WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Puravankara Projects Limited v. Shiva Malhotra
Case No. D2013-0260
1. The Parties
The Complainant is Puravankara Projects Limited of Bangalore, Karnataka, India, represented by K&S Partners, India.
The Respondent is Shiva Malhotra of New South Wales, Australia.
2. The Domain Name and Registrar
The disputed domain name <purva.com> (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 7, 2013. On February 7, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On February 8, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name, which differed from the named respondent and contact information in the Complaint1. The Center sent an email communication to the Complainant on February 19, 2013 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 February 19, 2013.
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 February 20, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was March 12, 2013. The Response was filed with the Center on March 12, 2013.
The Center appointed Tony Willoughby as the sole panelist in this matter on March 20, 2013. 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 March 15, 2013 the Complainant submitted to the Center a Supplemental Filing said to be a rebuttal to the Response. The Panel addresses this Supplemental Filing in section 6B below.
4. Factual Background
The Complainant is an industrial company incorporated in India in 1986 and engaged in the fields of property construction and development. It is based in Bangalore. From the financial reports and other company literature annexed to the Complaint it is apparent that the Complainant is in a substantial way of business and has a number of subsidiary or associated companies whose company names commence with the name, “Purva”.
The Complainant’s trading activity is confined largely to India. “The Company operates primarily in India and there is no other significant geographical sector.” [Paragraph 32 of the Notes to the Complainant’s Financial Statements for the year ending March 31, 2012.]
The Complainant is the registered proprietor of two Indian trade mark registrations for the word mark PURVA, namely:
No. 1182590 dated March 12, 2003 in class 19 for “building material, natural and artificial stone, cement, lime, mortar, plaster and gravel, peipes (sic) of earthenware or cement and other items used for construction purposes included in class 19”
No. 1266091 dated February 9, 2004 in class 37 for “building construction repair, installation services”.
The Complainant is also the registrant of a number of domain names comprising or incorporating the name, “purva”. However, its principal operating website appears to be connected to its domain name, <puravankara.com>. At that website details appear of the Complainant’s development projects, most of which have names incorporating the name “Purva” (e.g. “Purva Vantage”, “Purva Grande”, “Purva Riviera”). The website also features details of the Complainant’s “Purva Interiors”, “Purva Value” and Purva Advantage” services, the last of which features a Purva Advantage Card entitling the holders, owners of a “Purva Home”, to various benefits.
The Domain Name was first registered on March 28, 2000. It is not known who the original registrant was, but it appears from the Internet Archive WayBackMachine that between 2002 and April 2005 it was being used to connect to a website of the Complainant. The Respondent claims to have acquired it by way of an online auction organized by Namejet in May 2012.
On December 24, 2012 the Respondent, through his company, AsiaPacific Tec Pty. Ltd., applied to the Australian Trade Mark Registry for registration of PURVA as a trade mark in class 35 for “retailing of goods (by any means)”. The application is pending.
On January 16, 2013 the Complainant visited the Respondent’s website. The Domain Name was connected to a Pay-Per-Click (“PPC”) free parking page hosted by the Registrar featuring eleven primary advertising links. The links most obviously relating to the Complainant’s field of activity are five in number, one headed “New Projects in Bangalore”, one headed “Architects in Bangalore” and three links associated with home/interior decoration and design. In addition, there is another Bangalore-related link headed “Packaging Boxes Bangalore”. The five remaining links are one headed “Tooth Jewelry”, one headed “Novelty Gift Items”, another, meaningless to the Panel, appearing in Chinese script and two relating to domain name services, one being a link to the Registrar’s “Official Site”. Further visits to the Respondent’s website were made by the Complainant on January 25, 2013 and January 28, 2013 as described in section 6E below.
On February 20, 2013 the Center visited the Respondent’s website connected to the Domain Name and took a screenshot of the homepage for the Case File. It was a free parking page of the Registrar advertising the Registrar’s services and nothing else.
On March 23, 2013 when the Panel attempted to visit the website connected to the Domain Name nothing materialized, merely a blank page.
5. Parties’ Contentions
The Complainant claims trade mark rights to its name PURAVANKARA, which is the surname of its founding director, and to the shortened versions, PURVANKARA and PURVA. The Complainant points to not only its trade mark registrations (including the two PURVA registrations detailed in section 4 above), but also its unregistered trade mark rights derived from its extensive and continuous use of those names since 1986.
The Complainant contends that the Domain Name is identical to its PURVA mark and confusingly similar to its PURAVANKARA and PURVANKARA marks.
The Complainant contends that it is inconceivable that the Respondent registered the Domain Name in ignorance of the Complainant and its trade mark rights to the name “Purva”. It relies not only upon the extensive reputation and goodwill associated with its use of the “Purva” name, but also the fact that the Respondent’s website includes and/or has included advertising links to websites referring to the Complainant’s properties.
The Complainant states that the Respondent has no connection with the Complainant and has no permission to use the name “Purva”.
The Complainant contends that the Respondent registered the Domain Name to associate himself with the Complainant and to derive PPC revenue from the advertising links to “webpages, which engage in similar business as that of the Complainant. The Respondent is trying to divert the customers and Internet users to other websites engaged in business related to real estate.”
The Complainant contends that the Respondent is not using the Domain Name in relation to a bona fide business, is not commonly known by the Domain Name and is not making any legitimate noncommercial or fair use of the Domain Name.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name.
The Complainant further contends that the Domain Name was registered and is being used in bad faith. The Complainant relies upon the matters set out above and also points to the fact that the Respondent is a Non-Resident Indian and “knew or should have known of the registration and use of the trade mark prior to registering the Domain Name”. The Complainant points to the fact that the Respondent’s website contains an invitation to visitors to make offers for the Domain Name. The Complainant asserts that the Respondent’s registration of the Domain Name has prevented the Complainant from reflecting its trade mark in the corresponding domain name.
However, the Complainant’s primary claim is that the Respondent registered the Domain Name with knowledge of the Complainant’s rights and with the intention of deriving PPC revenue from Internet users diverted away from the Complainant’s website. The Complainant recognizes that the webpage to which the Domain Name is connected, a free page of the Registrar, may be deriving revenue for the Registrar rather than the Complainant, but cites authority for the proposition that in the context of paragraph 4(b)(iv) of the Policy that is of no moment (Villeroy & Boch AG v. Mario Pingerna, WIPO Case No. D2007-1912).
The Respondent denies the Complainant’s contentions.
The Respondent points out that the Domain Name was registered by its original owner more than three years before the first of the Complainant’s trade mark registrations.
The Respondent states that he is an Australian national based in Australia and that there was no relevant Australian registered trade mark in existence when he acquired the Domain Name. He states that he conducted both Australian and United States trade mark searches. He states that there is no reason why he should have been required to conduct an Indian trade mark search when he acquired the Domain Name.
The Respondent contends that the name “Purva” is generic. He contends (and produces supporting evidence for the proposition) that it is the name of a religious text or series of texts of the Jain religion and is a name associated with Jain and Hindu mythology.
The Respondent identifies five actresses whose first name is “Purva”, three from India, one in the United States and one in the West Indies.
The Respondent accepts that the Complainant is “prominently known” by the name “Puravankara”, but denies that it is prominently known by the name “Purva”. The Respondent produces evidence that other companies in India have “Purva” as part of their names and contends that there are 1,615 individuals on LinkedIn.com with the first/last name “Purva”.
The Respondent contends that he is a practising Jaini by religion and acquired the Domain Name “for a considerable sum of money” for its religious significance and with a view to “selling books, scriptures and other accessories related to the Jain religion worldwide”. He will be targeting Australia for the first five years. He asserts that he is also the owner of the domain name <purva.com.au>. Moreover, he has applied for registration of “Purva” as a trade mark in Australia.
The Respondent states that his due diligence work in support of his plans for the Domain Name commenced on November 15, 2012 and involved lawyers and time and money finding business partners and resources for building his online store. He contends that these are all demonstrable preparations for the purposes of paragraph 4(c)(i) and (iii) of the Policy.
To demonstrate the significance to him of the Jaini/Hindu religion the Respondent points to the fact that his first name is “Shiva” (the name of an Indian god) and asserts that he is the owner of the domain names, <shiva.me>, <vishakha.com> (Vishakha meaning a star in Hindu mythology), and <godavari.com> (Godavari being a river in India sacred to Hindus).
The Respondent denies the Complainant’s allegations as to bad faith registration and use of the Domain Name. He contends that the Complainant is not well-known outside India and in any event makes no substantial use of the name “Purva” online. He points to the fact that the Complainant’s domain names <purva.co.in> and <purva.in> are not in active use, but are connected to free parking pages of the Complainant’s domain name registrar.
The Respondent draws attention to the fact (not mentioned by the Complainant) that, according to the Internet Archive WaybackMachine, in 2005 the Domain Name was connected to a website of the Complainant.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name was registered and is being used in bad faith.
B. Complainant’s Supplemental Filing
On March 12, 2013 following receipt of the Response the Complainant asked the Center if it was possible for the Complainant to file a rebuttal to the Response. The Center responded on March 13, 2013 in the following terms:
“The Rules for the Uniform Domain Name Dispute Resolution Policy (“Rules”) provide for the submission of the Complaint by the Complainant and the Response by the Respondent. No express provision is made for Supplemental Filings by either party, except in response to a deficiency notification or if requested by the Center or the Administrative Panel. Paragraphs 10 and 12 of the Rules in effect grant the Panel sole discretion to determine the admissibility of Supplemental Filings (including further statements or documents) received from either Party. Accordingly, the Panel when duly appointed will be informed of the Center’s receipt of this Supplemental Filing, if any. It will be in the sole discretion of the Panel to determine whether to consider and/or admit the Supplemental Filing in rendering its decision, and whether to order further procedural steps, if any.”
The issue is addressed in paragraph 4.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) in the following terms:
“4.2 Will the WIPO Center put an unsolicited supplemental filing before a panel, and in what circumstances would a panel accept such filing?
Consensus view: As the UDRP Rules grant the panel sole discretion to request further statements and determine the admissibility of evidence which may include an unsolicited filing, such filings, when received from a party, would typically be put before the panel upon the panel’s appointment - at no additional charge - for determination as to admissibility, and assessment of need for further procedural steps (if any). Normally in such cases, a panel would include a ruling on admissibility of any such received filings in its decision, or in the event that an opportunity to reply is offered to the other party, in an administrative panel order. Panels have discretion whether to accept an unsolicited supplemental filing from either party, bearing in mind the need for procedural efficiency, and the obligation to treat each party with equality and ensure that each party has a fair opportunity to present its case. The party submitting its filing would normally need to show its relevance to the case and why it was unable to provide that information in the complaint or response. Most panels that have allowed unsolicited filings have also tended to require some showing of “exceptional” circumstances. Panels which accept a supplemental filing from one side typically allow the other party the opportunity to file a reply to such supplemental filing. In either scenario, or on its own initiative, a panel may in its discretion request further evidence, information or statements from one or other of the parties by way of administrative panel order.”
As indicated in section 3 above, the Complainant submitted a Supplemental Filing in the form of a Rebuttal to the Response on March 15, 2013. The Rebuttal has been sent to the Panel and the Panel has read it. The Panel admits such of it into this administrative proceeding as purports to deal with alleged falsities in the Response and deals with those aspects in sections 6D and 6E below. Had the content of the Supplemental Filing led the Panel to conclude that the Domain Name should be transferred to the Complainant, the Panel would have given the Respondent an opportunity to respond to the Rebuttal.
C. Identical or Confusingly Similar
There is no dispute between the parties that the Complainant is the registered proprietor of the Indian PURVA trade mark registrations, details of which are given in section 4 above. Accordingly, the Domain Name comprises the Complainant’s PURVA trade mark and the generic top-level domain identifier “.com”.
It being well-established that panels may ignore generic top-level domain identifiers when assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy, the Panel finds that the Domain Name is identical to a trade mark in which the Complainant has rights.
D. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy requires the Complainant to prove a negative, namely that the Respondent has no rights or legitimate interests in respect of the Domain Names. This can often be a very difficult matter to establish in circumstances where, as here, the Respondent is a stranger to the Complainant. Whether or not the Respondent has rights or legitimate interests in respect of the Domain Name is a matter peculiarly within the knowledge of the Respondent.
“While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP [see also paragraph 4.6 below in relation to respondent default]. If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interest, the panel then weighs all the evidence, with the burden of proof always remaining on the complainant.”
The Complainant’s case is that the Respondent registered the Domain Name with knowledge of the Complainant and its trade mark rights and with the primary intention of exploiting it for commercial gain on the back of the fame of the Complainant, its trade marks and its service offerings. The Complainant relies in part on the nature of the Domain Name itself, the fact that the Respondent’s website indicates that he is willing to accept offers for the Domain Name, the use that the Respondent has been making of the Domain Name (using it for a PPC parking page featuring advertising links to websites competing with the services offered by the Complainant), the Respondent’s propensity for dishonesty (see below) and the fact that the Complainant has given the Respondent no permission to use its trade mark for this or any other purpose. The Panel is satisfied that the Complainant has made out a prima facie case, a case calling for an answer.
Paragraph 4(c) of the Policy, which is addressed to respondents, is headed “How to Demonstrate Your Rights to and Legitimate Interests in the Domain Name in Responding to a Complaint” and sets out (on a non-exhaustive basis) three sets of circumstances any of which, “if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for the purposes of paragraph 4(a)(ii) [of the Policy]”. They are:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The essence of the Respondent’s Response is that he selected the Domain Name for its Jaini religious significance. In support of this claim he claims to own other domain names of religious significance such as <shiva.me>, <godavari.com> and <vishakha.com>. However, as the Complainant has pointed out in its Supplemental Filing, none of these domain names is connected to a site having any religious associations. Accordingly, the only significance of his owning these other ‘religious’ domain names is that it demonstrates his desire for domain names with religious connotations. It provides no support for his contention that he intends to use the Domain Name for his stated purpose, namely to sell “books, scriptures and other accessories related to the Jain religion worldwide”.
On December 24, 2012 the Respondent, through his company, AsiaPacific Tec Pty. Ltd., applied to the Australian Trade Mark Registry for registration of PURVA as a trade mark in class 35 for “retailing of goods (by any means)”. The application is pending. This is the only indication that the Respondent may indeed be intending to use the Domain Name for the purpose of online retailing of goods, but of itself (pending registration) it gives rise to no relevant rights or legitimate interests in respect of the Domain Name.
The Respondent has claimed to have done significant due diligence in preparation for his new online business, including the taking of legal advice in relation to his trade mark application and a search for business partners and “spending time and resources for building an online store.” However, he has produced no evidence of any kind to demonstrate that this is the case. There is nothing before the Panel, other than his company’s trade mark application to support the Respondent’s claim that he has been planning to use the Domain Name for a bona fide offering of goods and services.
The Respondent is not known by the Domain Name and has been making no use of it in a manner falling within the scope of paragraph 4(c)(iii) of the Policy. The website is currently inaccessible to the Panel and the evidence of past use since the Respondent acquired the Domain Name suggests that the only entity using the Domain Name has been the Registrar.
In the absence of any cogent evidence in support of his claim, the Panel finds that the Respondent has no rights or legitimate interest in respect of the Domain Name.
E. Registered and Used in Bad Faith
The Complainant is a well-established, substantial Indian company engaged in property development in India and in related fields. The Respondent is an Australian national, but plainly one with strong religious and commercial ties associated with India.
For the Complainant to succeed in this Complaint, it has to satisfy the Panel that at the date of the Respondent’s acquisition of the Domain Name in May 2012, the Respondent was aware of the Complainant and its rights in respect of the “Purva” name and intended to use the Domain Name in bad faith. The Complainant contends that the Respondent registered the Domain Name with the intention of using it in bad faith either to sell the Domain Name to the Complainant or to prevent the Complainant reflecting its PURVA trade mark in a domain name or to exploit it for commercial gain within the meaning of paragraph 4(b)(iv) of the Policy.
The only basis for the contention that the Respondent intended to sell the Domain Name is the question appearing on the Registrar’s free webpage: “Want to buy this domain?” and a box beneath it reading “Let us help”. That is plainly a message from the Registrar and there is nothing to suggest that the Respondent has contacted anyone with a view to selling it. The Panel dismisses this claim of the Complainant.
The suggestion that the registration of the Domain Name has in some way impeded the Complainant from reflecting the name “Purva” in a domain name is difficult for the Panel to take seriously. According to its own evidence the Complainant has the name “purva” (solus) registered in the forms <purva.asia>, <purva.co>, <purva.in>, <purva.info>, <purva.co.in> and <purva.biz>. It appears that all of them (apart from <purva.co>, which resolves to nothing) are connected to free parking pages of the Complainant’s registrar. None of them appears to be connected to an active website. Interestingly, it appears from the Respondent’s evidence and from the Internet Archive WaybackMachine that the Domain Name was for some years connected to a website of the Complainant, but the Complainant makes no mention of it in either its Complaint or its Supplemental Filing. Why did the Complainant let it go? The Panel does not know.
However, the Complainant’s primary contention is that the Respondent registered the Domain Name
“to create the impression of an authorized association between the Complainant and the Respondent, which never existed. The Respondent attempted to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the respondent’s website. This is evident as the disputed domain name resolves to the webpage containing advertisement listings and links. These advertisement listings open to websites containing information about organizations/entities involved in similar and competitive business as that of the Complainant.”
Was the Respondent aware of the existence of the Complainant and its PURVA trade mark when he acquired the Domain Name? The Panel cannot be certain because although the Complainant has asserted it and the Respondent has not expressly denied it, the denial is arguably implicit in his statement:
“Considering the geographical separation between the Complainant and me - there is nothing in the present record indicating that I in the (sic) Australia should have been aware of the Complainant’s trade marks in India already at the date of the registration of the disputed domain name <Purva.com>, or be required to do a worldwide search for all trade marks that incorporate what appears to be a very common word.”
If that statement is intended to constitute a denial of the Complainant’s trade mark rights, is the denial to be trusted? The Panel poses the question because in the previous paragraph of the Response the Respondent claims to have conducted Australian and US trade mark searches. The Australian search is understandable given his company’s trade mark application, but if it was appropriate for him to conduct a US trade mark search, why was it not appropriate for him also to conduct an Indian trade mark search, “Purva” being a name which according to him is a name of such generic significance in India? The answer could be, of course, that the Respondent’s target markets are primarily Australia and the United States, but that does not fit easily with the nature of his online business, the sale of religious material associated with what is primarily an Indian religion. On the other hand he may have thought that the use of the name “Purva” in relation to the sale of Jaini/Hindu religious material in the home of that religion could not conceivably constitute infringement of anybody’s trade mark rights.
Even if the Respondent was aware of the Complainant’s trade mark rights when he acquired the Domain Name, that knowledge does not necessarily mean that in acquiring the Domain Name he had any mala fide intention to ride on the back of the Complainant’s goodwill. Indeed, it seems to the Panel that the sale of religious material under and by reference to the name “Purva”, a name of significance in the Jaini/Hindu religion, would be most unlikely to infringe the Complainant’s trade mark rights in respect of that name registered for goods and services in the construction industry.
It is necessary, therefore, to look at how the Domain Name has been used. The first thing to note is that the webpage to which the Domain Name resolved was plainly a free parking page of the Registrar. In the view of the Panel it is inconceivable that anyone could think that it was a page posted by or on behalf of either the Complainant or the Respondent. The page was heavily branded GO-DADDY. It is possible, but in the view of the Panel a very remote possibility, that some Internet users, assuming that a website connected to the Domain Name must be a website of the Complainant, will conclude that the content of the website is in some way licensed by the Complainant.
Is it the case, however, that the Complainant’s PURVA trade mark is so well known that Internet users will visit the webpage believing that the Domain Name will be leading them to a website of the Complainant (i.e. on the basis of ‘initial interest confusion’)? The Panel accepts that some Internet users may be so misled, but in the view of the Panel they are likely to be restricted primarily to Indian individuals familiar with the Complainant’s developments. Moreover, it is the Indian community that is most likely to be aware of the fact that the name “Purva” has a broader significance than merely as a trade mark of the Complainant and may not therefore necessarily assume that it has to be a domain name of the Complainant.
It is necessary, therefore, to look at how the Domain Name has been used; and the appropriate use to consider first is the earliest record of use, which is the screenshot annexed to the Complaint and more particularly described in section 4 above. It is dated January 16, 2013. It is branded “Go Daddy.com”, the name of the Registrar, and features the opening legend: “Welcome to: purva.com. This Web page is parked for FREE, courtesy of GoDaddy.com”. The advertising links to which the Complainant objects are those described in section 4 above, some of which lead to websites in the Complainant’s area of business in Bangalore.
Is this webpage indicative of any mala fide intent on the part of the Respondent directed at the Complainant? In the view of the Panel, it is not. It is clearly a parking page of the Registrar. The bulk of the page is devoted to matters associated with the Registrar. The third party advertising links will have been selected by software of the Registrar or agents of the Registrar. The Respondent will have had nothing to do with the selection of those links. What that does suggest, however, is that the “Purva” name is sufficiently distinctive in the property development field for the software to have selected property development links for the webpage. If the Complainant had written to the Respondent to complain of those links and the Respondent had declined to have them removed, the Panel might have taken the refusal as indicative of a mala fide intent on the part of the Respondent.
The Complainant visited the website again on January 25, 2013 and while some of the links had changed the general content was much the same.
On January 28, 2013 the Complainant visited the website yet again and, while the general appearance of the site was much the same, most of the advertising links were devoted to property development in India. Again, however, there is no suggestion that the Complainant contacted the Respondent and nothing to suggest that the Respondent was aware of the cause for complaint. Whether or not he should have been so aware is another matter dealt with below.
On February 7, 2013 the Complaint was filed with the Center. On the evidence before the Panel, this is the first occasion upon which the Respondent must have been aware of the Complainant’s cause for complaint.
On February 20, 2013 the Center visited the Respondent’s website and, as is the norm, took a screenshot for inclusion in the case file. The site had changed to a material degree. While it was still a free parking page of the Registrar devoted largely to the services of the Registrar, it now contained no third party advertising links. The Complainant’s prime cause for complaint had been removed.
It seems to the Panel that as soon as the Complainant’s cause for complaint was drawn to the Respondent’s attention, he remedied the situation. This seems to the Panel to have been a responsible reaction to the Complaint.
What then is the Respondent’s liability for the actions of the Registrar prior to the removal of the offending advertising links? The Complainant cites authority for the proposition that respondents are responsible for the content of their websites irrespective of whether or not they take any active part in selecting the content of the website. The Complainant also cites authority for the proposition that a PPC parking page hosted free by a registrar, in respect of which the registrar is the sole beneficiary of any earned income, can fall foul of paragraph 4(b)(iv) of the Policy on the basis that that paragraph of the Policy only talks of ‘commercial gain’ and does not specify that it is the respondent who must be the beneficiary.
This Panel accepts that there may be circumstances where both those propositions hold good and has in the past cited Villeroy & Boch AG v. Mario Pingerna (supra) in support of the second of those propositions. The Panel does not seek to set out any general principles, but on the facts of this case and the chronology set out above, the Panel has come to the following conclusions relevant to the Complainant’s contention that the Respondent registered the Domain Name in bad faith and is using it in bad faith within the meaning of paragraph 4(b)(iv) of the Policy:
1. The name “Purva” as part of the Domain Name could perhaps be taken by some, as being without question the trade mark of the Complainant, but the Respondent has put sufficient material before the Panel to establish that there are many other potential fair usages and users of that name whether for its religious connotations, its use as a personal name or as a corporate name. In the view of the Panel the Complainant cannot sensibly claim a monopoly or anything approaching it beyond its specialised fields of activity in India. As a trade mark, “Purva” does not get anywhere near the “Coca-Cola” level of distinctiveness.
2. Accordingly, in the view of the Panel, the selection of the Domain Name is not of itself indicative of a mala fide intent as would have been the case if the trade mark selected for the Domain Name had been say “Puravankara” which is highly distinctive and more explicitly referable to the Complainant.
3. While there are aspects of the Respondent’s story, which have given the Panel cause for concern, it is the case that the Respondent (through his company) applied for registration of the PURVA word mark in Australia on December 24, 2012 approximately six weeks before the filing of the Complaint. As indicated above, in the view of the Panel, the Respondent might reasonably have believed that the use of the name “Purva” in Australia (or indeed online) as a trade mark for the retail sale of Jaini/Hindu religious literature would be unlikely to infringe the Complainant’s trade mark rights, even if he was aware of those rights.
4. The Respondent seems to have a track record of registering names associated with the Hindu religion (e.g. <shiva.me>, <godavari.com> and <vishakha.com>), so the choice of the Domain Name could reasonably be part of a pattern unconnected with the Complainant’s rights.
5. There is insufficient material before the Panel to satisfy the Panel that the Respondent acquired the Domain Name with the actual intention of exploiting the Complainant’s rights to his advantage or to the Complainant’s disadvantage.
6. If in these circumstances and notwithstanding that finding the Respondent is to be held to be in constructive bad faith (a concept that instinctively the Panel finds unattractive), then the Panel would at the very least have needed something more to show that the Respondent has an abusive track record. There is nothing of that kind in the evidence before the Panel.
7. Some generic words are also trade marks. For a registrant of a domain name featuring a generic word to be held constructively in bad faith because he left it in the hands of his registrar pending development of his website and the registrar connected it to a free parking page featuring offensive links, this Panel would at the very least require some evidence to show that the registrant ought to have been aware of the risk and ought to have checked how the domain name was being used. The Panel is not persuaded that this is such a case.
8. In the view of this Panel (and on the evidence before the Panel) the Respondent appears to have taken prompt action to remedy the Complainant’s cause for complaint as soon as it was drawn to his attention and it does not appear that in fact the Respondent derived any commercial gain from the advertising links appearing on the Registrar’s free parking page to which the Domain Name was connected.
On the above findings the Complainant has failed to satisfy the Panel that the Domain Name was registered and is being used in bad faith and the Complaint fails.
There are, however, two matters, which the Panel needs to address, namely (a) the Panel’s apparent rejection in point 8 above of the finding in Villeroy & Boch AG v. Mario Pingerna (supra), upon which the Complainant places some reliance, to the effect that it matters not for the purposes of paragraph 4(b)(iv) that the recipient of the commercial gain is a third party and not the respondent and (b) the alleged falsities in the Response to which the Complainant refers in its Supplemental Filing.
While it is the case that to this Panel it seems counter-intuitive to extend this paragraph of the Policy to cases where the respondent derives no commercial gain of any kind whether direct or indirect, Villeroy & Boch AG v. Mario Pingerna (supra) was a very different case from the present case. The domain name in dispute was a very distinctive, non-generic name, being the name of the complainant and there was no question that the respondent was well aware of the complainant’s trade mark rights. The Panel stated:
“The only novel feature in this case is the Respondent’s statement that the parking page was created by the Registrar, and that at the time the Respondent had no knowledge of its contents. These statements are corroborated by the information and disclaimer on the parking page itself, and the Registrar’s contractual right under clause 3.6 of the registration contract referred to above. Further, the Respondent states that he has not received any money or discount from the website. However, these facts do not exclude bad faith under paragraph 4(b)(iv) for the following reasons: (i) paragraph 4(b)(iv) requires the Respondent to intend to attract Internet users ‘for commercial gain’, but this gain does not need to be derived by the Respondent himself. The Respondent cannot infringe the Complainant’s rights with impunity on the basis that it is allowing a third party to reap the profits of its wrongful conduct; (ii) the Respondent has at all times been in contractual control of the content of the website at the disputed domain name, and had the power to instruct the Registrar to remove the parking page.
The Panel also finds that the Respondent’s registration of the disputed domain name with knowledge of the Complainant’s trademarks, its authorization to the Registrar to host a parking page at the disputed domain name, and then its failure to act when the Complainant complained of the links of this parking page to its competitors is an independent ground of bad faith. The Respondent is responsible for the content of any webpage hosted at the disputed domain name. It cannot evade this responsibility by means of its contractual relationship with the Registrar. The relationship between a domain name registrant and the Registrar does not affect the rights of a complainant under the Policy.”
An additional factor in that case was that the respondent gave a somewhat implausible reason for registering the domain name <villeroy-boch.mobi>, namely for a literary work that was in progress, and yet failed to produce any supporting evidence. While the Respondent in this case has not distinguished himself when it comes to explanations, the Domain Name is in a different category from that the subject of Villeroy & Boch AG v. Mario Pingerna (supra) and the Respondent is able to point to his company’s trade mark application. As this Panel found in Research In Motion Limited v. Privacy Locked LLC/Nat Collicot, WIPO Case No. D2009-0320:
“The Panel believes it appropriate that purchasers of domain names should be taken to have knowledge of (a) what they have purchased and (b) how their domain names are being used. Accordingly, if a domain name, which they have purchased incorporates a third party’s trade mark of which they are likely to have knowledge, they should be treated as having acquired that domain name knowingly and knowingly to have put the domain name to the use to which it is being put.”
In its Supplemental Filing the Complainant points to what it contends are falsities in the Response. They are said to be as follows:
1. The Respondent’s company which filed the Australian trade mark application has been deregistered as a company. The Complainant has submitted a document to that effect from a site at <creditorwatch.com.au>. The Panel is unable to assess the authenticity of the document, but the Complainant visited the site on March 13, 2013 and the document in question does not provide a date upon which the Respondent’s company was deregistered. In any event, it does not appear to be in dispute that that company filed the Australian PURVA trade mark application on December 24, 2013”.
2. The Respondent has further made false statements with regard to the domain names owned by him. The domain name <shiva.me> does not open to any website/webpage. The domain name appears to be blog site which can no longer be accessed. The domain name <vishakha.com> cannot be found. While arguably the wording of the Response may be somewhat ambiguous, in the view of the Panel the Respondent does not make any claims for the websites to which the domain names in question are or are not connected. He merely says: “Being a practising Jaini (part of Hinduism) I have bought other domains which have religious significance and relation to my religion.” And he then cites <shiva.me> and <vishakha.com> as examples. As the Complainant observes they do not appear to connect to anything active.
3. The Complainant produces print-ups from the Respondent’s website connected to his domain name <godavari.com> (Godavari said by the Respondent to be a river sacred to Hindus) and observes that on March 14, 2013 <godavari.com> was redirected to a parking page featuring “Ads Related to Real Estate India”, “Ads Related to Puravankara”, the Complainant, and “Ads Related to Purva”. According to the Complainant: “This clearly indicates that the Respondent’s domain name ‘’www.Godavari.com’’ has no religious significance whatsoever and his submissions regarding the said website were all false.” However, as the Panel has indicated, the Respondent made no submissions regarding the website. Nonetheless, the Panel has some sympathy with the Complainant. The context in which these other religious domain names were mentioned by the Respondent could understandably lead people to believe that they, like his stated plans for the Domain Name were in use in a religious sphere of activity appropriate to the names in question.
What the Complainant does not point out in relation to the site to which the <godavari.com> domain name resolves, containing numerous links to property development websites, is that in the Response the Respondent categorically states: “I have never been and do not intend to enter into “Real Estate” which is the sole business of the Complainant”. True, he is saying this in the context of the Domain Name and not the <godavari.com> domain name, and again it may be that he is not personally responsible for selecting the advertising links on that site, but it raises doubts about the Respondent.
While the Panel has found that the Complaint has failed under this, the third element of the Policy, the Panel has not found this an easy case to decide and recognises that it is conceivable that the Respondent registered the Domain Name, knowing of the Complainant’s trade mark rights and with the intention at some time to exploit those rights to his own advantage by bad faith use of the Domain Name. It is conceivable that although the trade mark application predated the Complaint, the Respondent had anticipated the Complaint and that the application was a sham designed simply to defeat the anticipated Complaint.
The Panel has sufficient doubts as to the Respondent’s intentions to recommend that if the Respondent’s future use of the Domain Name should suggest that the Respondent’s motivation at the outset was, as the Complainant has contended, in bad faith, the Complainant should be permitted to re-file the Complaint. In so recommending the Panel recognises that whether or not a re-filed complaint is to be accepted is a matter for the Center and the panel selected to decide the case.
For the foregoing reasons, the Complaint is denied.
Date: March 25, 2013
1 The original Complaint identified the Respondent as Domains By Proxy, LLC, a privacy service. In response to the Center’s registrar verification request the Registrar identified Shiva Malhotra as the underlying registrant of the Domain Name.