WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Speakasia Online Pte. Ltd. v. Ritesh Pal / MLM Hub
Case No. D2011-1316
1. The Parties
The Complainant is Speakasia Online Pte. Ltd. of Singapore, represented by A.K. Singh & Co, India.
The Respondent is Ritesh Pal / MLM Hub of Mumbai, India, represented by ADITYA & ASSOCIATES, India.
2. The Domain Name and Registrar
The disputed domain name <speakindiaonline.com> is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 30, 2011. On August 1, 2011, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On August 4, 2011, GoDaddy.com, Inc. 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 August 5, 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 August 10, 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 August 11, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was August 31, 2011. However, on August 30, 2011 the Respondent requested an extension for filing the Response due to exceptional circumstances. On August 30, 2011, the Center invited the Complainant to comment on the Respondent’s request. The Complainant replied on August 31, 2011, arguing that the extension should not be granted. Nevertheless, in accordance with the Rules, paragraph 5(d), on August 31, 2011, given the circumstances the due date for Response was extended to September 3, 2011. The Response was filed with the Center on September 2, 2011.
The Center appointed John Swinson as the sole panelist in this matter on September 15, 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.
On September 21, 2011, the Complainant requested that the Panel allow the Complainant to file a Supplementary Filing responding to the Respondent’s Response. On the same day the Respondent sent an email communication to the Center arguing that the Panel should not allow the Complainant to file any further material. The Center sent an email to the parties confirming the Rules with respect to Supplementary Filings. On September 24, 2011, the Center further confirmed that the email communications had been brought to the Panel’s attention.
4. Factual Background
The Complainant is Speakasia Online Pte. Ltd., a company incorporated and registered in Singapore. The Complainant Company was incorporated on December 15, 2006.
The Respondent is Ritesh Pal / MLM Hub. MLM Hub is listed as the registrant of the disputed domain name and Ritesh Pal as the administrative and technical contact.
The disputed domain name was registered on February 4, 2010. The disputed domain name resolves to a social networking website.
5. Parties’ Contentions
The Complainant makes the following submissions:
Identical or Confusingly Similar
The Complainant has been operating and running its business in the name of Speakasia Online Pte. Ltd. since December 15, 2006. The Complainant is an integrated online survey group in Asia. The Complainant owns the domain name <speakasiaonline.com> which was registered on January 21, 2010. The official website of the Complainant operates from this domain name. Further, the Complainant has various trade mark applications pending in numerous countries, including India, for “SpeakAsia” and other terms.
The Complainant was the first to conceive, adopt, use and promote the name “SpeakAsia” and domain name <speakasiaonline.com> in respect of an online survey group in Asia. The Complainant also notes that its marks and domain name, derived from its company name, are unique and distinctive and are, in fact, used as trade marks in relation to its business activities.
Through its advertising and media activities, the public recognizes the Complainant as the owner and user of the name “SpeakAsia”. Specifically, the Complainant has extensively promoted and advertised its services using the SPEAKASIA marks, and its domain name, through various media and incurred considerable expenditure in doing so. The Complainant has also organized various events and functions, thereby generating substantial reputation and goodwill for the Complainant and its trade marks. Importantly, the Complainant has a strong presence and considerable goodwill in India where its trade marks are well known.
Moreover, there are a large number of visitors to the Complainant’s website, generating goodwill and reputation. Relevantly, approximately 93% of visitors to the Complainant’s website are from India. However, the Complainant has a large customer base internationally that identifies and associates it with the term “SpeakAsia”.
The Complainant further asserts it has acquired unregistered trade mark rights in SPEAKASIA as it has acquired a “secondary meaning” (see e.g., Steven Rattner v. BuyThisDomainName (John Pepin), WIPO Case No. D2000-0402). The Complainant’s unregistered trade mark rights are entitled to the same protection as registered trade mark rights under the Policy (S.N.C Jesta Fontainebleau v. Po Ser, WIPO Case No. D2009-1394).
The disputed domain name is deceptively or confusingly similar to the Complainant’s domain name <speakasiaonline.com> in which the Complainant has rights on account of prior registration and use all over the world. The fact that the Complainant has also filed applications with respect to registration of the trade mark SPEAKASIA, as well as other trade marks, in India and other countries is relevant.
The disputed domain name is a blatant imitation of the Complainants prior-registered domain name. It is phonetically, visually and conceptually similar to the Complainant’s domain name and trade marks. As such, the disputed domain name would cause confusion to Internet users.
Any differences between the disputed domain name and the Complainant’s trade marks do not alleviate any confusing similarity.
Rights or Legitimate Interests
The disputed domain name is so confusingly similar to the Complainant’s trade marks that the Respondent cannot reasonably assert that it has any rights or legitimate interests in the disputed domain name.
The Respondent is not offering any goods or services under the disputed domain name and is not making a legitimate noncommercial or fair use of the disputed domain name. The Respondent is simply attempting to induce Internet users into believing that the disputed domain name and website resolving from it, is related to, or connected with, the Complainant. Therefore, it cannot be said that the Respondent’s use of the disputed domain name relates to a bona fide offering of goods or services. Also, the mere creation of a chat forum cannot constitute bona fide use.
The fact that the Respondent has copied the relevant portion of the website of the Complainant shows the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name and has adopted the disputed domain name for causing wrongful loss to the Complainant and the public and wrongful gain to himself.
Further, the Respondent is not commonly known by the disputed domain name and the Respondent has not been authorized by the Complainant to use its trade marks.
The Respondent’s use of the disputed domain name is a clear case of cybersquatting. The Respondent is attempting to take advantage of the Complainant’s substantial reputation and prominent presence on the Internet and thereby confuse the public, divert business, tarnish the reputation and goodwill of the Complainant and its marks and unduly gain to the Complainant’s detriment.
Registered and Used in Bad Faith
The Complainant submits that its domain name has gained significant recognition worldwide. The Respondent, being aware of this, has subsequently, with mala fide intention, adopted the disputed domain name, incorporating the Complainant’s marks, so as to benefit from the Complainant’s reputation and goodwill.
Given the distinctiveness of the Complainant’s mark and its extensive use in commerce, it is obvious that the Respondent has targeted the Complainant’s mark in choosing the disputed domain name. In the case of well-known trade marks, close imitation by using any part of the word, has been found to create confusion in the minds of the customer as to its source.
Further, it was the responsibility of the Respondent to ensure that prior to registration the disputed domain name did not violate third party rights.
Other facts indicating bad faith include:
“this website is a chat forum named “Speak India” which claims to operate as a “Connecting place for the Speak Asian Singapore Family members” and advises Internet users to “Join now to get information and latest updates of Speak Asia”. Therefore, it is clear that the Respondent is trying to create the impression that its website is affiliated with the Complainant; and
the website resolving from the disputed domain name contains copied material from the Complainant’s website evidencing the Respondent’s intention to defraud the public.”
Therefore, the Respondent’s actions clearly illustrate the bad faith intention of the Respondent to attract Internet users by making them believe there is a connection or affiliation between the Complainant and the Respondent’s website. This will likely result in conflict and confusion, lead to dilution of the Complainant’s reputation and negatively affect business and revenues.
The registration of the specific disputed domain name and operation of a website misrepresenting that it is sponsored by the Complainant, is a deliberate attempt by the Respondent to attract, for commercial gain, Internet users to another online location by creating a likelihood of confusion that the disputed domain name is sponsored, endorsed or authorized by the Complainant.
Moreover, as a result of the Respondent’s conduct, the Complainant has received various warning letters from people believing such conduct was done by the Complainant or its authorized representatives. This is detrimental to the Complainant’s reputation.
Finally, the Complainant contends that the sole purpose and motive of the Respondent is to sell the disputed domain name to any prospective buyer.
The Complainant requests that the disputed domain name be transferred to the Complainant.
The Respondent makes the following submissions:
Identical or Confusingly Similar
The disputed domain name is not identical or confusingly similar to the Complainant’s domain name. The possibility of confusion between these domain names does not arise as each domain name is dealing with different kinds of services.
The Complainant’s trade mark applications are not relevant as the applications are still pending and cannot prove any title of the Complainant. Such trade mark applications do no confer any exclusive rights on the Complainant, particularly when there is no similarity between the activities of the Complainant and Respondent.
Further, the Complainant registered the disputed domain name on January 21, 2010 and the Complainant cannot have earned any goodwill or reputation sufficient to have achieved unregistered trade mark rights in the disputed domain name or similar variations in that time. Moreover, the Complainant has failed to prove or established reputation or goodwill in the disputed domain name or any similar term and the Complainant vehemently refutes that the Complainant has attained a large international customer base. In any event, the Respondent’s business is not similar to the Complainant’s business.
There can be no possibility of confusion that the Respondent is affiliated with the Complainant as the Respondent has a disclaimer on its website which makes this clear and indemnifies the Respondent from the liability of any user driven content on the website.
The Respondent does not admit that the Complainant is the first adopter of the name “SpeakAsia” in respect of its services, but even if it was, this does not preclude others from using the word “speak” in combination with other words for different services.
Rights or Legitimate Interests
The Respondent has trade mark rights in its disputed domain name as it has been continuously and widely used since February 2010.
The Respondent acknowledges that it is not offering any goods or services under the disputed domain name, and is instead operating a non-commercial, social networking site that has no connection or similarity to the Complainant’s website. The Respondent’s website is a user-driven website and the Respondent does not upload any content to the site. In operating its website from the disputed domain name, the Respondent intends to bring together likeminded people, with common interests, to express and share their views on various topics.
The website resolving from the disputed domain name has become a public social network platform of 15,000 plus members, 4064 photos, 431 videos, 4074 forum topics, 1947 blogs, 206 groups with an average 700 to 1000 members signing up weekly. The Respondent incurs significant expenses in operating this website.
The Respondent’s website is growing and impacting the social network industry. The disputed domain name has become very well known. Providing such a service is legitimate and therefore the Respondent is the rightful owner of the disputed domain name. It is being used lawfully, for a noncommercial purpose.
Moreover, the Complainant launched its website on January 21, 2010, and the Respondent registered the disputed domain name on February 4, 2010 and launched its website on March 7, 2010. The Complainant changed its name from Haren Technology Pte. Ltd. to Speakasia Online Pte. Ltd. on January 19, 2010. There was only 13 days difference between the date of launch of the Complainant’s website and the date of registration of the disputed domain name and it is unlikely that within this time the Complainant’s website had become well known all over India.
Further, even today it cannot be said that the Complainant has a strong reputation as its domain name was only registered a year and a half ago and this is too short a period of time for such a reputation to be established, irrespective of usage.
Therefore, the Respondent did not select the disputed domain name in order to create a false impression of association between the Respondent and Complainant or trade off the Complainant’s reputation or trade marks and has rights and legitimate interests in the disputed domain name.
Finally, the Complainant has failed to prove that the Respondent is guilty of cybersquatting.
Registered and Used in Bad Faith
The Complainant has not gained any significant recognition either in India or in any part of the world.
Again, the fact that the Complainant changed its company name and registered and launched the disputed domain name shortly before the Respondent, demonstrates that the Respondent cannot have registered the disputed domain name with a mala fide intention to trade off the goodwill of the Complainant. Such reputation and goodwill cannot have been established within this time sand the Complainant has provided insufficient evidence in support of this.
In any event, the fact that the Complainant is being investigated for fraud is evidence that the Respondent would not want to be associated with the Complainant.
Further, the Respondent took all precautions when selecting the disputed domain name so as not to infringe or violate third party rights and was satisfied before registering the disputed domain name that it would not offend any such rights. The Complainant was not known in the market and was dealing in different services at the time the Respondent registered the disputed domain name.
Moreover, the content of the Respondent’s website does not prove any mala fide intention as the Respondent does not upload content. Users of the Respondent’s website discuss issues important to them which includes anti-corruption and direct selling information. Discussion of the Complainant necessarily occurs when users are discussing such topics. Further, any links to the Complainant’s website on the Respondent’s website are provided by users of the Respondent’s website.
Given the content of the Respondent’s site is user driven, it cannot be said that the Respondent is attempting to mislead Internet users or the public into believing it is connected with the Complainant. All content the Complainant submitted as evidence was uploaded by users of the Respondent’s website and not the Respondent.
The Respondent notes, however, that it does monitor the content of its website for improper material and will remove material if necessary. The Respondent has a disclaimer on its website and going forward intends to follow the Digital Millenium Copyright Act, United States of America notification guidelines.
Also, the letter referred to by the Complainant is not in respect of acts done by the Respondent and does not only refer to the Respondent’s website. In any event, the Respondent has removed the content the subject of the letter.
Finally, the Respondent vehemently denies the Complainant’s contention that the Respondent merely wishes to sell the disputed domain name to a prospective buyer and not use it for any lawful purpose. The Respondent has never offered to sell the disputed domain name and does not have any intention to do so.
Reverse Domain Name Hijacking
The Respondent requests that the Panel make a finding of reverse domain name hijacking.
The Complainant is attempting to adopt the disputed domain name as it is very popular and users of the Respondent’s website appear dissatisfied with the Complainant and its business and have the opportunity to discuss such issues on the Respondent’s website.
Specifically, the Respondent questions the Complainant’s integrity and notes it is currently being investigated by Indian authorities for fraud. Many Internet users have gathered on social networking sites, including the Respondent’s, to discuss such issues. It appears the Complainant wishes to curb such activity by commencing these proceedings. This is evidence of the dishonest and mala fide intention of the Complainant.
The Complainant does not have any rights or legitimate interests in the disputed domain name which has no connection to any aspects of its business, activities or website. The Respondent is an Indian national conducting its noncommercial business with a focus on India and Indians, whereas, the Complainant is a company registered in Singapore and thus it is unclear why the Complainant is focusing only on India.
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The onus of proving these elements is on the Complainant.
A. Procedural Issues
There are several procedural issues requiring consideration.
First, the Complainant sent an email on September 21, 2011, requesting to file supplementary material. The Respondent sent an email response on the same day arguing that the Complainant should not be permitted to do so. While neither party filed any further substantive supplementary material, it is worth noting that there is no obligation on the Panel to consider such material and it is at the Panel’s discretion as to whether it wishes to consider such filings.
Further, the Complainant contends that it has taken action against the Respondent for criminal offences and lodged a report with the Cyber Crime Cell Delhi. Rule 18(a) of the Policy states:
“In the event of any legal proceedings initiated prior to or during an administrative proceeding in respect of a domain-name dispute that is the subject of the complaint, the Panel shall have the discretion to decide whether to suspend or terminate the administrative proceeding, or to proceed to a decision.”
The Respondent claims to be unaware of any legal proceedings being commenced against it. Further, from the Complainant’s evidence, it is unclear whether legal proceedings have, in fact, commenced. As such, the Panel decides to proceed to a decision.
Finally, MLM Hub is the registrant of the disputed domain name and Ritesh Pal is listed as the administrative and technical contact. The Response appears to refer to Ritesh Pal as the relevant Respondent. In any event, there is a clear connection between MLM Hub and Ritesh Pal and the Panel wishes to make clear that any reference to the Respondent in this decision is a reference to both MLM Hub and Ritesh Pal.
B. Identical or Confusingly Similar
The first element of the Policy provides that a complainant must demonstrate that the disputed domain name is identical or confusingly similar to a mark in which the complainant has rights in order to succeed (paragraph 4(a) of the Policy).
This requires a panel to compare the disputed domain name against the complainant’s marks. Specifically, a panel will engage in a visual and aural comparison of the relevant trade mark with the alphanumeric string in the disputed domain name with each case being decided on its merits. In order to satisfy this test, the relevant trade mark should be easily identifiable within the disputed domain name.
Applying this test, and assuming the Complainant does own trade mark rights in the term “SpeakAsia”, the Panel finds that the disputed domain name is not confusingly similar to the term “SpeakAsia” or “SpeakAsia Online”. The Complainant does not assert trade mark rights in the term “speak” of itself. The terms “SpeakAsia” and “Speak India” are different both visually and aurally. The Panel finds that it is highly unlikely that an Internet user will suffer from initial interest confusion upon coming across the disputed domain name.
As such, the Complainant has failed to satisfy the first element of the Policy. It is thus unnecessary for the Panel to consider the remaining elements of the Policy and the Complaint must necessarily fail.
C. Reverse Domain Name Hijacking
The Respondent has requested that the Panel make a finding that the Complainant engaged in reverse domain name hijacking. However, insufficient evidence has been put before the Panel to allow it to make such a finding.
For all the foregoing reasons, the Complaint is denied.
Dated: September 29, 2011