WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Ballarpur Industries Limited v. Chris Vogles
OMPI Case No. D2012-1351
1. The Parties
The Complainant is Ballarpur Industries Limited of Gurgaon, Haryana, India, represented by ANM Global, India.
The Respondent is Chris Vogles of Los Angeles, California, United States of America.
2. The Domain Name and Registrar
The disputed domain name <bilt.net> is registered with eNom (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 3, 2012. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. Also on July 3, 2012, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
On July 4, 2012, the Center notified the Complainant of several deficiencies in the Complaint, which were amended by the Complainant on July 9, 2012.
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 July 18, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was August 7, 2012. An informal communication was received from the Respondent on July 27, 2012 requesting information of the proceeding.
On July 28, July 30 and August 1, 2012, the Center received email communications from the Respondent asking for a hardcopy of the documents involved in the administrative proceeding. On August 8, 2012, the Respondent requested an extension of two (2) weeks to file its Response. The Center transmitted such request to the Complainant, which opposed to the Respondent’s request by email communication of August 8, 2012.
On the same date, the Center notified the parties that the Respondent’s request was denied and that the due date for submitting a Response remained August 8, 2012.
On August 8, 2012, the Respondent stated that he had not been able to file a Response on time due to him not receiving the documents. The Center informed the Respondent that because the Complainant objected to the extension and there did not appear to be any exceptional circumstances, the Center declined to extend the period for Response.
The Center appointed John Swinson as the sole panelist in this matter on August 17, 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 Ballarpur Industries Limited, a manufacturer of writing and printing paper, other paper products and stationary, located in India. It is a company within the Avantha Group and it has various subsidiaries and affiliates.
The Respondent is Chris Vogles of the United States of America. The Respondent did not file any substantive submissions and little information is known about him.
The disputed domain name was registered August 27, 2010.
5. Parties’ Contentions
The Complainant made the following submissions:
The Complainant was established in 1945 and has developed a strong reputation and presence in India. It is a dominant player in the writing and printing paper business in India. The name “Bilt” has been used by the Complainant since 2002 when it engaged in a corporate rebranding exercise and is now a well-established name associated with paper and stationary products. The Complainant has also entered into the tissue and hygiene paper market and the stationary market using the name BILT.
The Complainant has won prestigious awards and has also exerted considerable effort and expense promoting and advertising its services and products under the name BILT. A Google search of the term BILT retrieves a large number of results relating to the Complainant.
The Complainant also owns registered trade marks in India including logo marks and word marks incorporating the term “Bilt”, some of which appear to have been registered since 2000.
The name BILT has attracted significant goodwill in India and worldwide and the profile and popularity of the Complainant under the name BILT has continuously increased since the date of adoption.
Due to extensive use, advertising, publicity and awareness throughout the world, BILT has acquired the status of a well-known trade mark in the minds of consumers. The Complainant submits that the name BILT is a well-known, famous mark as it is known and recognized among the relevant section of public, and factors such as duration, extent and geographical area of use, promotion and publicity of the mark all indicate this.
Therefore, the mark BILT, having been used extensively in relation to the Complainant’s business, has acquired a secondary meaning, is distinctive and is understood and associated by consumers in India as well as abroad as the mark of the Complainant, denoting its goods and services. The term “Bilt” is an important and valuable asset of the Complainant and it is for this reason that it has obtained trade mark registration of the term in India.
The disputed domain name is identical to the trade mark BILT in which the Complainant has exclusive rights. Given that the disputed domain name incorporates the Complainant’s registered mark as a whole, it is identical or confusingly similar to the Complainant’s marks. The “.net” extension is irrelevant when considering similarity between the disputed domain name and the Complainant’s marks.
The Respondent is not either as an individual, business or other organization commonly known by the name “Bilt” and the Complainant has not licensed or otherwise permitted or authorized the Respondent to use its mark BILT or to apply for any domain name incorporating the mark.
It is clear that the Respondent registered and is using the disputed domain name in bad faith for the following reasons:
- Given the widespread knowledge of the Complainant and its mark, any incorporation of the term must necessarily be in bad faith because the Respondent must have known of the Complainant when registering the disputed domain name.
- By using the disputed domain name the Respondent is misusing the Complainant’s trade mark and therefore using the disputed domain name in bad faith. The Respondent is also attempting to sell the disputed domain name.
- Any use of the disputed domain name by the Respondent is necessarily use in bad faith because given the strong public knowledge of the Complainant’s mark, the Respondent cannot be said to have a legitimate interest in the mark since he ought to have known of the mark.
- The disputed domain name would confuse and deceive consumers who would likely associate the disputed domain name with the Complainant and its goods and services. Customers will likely believe that the Respondent has some connection with the Complainant given the similarity between the disputed domain name and the Complainant’s marks and thus will believe that the Respondent is carrying on activities that have been endorsed by the Respondent and that the services that are offered by the Respondent are of the same quality and reliability as that offered by the Complainant. This will also result in dilution to the Complainant’s trade marks.
- It is likely that Internet users who wish to find the Complainant will type the disputed domain name and thus believe there is a connection between the disputed domain name and the Complainant.
- The term BILT has been used by the Complainant continuously for a number of years and thus it is associated exclusively with the Complainant.
- On account of the high degree of inherent and acquired distinctiveness of the term BILT through the Complainant’s use of its marks.
The Respondent did not file any substantive submissions.
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 Complainant reiterated its submissions when arguing against an extension being granted in favour of the Respondent to file a Response. There is no obligation on the Panel to consider this information and it is at the Panel’s discretion as to whether it wishes to consider these filings. The Panel finds that the information contained in the Supplemental Filing adds nothing to the Complainant’s case that was not contained in its Complaint and thus has not been considered by the Panel in making its decision.
Further, the Panel notes that several items of correspondence were exchanged between the Respondent and the Center on the issue of an extension to file a response. The formal request for extension was not granted and the Panel takes no issue with this decision and need not elaborate on this issue further. For the reasons set out in section 3 above, it was appropriate for the Center to deny the granting of an extension in these circumstances. However, the Center repeatedly made clear to the Respondent that he was at liberty to file a submission out of time if he so chose and that it would nevertheless be forwarded to the Panel to be reviewed at its sole discretion. Despite this, the Respondent did not file a Response. Had the Respondent filed a Response, the Panel would have made a determination on the facts and in the circumstances as to whether it should consider the Response.
In any event, even though the Respondent did not file a response, this does not automatically result in a decision in favor of the Complainant (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). The Panel may draw appropriate inferences from a respondent’s default. Nonetheless, a complainant must establish all three elements of paragraph 4(a) of the Policy. Where a complaint is based wholly on unsupported assertions, the requested remedy will be denied despite no response having been filed.
B. Identical or Confusingly Similar
The Complainant is the owner of numerous trade marks registered in India incorporating the term BILT. The Complainant’s registered trade marks appear to have been registered prior to the disputed domain name being registered.
Further, the Complainant has put forward evidence to suggest that it has common law rights in the term BILT. In order to establish common law trade mark rights, the Complainant must show that the name has become a distinctive identifier associated with the Complainant 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 have common law trade mark rights in the term BILT (at least in India) given its use of the term over the relevant period of time, its apparently thorough advertising and media campaigns and public recognition.
For the Complainant to succeed in this element, it must show that the disputed domain name is identical or confusingly similar to the Complainant’s trade marks.
The disputed domain name contains the word BILT and as such is confusingly similar to, if not identical to at least some of, the Complainant’s trade marks. Even though several of the Complainant’s trade marks incorporate other words, it appears that the dominant and significant identifying feature of these trade marks is the term BILT and as such the Panel is justified in making this finding.
Therefore, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s marks and as such, paragraph 4(a)(i) of the Policy is satisfied.
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 Respondent did not file a response and the Complainant only made very limited submissions in relation to this element.
From the Panel’s review of the website resolving from the disputed domain name, the Respondent appears to be using the disputed domain name as a rudimentary directory for companies, businesses and places with the term “bilt” in their name. The website includes the following statement, “[f]ind more information about bilt and the variations of the bilt acronym” and then lists the relevant places, business and companies. Users can click through to brief summaries of some of the business and companies. The website resolving from the disputed domain name also includes a link “buy now” which diverts users to a Sedo advertising page, which includes the following statement in a box: “Buy this domain. The domain bilt.net may be for sale by its owner!”
The use of a domain name for the purposes of presenting a genuine directory or informational website may confer rights or legitimate interests as specified under the Policy. Here, the website at the disputed domain name is a directory relating to the term “Bilt”, but it is not clear to this Panel whether it is a genuine directory website or merely a facade to fabricate the impression of legitimate interests (but not in fact legitimate).
Panelists have various views as to whether owning a domain name for the purpose of reselling it or for the purpose of operating a pay-per-click (PPC) website is sufficient to establish rights or legitimate interest in the relevant domain name. It is generally recognized that use of a domain name in this way does not necessarily preclude a finding of rights or legitimate interests on the part of a respondent. More specifically, Panels have suggested that such uses may give rise to rights or legitimate interests absent any indication that the domain name was registered and used in bad faith.
Given the limited information available to the Panel in this dispute, the Panel does not decide this issue and in light of the Panel’s decision in relation to bad faith below, it is unnecessary for it to finally decide this point.
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, these factors are not exhaustive.
The Panel finds that the Complainant has failed to establish any of the instances of bad faith set out in the Policy and there is nothing to compel the Panel to make a finding of bad faith for other reasons. As such, the Panel does not find that the Respondent registered and used the disputed domain name in bad faith.
While the Complainant asserts that it and its marks are well-known outside of India, it has provided little evidence to support this assertion. In the absence of such evidence, the Panel cannot make a finding that the Respondent knew, or ought to have known, of the Complainant when registering and using the disputed domain name and thus bad faith cannot be established. Particularly, in such circumstances it cannot be said that it was likely that the Respondent registered the disputed domain name in order to benefit from the Complainant’s trade mark value and goodwill in the term. Further, the Respondent’s current use of the disputed domain name does not evidence that the Respondent has knowledge of the Complainant, or that the Respondent is intentionally attempting to attract, for commercial gain, Internet users to his website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location. For these reasons, paragraph 4(b)(iv) of the Policy cannot be established.
While the Respondent may be offering the disputed domain name for sale (and the evidence to support this is not conclusive), there is no evidence to suggest that the Respondent registered the disputed domain name in order to sell it for valuable consideration in excess of his documented out-of-pocket costs directly related to the disputed domain name (Policy, paragraph 4(b)(i)). Merely listing a domain name for sale, or for possible sale, on the Sedo platform usually is not, of itself, sufficient to demonstrate bad faith registration and use.
Finally, the Panel notes that the Complainant submitted that the Respondent was engaging in passing off and misusing the Complainant’s trade marks. The Panel wishes to make clear that whether the Respondent engaged in passing off or trade mark infringement are not proper matters for determination by the Panel under the Policy. There is insufficient evidence before the Panel to draw any conclusion in this regard.
Therefore, the Panel cannot find that the Respondent registered and used the disputed domain name in bad faith and thus the Complainant must necessarily fail in these proceedings.
For the foregoing reasons, the Complaint is denied.
Dated: August 29, 2012