WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bharti Airtel Limited v. Oleg Mandrik
Case No. D2015-1815
1. The Parties
Complainant is Bharti Airtel Limited of New Delhi, India, represented by Vutts & Associates LLP, India.
Respondent is Oleg Mandrik of Tallinn, Estonia.
2. The Domain Name and Registrar
The disputed domain name is <airtelbank.com>, registered with DropFall.com Inc. ("Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center ("Center") on October 12, 2015 in connection with two domain names, <airtelbank.com> and <airtelpayment.com>. On October 12, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On October 16, 2015, 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 providing contact information and other details of the domain name registrations. The Center sent an email communication to Complainant on October 19, 2015 providing the registrant and contact information disclosed by the Registrar and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on October 26, 2015 in connection with the domain name <airtelbank.com> and subsequently withdrew its complaint as to <airtelpayment.com>.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy ("Policy" or "UDRP"), the Rules for Uniform Domain Name Dispute Resolution Policy ("Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("Supplemental Rules").
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on October 28, 2015. In accordance with the Rules, paragraph 5, the due date for Response was November 17, 2015. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on November 18, 2015.
The Center appointed Debra J. Stanek as the sole panelist in this matter on November 27, 2015. 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
Complainant is among the world's largest telecom companies. Complainant owns numerous trademark registrations worldwide for the mark AIRTEL and other marks that feature the term "airtel," for a variety of telecommunications-related goods and services, including an Indian registration that includes insurance and financial and monetary services, which was issued in March 2012. Complainant also owns and operates websites under the <airtel.com> and <airtel.in> domain names, as well as numerous other domain names that include the term "airtel" in combination with other terms (e.g., "Africa", "world", "mbanking", etc.).
The disputed domain name was registered in May 2015. It appears that it is not being used with an active website. Instead, visitors are presented with a page that lists "Related Links" on a variety of general topics along with a message that states that the disputed domain name is available for sale for a cost of EUR 899.
In early September 2015, Complainant's counsel sent an email notification to Respondent demanding that it cease use of the disputed domain name and mark AIRTEL. According to Complainant, Respondent never responded.
5. Parties' Contentions
1. Identical or Confusingly Similar
Complainant owns numerous trademark registrations for the mark AIRTEL for telecommunications-related goods and services.
The disputed domain name includes Complainant's AIRTEL mark in its entirety and is identical to Complainant's mark. The term "airtel" is an invented term. Because the public will "mistakenly assume that the Respondent's services originate from the same source as, or are associated with, the services of the Complainant", the domain name "should be considered identical/confusingly similar" to Complainant's AIRTEL mark.
2. Rights or Legitimate Interests
Respondent has no legitimate rights in the disputed domain name.
Respondent registered the disputed domain name on May 7, 2015; Complainant has been using the AIRTEL mark for decades.
Respondent, "Oleg Mandrik", does not have any demonstrable interest in the AIRTEL mark or any similar mark. Respondent is not affiliated with Complainant and has not been authorized or licensed to register or use any of Complainant's marks. Operating a webpage under a domain name that is similar to a distinctive trademark does not establish rights or legitimate interests.
Respondent is "passively holding" the domain name, because the website used with it is a temporary parking place. That passive use is not a bona fide offering of goods or services.
There has been no apparent effort to make noncommercial or fair use of the disputed domain name since Respondent's conduct negates the possibility of such use.
3. Registered and Used in Bad Faith
Respondent registered and is using the disputed domain name in bad faith.
Respondent's primary purpose in registering and using the disputed domain name is to intentionally attempt to attract, for commercial gain, Internet users to Respondent's web sites and other online locations by creating a likelihood of confusion with Complainant's AIRTEL mark.
Complainant learned of the disputed domain name in September 2015 and demanded that Respondent immediately transfer the domain name to Complainant. Complainant never received a response.
Respondent was aware of the significance of the AIRTEL mark and clearly intended to cash in on and disrupt Complainant's business and profit through inevitable consumer confusion and deception. It is apparent that Respondent is duping consumers who mistake the domain name for Complainant, resulting in illegitimate monetary gains.
The facts support the conclusion that the primary purpose of registering the disputed domain name was to earn revenue by falsely posing as Complainant and/or its competitors. Further, this is indicative of the intent on Respondent's part to profit from the trade mark significance of the disputed domain name.
Finally, it is submitted that the mark AIRTEL has no natural meaning and is a term that was invented by Complainant for use as Complainant's name and mark.
Respondent did not reply to Complainant's contentions.
6. Discussion and Findings
A. Procedural Matters
The Rules define the "Respondent" as "the holder of a domain-name registration against which a complaint is initiated." See Rules, paragraph 1, s.v. "Respondent." The Panel is of the view that a complaint is "initiated" when it is filed with the Center as described in the Rules, paragraph 3. This is consistent with the paragraph 3(a) of the Rules1 , which provides (emphasis added):
Any person or entity may initiate an administrative proceeding by submitting a complaint in accordance with the Policy and these Rules to any Provider approved by ICANN.
Therefore, under the Panel's view, the original complaint correctly named "United Privacy Corp." as Respondent. After this proceeding was filed and commenced, the registrar changed the registration records and identified as the "registrant" an individual named "Oleg Mandrik" and Complainant amended its Complaint to identify that individual. The Panel deems the Respondent in this matter to be Oleg Mandrik.
B. Substantive Matters
In order to prevail, a complainant must prove, as to the disputed domain name, that:
(i) It is identical or confusingly similar to a mark in which the complainant has rights.
(ii) The respondent has no rights or legitimate interests in respect to it.
(iii) It has been registered and is being used in bad faith.
Policy, paragraph 4(a). The Policy sets out examples of circumstances that may evidence a respondent's rights or legitimate interests in a domain name, see Policy, paragraph 4(c), as well as circumstances that may evidence a respondent's bad faith registration and use, see Policy, paragraph 4(b).
Although Respondent has not answered the Complaint, a default does not automatically result in a finding for Complainant. Rather, Complainant continues to have the burden of establishing the required elements of the Policy. The Panel may, however, draw such inferences from Respondent's default as it considers appropriate. See Rules, paragraph 14(b).
The primary consequence of Respondent's failure to respond is that it has not made any argument or offered any evidence described in paragraph 4(c) of the Policy, such as using (or preparing to use) a domain name before the dispute, being known by a domain name, or making legitimate noncommercial or fair use of a domain name, that might support a finding that Respondent has rights or legitimate interests in the domain name. Further, Respondent has provided no evidence or argument on the issue of bad faith.
1. Identical or Confusingly Similar
Complainant has established its rights in the mark AIRTEL by virtue of the evidence of its trademark registrations, including registrations in India, the United States of America, and the United Kingdom of Great Britain and the Northern Ireland.
Complaint appears to argue that the <airtelbank.com> disputed domain name is identical to its AIRTEL mark. The Panel disagrees.
Complainant also argues that the domain name is confusingly similar to the AIRTEL mark. However, many of its arguments rely on the distinctiveness of its mark and how well-known its mark is among consumers. These factors are relevant in a traditional trademark infringement action, but are not generally part of the analysis of the first factor under the consensus view, which is shared by the Panel. See, e.g., WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, paragraph 1.2 ("WIPO Overview 2.0") (generally, test for confusing similarity involves straightforward comparison of trademark and alphanumeric string making up the domain name).
As a general matter, a domain name is likely to be deemed to be confusingly similar to a mark if it incorporates the mark or a variation or dominant portion of the mark; however, such a finding is not automatic. Here, the domain name does incorporate the AIRTEL mark in its entirety. The addition of the term "bank" at the end of the domain name does not distinguish the domain name from Complainant's mark. Further, the use of "bank" serves a generic function for Complainant's registration of AIRTEL for financial services.
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights.
2. Rights or Legitimate Interests
The Panel, consistent with the consensus view, finds that a complainant may establish that a respondent has no rights or legitimate interests in respect of a domain name by making a prima facie showing that a respondent lacks rights or legitimate interests. See WIPO Overview 2.0, paragraph 2.1 (once complainant makes a prima facie case, the burden of showing rights or legitimate interests in the domain name shifts to respondent).
Paragraph 4(c) of the Policy sets out the following examples:
(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 Panel is mindful that establishing that a respondent has no rights or legitimate interests in a domain name, i.e., proving a negative, can be difficult. For this reason, however, a complainant's burden is to establish a prima facie case which then shifts the burden to the Respondent to rebut the same. The Panel finds that Complainant has made a prima facie showing as to the examples set out in paragraph 4(c) of the Policy.
It does not appear that Respondent is commonly known by the domain name – Respondent is an individual named Oleg Mandrik. Respondent does not appear to be using the domain name in connection with a bona fide offering of any kind. As noted above, the disputed domain name is confusingly similar to Complainant's mark and is used with a site that offers the domain name for sale and appears to generate "per click" revenue.
The Panel concludes that Complainant has established that Respondent lacks rights or legitimate interests in the disputed domain name.
3. Registered and Used in Bad Faith
A complainant must establish that a disputed domain name was registered and is being used in bad faith. The Policy sets out four circumstances, evidence of which may establish bad faith (see Policy, paragraph 4(b)(i)-(iv)):
(1) Registering the domain name primarily to sell it for more than documented out-of-pocket costs (see Policy, paragraph 4(b)(i)).
(2) Registering the domain name to prevent the owner of the trademark from reflecting the mark in a domain name, where there is a pattern of such conduct (see Policy, paragraph 4(b)(ii)).
(3) Registering the domain name primarily to disrupt the business of a competitor (see Policy, paragraph 4(b)(iii)).
(4) Using the domain name to intentionally attempt to attract, for commercial gain, Internet users to [respondent's] web site or other on-line location, by creating a likelihood of confusion with complainant's mark as to the source, sponsorship, affiliation, or endorsement of [respondent's] web site or location or a product or service on [the respondent's] web site or location, (see Policy, paragraph 4(b)(iv)).
Complainant's rights in its AIRTEL mark predate registration of the disputed domain name. Under these circumstances, including adverse inferences drawn by the offer to sell the domain for EUR 899, Respondent's failure to respond, and its use of an identity shield, the Panel finds it is most probable that Respondent was aware of Complainant's AIRTEL trademark and of its telecommunications and other services at the time the domain name was registered.
The Panel finds that Complainant has established that Respondent registered and is using the disputed domain name in bad faith.
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 <airtelbank.com> be transferred to Complainant.
Debra J. Stanek
Date: December 7, 2015
1 See also, Rules, paragraph 4, which is entitled "Notification" of Complaint and does not refer to "initiation." Instead, paragraph 4(c) refers to the "commencement" of the proceedings.