WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
IndiaMART InterMESH Limited v. Personal, Manoj Nair/ WhoisGuard
Case No. DTV2011-0003
1. The Parties
The Complainant is IndiaMART InterMESH Limited of Uttar Pradesh, India, represented by Danish Ali Khan, India.
The Respondent is Personal, Manoj Nair of Dublin, Ireland and WhoisGuard of Westchester, California, United States of America.
2. The Domain Name and Registrar
The disputed domain name <indiamart.tv> is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 8, 2011. On April 11, 2011, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On April 21, 2011, eNom 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 Center sent an email communication to the Complainant on April 28, 2011 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 May 3, 2011. The Center verified that 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 May 4, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was May 24, 2011. The Response was filed with the Center on May 24, 2011.
The Center appointed Joan Clark as the sole panelist in this matter on June 7, 2011. 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 the owner of several trademarks registered in India for the trademark INDIAMART, in some cases in stylized script, some of these registrations being as early as November 15, 2002 and February 19, 2004. The Complainant asserts ownership of common law rights in the trademark INDIAMART which it claims to have adopted and used since 1996.
The disputed domain name <indiamart.tv> was registered on August 24, 2007 and is scheduled to expire on August 24, 2011.
5. Parties’ Contentions
The Complainant declares it is an integrated electronic business to business marketplace and web technology company originated in the year 1996 and incorporated in 1999. The Complainant states it created a new synergetic model of business solution in the business to business (B2B) model which enables both domestic as well as international buyers and sellers to interact, negotiate for buying, selling and conducting other business by way of locating business entities to trade on a common platform under ”www.indiamart.com”.
The Complainant asserts it has established credible presence in its Indian operations to provide world class business to business solutions and has already started the process of starting its next line of operations aimed at reaching the entire world.
The Complaint states that the Complainant popularly known as “indiamart” and its website under the domain name <indiamart.com> have received accreditation by the International Organization for Standardization and various agencies. The Complainant asserts that the name “indiamart” was coined by the Complainant’s founder as part of its trademark INDIAMART with the intention of serving Indian suppliers by way of providing them a digital market where global buyers can come and interact with Indian suppliers. From its very inception, the Complainant states, it has focused not only on the Indian customers but also among the international business community from all over the world. The Complainant maintains that its trademark INDIAMART has acquired an excellent and enviable reputation over the years and that any reference to the name INDIAMART refers to the Complainant’s business and trademark not only in India but also across the globe.
In addition to its trademarks registered on the Indian trademark registry, copies of registration certificates for which have been produced by the Complainant, the latter claims common law rights in the trademark INDIAMART. Ever since its inception in 1996, the Complainant asserts it has adopted and used the trademark INDIAMART in respect of its services, and that by virtue of priority in adoption, continuous and exclusive use and extensive advertising, immense reputation and goodwill have accrued to the mark in relation to the services of the Complainant.
The Complainant avers that it has expended considerable sums in advertisements and brand building of the trademark INDIAMART and that its sales revenue is substantial.
The Complainant maintains it has worldwide reputation under the trademark INDIAMART and refers to its popular website “www.indiamart.com”.
The Complainant maintains that the disputed domain name, <indiamart.tv>, is identical to the trademark INDIAMART in which the Complainant has exclusive rights. In addition, the Complainant maintains that the Respondent is not commonly known by the name INDIAMART and that the Complainant has not licensed or otherwise permitted the Respondent to use its trademark INDIAMART. The Complainant asserts that the Respondent ought to have known of the prior rights of the Complainant in its trademark, as its website and its services are well known not only in India but also abroad. In addition, the Complainant maintains that since the Respondent has not proceeded to activate a website under the disputed domain name, it has made no demonstrable preparations to use the latter in connection with a bona fide offering of goods or services, and thus cannot be said to have any rights or legitimate interests in the disputed domain name.
The Complainant maintains that the Respondent has both registered and is using the disputed domain name in bad faith, adding that even if the Respondent were to activate its website, such website would lead to confusion since any consumer would be likely to associate the website for the disputed domain name with the Complainant and its goods or services.
The Complainant requests the Panel to issue a decision that the disputed domain name <indiamart.tv> be transferred to the Complainant.
The Respondent has filed a brief Response in which he states that the disputed domain name was registered for a Dublin based Indian grocery store planning to offer Indian vegetables/grocery items to Dublin/Irish residents. The Response continues that due to the ongoing economic recession in Ireland, the plan was delayed and “we don’t have a firm date yet.” The Response also states “this will in no way be a competition for the Complainant nor be disrupting the Complainant’s business”, and “the website was never set up or used in a way that would affect business interests of the Complainant.”
The Respondent requests that the Panel deny the remedies requested by the Complainant.
6. Discussion and Findings
Paragraph 4(a) of the Policy states that, in order to be successful with respect to a disputed domain name, the Complainant has the burden of providing that all three elements are present in the Complaint, namely:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy sets out four illustrative circumstances which, for the purpose of paragraph 4(a)(iii) above, shall be evidence of registration and use of a domain name in bad faith but are not limitative.
Paragraph 4(c) of the Policy sets out three illustrative circumstances each of which, if proven, shall demonstrate the Respondent’s rights or legitimate interests in the disputed domain name for purposes of paragraph 4(a)(ii) above.
A. Identical or Confusingly Similar
The Panel finds the disputed domain name <indiamart.tv> is virtually identical, and certainly confusingly similar, to the trademark INDIAMART in which the Complainant has shown it has rights.
The addition of the gTLD suffix “.tv” does not detract from the confusing similarity, as has been held in many decisions.
The first element which must be found in order for the Complaint to succeed has been established.
B. Rights or Legitimate Interests
In the Response, the Respondent states that the plan for using the disputed domain name has not been put into effect, and thus confirms that the Respondent has not made demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services. A deferred plan to offer goods does not constitute preparations to use the domain name in connection with a bona fide offering of such goods.
The Respondent has not denied the Complainant’s assertion that the Respondent has not been commonly known by the disputed domain name.
There is no statement in the Response which would indicate that the Respondent has rights or legitimate interests in respect of the disputed domain name. Instead the Respondent’s position seems to be, without dealing with the question of rights or legitimate interests in the disputed domain name, an assumption that such domain name would not be competition for the Complainant and would not affect the latter’s business interest. The Panel finds no basis in the record for such an assumption.
Finally, the Panel notes that the Respondent is not making a legitimate non commercial or fair use of the disputed domain name.
After considering all the evidence and assertions in the Complaint and the contents of the Response, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The second element required for the Complaint to succeed has been established
C. Registered and Used in Bad Faith
The Complainant has produced evidence that its trademark INDIAMART is well known not only in India but also has a reputation in the world. The Complainant also argues that the Respondent must have known of the existence of the Complainant’s mark when the disputed domain name was registered. This is not denied by the Respondent. In any event, under paragraph 2 of the Policy, it was the Respondent’s responsibility to determine whether his domain name registration infringes or violates someone else’s rights. Therefore, even if the Respondent were not initially aware of the existence of the Complainant’s trademark INDIAMART, it was his responsibility to carry out some investigation to verify that no one else’s trademark would be infringed. In view of the foregoing, the Panel concludes that the disputed domain name was registered in bad faith.
While a website has not been functioning under the disputed domain name, the mere existence of the latter held by the Respondent prevents the Complainant, owner of the trademark INDIAMART, from itself registering the disputed domain name with the suffix “.tv”. In the circumstances of the present case, the Respondent’s passive holding of the disputed domain name is equivalent to using the domain name in bad faith. See Telstra Corporation Limited. vs. Nuclear Marshmallows, WIPO Case No. D2000-0003.
The Panel finds that the disputed domain name was registered and is being used in bad faith, and the third element required for the Complaint to succeed has been established.
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 <indiamart.tv> be transferred to the Complainant.
Dated: June 17, 2011