WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
M/s Genpact Limited, M/s Genpact India v. Milan Kovac / Genpactindia.com Privacy--Protect.org
Case No. D2012-0306
1. The Parties
Complainants are M/s Genpact Limited (“Complainant No. 1”) of Bermuda, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland, and M/s Genpact India (“Complainant No. 2”) of Delhi, India (collectively also referred to as the “Complainants”), represented by Saikrishna & Associates, India.
Respondent is Milan Kovac of Bratislava, Slovakia / Genpactindia.com Privacy--Protect.org of Shanghai, China.
2. The Domain Name and Registrar
The disputed domain name <genpactindia.com> is registered with Hebei Guoji Maoyi (Shanghai) LTD aka HEBEI INTERNATIONAL TRADING (SHANGHAI) CO., LTD dba HebeiDomains.com. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 14, 2012. On February 15, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 16, 2012, 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. The Center sent an email communication to Complainants on February 27, 2012 providing the registrant and contact information disclosed by the Registrar, and inviting Complainants to submit an amendment to the Complaint. Complainants filed an amended Complaint on March 20, 2012. On February 17, 2012, the Center transmitted an email to the parties in both Slovak and English language regarding the language of proceedings. On February 24, 2012, Complainants confirmed their request that English be the language of proceedings. Respondent did not comment on the language of proceedings by the specified due date.
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 Respondent of the Complaint, and the proceedings commenced on March 20, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was April 9, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 10, 2012.
The Center appointed Stephanie G. Hartung as the sole panelist in this matter on April 18, 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
Complainants operate in the field of business process and technology management.
Complainants have submitted evidence that a Genpact Global Holdings Sicar S.a.r.l. of Luxembourg is the registered owner of a number of trademarks relating to the designation GENPACT, e.g.:
- Word mark GENPACT, Trademark Registry of India, Registration Number: 1363160, Application/Registration Date: June 10, 2005; Status: Active;
- Word mark GENPACT, Trademark Registry of New Zealand, Registration Number: 730675, Application/Registration Date: June 3, 2005; Status: Active;
- Word mark GENPACT, United States Patent and Trademark Office (USPTO), Registration Number: 3610355, Registration Date: April 21, 2009; Status: Active.
The disputed domain name <genpactindia.com> was registered on March 29, 2006.
Complainants have submitted further evidence that on December 29, 2011, the disputed domain name redirected to a typical Pay-Per-Click (PPC) website at “www.genpactindia.com”.
Complainants request the disputed domain name to be transferred to Complainant No.1.
5. Parties’ Contentions
Complainants report that Complainant No. 1 delivers its technology and knowledge services from a global network from more than 51 delivery centers in 17 countries including India, China, the Philippines, Romania, Hungary, Poland, South Africa, the Netherlands, Spain, Morocco, Mexico, Guatemala, the United States of America, Columbia, Brazil, the United Arab Emirates as well as Japan. Complainant No. 2 is claimed to be the Indian subsidiary of Complainant No. 1 which promotes and carries on the business of the latter in the territory of India.
Complainants further claim that Genpact Global Holdings Sicar S.a.r.l. of Luxembourg duly assigned all its rights, title and interest, for all territories of the world, in the intellectual property assets including trademarks/service marks along with the goodwill owned by it to Complainant No. 1 by a deed of assignment dated July 16, 2007.
Complainants assert to have used the trademark GENPACT continuously and extensively already from the year 2005 by promoting, advertising and popularizing their services under the GENPACT trademark. Complainants point to the fact that they also maintain a formidable presence over the Internet at the website “www.genpact.com”, the domain name of which was registered by Complainant No. 1 already on March 3, 2005. Moreover, Complainants claim that the Genpact group of companies owns a number of further domain names relating to the GENPACT trademark, inter alia: <genpactindia.co.in>, <genpactindia.in>, <genpactchina.com>, <genpact.us>.
Complainants argue that the disputed domain name is at least confusingly similar to the GENPACT trademark because: (1) the disputed domain name incorporates the GENPACT trademark in its entirety and (2) the country name “India” does not add distinctiveness to the disputed domain name and does not avoid the confusing similarity.
Complainants further suggest that Respondent has no rights or legitimate interests in respect of the disputed domain name because (1) the GENPACT trademark is a coined and fanciful term having no denotative meaning, and hence has all the trappings of an invented word and (2) the registration of the disputed domain name of March 29, 2006 is subsequent to the date of adoption of the GENPACT trademark by Complainant No. 1 since 2005 and (3) there is not even a single instance where Respondent has made a bona fide offering of goods/services under the GENPACT trademark but rather is using the disputed domain name purely to profit from squatting on the same by means of redirection to a PPC website.
Finally, Complainants claim that the disputed domain name was registered and is being used in bad faith since Respondent has intentionally attempted to attract for commercial gain, Internet users to the website at “www.genpactindia.com”, by creating a likelihood of confusion among Internet users that Respondent has some association with Complainants. According to Complainants’ allegations, the fact that Respondent has parked the disputed domain name adduces that it was primarily acquired to unlawfully gain from such sponsored listings. Complainants also stress that Respondent has hidden his true contact information behind a privacy service to avoid any legal action by concealing his true identity.
Complainants have requested that English be the language of proceedings because (1) Respondent obviously is familiar with the English language since he registered the disputed domain name consisting of Complainants’ GENPACT trademark and the English word “india” while at the same time the disputed domain name redirects to an English speaking website and (2) Complainants themselves are not familiar with a language other than English and it would cause Complainants extreme hardship and excessive expenditure to submit all documents in some other language.
Respondent did not reply to Complainants contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, Complainants carry the burden of proving:
(i) That the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainants have rights; and
(ii) That Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) That the disputed domain name has been registered and is being used in bad faith.
Respondent's default in the case at hand does not automatically result in a decision in favor of Complainant, however, paragraph 5(e) of the Rules provides that if Respondent does not submit a response, in the absence of special circumstances, the Panel is to decide the dispute solely based upon the Complaint.
For the following reasons, the Panel accepts Complainants’ request that English be the language of proceedings:
While the Panel is not totally convinced that Complainants – who form part of a worldwide commercially active group of companies – are not familiar with any language other than English, the Panel still takes the view that it is fair and just to both parties to conduct these proceedings in English. This is not only due to the fact that the disputed domain name redirected at some point before filing this Complaint to an English speaking website. Moreover, the Panel notes that Respondent has only recently taken part in a significant number of UDRP proceedings, in the majority of which Respondent had registered English speaking domain names which the respective panels ordered to be transferred upon the respective complainant(s) (e.g., Briggs Medical Service Company Inc. v. Milan Kovac, WIPO Case No. D2011-2193; Comerica Incorporated v. Milan Kovac, WIPO Case No. D2011-0894). This Panel, therefore, has no serious doubts that Respondent is quite familiar with the English language. However, even if this assumption was not true, Respondent has in fact been provided with all necessary communication sent out by the Center both in Slovak and English language, thus would have had a fair and just opportunity to bring any arguments forward why this proceedings should not be led in English, but e.g. in Slovak. Apparently, Respondent was not interested in doing so.
A. Identical or Confusingly Similar
The Panel concludes that Complainant No. 1 owns registered trademark rights in the designation GENPACT.
Neither the copies of trademark certificates provided by Complainants nor the respective country trademark registers show that Complainant No. 1, namely M/s Genpact Limited with legal domicile in Bermuda, is the owner of any GENPACT trademarks, but rather a Genpact Global Holdings Sicar S.a.r.l. with legal domicile in Luxembourg. Complainants, however, claim that the latter company has duly assigned all its rights, title and interest, for all the territories of the world in the intellectual property assets including trademarks/service marks along with a goodwill owned by it to Complainant No. 1 by means of a deed of assignment dated July 16, 2007. Respondent has not contested Complainants’ assertions by any means. This Panel, therefore, takes the view, that even if it had been desirable that Complainants had submitted the alleged deed of assignment dated July 16, 2007 as written evidence to their Complaint, the Panel may decide the dispute solely based upon Complainants’ undisputed allegations and, thus, finds in favor of Complainants to have shown that at least Complainant No. 1 owns trademark rights in the designation GENPACT.
Moreover, the disputed domain name <genpactindia.com> is confusingly similar to those GENPACT trademarks.
The disputed domain name incorporates the GENPACT trademark in its entirety with the mere addition of the geographical term “india”. It has been held in numerous UDRP decisions and has meanwhile become a consensus view among UDRP panelists (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.9) that the addition of a generic or descriptive term or geographical wording to a trademark in a domain name is normally insufficient in itself to avoid a finding of confusing similarity under the first element of the UDRP. Accordingly, the mere addition of the geographical term “india” is not capable to dispel the confusing similarity arising from the incorporation of Complainants’ GENPACT trademark into the disputed domain name.
Therefore, the first element under the Policy as set forth by paragraph 4(a)(i) in the case at hand is fulfilled.
B. Rights or Legitimate Interests
The Panel is further convinced that on the basis of Complainants’ undisputed contentions, Respondent apparently has neither made use of the disputed domain name in connection with a bona fide offering of goods or services, nor has Respondent been commonly known by the disputed domain name, nor can it be found that Respondent made a legitimate, noncommercial or fair use without intent for commercial gain.
It must be derived from Complainants’ allegations, that Respondent obviously has not been authorized to use Complainants’ GENPACT trademark, neither as a domain name nor on Respondent’s website or in any other way. Respondent, however, has used the disputed domain name to resolve to a typical PPC website redirecting to commercially active websites of third parties with the obvious intent to generate Pay-Per-Click commissions. Complainants have also pointed to the fact that the designation GENPACT is a coined and fanciful term having no denotative meaning. Therefore, in the absence of any other reasonable explanations for Respondent’s need to rely on the disputed domain name, such use of the disputed domain name may neither be deemed legitimate nor noncommercial nor fair. Respondent did not deny Complainants’ assertions in any way nor did he come forward with any arguments that might have thrown a different light on Respondent’s possible rights or legitimate interests in the disputed domain name. Accordingly, Respondent who did not reply to the Complaint duly notified by the Center on March 20, 2012, did not overcome the shifted burden of production of appropriate allegations or evidence demonstrating to the contrary (see “WIPO Overview 2.0”, paragraph 2.1).
Therefore, the Panel finds that Complainants have also satisfied paragraph 4(a)(ii) and thus the second element of the Policy.
C. Registered and Used in Bad Faith
The Panel finally holds that the disputed domain name was registered and is being used by Respondent in bad faith.
The Panel takes the view that the redirection of the disputed domain name, which is confusingly similar to Complainants’ trademark GENPACT, to a typical PPC website is a clear indication that Respondent intentionally attempted to attract, for commercial gain, Internet users to his own website, by creating a likelihood of confusion with Complainants’ GENPACT trademark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or a product thereon. Such circumstances, however, shall be evidence of registration and use of the disputed domain name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy (see also: Briggs Medical Service Company Inc. v. Milan Kovac, supra.; Comerica Incorporated v. Milan Kovac, supra.).
In connection with this finding, it also carries weight in the eyes of the Panel that Respondent is regularly making use of privacy registration services with the obvious intent to conceal his true identity in order to avoid legal measures taking against his person (see: Petroleo Brasileiro S.A – Petrobras v. Privacy Protect.org / Milan Kovac, WIPO Case D20122-1251; Revlon Consumer Products Corporation v. Privacy-Protect.org/Milan Kovac, WIPO Case No. D2010-1806). Moreover, the private contact details in Slovakia provided by Respondent apparently were wrong as evidenced by a failed delivery notice of DHL dated March 22, 2012. It is a consensus view among UDRP panelists that, although the use of a privacy registration service is not in and of itself an indication of bad faith, the manner in which such service is used can in certain circumstances constitute a factor indicating bad faith (see “WIPO Overview 2.0”, paragraph 3.9).
Therefore, the Panel finds that also the third element under the Policy set forth by paragraph 4(a)(iii) is fulfilled and that, accordingly, Complainants have satisfied all of the three requirements of paragraph 4(a) of the Policy.
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 <genpactindia.com> be transferred to Complainant No. 1.
Stephanie G. Hartung
Dated: April 25, 2012