WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Himalaya Global Holdings Limited v. Niyaz Khan

Case No. D2010-1583

1. The Parties

The Complainant is Himalaya Global Holdings Limited of Dubai, United Arab Emirates, represented by S. Majumdar & Company, India.

The Respondent is Niyaz Khan of Chennai, Tamilnadu, India.

2. The Domain Name and Registrar

The disputed domain name <liv52.com> is registered with GoDaddy.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 18, 2010. On September 20 and 21, 2010, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On September 21, 2010, GoDaddy.com, Inc. transmitted by email to the Center its verification response, confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that the 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 September 22, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was October 12, 2010. Upon the Respondent’s request on October 11, 2010, the due date was extended to October 16, 2010. The Response was filed with the Center on October 16, 2010. On October 17, 2010, the Center received from the Respondent a supplementation to the Response. On October 18, 2010, the Center received from the Complainant an objection to the Respondent filing the supplementation to the Response after the due date. On November 16, 2010, the Center received from the Respondent further explanation on filing the supplementation to the Response. On November 22, 2010, the Center received from the Complainant comments on the Respondent’s explanation of November 16. On November 26, 2010, the Center received from the Respondent a reply to the Complainant’s comments of November 22. On November 29, 2010, the Center received from the Complainant further comments on the Respondent’s submissions. On November 29, 2010, the Center received from the Respondent a reply to the Complainant’s comments. The Center appointed Linda Chang as the sole panelist in this matter on November 8, 2010. 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.

Given the provided submissions from both parties, and the circumstances of this case, the Panel chooses at its discretion to consider the supplementation to the Response as well as the above mentioned correspondence from the Complainant and the Respondent in deciding the case.

On November 30, 2010, the Complainant submitted another unsolicited supplemental filing, which the Center duly brought to the Panel’s attention. Consequently, the Panel has determined not to admit the supplemental filing of November 30, which in any event would not have been dispositive.

Due to special circumstances, the Panel has extended the decision due date until November 30, 2010.

4. Factual Background

The Complainant is a corporation based in the United Arab Emirates and is the parent company of The Himalaya Drug Company, whose Ayurvedic medicaments, including a medicine for liver ailments under the trademark LIV.52 and its variants are marketed in over forty-five countries in Europe, the Americas, Middle East, Africa and Asia. The Complainant is the owner of the trademark LIV.52 and all other trademarks used in connection with the LIV.52 brand of Avurvedic medicine products. The Himalaya Drug Company was established in 1930 and the product range LIV.52 was introduced in 1955 by Himalaya Herbal Healthcare, and the LIV.52 trademark was first registered in India on July 10, 1957.

The Respondent registered the disputed domain name <liv52.com> on July 6, 2003. The disputed domain name is used in connection with a website promoting the LIV.52 products and a link to another website selling the LIV.52 products.

5. Parties’ Contentions

A. Complainant

(1) The Disputed Domain Name Is Identical or Confusingly Similar to the Complainant’s Trademark

The Complainant contends that the disputed domain name is confusingly similar to the Complainant’s trademark to which the Complainant has rights.

The Complainant states that it owns a number of registrations for the trademark LIV.52 in numerous countries all over the world. The Complainant claimed that LIV.52 is a well-recognized, famous and distinctive trademark that enjoys a worldwide reputation, goodwill and brand name recognition.

The Complainant asserts that the disputed domain name <liv52.com> incorporates the Complainant’s registered trademark LIV.52 in full and hence is identical to a trademark in which the Complainant has rights.

(2) The Respondent has No Rights or Legitimate Interests in the Disputed Domain Name

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name on the basis of the following reasons:

Firstly, the Complainant states that it has never licensed or otherwise permitted the Respondent to use its trademarks, nor to apply for domain names incorporating its trademarks, nor to market the Complainant’s products under the registered trademark LIV.52. Therefore, there is no relationship whatsoever between the Complainant and the Respondent.

Secondly, there is no evidence of any fair or noncommercial uses of the disputed domain name. The Complainant alleges that the Respondent specifically aimed at the Complainant’s mark LIV.52 which is an invented term with the intention to create an impression of association with the Complainant thus attracting visitors at the website to which the disputed domain name resolves to click on a link to a vendor site that sells the LIV.52 products.

Regarding the Respondent’s argument that he has legitimate interests in the disputed domain name due to the Complainant’s acquiescence and waiver of rights to request for domain name transfer, the Complainant stated that the Complainant has never acquiesced any right to the Respondent to use its registered trademark as a domain name. The Complainant also cites the following precedent cases where the panels share the views that a delay in bringing a claim does not generally operate as a waiver of such right: Apple Computer, Inc. v. Omar Acosta Rivera, WIPO Case No. D2006-1118; Tom Cruise v. Network Operations Center / Alberta Hot Rods, WIPO Case No. D2006-0560; Compania Colombiana de Tabaco S.A. v. MultipleNames.com, WIPO Case No. D2007-1519; XFM Limited v. Intervid Limited, WIPO Case No. D2000-1298.

In a later filing by the Complainant, the Complainant asserts that the precedent that was cited by the Respondent, A & H Sportswear Co., Inc. v. Hu Yanlin, WIPO Case No. D2010-0476, could be distinguished from the instant case because the Complainant and the Respondent share the same market.

(3) The Respondent Registered and Is Using the Disputed Domain Name in Bad Faith

The Complainant contends that the disputed domain name was registered and is being used in bad faith.

The Complainant asserts that its trademark LIV.52 which has been in the market since 1955 is distinctive and well-known both nationally in the Indian market as well as internationally. Therefore, the Complainant contends that the Respondent knew or should have known of the existence of the Complainant's trademark prior to registering the disputed domain name in 2003. This prior knowledge constitutes bad faith in registration.

Secondly, the Complainant alleges that registration of the disputed domain name which is identical to the Complainant’s registered trademark clearly shows the Respondent’s intent to create an impression of association with the Complainant’s business in the minds of the relevant trade and public or to negotiate for transfer the domain name for consideration.

Thirdly, the Complainant argues that the failure of the Respondent to respond to the Complainant’s attempts to contact in the forms of warning letters prior to filing the Complaint according to the UDRP process is also relevant in a finding of bad faith.

Fourthly, the Complainant claims that the Respondent uses the disputed domain name in bad faith because the Respondent is marketing and selling the products of the Complainant under its trademark on the website connected to the disputed domain name without the Complainant’s authorization. This also clearly evidences the Respondent’s attempt to attract present and potential Internet users to his website at the disputed domain name for commercial gain by creating a likelihood of confusion with the Complainant’s trademark and its official website, and attempting to create an impression of association with or endorsement by the Complainant of the Respondent’s website. The Complainant cites the following precedents: Philip Morris USA Inc. v. yfmg, WIPO Case No. D2010-0058; F. Hoffmann–La Roche AG v. Direct Privacy ID 9CCC6, WIPO Case No. D2010-0139; Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226.

B. Respondent

(1) The Disputed Domain Name Is Identical or Confusingly Similar to the Complainant’s Trademark

The Respondent agrees that the disputed domain name is identical or confusingly similar to the trademark in which the Complainant has rights.

(2) The Respondent has Rights or Legitimate Interests in the Disputed Domain Name

The Respondent claimed that he has legitimate interests in the disputed domain name because of the following reasons:

Firstly, the Respondent asserts that the disputed domain name has been used since 2003 to provide information and opinions on only the LIV.52 products but no other products in order to show his gratitude to the product that helped his wife. The Respondent claims that the website hosted at the disputed domain name has no advertisements nor sold any LIV.52 or other products. The Respondent states that there was only one reciprocal link swap on the website hosted at the disputed domain name to an ecommerce site owned by a company in the United States that he is not affiliated with but merely for website promotional purposes and that there was no money exchanged. The Respondent argues that this evidences fair and noncommercial use of the disputed domain name and thus constitutes his legitimate interests in the disputed domain name to exercise his freedom of speech to give opinions on the LIV.52 products. The Respondent cited the following precedent case: Estate of Gary Jennings and Joyce O. Servis v. Submachine and Joe Ross, WIPO Case No. D2001-1042; 2001 White Castle Way, Inc. v. Glyn O. Jacobs, WIPO Case No. D2004-0001; Edward Van Halen v. Deborah Morgan, WIPO Case No. D2000-1313; Bruce Springsteen v. Jeff Burgar and Bruce Springsteen Club, WIPO Case No. D2000-1532; Marty Stuart. v. Marty Stuart Fan Page C/O Sherry Mattioli, NAF Claim No. 192600; Estate of Tupac Shakur v. Barranco, eResolution AF-0348.

The Respondent further argues that even if the website hosted at the disputed domain name is an ecommerce site, since the website is only selling the LIV.52 products, he would still be using the disputed domain name for a legitimate commercial purpose and thus he would have rights in the disputed domain name regardless of whether or not the website hosted at the disputed domain name is for commercial purpose.

Secondly, the Respondent alleges that the Complainant has never objected in the last seven years and therefore, by failing to act within a reasonable period of time from the date of registration of the disputed domain name, the Complainant has acquiesced to the Respondent’s registration and use of the disputed domain name and has waived any rights to request that the domain name be transferred. The Respondent cites the following precedent cases: XFM Limited v. Intervid Limited, supra; Jeremy Grodberg v. Rugly Enterprises LLC, NAF Claim No. FA000100009275; Caracol Primera Cadena Radial Colombiana S.A. v. ABCSites, Inc., WIPO Case No. D2003-0880; A & H Sportswear Co., Inc. v. Hu Yanlin, supra; Kur- und Verkehrsverein St. Moritz v. StMoritz.com, WIPO Case No. D2000-0617.

Moreover, the Respondent argues that the precedent cases that were cited by the Complainant in the Complaint can be distinguished from the case at issue because the disputed domain name has never been used for commercial gain and that the website hosted at the disputed domain name was used for informational purpose for one product for more than seven years without any form of advertising or ecommerce.

In a later filing by the Respondent, the Respondent argued that the precedents cited by the Complainant, Apple Computer, Inc. v. Omar Acosta Rivera, supra; Tom Cruise v. Network Operations Center / Alberta Hot Rods, supra; Compania Colombiana de Tabaco S.A. v. MultipleNames.com, supra, could be distinguished from the instant case on the grounds that the amount of delay is different and the respondents in the precedent cases used the contested domain names for illegitimate commercial activities which the Respondent claimed he has never engaged in.

(3) The Respondent Did Not Register and Is Not Using the Disputed Domain Name in Bad Faith

The Respondent claimed that he has not registered or used the disputed domain name in bad faith because of the following reasons:

Firstly, the Respondent states that as a fan of the LIV.52 products, he has never contacted the Complainant or any of its competitors to sell, rent or transfer the domain name, nor has he prevented the Complainant from registering other LIV.52 domain names that would reflect the registered trademark. The Respondent also states that he has never sold any LIV.52 products at his website. Therefore, the Respondent claimed that he has never used or intended to use the disputed domain name for commercial gain; nor has he disrupted the Complainant’s business in any way.

Secondly, the Respondent states that the website hosted at the disputed domain name talks positively about the Complainant’s products and that he has never falsely claimed to have any relationship with the Complainant’s business and thus he has never tarnished the reputation of the Complainant or the LIV.52 products. The Respondent cites the precedent case Adaptive Molecular Technologies, Inc. v. Priscilla Woodward & Charles R. Thorton, d/b/a Machines & More Case, WIPO Case No. D2000-0006.

Thirdly, the Respondent claims that he did not reply to the Complainant’s warning letters because he felt that the claims in the letters concerning using the disputed domain name to sell the Complainant’s products were wrong and that the letters were sent to him in error.

6. Discussion and Findings

Paragraph 4(a) of the Policy requires the Complainant to prove all of the following in order for its contentions to be supported in the proceeding:

(A) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(B) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

A. Identical or Confusingly Similar

The Panel holds that the incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to that trademark.

Therefore, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark. Accordingly, the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Respondent stated that he has legitimate interests in the disputed domain name because of two main reasons: one is the Complainant’s delay in bringing this Complaint, and the other is that he is using the website hosted at the disputed domain name similar to a fan site to provide information and opinions on the LIV.52 products for a noncommercial purpose.

In light of the precedent cases that were cited by both parties, the Panel adopts the view that the delay may be one of a series of factors that determines whether or not the Respondent has rights or legitimate interests in the disputed domain name. However, the delay in itself is not sufficient to constitute the Complainant’s acquiescence to the Respondent’s registration and use of the disputed domain name and waiver of rights to request the disputed domain name to be transferred.

By applying the prima facie principle, the Panel agrees that a web link on the impugned webpage at the disputed domain name with the wording “Click here to buy Liv-52” would create a likelihood that a normal reasonable consumer accessing the website would be led to believe that the website hosted at the disputed domain name could be an e-commerce website which is connected and/or affiliated with the Complainant. However, there is no persuasive evidence on record that the Respondent is actually selling the products on the website hosted at the disputed domain name or using the disputed domain name for any other commercial gains.

The Panel notes that the Respondent refers himself as “a fan of the product” and that the website hosted at the disputed domain name is similar to a fan site. According to Paragraph 2.5 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, there are two views regarding whether or not a fan site can constitute a right or legitimate interest in a dispute domain name: The first view says that “an active and clearly non-commercial fan site may have rights and legitimate interests in the domain name that includes the complainant’s trademark. The site should be non-commercial and clearly distinctive from any official site.”

The second view say that “Respondent does not have rights to express its view, even if positive, on an individual or entity by using a confusingly similar domain name, as the respondent is misrepresenting itself as being that individual or entity. In particular, where the domain name is nearly identical to the trademark, the respondent, in its actions, prevents the trademark holder from exercising the rights to its mark and managing its presence on the Internet.”

In the instant case, the Panel agrees with the second view that the claimed love of a product does not necessarily give the Respondent the right to register and hold a domain name that is identical or confusingly similar to the mark of the product brand. A product fan can choose many other descriptive names to form its domain name, but it is inappropriate to directly take the trademark name. Moreover, given that the disputed domain name is identical to the registered trademark of the Complainant, the fact that the logo of the Complainant business was used on the website (according to the screen shot of September 22, 2010) and the tone in which the content of the website was written, it is highly disputable that the website at the disputed domain name is clearly distinctive from a LIV.52 official site to meet the requirement of the first view.

The Panel bases its decision on the information and evidence submitted before it, and given the circumstances, finds it more likely than not that the Respondent does not have any rights or legitimate interests in the disputed domain name.

The Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Complainant has developed a reputation for the trademark LIV.52 in the Ayurvedic medicaments area since 1955, and the Complainant’s trademarked products are marketed worldwide. Given the distinctiveness of the Complainant’s trademark and the fact that the Respondent is a fan of the product and that the website hosted at the disputed domain name is about the LIV.52 products, the Panel finds it extremely unlikely that the Respondent would have been unaware of the trademark LIV.52 but incidentally chose it as the main part of its domain name. The Panel finds that the clear knowledge of the trademark on the part of the Respondent and the registration of the same is a consideration in determining of bad faith.

Given the evidence submitted before it and the circumstances of the instant case, the Panel finds that it is unlikely that the Respondent registered the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant or the Complainant’s competitors for consideration. However, on the balance of probabilities, the Panel is satisfied that the Respondent has chosen to register the disputed domain name for the purposes of taking predatory advantage of the Complainant’s goodwill in order to intentionally attempt to attract Internet users to his website, by creating consumer confusion on the source, sponsorship, affiliation or endorsement of his website in a manner suggestive of bad faith (noting that the examples of paragraph 4(b) do not capture all circumstances of bad faith under the UDRP).

Citing the precedents: News Group Newspapers Limited and News Network Limited v. Momm Amed Ia, WIPO Case No. D2000-1623; Nike, Inc. v. Azumano Travel, WIPO Case No. D2000-1598; America Online, Inc. v. Antonio R. Diaz, WIPO Case No. D2000-1460, the Panel is satisfied that the failure of the Respondent to respond to the Complainant’s attempt contacts in the forms of a warning notice prior to the filing of the Complaint according to the UDRP process is also relevant in a finding of bad faith.

Therefore, the Panel finds that the Complainant has established that the Respondent has registered and used the disputed domain name in bad faith and has met the requirements of 4(a)(iii) of the Policy.

7. Decision

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 <liv52.com> be transferred to the Complainant.

Linda Chang
Sole Panelist
Dated: November 30, 2010