WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Speakasia Online Pte. Ltd. v. Gagandeep Randhawa
Case No. D2011-1317
1. The Parties
The Complainant is Speakasia Online Pte. Ltd. of Singapore, Republic of Singapore, represented by A.K.Singh & Co, India.
The Respondent is Gagandeep Randhawa of Mumbai, India.
2. The Domain Name and Registrar
The disputed domain name <speakasiaonline.biz> is registered with Network Solutions, LLC.
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 Network Solutions, LLC a request for registrar verification in connection with the disputed domain name. On August 1, 2011, Network Solutions, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, 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. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 1, 2011.
The Center appointed John Swinson as the sole panelist in this matter on September 6, 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 Speakasia Online Pte. Ltd., a company incorporated and registered in Singapore. The Complainant Company was incorporated on December 15, 2006.
The Respondent is Gagandeep Randhawa of Mumbai, India. Little information is known about the Respondent and a Response was not filed.
The disputed domain name was registered on February 4, 2010.
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 <www.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 relies on cases which provide that despite the Complainant not having registered trade mark rights, if it can demonstrate common law trade mark rights, the Complainant may still succeed (see e.g., Steven Rattner v. BuyThisDomainName (John Pepin), WIPO Case No. D2000-0299).
The disputed domain name is identical to the Complainant’s domain name <speakasiaonline.com> which was registered prior to the disputed domain name and identical or confusingly similar to the Complainant’s marks. This is clear as the disputed domain name incorporates the Complainant’s mark in its entirety and there is nothing distinguishing the disputed domain name from the Complainant’s mark.
Rights or Legitimate Interests
The Respondent is not offering any goods or services under the disputed domain name. The Respondent is merely diverting Internet users to a third party website. 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.
Moreover, the Respondent created and registered the disputed domain name subsequent to the Complainant’s conception, adoption and use of its trade marks and domain name and launch of its website. Significantly, the use of another’s trade marks in a domain name does not confer rights or legitimate interests in favour of the owner of the relevant domain name.
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.
Since the date of registration, the Respondent has not made a legitimate non-commercial or fair use of the disputed domain name. It appears that the disputed domain name was only adopted to divert Internet users to a third party website for financial gain. Where the third party website has no connection with the Complainant, such use cannot be bona fide.
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. The registration of a domain name incorporating well known trade marks is strong evidence of bad faith and the Respondent’s conduct is reflective of dishonesty.
Moreover, by registering the disputed domain name, the Respondent has prevented the Complainant from using the corresponding domain name for its own purposes.
Further facts indicating bad faith include:
the disputed domain name resolves to a third party website, <speakindiaonline.com>;
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”; and
the Complainants’ logo, colour scheme and certain content of the Complainant’s websites are copied on the third party website resolving from the disputed domain name.
Therefore, the Respondent’s actions clearly illustrate the bad faith intention of the Respondent to block the disputed domain name and divert and attract Internet users by making them believe there is a connection or affiliation between the Complainant and the third party website. Specifically, the Respondent is attempting to attract, for commercial gain, Internet users to another online location by creating a likelihood of confusion with the Complainant’s similar domain name, such that the public are likely to falsely believe that the disputed domain name is sponsored, endorsed or authorised by Complainant.
As such, the Respondent is deceiving Internet users to take advantage of the goodwill and reputation of the Complainant. The actions of the Respondent will result in dilution of the reputation associated with the Complainant’s business and affect revenue.
The Complainant further submits that the Respondent intended to disrupt the Complainant’s business by registering the disputed domain name.
The Complainant requests that the disputed domain name be transferred to the Complainant.
The Respondent did not reply to the Complainant’s contentions.
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
The Respondent did not file a response. While this does not automatically result in a decision in favor of the Complainant, the Panel may draw appropriate inferences from the Respondent’s default. (See e.g., Tradewind Media, LLC d/b/a Intopic Media v. Jayson Hahn, WIPO Case No. D2010-1413; M. Corentin Benoit Thiercelin v. CyberDeal, Inc., WIPO Case No. D2010-0941; Mancini's Sleepworld v. LAKSH INTERNET SOLUTIONS PRIVATE LIMITED, WIPO Case No. D2008-1036; Brooke Bollea, a.k.a Brooke Hogan v. Robert McGowan, WIPO Case No. D2004-0383). Nonetheless, paragraph 4 of the Policy requires a complainant to support its assertions with actual evidence in order to succeed.
B. Identical or Confusingly Similar
The Complainant does not have any registered trade mark rights, however submits that it has unregistered trade mark rights in the relevant terms including “SpeakAsia”. The Panel also notes that the Complainant has several pending trade mark applications for a logo incorporating the term “SpeakAsia”.
In order to establish unregistered trade mark rights, the Complainants must show that the name has become a distinctive identifier associated with the Complainants or its goods and services. The decision in Fairview Commercial Lending, Inc. v. Aleksandra Pesalj, WIPO Case No. D2007-0123, is instructive when considering whether “secondary meaning” has been established and sets out the factors to consider such as, inter alia, length and amount of sales under the trade mark, nature and extent of advertising and media recognition.
The Panel finds that the Complainant does currently have unregistered trade mark rights in the terms “SpeakAsia” and potentially similar variations, such as “Speakasia Online”. The Panel notes that the legal name of the Complainant is very similar to the disputed domain name.
In finding that the Complainant has trade mark rights, the Panel relies on the evidence of public and media recognition and advertising and marketing campaigns, which were provided in the Complaint.
However, it is unclear from the Complaint when the Complainant first used its common law trade marks, and thus, when the Complainant’s rights first arose. There is little evidence provided as to length of use of the relevant trade marks, or dates of advertising and public recognition so as to establish trade mark rights as at the time of registration of the disputed domain name. Most of the dated evidence provided is dated 2011. In short, the Complainant’s evidence relating to advertising, media and events, is not dated or is only very recent.
In any event, the Panel notes that the timing of trade mark rights is not relevant to this element, but can be considered in relation to the element of bad faith (see, e.g., Reckitt Benckiser Plc v. Eunsook Wi, WIPO Case No. D2009-0239). As such, the consequences of the Complainant’s unregistered trade mark rights accruing after the registration of the disputed domain name, if that is indeed the case, need not be considered in relation to this element.
Therefore, the Panel finds that the Complainant has unregistered trade mark rights in the term “SpeakAsia”, and potentially “Speakasia Online”. In addition, the disputed domain name is confusingly similar, if not identical, to the Complainant’s common law trade marks. There is nothing in the disputed domain name to alleviate this similarity. Accordingly, the Complainant has satisfied the first element of the Policy.
The Panel notes that the Complainant appears to have asserted that simply registering its domain name entitled it to rights analogous to trade mark rights. The Complainant must establish relevant trade mark rights in order to satisfy this element. Registering a domain name is a relevant factor when considering the elements of the Policy, but registration of a domain name is rarely of itself sufficient to establish the first element of the Policy.
C. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy provides that a complainant must establish that a respondent has no rights or legitimate interests in the disputed domain name. Pursuant to paragraph 4(c) of the Policy, there are a number of ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name.
Here, the Complainant has succeeded in establishing a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. (See Section 5.A, above). Given the Respondent did not file a Response, the prima facie case established by the Complainant has not been rebutted. As such, the Complainant must necessarily succeed on this point.
Key to the Panel’s finding on this point is the fact that the disputed domain name appears to have diverted Internet users to a third party website, unaffiliated with the Complainant. This, in combination with the precise domain name chosen, indicates an absence of rights or legitimate interests in the disputed domain name on the part of the Respondent. The necessary conclusion being that the disputed domain name was selected for the sole purpose of creating a false association with the Complainant and profiting from its reputation and goodwill, and in such a case, no rights or legitimate interests can be found. (See e.g., Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415; Madonna Ciccone p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847).
Therefore, the Panel concludes that the Respondent does not have any rights or legitimate interests in the disputed domain name.
The Panel notes that currently, the website resolving from the disputed domain name displays numerous links and is seemingly operating as a pay-per-click website. However, as the Respondent did not file a Response refuting the Complainant’s assertions, the Panel accepts the claim by the Complainant that the disputed domain name previously diverted Internet users to <speakindiaonline.com>.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy enumerates several circumstances that are evidence of registration and use of a domain name in bad faith. However, the circumstances set out in the Policy are not exhaustive.
The Panel finds that on the facts presented to the Panel, the Respondent registered and used the disputed domain name in bad faith.
The Respondent registered the disputed domain name soon after the Complainant registered a similar domain name.
The Panel concludes that the legal name of the Complainant and its business were sufficiently well known in the relevant geographic area, and that the Respondent, most likely, purposefully registered the disputed domain name for the purposes of attracting customers by creating a likelihood of confusion in their minds with the Complainants’ trade marks. The Panel refers to Asian World of Martial Arts Inc. v. Texas International Property Associates, supra and finds here, as there, that “[i]t defies common sense to believe that Respondent coincidentally selected [the] precise domain [name] without any knowledge of Complainant…”. (See also, F. Hoffmann-La Roche AG v. MFS Holdings, WIPO Case No. D2010-0307.)
The Panel makes this decision despite it not deciding any trade mark rights existed at the time of registration of the disputed domain name. The Panel finds that irrespective of this, the Respondent was clearly aware of the Complainant and its business.
The same key factors discussed in section 6.C., above, are relevant to the element of bad faith. Specifically, the precise domain name chosen, indicates that Respondent was attempting to create a false association with the Complainant and divert Internet users to a third party website unaffiliated with the Complainant. Whether the Respondent received some sort of financial gain for diverting Internet users in this way is not clear, but in any event, there has been bad faith registration and use on the part of the Respondent.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <speakasiaonline.biz> be transferred to the Complainant.
Dated: September 20, 2011