WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Surya Roshni Limited v. tq6 Inc., Domain Registration Dept.
Case No. D2013-0627
1. The Parties
The Complainant is Surya Roshni Limited of New Delhi, India, represented by Corporate Professionals, Advisors & Advocates, India.
The Respondent is tq6 Inc., Domain Registration Dept. of Los Angeles, California, United States of America, represented by BBPM Law Associates, India.
2. The Domain Name and Registrar
The disputed domain name <suryaroshni.com> is registered with Name.com LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 5, 2013. On April 5, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 6, 2013, the Registrar 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 April 15, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was May 5, 2013.
On May 4, 2013, the Respondent sent an email communication in which it requested an extension of the Response due date, to which the Complainant opposed on May 7, 2013.
The Response was filed with the Center on May 9, 2013, and the Complainant opposed to this filing on the same date. On May 12, 2013, the Respondent replied to the Complainant.
On May 16, 2013, the Center acknowledged receipt of the said email communications and informed the Parties that it would have brought to the Panel’s attention the Respondent’s communication received after the Response due date, and that it is at the sole discretion of the Panel as to whether to consider such communication. The Center further noted the Respondent’s election of a three-member Panel, which had been received prior to the Center proceeding to appoint any single-member Panel in this case, and thus to be respected by the Center for purposes of Panel composition and appointment in this case.
The Center appointed Michael J. Spence, Pavan Duggal and Luca Barbero as panelists in this matter on June 13, 2013. The Panel finds that it was properly constituted. Each member of 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.
On June 14, 2013, the Complainant sent an email communication to the Center, expressing its willingness to “place on record, its reply to the submissions of the respondent and some inconsistencies it finds in the factual positions stated by the Respondent”. On June 21, 2013, the Respondent sent an email communication to the Center in reply to the Complainant’s said email communication, objecting to the “opportunity to the Complainant to file an additional reply”.
On June 24, 2013, the Panel issued Administrative Panel Procedural Order No. 1, informing the Parties that the late Response is taken into consideration by the Panel and, therefore, the Panel invited the Complainant to file a Supplemental Filing and equally invited the Respondent to comment on the Supplemental Filing. On July 1, 2013, the Complainant filed a Supplemental Filing and on July 15, 2013 the Respondent filed a Supplemental Filing.
4. Factual Background
The Complainant is a conglomerate of businesses that have been in operation since 1973 and now has operations in over 48 countries. Since 1984 it has manufactured and sold lightings products under the trade mark SURYA ROSHNI. The mark consists of two common Indian words “surya” for “sun” and “roshni” for light, though they are not commonly used in Hindi in combination as “suryaroshni”. The Respondent has operated a website under the disputed domain name containing links to the websites of competitors of the Complainant and may also have at one point operated a website under the disputed domain name about the relevance of the sun to human life. The disputed domain name had been registered for twelve years before the Complainant became aware of its registration.
5. Parties’ Contentions
The Complainant contends: that the disputed domain name is identical to its trade mark SURYA ROSHNI; that the Respondent has no rights or legitimate interests in the disputed domain name and that it has been used for a website containing links to the websites of competitors of the Complainant; that the Respondent has fabricated the screenshot in its annexures of a website concerning the relevance of the sun and its rays in human life; and that it is not precluded by acquiescence from bringing a complaint about the disputed domain name because it had not, until December 2012, been aware of the disputed domain name.
The Respondent contends: that the Complainant’s trade mark was only registered after the registration of the disputed domain name and that the Complainant therefore cannot claim that it has a trade mark identical or confusingly similar to the disputed domain name; that the disputed domain name consists of two common Hindi words and that their use in the disputed domain name is unlikely to give rise to confusion; that the disputed domain name has been registered by the Respondent for twelve years before this Complaint was initiated; that during that period it was used first for a website explaining the role of the sun and its rays in human life and has subsequently been held while that website was under renovation; that a search at “www.domaintools.com” will reveal the bona fide of the screenshot contained in the Respondent’s annexures of the website about the role of the sun in human life; that the fact that the Complainant’s trade mark was not registered at the time of the registration of the disputed domain name shows that the registration and use of the disputed domain name cannot have been in bad faith, as does the Complainant’s acquiescence in its continued use over twelve years; and that the Complainant’s claim that it was not aware of the disputed domain name until December 2012 is false. The Respondent further brings an allegation of reverse domain name hijacking.
6. Discussion and Findings
A. Identical or Confusingly Similar
The disputed domain name contains the Complainant’s trade mark in its entirety. The fact that the trade mark was not registered before the registration of the disputed domain name is irrelevant because there is no doubt that the trade mark had been in continuous and widespread use before that time as an unregistered trade mark indeed the mark had been in increasingly widespread use since 1984.
The specific top level of the domain name such as ‘net’ or ‘com’ does not affect the domain name for the purpose of determining whether it is identical or confusingly similar (Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429).
The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the UDRP Policy.
B. Rights or Legitimate Interests
It is for the Complainant to establish, at least prima facie, that the Respondent has no rights or legitimate interests in the disputed domain name (Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455, Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110).
In this case there is some dispute as to whether the Respondent has been using the disputed domain name for a potentially legitimate purpose for a website concerning the relevance of the sun to human life. However, whether the Respondent has at some time in the past used the disputed domain name in this way, there is no evidence that it is currently doing so, and there is no evidence that it intends to continue doing so. Moreover, the only other use that has been made of the disputed domain name, for a website containing links to the websites of competitors of the Complainant, cannot give rise to rights or legitimate interests in the disputed domain name, given that such use is likely to create confusion in the minds of consumers and divert trade from the Complainant.
Ownership of a trade mark to which the disputed domain name is identical or confusingly similar generally satisfies the threshold requirement of having trade mark rights.
The Complaint shows that the mark has acquired a unique meaning by having been used for so long and so exclusively by the Complainant with reference to the particular article in that trade and to the particular branch of the purchasing public.
For this reason, whether the Respondent has, at some point in the past had rights or legitimate interests in the disputed domain name, there is no evidence that it does currently. Further, the Complainant’s delay in objecting to the use of the disputed domain name cannot be taken to be either acquiescence or an acknowledgement of the rights or legitimate interests of the Respondent, given that the Complainant only became aware of the disputed domain name in December 2012.
Accordingly, in line with the UDRP precedents, it is sufficient that the Complainant shows a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
The Panel therefore finds that the Complainant has established the second element of paragraph 4(a) of the UDRP Policy.
C. Registered and Used in Bad Faith
The Complainant’s use of its trade mark has been extremely widespread. Its distinctive combination of the words “surya” and “roshni”, which in Hindi would normally be joined by a conjunction such as “ki” in the phrase “surya ki roshni” (“light of the sun”), has a strong association in the minds of the public with the Complainant’s products. For this reason, the Respondent cannot have been unaware of the Complainant’s rights at the time of the registration of the mark. Further, even if at some point potentially legitimate use was made of the disputed domain name for a website concerning the relevance of the sun to human life, it is also clear that the domain name has been used for a website intended to exploit the potential for consumer confusion between the disputed domain name and the Complainant’s trade mark by diverting trade away from the Complainant. Such use constitutes a classic case of bad faith.
The disputed domain name is disruptive to the Complainant’s business since it results in potential customers being confused or misled into believing that the domain name is somehow affiliated with, or sponsored by, the Complainant.
The Panel therefore finds that the Complainant has established the third element of paragraph 4(a) of the UDRP Policy. Given the Panel’s findings on each of the three elements of paragraph 4(a) of the UDRP Policy, no question of reverse domain name hijacking arises.
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 <suryaroshni.com> be transferred to the Complainant.
Michael J. Spence
Date: August 16, 2013