World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

G. D. Vashisht and Associates Pvt. Ltd. v. PrivacyProtect.org / Jugal Kumar, Mahesh Maga , Astro Lal Kitab

Case No. D2011-2071

1. The Parties

The Complainant is G. D. Vashisht and Associates Pvt. Ltd. of Delhi, India represented by Amarjit & Associates Advocates, India.

The Respondents are PrivacyProtect.org of Nobby Beach, Australia; and Jugal Kumar, J K Sabharwal, Mahesh Naga, Astro Lal Kitab of Haryana, India, and, internally represented.

2. The Domain Names and Registrar

The disputed domain names <amritlalkitab.com>, <lalkitabamrit.net>, <lalkitabamrit.org> are registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 24, 2011. On November 24, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On November 28, 2011, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 28, 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 amendment to the Complaint on November 30, 2011.

The Center verified that the Complaint together with the amendment to 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 November 30, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was December 20, 2011. Informal communications were received from the Respondent on December 1, December 8 and December 13, 2011.

The Center appointed Mr. Maninder Singh as the sole panelist in this matter on January 11, 2012. 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 stated to be a company incorporated under the provisions of the Companies Act, 1956 of India. The Complainant is stated to be in the business of providing services relating to astrological prediction, horoscope preparation and consultation relating to astrological science. The Complainant through its predecessor-in-interest and title is carrying on the above activities and has been providing services since 1992. The Complainant is stated to have adopted the mark LAL KITAB AMRIT in the year 2009 for providing services relating to astrology etc., and the LAL KITAB AMRIT mark has been promoted as a product, from the domain name <astroscience.in> since the year 2009 and through its domain name <lalkitabamrit.in> since the year 2010. The domain name <lalkitabamrit.in> was registered by the Complainant on November 30, 2010. The Complainant has also registered various domain names under different gLTD and ccTLDs incorporating the mark LAL KITAB AMRIT. The Complainant is also stated to be providing its services and products in more than 53 countries around the world. The Complainant is stated to be promoting LAL KITAB AMRIT through its television programme “BAS AB DUKH AUR NAHIN” since the year 2009 which is stated to be aired regularly through different media channels. The Complainant is also stated to be running a call centre to provide sale services to clients relating to astrology and claims to receive more than 20,000 calls a day for getting services of the Complainant through the LAL KITAB AMRIT mark.

The second Respondent is stated to have registered the disputed domain names <lalkitabamrit.net>, <lalkitabamrit.org> in July 2011 and <amritakitab.com> in February 2011. The Respondent has argued that “Amrit Lal Kitab” and “Lal Kitab Amrit” are the words related to ancient Indian astrological science and do not represent any single person or entity like feng shui and hence cannot be related with any specific business industry. It has further stated that it is an astrological book like other religious books, e.g.,Ramayana, Gita, Bible, Kuran, Guru Granth Sahib.

In the present Complaint, the contact details of the first Respondent are not available and whenever an effort is made to know the contact details of the first respondent on WhoIs, the contact details of the second Respondent’s Registrant of the disputed domain name, viz. PrivacyProtect.org appears. It appears that the second Respondent has availed the first Respondent’s “hide contact details” services to hide its contact details. Hence, in order to facilitate decision in the complaint, the second Respondent who is the Registrant of the disputed domain names, is referred to by the Panel as the party Respondent in the present Complaint unless otherwise noted.

5. Parties’ Contentions

A. Complainant

Contentions of the Complainant regarding the disputed domain names being identical or confusingly similar to the trademark or service mark of the Complainant:

- The Complainant claims to be in the business of providing services relating to astrological predictions, horoscope preparation and consultation relating to astrological science and also to provide astrology, vastu and numerology and palmistry related services, consultations, online services, audio‐visual programmes on media, publications in print media, manufacture and trade of products like gemstones, jewelry, yantras, rudraksh, idols, figurines in and outside India. The Complainant, through its predecessor-in-interest and title, is carrying on the above activities and providing these services since the year 1992. The Complainant is stated to have adopted the mark LAL KITAB AMRIT in the year 2009 for providing astrology-related services. The Complainant states that it has been carrying on its business activities from the domain name <astroscience.in> under which also the LAL KITAB AMRIT mark has been promoted as a product since 2009.

- The Complainant is claimed to have started carrying on its business activities from the domain name <lalkitabamrit.in> since the year 2010. The said domain name <lalkitabamrit.in> is stated to have been registered by the Complainant on November 30, 2010. Besides the above domain names, the Complainant is also claimed to have registered various other domain names under different gTLDs and ccTLDs incorporating the mark LAL KITAB AMRIT. The Complainant in this regard has also attached a list of its registered domain names, as Annexure G. These domain names contain the combination of the words LAL KITAB AMRIT in different ways and also use certain other words. It is also to be seen from Annexure G that the Complainant has claimed that it has additional registered domain names such as, <lalkitabamrit.tv>, <lalkitabamrit.tel>, <lalkitabamrit.us>, etc.

- The Complainant contends that it is promoting its mark / product LAL KITAB AMRIT through television programmes which are aired daily on various channels. The Complainant claims that it is providing its products and services in more than 53 countries in the world. The Complainant contends that its LAL KITAB AMRIT mark is also promoted by its television programme titled “BAS AB DUKH AUR NAHIN” since 2009 which is claimed to be aired regularly by various media channels. This programme is stated to be aired in more than 15 countries around the world including in United Arab Emirates, Pakistan, Kuwait, Australia, Norway and the United States of America, and is claimed have a TV viewership of 1.5 crores. This programme of the Complainant is contended to be not only famous amongst television viewers but is also famous amongst Internet users (through the website, “YouTube” which had approximately 2.5 lakh viewers in the last 2 years). The Complainant also claims to have been running a call centre to provide sale services to its clients and is stated to receive more than 10,000 calls a day for LAL KITAB AMRIT. In this regard, the Complainant has annexed as Annexure N to the Complaint, the list of programmes and video clipping details.

- The Complainant claims to have priority in adoption and use of the mark LAL KITAB AMRIT in respect of variety of goods and services falling in Classes 9, 16, 35, 41, 42 & 45 of the International Specification of goods and services. The Complainant also claims to have applied for trademark registration with the Registrar of Trade Marks for registration of the mark LAL KITAB AMRIT in Classes 9, 16, 25, 35, 36, 38, 41, 42 & 45 of International Classification of Goods and Services. It also claims to have applied for the mark LAL KITAB AMRAT in classes 9, 16, 25, 35, 36, 38, 41, 42, 44 and 45 of International Classification of Goods and Services. The Complainant has further applied for the mark LAL AMRIT in classes 9, 16, 25, 35, 36, 38, 41, 42, 44 and 45 of International Classification of Goods and Services. In this regard, the Complainant has relied upon the representation sheets of the trademark applications annexed as ANNEXURE I to the Complaint.

- The Complainant also claims to have spent a considerable amount on publicity and marketing for its mark LAL KITAB AMRIT since the year 2009. In this regard, it has annexed as Annexure M, the publicity and marketing expenses report to the Complaint.

- The Complainant claims that its rights in the mark LAL KITAB AMRIT have been recognised and established against the Respondent in “the Arbitration Award” dated October 17, 2011 (Annexure H) by the Ld. Arbitrator in the matter of G.D. Vashisht & Associates Pvt. Ltd. vs. J.K. Sabharwal before the National Internet Exchange of India in respect of the domain name <lalkitabamrit.co.in> wherein it has been held that the Complainant has established its trademark rights on account of prior and longstanding use in the LAL KITAB AMRIT mark and that the Respondent is not commonly known by the name and that the Respondent has no right or legitimate interest in respect of the name which contains Complainant’s mark LAL KITAB AMRIT in its entirety. It was further held in that Award that the primary intention of the Respondent is to trade upon the reputation of the Complainant and hence it ordered for the transfer of the name from the Respondent to the Complainant.

- The Complainant claims that its mark LAL KITAB AMRIT, due to its extensive and continuous use, is associated with the Complainant only. The Complainant while alleging passing-off action against the Respondent, has placed reliance on Yahoo Inc vs. Akash Arora 1999, PTC (19) 201 (Annexure J).

- The Complainant contended that the Respondent registered the disputed domain names <lalkitabamrit.net> and <lalkitabamrit.org> on July 2, 2011 and the disputed domain name <amritlalkitab.com> on February 8, 2011, all of which the Complainant contends are confusingly similar to the Complainant’s well-known mark LAL KITAB AMRIT. It is submitted that the disputed domain names are confusingly similar to the Complainant’s mark LAL KITAB AMRIT in which the Complainant has rights and enjoys well-known reputation, goodwill and recognition amongst its users.

- The second Respondent, by registering the disputed domain names, is confusing the general public as to the source of goods and services provided by it as those from the Complainant. The goods and services of the Respondent are confusingly similar to those of the Complainant and any user availing the services of the Complainant is likely to get confused by the goods and services provided by the Respondent through its websites.

- The Complainant contends that the Respondent is in no way associated with LAL KITAB AMRIT and the contents of the disputed domain names also do not suggest that the Respondent is providing any product or services relating to LAL KITAB AMRIT in which the Complainant has rights.

- The Complainant contends that the disputed domain names redirect the Complainant’s potential customers to the Respondent’s alleged website where the personal services of the Respondent are promoted. The Complainant in this regard has annexed as Annexure O to the Complaint, the Screen Shot of the Respondent’s websites.

- The Complainant has placed reliance on the following decisions:

(i) Royale Indian Rail Tours Limited v. Divino Indian Memoirz Tours Pvt. Ltd., WIPO Case No. D2010-2107 (holding that the complainant has rights in the unregistered trademark MAHARAJA’S EXPRESS).

(ii) BC Northern Lights Enterprises Ltd. v. Sunlight Sheds, WIPO Case No. D2007-1098 (holding that the mark BC NORTHERN LIGHTS ENTERPRISES LTD. was prior to the registration of the disputed domain name was a common law trademark of the complainant).

Contentions regarding the Respondent having no rights or legitimate interests in the disputed domain names:

- The Complainant contends that it has not licensed and/or otherwise permitted the Respondent to use its trade/service mark or apply for any domain names incorporating the Complainant’s trade/service marks.

- The Complainant contends that the disputed domain names do not have any resemblance either to the name or business of the Respondent.

- The Respondent is not making a legitimate fair use of the disputed domain names.

- The Complainant alleges that the fact that the Respondent does not have any rights or legitimate interests in the disputed domain names <lalkitabamrit.net>, <lalkitabamrit.org> and <amritlalkitab.com> or the use of the mark LAL KITAB AMRIT in any other form was established in the earlier arbitration proceedings against the same Respondent herein before the National Internet Exchange of India, wherein the domain name in that proceeding was directed to be transferred to the Complainant herein. It had been held by the Arbitrator that the Complainant had established that it has trademark rights on account of prior and longstanding use in the LAL KITAB AMRIT mark, the Respondent is not commonly known by the domain name and that the Respondent has no rights or legitimate interests in respect of the domain name which contains the LAL KITAB AMRIT trademark of the Complainant in its entirety. The Complainant alleges that the primary intention of the Respondent is to trade upon the reputation of the Complainant.

- The Complainant further alleges that the Respondent does not have any rights or legitimate interests in the disputed domain names which have been registered by the Respondent with a view to cash in upon the goodwill and reputation of the Complainant’s well-known mark LAL KITAB AMRIT, having full knowledge about the Complainant’s activities and business.

- The Complainant contends that the Respondent is not commonly known by the disputed domain names and does not own any proprietary rights in the mark LAL KITAB AMRIT. The Complainant further contends that the mark LAL KITAB AMRIT was adopted and extensively used by the Complainant since 2009 and it has acquired goodwill and reputation in the minds of the general public and consumers of the services offered by the Complainant.

- The Complainant alleges that the mark LAL KITAB AMRIT is only associated with the Complainant, and the Respondent - by having registered the disputed domain names <lalkitabamrit.net>, “<lalkitabamrit.org>, and <amritlalkitab.com>, having full knowledge of the Complainant’s rights in the said mark - is trying to confuse Internet users as to the source of the goods and services.

- The Respondent by having used and registered the disputed domain names, is trying to cash in upon the goodwill and reputation of the Complainant’s well-known mark with an intent to commercially gain by misleadingly diverting the traffic from the Complainant’s website to its own which was registered by the Respondent much after the Complainant’s adoption and use of the mark LAL KITAB AMRIT. The Respondent by its acts is not only confusing Internet users but is also harming the reputation of the Complainant by offering services of inferior nature to its users, thereby affecting the Complainant in its business and thereby causing commercial loss.

- The Complainant alleges that the conduct of the Respondent clearly indicates that the Respondent does not have any legitimate interest in the disputed domain names and the same have been registered by the Respondent to trade upon the goodwill and reputation of the Complainant’s well-known mark LAL KITAB AMRIT and to divert the traffic from the Complainant’s legitimate website to the Respondent’s disputed domain names for creating confusion and deception in the minds of the Internet users.

- The Respondent has not been known by the disputed domain names or the mark LAL KITAB AMRIT. The Complainant has neither licensed nor otherwise permitted the Respondent to use the mark LAL KITAB AMRIT nor has it permitted the Respondent to register or use any domain name incorporating the Complainant’s mark.

- The Complainant in this regard has placed reliance upon the UDRP decision of Royale Indian Rail Tours Limited v. Divino Indian Memoirz Tours Pvt. Ltd., WIPO Case No. D2010-2107, wherein the panel held: “The [p]anel finds from the record that the Respondent is not known by the disputed domain name and the Respondent is not authorized to use the Complainant’s trademark. It has been established in these proceedings that the Complainant’s trademark is widely advertised and the Respondent who is not connected with the Complainant nonetheless uses the Complainant’s trademark in the disputed domain name. In the [p]anel’s view, the use of the Complainant’s trademark in the disputed domain name is likely to mislead the public and Internet users that the disputed domain name refers to the Complainant. In the [p]anel’s view, a domain name that gives a false impression to users does not confer rights or legitimate interests.”

Contentions regarding the Respondent’s bad faith registration and use of the disputed domain name:

- The Respondent has registered the disputed domain names <lalkitabamrit.net>, <lalkitabamrit.org> and <amritlalkitab.com> in bad faith with knowledge that the Complainant is the proprietor of the mark LAL KITAB AMRIT, with the clear intention of cashing in upon the goodwill and reputation of the Complainant’s mark LAL KITAB AMRIT and to prevent the Complainant from registering the corresponding domain names.

- The Complainant alleges that the Respondent has intentionally tried to attract Internet users to his websites by creating confusion or deception by incorporating Complainant’s well-known mark LAL KITAB AMRIT in the disputed domain names as well as on its websites.

- The Respondent has no justification for adopting the disputed domain names incorporating the Complainant’s well‐known mark LAL KITAB AMRIT for wrongful and illegal gains to itself.

- The Respondent is not known by the disputed domain names <lalkitabamrit.net>, <lalkitabamrit.org> and <amritlalkitab.com> or by the mark LAL KITAB AMRIT.

- The Respondent is not making a legitimate noncommercial or fair use of the disputed domain names but has been using the same with the intention for commercial gain and to mislead and divert Internet users and to injure the reputation of the Complainant’s well-known mark LAL KITAB AMRIT.

- The Complainant, with a view to show concealment of the identity and conduct of the second Respondent by the first Respondent due to bad faith use of the disputed domain names, cites the following UDRP decisions:

(i) BC Northern Lights Enterprises Ltd. v. Sunlight Sheds, WIPO Case No. D2007-1098 (holding that “The Respondent’s registration and use of the Domain Name is in bad faith as it is solely for the purpose of trading on the goodwill of the Complainant’s trademark by baiting consumers in order for the Respondent to offer them products similar to those sold by the Complainant”).

(ii) Medco Health Solutions, Inc. v. Whois Privacy Protection Service, Inc. WIPO Case No. D2004-0453, wherein the panel held: “Respondent’s efforts to disguise its true identity by using the privacy protection feature of the Registrar is yet another example of bad faith conduct.”

(iii) Marian Keyes v. Old Barn Studios Ltd., WIPO Case No. D2002-0687, (holding that the bad faith intent of the Respondent can be concluded from the fact that the Respondent tried to conceal the name of the true owner of the disputed domain name as the registrant’s details noted on the Registrar’s records was “Register.com ‐ Account Masking”).

(iv) Royale Indian Rail Tours Limited v. Divino Indian Memoirz Tours Pvt. Ltd., WIPO Case No. D2010-2107 (holding that “[g]iven these circumstances, it can be inferred that the Respondent’s registration and use of the disputed domain name was with the intention of attracting Internet users for commercial gain, due to the likelihood of confusion with the Complainant’s trademark. Such registration and use has been recognized as bad faith registration and use under paragraph 4(b)(iv) of the Policy, as it intentionally attracts Internet users to the Respondent’s website based on a false affiliation with the Complainant.”)

B. Respondent

The Respondent did not submit a formal reply to the Complaint but instead has submitted three informal communications to the Complainant, i.e., December 1, 2011, December 8, 2011 and December 13, 2011, all of which make the identical contentions below:

- The Respondent stated that “Amrit Lal Kitab” and “Lal Kitab Amrit” are the words related to ancient Indian astrological science and do not represent any single person or entity like feng shui and hence cannot be related with any specific business industry. These are like an Indian astrological book name like any other religious book, e.g., Ramayana, Geeta, Bible, Kuran, Guru Granth Sahib.

- The Respondent contended that if somebody opens a company with the name “Guru Granth Sahib”, would that mean that he could only be the owner of the domain name called “GuruGranthSahib.com”?

- The Respondent further contended that he has gone through the dispute details and he could not find the basis of the Complaint by the Complainant and could not identify any fault on his part.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Panel observes that the Complainant has contended in the Complaint that the mark LAL KITAB AMRIT is a composite mark and included in its domain names, coined and adopted by the Complainant in the year 2009 and were registered and being used continuously by it uninterruptedly in respect of providing services relating to astrology since then. It does not relate to ancient Indian astrology science or any astrological / mythological books like Ramayana and religious scriptures, Gita, Bible, Guru Granth Sahib. The Panel finds that the Complainant has furnished evidence of its rights in the mark LAL KITAB AMRIT mark and through its above-referred trademark registrations in various classes and at common law rights accrued to it through its long and substantial use of the mark. In the Panel’s view, the religious scriptures such as the Quran, Bible, Gita or Guru Granth Saheb are the names which fall in the common domain and would not get permitted to be acquired or monopolized by any single entity. The attempt on the part of the Respondent to claim parity for the disputed domain names with reference to such known religious scriptures all over the world is rejected by the Panel.

The Panel has considered the documents submitted by the Complainant in support of its claim that the Complainant has been using and has various registrations for domain names using the words “LAL KITAB AMRIT” and its variants since inception. The Panel observes that the Complainant has spent tangible sums of money for advertisement, publicity and other marketing initiatives for the trademark and name “LAL KITAB AMRIT”. The Panel finds that the Complainant has been promoting the LAL KITAB AMRIT through its television programme BAS AB DUKH AUR NAHIN on various TV channels since 2009, and the Complainant claims the programme is aired in 15 countries of the world. The Respondent has not denied any of the claims of the Complainant in this regard but has merely contended that LAL KITAB AMRIT and AMRIT LAL KITAB are generic words relating to Indian astrological science and do not relate to any person/entity.

There does not appear to be any doubt that the Complainant is the owner of the mark with “LAL KITAB AMRIT” as the distinctive element, as conceived, coined and developed by it and widely used by it. Indeed, it is a well-known registered mark / name which has been in use by the Complainant for a long time and is distinctive and identified with its owner (the Complainant) for various astrological related services. The Panel has no doubt that the Complainant has rights in the mark LAL KITAB AMRIT.

The Panel observes that past panels have found that a complainant is said to have demonstrated unregistered rights in a mark when the complainant proves that its mark has acquired secondary meaning by being used continuously, exclusively, and extensively. In this regard, the Panel finds the following decisions to be relevant:

(i) Glenn Kaino v. Fix c/o Mike Patrick, NAF Claim No. 699578 (holding common law rights where the complainant has been “…creating and displaying artwork under the GLENN KAINO mark since 1999, and that complainant’s mark has been recognized as associated with complainant’s artwork by several publications in the national media.”

(ii) BroadcastAmerica.com, Inc. v. Cynthia Quo, WIPO Case No. DTV2000-0001 (holding that the complainant has common law rights in BROADCASTAMERICA.COM, given extensive use of that mark to identify the complainant as the source of broadcast services over the Internet, and evidence that there is wide recognition with the BROADCASTAMERICA.COM mark among Internet users as to the source of broadcast services).

The Panel observes that the disputed domain names <lalkitabamrit.net> and <lalkitabamrit.org> were registered on July 2, 2011 and <amritlalkitab.com> was registered on February 8, 2011, i.e., long after the use and registration by the Complainant – incorporating / using the Complainant’s mark LAL KITAB AMRIT, by adopting Complainant’s mark and/or twisting it and thereafter adding the generic top-level domain (“gTLD”) “.net”, “.org” and “.com” to it. As further observed under the third element, this has been done by the Respondent for creating a likelihood of confusion as to the source, connection, sponsorship, affiliation and endorsement of the Respondent's website. The disputed domain names are not sufficiently different from the Complainant’s mark and the disputed domain names remain confusingly similar to the trademark/name LAL KITAB AMRIT of the Complainant.

The Panel finds it useful to refer, in this regard, to relevant UDRP decisions. In the case of Sporty's Farm L.L.C. vs. Sportsman's Mkt., Inc., 202 F.3d 489 (2d Cir. 2000), cert. denied, 530 U.S. 1262 (2000), it had been held that – “For consumers to buy things or gather information on the Internet, they need an easy way to find particular companies or brand names. The most common method of locating an unknown domain name is simply to type in the company name or logo with the suffix .com.”).

Similarly, in the case of Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, it had been held that - “The fact that a domain name wholly incorporates a complainant’s registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy despite the addition of other words to such marks”.

The Panel agrees with these precedents and observes that the Complainant’s LAL KITAB AMRIT mark has acquired secondary meaning. Hence, the Panel finds that the Complainant owns common law rights in the LAL KITAB AMRIT mark pursuant to Policy 4(a)(i).

The Panel further observes that the disputed domain names are identical or confusingly similar to the Complainant’s LAL KITAB AMRIT mark. The Panel also observes that the disputed domain names do not differ from the Complainant’s mark by twisting the mark and the addition of the generic top-level domain (“gTLD”) “.net”, “.org” and “.com.” Prior UDRP panels have found that a disputed domain name is identical to a complainant’s mark if the only difference is the removal of a space and the addition of a gTLD.

(i) Hannover Ruckversicherungs-Aktiengesellschaft v. Hyungki Ryu, NAF Claim No. FA 102724 (holding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”);

(ii) George Weston Bakeries Inc. v. Charles McBroom, NAF Claim No. FA 933276 (holding that eliminating the space between terms of a mark still rendered the <gwbakeries.mobi> domain name identical to the complainant’s GW BAKERIES mark).

The Panel also observes that the disputed domain names are identical or confusingly similar to the Complainant’s “LAL KITAB AMRIT” mark because they contain the Complainant’s entire mark and add a gTLD. The Panel finds that the disputed domain names are confusingly similar to the Complainant’s mark under Policy 4(a)(i). In this regard, the Panel cites the following decisions:

(i) Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (holding that “The fact that a domain name wholly incorporates a complainant’s registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy despite the addition of other words to such marks”.

(ii) World Wrestling Federation Entertainment, Inc. v. Michael Rapuano aka Bobby Rogers, WIPO Case No. DTV2001-0010 (“The addition of the country code top level domain (ccTLD) designation <.tv> does not serve to distinguish [the disputed domain] names from Complainant’s marks since ‘.tv’ is a common Internet address identifier that is not specifically associated with Respondent”).

The Panel, therefore, concludes that the Respondent’s disputed domain names <lalkitabamrit.net>, <lalkitabamrit.org> and <amritlalkitab.com> are identical or confusingly similar to the Complainant’s registered and unregistered mark LAL KITAB AMRIT under Policy 4(a)(i).

B. Rights or Legitimate Interests

The Panel has no doubt that the disputed domain names incorporate the well-known and famous trademark / domain names LAL KITAB AMRIT of the Complainant by twisting the mark and thereafter adding the gTLDs “.net”, “.org” and “.com” to it. The Respondent has chosen not to submit a formal response (however, the Respondent has submitted informal communications dated December 1, December 8 and December 13, 2011) to contradict the case of the Complainant or give a cogent response and/or documents to prove and show that the Respondent has registered the disputed domain names as it has legitimate rights in it. The Panel observes that the Complainant has made out a prima facie case proving its rights in the trademark / names LAL KITAB AMRIT and established it’s the goodwill and reputation in the mark/name. The Panel is of the view that such an attempt on the part of the Respondent is to create confusion and to cash on / ride over the name, goodwill and reputation of the Complainant. The Respondent is apparently attempting to extract commercial benefits for itself at the cost of the Complainant by adopting and having registered confusingly similar domain names. The Panel has little difficulty in accepting that the Respondent failed to prove its bona fide use of the disputed domain names as it has failed to rebut to the contentions made by the Complainant.

The Panel has, therefore, little doubt in its mind that the Respondent has no rights or legitimate interests in the disputed domain names, and the Complainant has succeeded in establishing the second element of the test in paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

The Panel observes that it is the contention of the Complainant that the disputed domain name has been registered by the Respondent after having full knowledge of the Complainant’s mark, and is being used in bad faith by the Respondent. Since the Respondent has not submitted a formal reply to the contentions raised by the Complainant in its Complaint and has merely stated in his letters that “Amrit Lal Kitab” and “Lal Kitab Amrit” are words related to ancient Indian astrological science and do not represent any single person or entity, the Panel has no hesitation in accepting the contention of the Complainant that being fully aware of the commercial value and significance of its mark, the Respondent has attempted to grab the disputed domain names and registered them much after the registration and use of the Complainant’s mark and domain names in order to take commercial advantage of the Complainant by riding over the substantial goodwill and reputation of the Complainant in the disputed domain names.

The Panel is also of the view that the domain names of the Complainant using its trademark LAL KITAB AMRIT, are well known and there is every likelihood of Internet users of the disputed domain names of the Respondent believing that there is connection, nexus, affiliation or association between the Complainant and the Respondent thereby extracting commercial gains to Respondent and further having the effect of disrupting the business of the Complainant.

The Panel, therefore, finds that the disputed domain names were registered and are being used in bad faith by the Respondent and the Complainant has succeeded in establishing the third element of paragraph 4(a) of the Policy.

7. Decision

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 names, <lalkitabamrit.net> <lalkitabamrit.org> and <amritlalkitab.com> be transferred to the Complainant.

Maninder Singh
Sole Panelist
Dated : January 23, 2012

 

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