WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Wipro Enterprises Private Limited (“WIPRO”) v. Domain Privacy Service fbo Registrant / Ankur Aggarwal, Piron
Case No. D2017-0181
1. The Parties
The Complainant is Wipro Enterprises Private Limited (“WIPRO”) of Bangalore, Karnataka, India, represented by Selvam and Selvam, India.
The Respondent is Domain Privacy Service fbo Registrant of Phoenix, Arizona, United States of America (“United States”) / Ankur Aggarwal, Piron of Jersey City, New Jersey, United States.
2. The Domain Name and Registrar
The disputed domain name <wiprofurniture.com> is registered with FastDomain, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 30, 2017. On January 30, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 30, 2017, 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 Complainant filed an amended Complaint on February 3, 2017.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 7, 2017. In accordance with the Rules, paragraph 5, the due date for Response was February 27, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 28, 2017.
The Center appointed Linda Chang as the sole panelist in this matter on March 6, 2017. 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 16, 2017, in accordance with the Rules, paragraph 12, the Panel issued Procedural Order 1, requesting evidence from the Complainant to support its contention that it owns or can otherwise rely on the trademarks submitted to support the Complaint. On March 21, 2017, the Panel received the requested evidence.
4. Factual Background
The Complainant Wipro Enterprises Private Limited was incorporated in 1945 and forms part of the Wipro Group of Companies. The Wipro Group of Companies comprises two main businesses: (1) Wipro Consumer Care, primarily dealing in personal care products, lighting solutions and furniture; and (2) Wipro Infrastructure Engineering, for hydraulic solutions. Wipro Furniture Business, a trading name of the part of the Wipro Consumer Care business that deals in furniture, has been active since 2004.
The Complainant states that it is well-known for its Office Modular Furniture and Seating Solutions and has serviced over 3,500 projects, 3,000 customers, and has installed over 813,000 chairs and 621,000 workstations, providing complete range of office furniture solutions which includes workstations, benching and cabin furniture.
The Complainant’s Wipro Furniture Business provides a list of products on the website “www.wiprofurniturebusiness.com”. The products include furniture.
The Complainant contends that it can rely on several WIPRO trademarks registered in various trademark classes in India, such as registration number 784688 (January 2, 1998) and 784728 (January 2, 1998). These trademarks are registered in the name of Wipro Trademarks Holdings Limited, a related entity to the Complainant.
In response to Procedural Order 1, the Complainant provided documentary evidence that Wipro Enterprises Private Limited has the right to use the trademarks relied upon.
The Respondent registered the disputed domain name on July 3, 2012. The disputed domain name is currently inactive, not resolving to any website.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is identical and/or confusingly similar to the WIPRO trademarks in which the Complainant has rights. The inclusion of the entire WIPRO trademark in the disputed domain name is evidence that the disputed domain name is confusingly similar to the WIPRO trademarks. Furthermore, the removal of the word “business” from the Complainant’s domain name <wiprofurniturebusiness.com> to the formation of the disputed domain name <wiprofurniture.com> does not create a domain name that is distinguishable, but is just as confusingly similar to the Complainant’s.
The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent has no connection or affiliation with the Wipro Group and has not received any license or consent, express or implied, to use the WIPRO trademarks in a domain name or in any other manner. No other circumstances show that the Respondent has rights or legitimate interests in the disputed domain name.
The Complainant contends that the disputed domain name was registered and is being used in bad faith. The Respondent registered the disputed domain name in bad faith by doing so with knowledge of the Complainant’s rights in the WIPRO trademarks and with an intent to cause confusion among the consumers. Furthermore, the Respondent is deemed to have constructive notice of the Complainant’s WIPRO trademarks as a basic domain name search and other searches of the USPTO and Indian Trademark Office records could show the Complainant’s rights over WIPRO.
Finally, the Complainant contends that the Respondent’s registration of the disputed domain name supports a finding of bad faith and there is no conceivable contemplated use of the disputed domain name that would not be an infringing use by the Respondent.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant relies upon trademarks WIPRO APPLYING THOUGHT (June 30, 1997), WIPRO APPLYING THOUGHT and Design (January 2, 1998), WIPRO and Design (January 2, 1998), and other trademarks that are all registered in India in the name of Wipro Trademarks Holdings Limited (the “WIPRO trademarks”).
Paragraph 4(a)(i) of the Policy requires that the domain name be identical or confusingly similar to a trademark of service mark in which the Complainant has rights. This does not require that the Complainant be the owner of the trademark and would include, for example, a licensee of the trademark. It has been also adopted in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.8, “In most circumstances, a licensee of a trademark or a related company such as subsidiary or parent to the registered holder of a trademark is considered have rights in a trademark under the UDRP”.
The Complainant contended in its Complaint that it has rights in the WIPRO trademarks. The Panel issued Procedural Order 1 to request further documentary evidence of such fact from the Complainant. This is in accordance with the approach taken in Spherion Corporation v. Peter Carrington, d/b/a Party Night Inc., WIPO Case No. D2003-1027).
In response to Procedural Order No. 1, the Complainant has provided evidence that Wipro Enterprises Private Limited has acquired the rights to the WIPRO trademarks relied upon in the Complaint. The Complainant is a related company of the WIPRO trademark rightsholder, within the same group of companies that use the WIPRO marks extensively for a range of products.
The Panel is satisfied that the Complainant has rights in the trademarks relied upon which are registered in the name of its related company (see Komatsu Deutschland GmbH v. Ali Osman / ANS, WIPO Case No. D2009-0107).
The registration, use in commerce and application of the WIPRO trademarks pre-date the Respondent’s registration of <wiprofurniture.com>.
Next, as to whether the WIPRO trademarks and the disputed domain name are confusingly similar. The threshold test for confusing similarity under the UDRP Rules involves a comparison between the trademark and the domain name itself to determine likelihood of Internet user confusion. In order to be found confusingly similar, the relevant trademark would generally need to be recognizable as such within the disputed domain name. The addition of common, dictionary or descriptive terms typically being regarded as insufficient to prevent threshold Internet user confusion.
According to the consensus view under paragraph 1.11 of the WIPO Overview 2.0, “as figurative, stylized or design elements in a trademark are generally incapable of representation in a domain name, such elements are typically disregarded for the purpose of assessing confusing similarity, with such assessment generally being between the alpha-numeric components of the domain name, and the dominant textual components of the relevant mark.”
Taking the submitted trademark WIPRO and Design (January 2, 1998), the device element of the trademark will be disregarded, and an assessment made on the basis of the dominant textual components of the WIPRO mark.
The Panel does not consider that “.com” being a generic Top-Level Domain extension would give any distinctiveness to the disputed domain name and consequently it can be disregarded for the purpose of this proceeding. The most dominant part of the disputed domain name is “wiprofurniture”, comprised of “wipro”, which is identical to the WIPRO trademark and the dictionary word “furniture”.
The Complainant has provided evidence that through the related Wipro Furniture Business it actually offers furniture products for sale and allows its customers to purchase furniture goods. The Panel thus holds that addition of the dictionary word “furniture” is insufficient to eliminate the confusing similarity between the disputed domain name and WIPRO trademark, but instead reinforces such confusion in that the word “furniture” directly relates to a part of the Complainant’s business.
The Panel determines that the disputed domain name is confusingly similar to at least one of the WIPRO trademarks and the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which the Respondent may establish rights or legitimate interests in the disputed domain name, by demonstrating any of the following:
(i) before any notice to it of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) that the Respondent has been commonly known by the disputed domain name, even if it has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Complainant contends that the Respondent is neither affiliated with the Wipro Group of companies nor licensed nor authorized to use the WIPRO trademarks. The Respondent did not rebut such contentions by the Complainant.
In the circumstances where the Complainant has rights to the WIPRO trademarks while the Respondent seems to have no trademark rights in WIPRO, the Panel is satisfied that the Complainant has established a prima facie case the Respondent lacks rights or legitimate interests in the disputed domain name, and the burden of production shifts to the Respondent (see Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
The Respondent has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or of any other circumstances giving rise to a right or legitimate interest in the disputed domain name. The Panel thus finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Panel determines that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The third and final element in paragraph 4(a) of the Policy that the Complainant needs to prove is that the disputed domain name “has been registered and is being used in bad faith” by the Respondent.
According to the WIPO Overview 2.0, paragraph 3.2, “examples of what may be cumulative circumstances found to be indicative of bad faith include the complainant having a well-known trademark, no response to the complaint having been filed, and the registrant’s concealment of its identity. Panels may draw inferences about whether the domain name was used in bad faith given the circumstances surrounding registration, and vice versa”.
The Complainant has provided evidence that the prior trademark in which it has rights was well known in India and in other places of the world. The Complainant has also provided evidence that its Group of Companies has received awards in India with 12 India Design Mark Awards, 41 Design Awards and a “Green Company of the Year” award by Knowledge Resource Development & Welfare.
The Panel finds that, on the balance of probabilities, the Respondent was aware of the existence and renown of the WIPRO trademarks at the time of registering the disputed domain name.
The Panel accepts the Complainant’s contention that the registration of the disputed domain name was not by accident and that it is not a name that the Respondent would have legitimately and randomly chosen along with the dictionary word “furniture” without prior knowledge of the Complainant’s business. Where a mark is well known, it is “not one traders would legitimately choose unless seeking to create an impression of an association” with the Complainant (see Telstra Corp. Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (February 18, 2000)).
The fact that the disputed domain name incorporates the Complainant’s WIPRO trademark in its entirety, along with the word “furniture” which is a type of product sold by the Complainant, is in the Panel’s view evidence that the registration of the disputed domain name was in bad faith as it attempted to profit from the renown of the WIPRO trademark.
The Respondent has not actively used the disputed domain name, but instead passively held the disputed domain name since the registration date. According to the WIPO Overview 2.0, paragraph 3.2, “panels have found that the apparent lack of so-called active use of the domain name without any active attempt to sell to contact the trademark holder (passive holding), does not as such prevent a finding of bad faith”.
No response to the Complaint was filed, which has been found to contribute to a finding of bad faith. (See, for example, Ladbroke Group Plc v. Sonoma International LDC, WIPO Case No. D2002-0131 (April 10, 2002)).
The Panel also notes, as another contributing element of bad faith, the Respondent used a privacy protection service to conceal the registrant of the disputed domain name.
The Panel is satisfied that the registration of the disputed domain name was in bad faith, and passive holding of the disputed domain name amounts to bad faith use by the Respondent. The Complainant has therefore made out a case sufficient to satisfy the requirements of paragraph 4(a)(iii) 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 <wiprofurniture.com> be transferred to the Complainant.
Date: March 29, 2017