIPO Case No. D2007-0040. In the present case, the mark VOLUNTEERING INDIA, the Panel finds is a descriptive mark as the words describe the Complainant’s area of business. The mark adopted by the Complainant being an inherently weak mark, requires the Complainant to provide a much higher standard of proof to establish its rights.
The Income tax returns and newspaper write-up about volunteer tourism filed as documents by the Complainant refer only to the Experienz Travels and makes no mention of the trademark or of the Complainant. In its submissions, the Complainant has stated that Experienz Travels is the predecessor in interest to the Complainant, yet continues to file income tax returns for the said entity. The testimonials filed by the Complainant appear to be feed back forms filled in by volunteers and does not sufficiently establish third party recognition of the mark. The Complainant has not furnished a statement of the turnover under the mark or a statement showing the amounts spent on advertisement and promotion of its mark. The Panel finds that the documents filed by the Complainant in these proceedings are insufficient for the Panel to determine whether the mark has acquired secondary meaning.
As correctly argued by the Respondent due to the descriptive nature of the Complainant’s mark in this case, the Complainant had to provide compelling evidence to prove secondary meaning in its mark. Given that Complainant admittedly started its business in 2007, and registered its domain name <volunteeringindia.com> on October 8, 2007, the Panel finds it hard to believe on the provided evidence here that the Complainant could have established secondary meaning in its mark a period of about one and half years or two years, when the Respondent registered the disputed domain name on February 24, 2009. For all the reasons discussed, the Panel finds that the Complainant has not been able to establish its common law rights in the mark in these proceedings.
As the Complainant has failed to establish rights in the mark, it is unnecessary for the Panel to consider the other elements of confusing similarity of the mark, rights and legitimate interest or bad faith registration and use of the disputed domain name.
Reverse domain Name Hijacking
The Respondent has made a claim of reverse domain name hijacking. In order to succeed in such a claim, it is necessary for the Respondent to bring evidence that shows the complaint was filed in bad faith to deprive the registrant of its domain name, see Sydney Opera House Trust v. Triynx Pty Limited, WIPO Case No. D2000-1224 and material to show whether there was any maliciousness and recklessness in bringing the complaint, Goldline International Inc. v. Goldline, WIPO Case No. D2000-1151.
The Panel finds that the Respondent in the present case has not filed any such evidence whereby the Panel may infer under paragraph 15 (e) of the Rules that the complaint was brought in bad faith in an attempt deprive the registrant of its domain name. The Panel does not find that this is a case of reverse domain name hijacking. The Respondent’s claim for reverse domain name hijacking is declined.
For all the foregoing reasons, the Complaint is denied.
Dated: July 4, 2011