WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Information Tools Limited v. Kanishka Dayal
Case No. DCO2011-0032
1. The Parties
The Complainant is Information Tools Limited of Auckland, New Zealand, represented by Baldwins Intellectual Property, New Zealand.
The Respondent is Kanishka Dayal of Chantilly, Virginia, United States of America (“USA”).
2. The Domain Name and Registrar
The disputed domain name <infotools.co> (the “Domain Name”) is registered with GoDaddy.com, Inc. (the “Registrar”)
3. Procedural History
The Complaint was originally filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 20, 2011, against T. Dayal.
The Center transmitted its request for registrar verification to the Registrar on May 20, 2011. The Registrar replied on May 23, 2011, stating that it had received a copy of the Complaint, that the Domain Name was registered with it, that the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”) applied to the Domain Name, that the Domain Name would expire on July 19, 2011, that the Domain Name would remain locked during this proceeding but the lock would expire automatically on its receipt of an order dismissing or suspending the case of expiry of the registration, that the language of the registration agreement was English, and that the Domain Name was registered to the current registrant on July 20, 2010. On the other hand, the Registrar stated that the originally named Respondent in the Complaint was not the registrant and provided the full contact details held on its WhoIs database in respect of the Domain Name, which identified the registrant as Kanishka Dayal.
The Center notified the Complainant by email of May 27, 2011, that the Complaint was formally deficient in that the respondent identified in it was not the registrant. The Complainant submitted an amended Complaint by email on May 31, 2011, naming Kanishka Dayal as the Respondent.
The Center verified that the amended Complaint satisfied the formal requirements of the 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”) which have been adopted by the registration authority of .CO.
In accordance with paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 1, 2011. In accordance with paragraph 5(a) of the Rules, the due date for Response was June 21, 2011. By email of June 15, 2011, the Respondent set out reasons why he/she believed he/she was the rightful owner of the Domain Name.
By email of June 1, 2011, the Center asked the Registrar whether any action was required by the parties to keep the Domain Name under Registrar LOCK so that this proceeding could continue as required under the UDRP. The Registrar replied the same day stating that its position was to make the Complainant bear the burden of ensuring that a disputed domain name did not expire, but that it would take steps to ensure that the Domain Name would remain in status quo during this proceeding.
The Center wrote to the parties on June 29, 2011, drawing attention to the correspondence with the Registrar and urging them to contact the Registrar directly to address the forthcoming expiry of the Domain Name. The Respondent replied to the Center the same day, stating that he/she had tried to renew the Domain Name online, but the Registrar would not let him/her do so since the Domain Name was in a “locked” status due to the dispute. The Complainant replied to the Center the following day, stating that it too had tried to renew the Domain Name but that the Registrar would not let it.
The Center wrote again to the Registrar on July 1, 2011, referring to the emails from the Respondent of June 29 and 30, 2011, and asking the Registrar to inform the Center of any procedural steps required to keep the Domain Name active during the proceeding. The Registrar replied the same day stating that its disputes team would process a renewal of the Domain Name by either party. The Complainant responded on July 4, 2011, stating that it would await confirmation that the Respondent had renewed the Domain Name, adding that the Complainant would reimburse him/her in accordance with normal dispute practices.
The Center appointed Jonathan Turner as the sole panelist in this matter on July 4, 2011. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with paragraph 7 of the Rules. Having reviewed the file, the Panel is satisfied that the Amended Complaint complied with applicable formal requirements and has been submitted to a properly constituted Panel in accordance with the Policy, the Rules and the Supplemental Rules.
4. Factual Background
The Complainant owns registered trademarks in respect of various computer-related goods and services for INFOTOOLS in New Zealand, Australia and Argentina, and for a logo consisting predominantly of a representation of INFOTOOLS in those countries and also in the USA, the European Union and South Africa.
In July and August 2010 the Domain Name resolved to a generic web page displaying sponsored links to various websites including some relating to computer software. The Complainant sent a cease and desist letter on July 29, 2010, and a follow-up letter on December 14, 2010. The Complainant did not receive any reply but the web page was changed to omit the sponsored links and to display a disclaimer stating: “We are not connected in any way with Information Tools Limited or infotools.com”. The disclaimer also included the email address to which the Complainant had sent the cease and desist letter.
5. Parties’ Contentions
The Complainant contends that the Domain Name is identical to its registered marks.
The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Complainant points out that there was no evidence of any use of the Domain Name in connection with a bona fide offering of goods or services prior to notice of the dispute; that the Respondent does not appear to be commonly known by the Domain Name; and that the Respondent has not been making legitimate noncommercial or fair use of the Domain Name.
Finally, the Complainant alleges that the Domain Name was registered and is being used in bad faith. The Complainant infers that the Domain Name was transferred from T. Dayal to the Respondent, Kanishka Dayal, in an attempt to avoid this proceeding. The Complainant further notes that 230 domain names are registered in the Respondent’s name and 413 domain names are registered in the name of T. Dayal, including <thewalmart.com>.
The Respondent’s email of June 15, 2011, did not comply with the formal requirements for a response under paragraph 5 of the Rules, but the Panel exercises its discretion to admit it.
The Respondent believes that he/she is the rightful owner of the Domain Name firstly because the Complainant does not have a business in Colombia; secondly because there are several other domain names with the same second level domain, “infotools”; and thirdly because he/she has an information technology company in the USA with a website at “www.technolyst.com” and he/she wishes to use the Domain Name for his/her future services in Colombia. He/she adds that he/she is not trying to mislead Internet users seeking the Complainant’s website by posting the disclaimer mentioned above.
6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding, the Complainant must prove (i) that the Domain Name is identical or confusingly similar to a mark in which it has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) that the Domain Name has been registered and is being used in bad faith. It is clear that these are cumulative requirements and it is therefore appropriate to consider each of them in turn.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has registered rights in the mark INFOTOOLS. It is irrelevant that these rights are in countries other than Colombia. The Internet is an international medium and the registration and use of a “.co” domain name can impact on rights in trademarks anywhere in the world.
The Panel further finds that the Domain Name is effectively identical to this mark. It is well-established that the generic top-level domain suffix may be discounted when making the comparison required by this condition of the UDRP. The first requirement of the UDRP is satisfied.
B. Rights or Legitimate Interests
The Panel finds on the record that the Respondent has no rights or legitimate interests in respect of the Domain Name.
The only use made of the Domain Name prior to the notice of the dispute appears to have been for a generic web page using a template of the Registrar displaying various sponsored links, some of which linked to websites promoting products competing with those of the Complainant. The Panel does not regard this as a bona fide offering of goods and services.
The Panel also notes that the Respondent states that he/she wishes to use the Domain Name for future services in Colombia, which implies that he/she has not hitherto used or made demonstrable preparations to use the Domain Name for any genuine commercial purpose.
It seems clear that the Respondent is not commonly known by the Domain Name. Nor is the Respondent making legitimate noncommercial or fair use of the Domain Name. On the contrary, the Respondent was apparently profiting from the use of the Domain Name for a web page displaying sponsored links, including links to websites of companies operating in similar areas to the Complainant.
Having reviewed the file, there does not appear to be any other basis on which the Respondent could claim a right or legitimate interest in respect of the Domain Name. The second requirement of the UDRP is satisfied.
C. Registered and Used in Bad Faith
The Panel notes the Respondent’s claim to want to use the Domain Name for future services of his/her company Technolyst.Inc in Colombia. The Panel finds this explanation highly improbable since this company does not appear to use the name anywhere “Infotools” on its website.
It is also apparent from the evidence that the Respondent and T. Dayal have registered large numbers of domain names. It is therefore reasonable to infer that they would have checked who owned the domain name <infotools.com> before registering <infotools.co> and found that it was the Complainant.
In these circumstances, it does not appear to the Panel that the Domain Name was directed to a web page containing sponsored links innocently as a temporary measure pending a genuine commercial use of the Domain Name. Rather, the Panel infers that the Respondent intentionally attempted to attract Internet users to the web page by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the web page, for commercial gain in the form of click-through commissions. In accordance with paragraph 4(b)(iv) of the UDRP this constitutes evidence of bad faith registration and use, or at any rate would have done so if T. Dayal had remained the registrant.
The Panel further finds that the Domain Name was transferred to the present Respondent in bad faith in the hope of defeating the Complaint. The Panel infers that the Domain Name was registered in the name of the Respondent with the likely intention of continuing the previous use for sponsored links and/or with a view to sale to the Complainant at a profit.
In all the circumstances, the Panel finds that the Domain Name was registered and is being used in bad faith. The third requirement of the UDRP is satisfied.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <infotools.co>, be transferred to the Complainant.
Dated: July 12, 2011