WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
eBay India Private Limited. v. Surjeet Singh / PrivacyProtect.org, Domain Admin
Case No. D2011-0214
1. The Parties
The Complainant is eBay India Private Limited of Mumbai, Maharashtra, India, represented by Saikrishna & Associates, India.
The Respondent is Surjeet Singh of Haryana, India / PrivacyProtect.org, Domain Admin, Munsbach, Luxembourg.
2. The Domain Name and Registrar
The disputed domain name <paisapay.net> is registered with Visesh Infotecnics Limited d/b/a Signdomains.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 2, 2011. On February 3, 2011, the Center transmitted by email to Visesh Infotecnics Limited d/b/a Signdomains.com
a request for registrar verification in connection with the disputed domain name. After several reminders On February 4, 2011, Visesh Infotecnics Limited d/b/a Signdomains.com 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 March 2, 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 March 4, 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 March 8, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was March 28, 2011. The Center received a request for the suspension of the proceedings on March 9, 2011; the suspension period was extended twice. On May 3, 2011, the Center received a request for re-institution of the proceedings. All time periods were re-calculated from the date of reinstitution. As such the last day for the Respondent to send any Response (copied to the Complainant) was May 14, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 16, 2011.
The Center appointed Ashwinie Kumar Bansal as the sole panelist in this matter on May 27, 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 was incorporated as Baazee.com India Private Limited on January 14, 2000 which was acquired by eBay in the year 2004. The name of Baazee.com India Private Limited was changed to eBay India Private Limited and a fresh certificate of incorporation was issued by the Assistant Registrar of Companies, Mumbai, Maharashtra on March 11, 2005.
The Complainant states that eBay and its group companies, which include the Complainant, is a well known online marketplace, which provides an international platform facilitating online trade. It enables the global community of buyers and sellers to interact and trade with one another. The principal address of the Complainant is located at the website “www.ebay.com” and that format website is also accessible at URLs in over 39 countries. The website seeks to enable sellers to list items for sale in auction or fixed-price formats, facilitating buyers to bid for and purchase items of interest, and users to browse through listed items from any place in the world at any time. The Complainant to facilitate the online trading also offers online payment services under its trademark PAISAPAY which is a service offered to its members in India for “www.ebay.in”.
The Complainant is the proprietor of the trademark PAISAPAY as per registration certificates granted by the Registrar of Trademarks, Trademarks Registry, Mumbai, India and also by virtue of priority in adoption, continuous and extensive use, widespread advertising and the tremendous reputation accruing thereto in the course of trade.
The Respondent has registered the domain name <paisapay.net> without any authority of the Complainant hence, the present Complaint has been filed by the Complainant.
5. Parties’ Contentions
The Complainant had applied for registration of the trademark PAISAPAY to the Registrar of Trademarks, Trademarks Registry, Mumbai, India on May 14, 2003 who has granted the Registration Certificate No. 542871 dated July 27, 2006 in favour of Baazee.com India Private Limited in class 9: computer, computer programmes, computer software, web based programmes, web based software all being goods included in class 9. Similarly, application dated May 14, 2003 for registration of trademark in class 16 was granted vide Registration Certificate No. 537430 dated June 30, 2006. The Complainant has also made application for change of name of the registered proprietor in respect of these registrations on December 14, 2010 as name of Baazee.com India Private Limited has been changed to eBay India Private Limited on March 11, 2005 as per fresh certificate of incorporation.
The domain name <paisapay.com> was registered by the Complainant’s parent company eBay Inc. on October 2, 2002. One of the group companies of the Complainant, eBay International AG got the domain name <paisapay.co.in> registered in its name on April 13, 2006 and in addition, it has about 40 other domain name registrations with the word “PaisaPay”.
The trademark PAISAPAY features prominently on the Complainant’s website “www.ebay.in” which contains extensive information about the services rendered and provided by the Complainant under its trademark. The Complainant’s website is a popular online shopping site for many years and has been the subject of frequent and extensive publicity online, in the print and broadcast media and that it has invested enormous sums of money in promotional activities and in the process has created a global reputation for its services. In the third quarter ending September, 2010 the total value of all successfully closed items on its trading platform was US$14.7 billion.
According to the Complainant, the total number of clients of the website “www.ebay.in” is in the tune of 2,500,000 and daily hits on the website are more than 150,000 which reflect the considerable value that the trademark PAISAPAY holds for the Complainant.
The trademark PAISAPAY is exclusively identified and associated with the Complainant due to its use and publicity. The Complainant has a significant presence in India and around the globe. The Complainant’s mark PAISAPAY has featured in articles and advertisements under various Indian and foreign publications. The use of the trademark PAISAPAY or any deceptively similar variant thereof by any other entity amounts to infringement and passing off of the Complainant’s registered trademark. “PaisaPay” is a coined and fanciful term which has no denotative meaning. The PAISAPAY trademark, apart from being inherently distinctive, has acquired substantial goodwill and is a valuable commercial asset of the Complainant. The Complainant is the proprietor of the trademark PAISAPAY by virtue of priority in adoption, continuous and extensive use and widespread advertising. Apart from its common law rights, the Complainant is also the registered proprietor of the trademark. Due to extensive use and publicity of PAISAPAY, it is exclusively identified and associated with the Complainant.
The Complainant had filed a complaint with the .IN Registry against abusive domain name registration of the domain name <paisapay.in> and the Registrant of the domain name <paisapay.in> had agreed to transfer the domain name <paisapay.in> to the Complainant. In a recent UDRP decision in WIPO Case No. D2010-2273, the Center has recognized the rights of the Complainant in the trademark PAISAPAY and ordered the transfer of the said domain name <paisapay.mobi> in the name of the Complainant. The Respondent has registered the domain name <paisapay.net> without any authorization from the Complainant. The disputed domain name is being used by the Respondent for the website “www.paisapay.net”.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 5(e) of the Rules provides: “If a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint.” The Panel does not find any exceptional circumstances in the case preventing it from determining the dispute based upon the Complaint, notwithstanding the failure of the Respondent to file a Response. It remains incumbent on the Complainant to make out his case in all respects under paragraph 4(a) of the Policy which sets out the three elements which must be present for the proceeding to be brought against the Respondent, and which the Complainant must prove to obtain a remedy. It provides as follows:
“4(a). Applicable Disputes. You (the Respondent) are required to submit to a mandatory administrative proceeding in the event that a third party (a “Complainant”) asserts to the applicable Provider, in compliance with the Rules of Procedure, that
(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.
In the administrative proceeding, the complainant must prove that each of these three elements are present.”
The Panel will address the three aspects of the Policy listed above. As per paragraph 14 of the Rules, where a party does not comply with any provision of the Rules, the Panel shall “draw such inferences there from as it considers appropriate”.
A. Identical or Confusingly Similar
Paragraph 15(a) of the Rules instructs the Panel as to the principles for rendering its decision: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
The Complainant has established that it has registered trademark rights in the mark PAISAPAY in classes 9 and 16 in India by virtue of two Certificates of Registration granted by the Registrar of Trade Marks, Trademarks Registry, Mumbai, India. The trademark PAISAPAY word per se is pending registration in classes 35, 36, 38 and 42 with the Registrar Trademarks, India. The corresponding “PaisaPay” logos are also pending registration in Classes 9, 16, 35, 36, 38 and 42. Consumers all across the globe ascribe a certain level of brand value and characteristics to the Complainant’s mark PAISAPAY. The Complainant has about 40 domain name registrations incorporating the word “PaisaPay”.
The Respondent has registered the disputed domain name <paisapay.net> incorporating the trademark PAISAPAY of the Complainant. Internet users who enter the disputed domain name <paisapay.net>, being aware of the reputation of the Complainant may be confused about its association or affiliation with the Complainant.
The disputed domain name <paisapay.net> wholly incorporates the registered trademark PAISAPAY of the Complainant, which is sufficient to establish confusing similarity for the purpose of the Policy. The Panel finds that the disputed domain name <paisapay.net> is confusingly similar to the trademark PAISAPAY of the Complainant.
B. Rights or Legitimate Interests
The Complainant has adopted the trademark PAISAPAY and took steps for its registration in the year 2003. The Complainant has also used the mark for a long time. The Complainant has not authorized or permitted the Respondent to use the trademark PAISAPAY.
Paragraph 4(c) of the Policy lists circumstances, in particular but without limitation, which, if found by the Administrative Panel to be proved, may demonstrate the Respondent’s rights or legitimate interests to the domain name for the purposes of paragraph 4(a)(ii). The Respondent has not filed his Response and so he failed to demonstrate his rights to or legitimate interests in the disputed domain name as per paragraph 4(c) of the Policy. The Respondent’s use of the disputed domain name cannot be considered to be in connection with a bona fide offering of goods or services.
The administrative Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name <paisapay.net>. Nor are any of the items in paragraph 4(c) of the Policy demonstrated by the Respondent.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy identifies, in particular but without limitation, four circumstances which, if found by the Administrative Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(b) is reproduced below:
“Evidence of Registration and Use in Bad Faith. For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
Each of the four circumstances in paragraph 4(b) of the Policy, if found, is an instance of “registration and use of a domain name in bad faith”. Circumstances (i), (ii), and (iii) are concerned with the intention or purpose of the registration of the domain name, and circumstance (iv) is concerned with an act of use of the domain name.
The Complainant is required to prove both that the disputed domain name was registered in bad faith and that it is being used in bad faith because in paragraph 4(a)(iii) of the Policy, the provision contains the conjunction “and” rather than “or” and it refers to both the past tense (“has been registered”) and the present tense (“is being used”) hence circumstances at the time of registration and thereafter have to be considered by the Panel. The Complainant is required to prove that the registration was undertaken in bad faith and that the circumstances of the case are such that the Respondent is continuing to act in bad faith.
The Respondent's true purpose in registering the disputed domain name <paisapay.net> which incorporates the trademark PAISAPAY of the Complainant is to capitalize on the reputation of the trademark PAISAPAY by diverting Internet users seeking the Complainant’s website(s) to the Respondent's own website. The Complainant has not granted the Respondent permission or a license of any kind to use its trademark PAISAPAY. Such unauthorized use of the trademark PAISAPAY by the Respondent suggests opportunistic bad faith. The case is squarely covered by paragraph 4(b)(iv) of the Policy.
The Panel finds that the disputed domain name <paisapay.net> has been registered and is being used by the Respondent 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 domain name <paisapay.net> be transferred to the Complainant.
Ashwinie Kumar Bansal
Date: May 30, 2011