WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sharekhan Limited v. Isaac Goldstein, Er Bai Wu
Case No. D2011-1232
1. The Parties
The Complainant is Sharekhan Limited of Mumbai, India, represented internally.
The Respondents are Isaac Goldstein and Er Bai Wu of Hong Kong, China and Shanghai, China, respectively.
2. The Domain Name and Registrar
The disputed domain name <sharekhan.org> is registered with Above.com, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 19, 2011. On July 19, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 22, 2011, the Registrar 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. On July 26, 2011, the Center sent an email to the Registrar for clarification of the registrant information. On July 28, 2011, the Registrar transmitted by email to the Center the WhoIs details and the account holder details for the disputed domain name. On July 29, 2011, the Center sent an email to the Registrar asking it to clarify the identity of the entity that it considers to be the registrant of the disputed domain name and (if possible) the date on which this entity acquired the registration of the disputed domain name. On August 1, 2011, the Registrar replied via email that it cannot identify the correct registrant contact and that for all identification purposes the registrant is "Isaac Goldstein". On August 1, 2011, the Center acknowledged receipt of the Registrar’s August 1, 2011, email, noting that issue of Respondent identity or further procedural steps (if any) shall be a matter for the Administrative Panel, upon appointment. The Center sent an email communication to the Complainant on August 1, 2011, providing the additional 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 August 6, 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 Respondents of the Complaint, and the proceedings commenced on August 8, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was August 28, 2011. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on August 29, 2011.
The Center appointed Kiyoshi Tsuru as the sole panelist in this matter on September 9, 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 is Sharekhan Limited, an Indian online retail broking house incorporated on April 20, 1995, and it is the owner of the following trademark registrations in India:
Trade Mark Registration No.
October 20, 2005
October 20, 2005
December 20, 1999
The disputed domain name was registered on September 2, 2005.
5. Parties’ Contentions
The Complainant argues the following:
i. Confusingly similar
That it is the owner of the trademark SHAREKHAN, which was coined by fusing the words “share” and “khan”.
That the Complainant’s company offers its clients trade execution facilities for cash as well as derivatives on BSE, NSE, MCX-SX and USEIL depository services, mutual funds, initial public offerings (IPOs), and commodities trading facilities on MCX and NCDEX. Besides these services, the Complainant also provides market-related news, stock quotes and statistical information on equity markets, mutual funds and IPOs, among other services.
That it is the Registrant of the domain names <sharekhan.com> and <sharekhan.in> through which the Complainant provides information about and access to the share markets in India.
That it is India’s leading online retail brokerage house.
That it has been using the trademark SHAREKHAN regarding financial services continuously, openly and extensively in India.
That the trademark SHAREKHAN has become synonymous with the services and the goods of the Complainant in India and other parts of the world, since there are nonresident Indians who trade in the stocks and securities in the Indian markets.
ii. Rights or legitimate interests
That the Respondents have without any justification, adopted and used a mark, which is identical to the Complainant’s trademark SHAREKHAN.
iii. Bad faith
That the use of the trademark SHAREKHAN by the Respondents was made in connection to commercial activities.
That the Respondents’ business does not only seem to be limited to share, stock and allied goods but providing links to other sponsored websites, which demonstrates the bad faith of the Respondents in their registration and use of the disputed domain name.
The Respondents did not reply to the Complainant’s contentions.
6. Discussion and Findings
In accordance with the Policy, paragraph 4(a), the Complainant must prove that:
(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 Respondents have 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.
In the administrative proceeding, the Complainant must prove that each of these elements is present.
As the Respondents have failed to submit a Response to the Complainant’s contentions, the Panel may choose to accept as true all of the reasonable allegations of the Complaint, see Encyclopaedia Britannica, Inc. v. null John Zuccarini, Country Walk, WIPO Case No. D2002-0487.
A. Identical or Confusingly Similar
The Complainant is the owner of several trademark registrations for SHAREKHAN.
The Panel finds that the material portion of the disputed domain name <sharekhan.org> is identical to the Complainant’s trademark SHAREKHAN. The addition of the generic top-level domain “.org” is immaterial for purposes of the Policy. See Ahmanson Land Company v. Vince Curtis, WIPO Case No. D2000-0859 (citing Monty and Pat Roberts, Inc. v. J. Bartell, WIPO Case No. D2000-0300, J.P. Morgan & Co., Incorporated and Morgan Guaranty Trust Company of New York v. Resource Marketing, WIPO Case No. D2000-0035); see also Pomellato S.p.A. v. Richard Tonetti, WIPO Case No. D2000-0493; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429; and Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil, WIPO Case No. D2000-1409.
Therefore, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark. The first requirement of the Policy has been fulfilled.
B. Rights or Legitimate Interests
Policy, paragraph 4(c) sets forth the following examples as circumstances where a respondent may have rights or legitimate interests in a disputed domain name:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondents have not submitted any evidence showing preparations to use the disputed domain name with a bona fide offering of services, nor have the Respondents demonstrated that they have been commonly known as <sharekhan.org>, or that they are making a legitimate noncommercial or fair use of the disputed domain name.
In fact, the website to which the disputed domain name resolves is used as a parking, or pay-per-click, website in order to divert Internet users to websites where competitors of the Complainant offer services similar to those of the Complainant, therefore said use cannot be in good faith, or be legitimate or noncommercial, since parking models generate revenue for the holders of the domain names used in said models. In this case, revenue is generated due to the confusion of Internet users looking for the services that Complainant offers for sale, and who are being misdirected to a different site offering other similar services. See Lyonnaise de Banque v. Richard J., WIPO Case No. D2006-0142 and Wagamama Limited v. Transure Enterprise Ltd., WIPO Case No. D2008-1200.
The Respondents have not contested or commented upon the contentions made by the Complainant. Therefore, the Panel is satisfied that the evidence submitted by the Complainant sufficiently supports its contention that the Respondent has no rights or legitimate interests in the disputed domain name.
Furthermore, through the disputed domain name, the Respondents offer services that the Panel finds are confusingly like the ones that the Complaint offers, a situation that creates confusion to Internet users, making them think that there is a relation between the Respondents and the Complainant.
Therefore, this Panel finds that the Respondents lack rights or legitimate interests in the disputed domain name The second requirement of the Policy has been fulfilled.
C. Registered and Used in Bad Faith
According to paragraph 4(b) of the Policy, the following circumstances shall be evidence of registration and use in bad faith:
(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.
The disputed domain name is parked and linked to a website that the Panel finds intentionally attracts, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant’s mark SHAREKHAN, as to the source, sponsorship, affiliation or endorsement of said site, and the services offered in it. This conduct clearly falls within the scope of Paragraph 4 b)(iv) of the Policy and constitutes bad faith. See Wagamama Limited, supra; PNY Technologies Inc. v. Caribbean Online International Ltd., WIPO Case No. D2008-0544; see also Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415.
Furthermore, Internet users are likely to be confused and deceived into mistakenly believing that the Respondents’ services are offered, authorized, licensed, or sponsored by the Complainant or are otherwise connected, associated, or affiliated with the Complainant. In this case, diversion of prospective customers through the use of a pay-per-click website constitutes bad faith. See S.S.S.G. de Surveillance S.A. v. Inspectorate WIPO Case No. D2000-0025 and IndyMac, Inc. v. Financial Insurance Associates, WIPO Case No. D2000-0535.
Additionally, by using the Complainant’s trademark SHAREKHAN, the Respondents are taking advantage of the good reputation and goodwill of the said trademark to commercialized identical services.
This Panel finds that the disputed domain name has been registered and is being used in bad faith, in accordance with the Policy. The third requirement of the Policy has been met.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <sharekhan.org> be transferred to the Complainant.
Dated: September 23, 2011