WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Ratnakar Bank Limited v. Venkateshwara Distributor Private Limited / PrivacyProtect.org
Case No. D2012-1784
1. The Parties
The Complainant is The Ratnakar Bank Limited of Mumbai, India, represented by SNG & Partners, India.
The Respondent is Venkateshwara Distributor Private Limited of Mumbai, India / PrivacyProtect.org of Nobby Beach, Queensland, Australia.
2. The Domain Name and Registrar
The disputed domain name <ratnakarbank.com> is registered with Tirupati Domains and Hosting Pvt Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 5, 2012. On September 5, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 24, 2012, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name that differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 25, 2012 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 September 29, 2012, in which the Complainant withdrew the domain name <ratnakarbank.net> from the current administrative proceedings.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 2, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was October 22, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 24, 2012.
The Center appointed Harini Narayanswamy as the sole panelist in this matter on November 8, 2012. 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 a scheduled commercial bank in India that has its registered office at Kolhapur Maharashtra, India and its controlling office in Mumbai, India. The Complainant does business under the name RATNAKAR BANK since 1970 and has applied for Indian trademark registration for the said mark in classes 16, 35 and 36 in 2011 and has filed documents of its pending trademark applications.
The disputed domain name <ratnakarbank.com> was registered on November 2, 2001.
5. Parties’ Contentions
A. Complainant
The Complainant states that it was established in the year 1943 and received its banking license from the Reserve Bank of India on March 16, 1970, and has filed a copy of its banking license. RATNAKAR BANK is the brand name by which its customers and the general public identify its services and the Complainant claims ownership for the unregistered trademark RATNAKAR BANK. The mark has acquired distinctiveness and goodwill due to its prolonged use contends the Complainant. As evidence of extensive use of its mark and proof of its acquiring secondary meaning and media recognition, the Complainant has filed a copy of its annual report for the year 2011-2012. The annual report also shows the Complainant’s year-wise financial performance over the past decade.
The Complainant claims it has presence in banking segments like consumer banking and commercial banking with 108 branches spread across many states in India. The Complainant asserts that it is a prior user of the trademark RATNAKAR BANK and that the disputed domain name was registered much after the Complainant’s adoption and use of the mark. The Complainant states that it has registered several domain names that incorporate its mark and has provided a list of the domain names.
The Complainant states the disputed domain name is confusingly similar to its mark and argues that the mere addition of the generic top level domain “.com”, does not significantly affect the confusing similarity. The Respondent has no rights or legitimate interests in the disputed domain name, argues the Complainant, as the Respondent is not commonly known by the disputed domain name and has no trademark or other rights and does not use it for noncommercial purposes, but uses it to mislead consumers. The Complainant further argues that the Respondent has used privacy services to hide its activities from scrutiny, as banks are regulated by authorities and require appropriate licenses from regulatory authorities. The Complainant has provided the historical data for the usage of the disputed domain name <ratnakarbank.com> that shows it has consistently been used for posting click through links. Such use is not legitimate use argues the Complainant, as the Respondent gets improper financial gains and it diverts customers.
The Complainant argues the disputed domain name was registered in bad faith and is being used in bad faith. The Respondent’s use of the disputed domain name cause confusion in the minds of the public. The Complainant further states that Google searches for its name show the Complainant’s pre-existing rights, and the Respondent ought to have been aware of Complainant’s rights in the mark.
The disputed domain name <ratnakarbank.com> is active and points to a “parking” website that sports sponsored links some of which are the Complainant’s competitors. The Complainant states the practice of “pay-per-click” website at the disputed domain name is common in cyber-squatting cases and it is known that such use is for speculative purposes and possibly its sale. The Complainant refers to prior UDRP cases to support its contentions. The Complainant states the disputed domain name <ratnakarbank.com> has been offered for sale and that it has contacted the Respondent through its representatives with offers to buy the disputed domain name through a public auction. The Complainant has provided screen shots of the bidding process between the parties on SEDO as evidence. As the disputed domain names was registered and is being used in bad faith the Complainant requests for the transfer of the disputed domain name.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4 (a) of the Policy stipulates that in order to succeed in its claim the Complainant must prove each of these three elements:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name was registered and is being used in bad faith by the Respondent.
A. Identical or Confusingly Similar
The first factor under paragraph 4(a) requires the Complainant to establish that the disputed domain name is identical or confusingly similar to a trademark in which it has rights.
The Complainant has submitted that it has unregistered trademark rights in RATNAKAR BANK. It has presented its audited annual report as evidence that shows it’s year-wise sales turnover for the past ten years under the said mark. The Complainant has also furnished evidence that it has been operating its business using the name RATNAKAR BANK under a banking license issued by the Reserve Bank of India since the year 1970.
The Panel is satisfied that the Complainant has placed sufficient evidence in these proceedings to show that it has used the mark for a considerable time. The mark has no doubt become a distinct identifier of the Complainant’s services and the Complainant is found to have common law rights in the mark. Common law trademarks have been held to represent sufficient rights under the UDRP. See Broadcasting Corporation v. Jaime Renteria, WIPO Case No. D2000-0050. The Complainant must show that the unregistered mark has achieved secondary meaning or association with the Complainant. See (1) Galatasaray Spor Kulubu Dernegi (2) Galatasaray Pazariama A.S (3) Galatasaray Sportif Sanai Ve Ticari Yatirmiar A.S v. Maksimum IIetisim A.S , WIPO Case No. D2002-0726. If the Complainant can show that the common law mark has become distinctive through use in any country, it will be accepted that it has rights to satisfy the first requirement under the Policy. See QuakeAID v. Solid Domains.com, Inc. WIPO Case No. D2002-0815. Also see Sammy’s Management Company v. Keith Wimbley, WIPO Case No. D2002-0912 (where it was found that the complainant had rights in its trade name by showing continuous use from 1970).
The disputed domain name reproduces the Complainant’s unregistered mark RATNAKAR BANK and is virtually identical to the Complainant’s name except for the omission of “Limited” or “.LTD”. Deleting the abbreviation of “.LTD” does not preclude a finding of confusing similarity. See Development Credit Bank Limited v. Direct Privacy ID ED191, WIPO Case No. D2011-0786 (Where the omission of the term “.LTD”, a standard abbreviation for a limited liability company, was found not to interfere with the finding of confusing similarity. Internet users would reasonably expect a banking enterprise to use its domain name without express designation of its corporate status). The Panel therefore finds there is confusing similarity between the disputed domain name and the Complainant’s mark, in which it has established rights.
The Complainant has accordingly satisfied the first requirement of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
The second factor under paragraph 4(a) of the Policy requires the Complainant to show that the Respondent lacks rights and legitimate interests in the disputed domain name. It is sufficient for the Complainant to make a prima facie showing that the Respondent lacks rights and legitimate interests in the disputed domain name. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1.
The Policy under paragraph 4(c) enumerates several ways in which a respondent could demonstrate rights or legitimate interests in a domain name to rebut a complainant’s assertions under paragraph 4(a)(ii). These briefly are: (i) before notice of the dispute, use of the domain name or demonstrable preparations to use it in connection with a bona fide offering of goods or services; or (ii) respondent is commonly known by the domain name; or (iii) noncommercial or fair use of the domain name without intent for commercial gain, misleadingly divert consumers or tarnishing the mark at issue.
The Complainant has asserted that the Respondent has no rights in the disputed domain name for the reasons that the Respondent has no trademark or other rights corresponding to the name. Further the Respondent does not make any noncommercial use of the disputed domain name but uses the domain name to mislead consumers. The Respondent is not commonly known by the domain name and has used privacy services to hide its identity. As authorities regulate banking services, it is unlikely that the Respondent could be in a banking business under the same mark as the Complainant.
The Respondent has not filed any response to rebut the Complainant’s assertions. The Panel finds there is no material on record from which it can be reasonably inferred that the Respondent has any rights or legitimate interests in the disputed domain name. The Panel finds the Respondent is not commonly known as “Ratnakar Bank” or any variant of the term. The evidence filed by the Complainant clearly shows the Respondent has initially used a privacy service to hide its identity. Subsequently the name of the Respondent was revealed by the registrar as “Venkateshwara Distributor Private Limited”.
The Complainant has provided the historical data for the use of the disputed domain name <ratnakarbank.com> that shows it has consistently been used for posting pay-per-click links and it is parked on the parking site SEDO. Parking and the use of pay-per-click links or other forms of Internet advertising, in and of itself are not considered prohibited activity for domain name holders. The use of another’s trademark in the domain names, for these activities is however is not considered bona fide use. The use of the Complainant’s mark in the disputed domain name is likely to mislead the public and Internet users that the disputed domain name refers to the Complainant’s bank. A domain name that gives a false impression to users and misleads Internet users does not confer legitimate rights. This view has been upheld in several prior UDRP decisions. See for instance, Editorial Armaonia S.A, de C.V v. Cagri Sadik Bayram., WIPO Case No. D2010-1963.
The Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name and has satisfied the second requirement of paragraph 4 (a) of the Policy.
C. Registered and Used in Bad Faith
The third factor under paragraph 4(a) of the Policy requires the Complainant to establish that the disputed domain name was registered in bad faith and is being used in bad faith.
The Complainant has extended several arguments alleging bad faith registration and use of the disputed domain name. First, the Complainant states it has established rights in the mark and the Respondent ought to have been aware of Complainant’s rights from Google searches that show the Complainant’s use and pre-existing rights in the mark. Second, the disputed domain name <ratnakarbank.com> is parked on the SEDO site and has links to Complainant’s competitors and other unrelated sites. Third, the Respondent does not use the disputed domain name for any legitimate purposes other than to cause confusion in the minds of the public. Fourth, the Respondent has offered the disputed domain name <ratnakarbank.com> for sale and the parties have actively participated in an auction bidding process for the sale of the disputed domain name.
The Panel finds that the Complainant has provided evidence that establishes it has extensively used the mark RATNAKAR BANK in commerce and has demonstrated its exclusive rights in the mark. Clearly the Complainant has pre-existing rights in the mark and it is unlikely that the Respondent was unaware of the fame and the pre-existing rights of the Complainant’s mark when it registered the disputed domain name, particularly as the Respondent is located in Mumbai where the Complainant has a strong presence.
The Panel finds that the Respondent’s adoption of the disputed domain name has been long after the Complainant has established its rights in the mark. Furthermore Panel finds in the circumstances of this case, the domain name was registered by the Respondent with an intention to make commercial gains from the Complainant’s goodwill and to attract Internet users to the Respondent’s website by creating a likelihood of affiliation with the Complainant’s well-known mark.
Paragraph 4(b)(iv) of the Policy makes reference to circumstances indicating bad faith if the registration and use of the domain name is made with an intention to attract, for commercial gain, Internet users to the website or other online location by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location.
The Complainant has provided as evidence screen shots from the website “www.hosterstats.com” that shows the disputed domain name <ratnakarbank.com> has been continually used for posting a variety of sponsored links such as “Jobs in India”, “SBI online”, “Swiss Bank Intro Service”, and “Franklin Templeton MF”. This evidence corroborates the Complainant’s arguments that the links on the Respondent’s website directs customers to the Complainant’s competitors.
The evidence filed by the Complainant shows the disputed domain name <ratnakarbank.com> is parked on the SEDO website with a view to sell it and benefit from the fame and goodwill of the Complainant’s mark. The Complainant has also submitted the screen shots of the bidding process between the parties on SEDO as evidence. The highest figure demanded by the Respondent in the bidding process is EUR 4,000. This is a figure in this Panel’s view that is far in excess of what can be considered a reasonable amount and is clear evidence of the Respondent’s intention of selling the disputed domain name. Such conduct is indicative of bad faith registration and use as specified under paragraph 4(b)(i) of the Policy.
The compelling circumstantial evidence therefore suggests that the most plausible inference that can be drawn from the Respondent’s registration of the disputed domain name is that the Respondent had the Complainant’s trademark in mind. The evidence also shows the disputed domain name has been acquired with the intention of deriving some form of gain associated with the Complainant’s mark, whether for attracting Internet traffic for obtaining click through revenue or for sale. The registration of domain name with the Complainant’s trademark in mind under the circumstances discussed is recognized as bad faith registration and use under the Policy. See Baccarat SA v. MSL International, Inc. WIPO Case No. D2005-0048.
The use of the trademark in the disputed domain name is likely to cause confusion to users, who may falsely believe that the Respondent’s domain name is being operated or endorsed by the Complainant. The registration of a domain name that uses a trademark where the registrant is unable to show legitimate rights or interests in the mark is itself is evidence of bad faith registration. See for instance PepsiCo, Inc. v. Domain Admin, WIPO Case No. D2006-0435.
In view of the circumstances of this case, the Panel finds that the Complainant has satisfied the third requirement of paragraph 4(a) of the Policy that the Respondent has registered the disputed domain name in bad faith and uses the disputed domain name in bad faith.
7. Decision
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 <ratnakarbank.com> be transferred to the Complainant.
Harini Narayanswamy
Sole Panelist
Dated: November 22, 2012