WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
M/s Genpact Luxembourg S.a.r.l v. Jithin James, Getty Domain / WhoisGuard
Case No. D2013-0826
1. The Parties
The Complainant is M/s Genpact Luxembourg S.a.r.l of Luxembourg, Luxembourg, represented by Saikrishna & Associates, India.
The Respondents are Jithin James, Getty Domain (“first Respondent”) of Cochin, Kerala, India and WhoisGuard of Los Angeles, California, United States of America, self- represented.
2. The Domain Name and Registrar
The disputed domain name <genpact.info> is registered with eNom (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 11, 2013. On May 13, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 14, 2013, the Registrar transmitted by email to the Center its verification response confirming that the first Respondent is listed as the registrant and providing the contact details. On May 15, 2013, the Complainant confirmed a set of the Complaint had been transmitted to the Registrar and Respondents in electronic format.
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 Respondents of the Complaint, and the proceedings commenced on May 16, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was June 5, 2013. The Response was filed with the Center on June 3, 2013.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on June 7, 2013. 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 and Parties’ Contentions
The Complainant owns a number of registered trademarks around the world for GENPACT. The Complaint includes evidence of registrations in Argentina, Brazil, Chile, New Zealand, China, Singapore and the United States of America (USA). Two documents have also been submitted evidencing registration in India although the document purporting to be the Certificate of Registration is actually for the mark GKNPACT. This document is, however, riddled with other typographical errors. The registrations cover a diverse range of services in International Classes 35, 36, 41 and 42.
According to the Complaint, the Complainant’s predecessor first began using the trademark in 1997. Since that date, use of the mark has expanded to many countries around the world where the Complainant, or its predecessors, or those authorized by it, have been providing technology and knowledge services including finance and accounting services, collections and customer relations, insurance, procurement & supply chain services, “analytics”, software, Information Technology (IT)-infrastructure. Its website at “www.genpact.com” summarises its activities under the description “business process operations management, including transformation and outsourcing”.
According to the Complaint, the revenues of the Complainant’s corporate group have risen from USD 1,041,000,000 in 2008 to USD 1,900,000,000 in 2012.
In 2012, the Complainant’s predecessor successfully obtained a decision under the Policy for the transfer of the disputed domain name from Li Ye: M/s Genpact Limited v. Li Ye, WIPO Case No. D2012-0304. As a result, the disputed domain name was transferred to M/s Genpact Limited. Around this time, M/s Genpact Limited assigned its rights, amongst other things, to the GENPACT trademarks to the present Complainant.
The registration of the disputed domain name following its transfer, however, lapsed in June 2012. (The Complainant says this was inadvertent.) Subsequently, the first Respondent registered the disputed domain name in September 2012.
On January 23, 2013, the Complainant’s representatives sent a cease and desist letter to the first Respondent. According to the Complainant, shortly after that letter was sent, the registrant of the disputed domain name was changed to “WhoisGuard” on January 25, 2013. (As a Response has been submitted by the first Respondent, the Panel will refer to him as the Respondent for ease of reference.)
Also following dispatch of the cease and desist letter, the Complainant states that the first Respondent contacted the Complainant’s attorneys claiming that he had registered the disputed domain name on behalf of another and offering to transfer the disputed domain name to the Complainant for INR 50,00,000 [sic] (Rupees 50 lakh). Subsequently, the first Respondent contacted the Complainant’s representatives on May 11, 2013 by email stating that the party he represented was in the process of selling the disputed domain name to a Chinese buyer for USD 3,000,000. The inference to be drawn from the first Respondent’s email (included as an annexure to the Complaint) was that the Complainant was being invited to make a competing bid.
According to the Response, the first Respondent operates “www.gettydomain.com”, a professional hosting, design and marketing service based in Cochin, India. The first Respondent states that he registered the disputed domain name on behalf of Dr. Gangadharan for his Ayurvedic Cure Treatment for GENP related diseases. Amongst other things, a screenshot of a website for Dr. Gangadharan’s clinic was included in the Response. The Panel’s attempts to access a website at the disputed domain name “www.genpact.info” have been unsuccessful with the browser unable to locate the server.
The Complainant also points out that the first Respondent has registered as domain names a number of other trademarks which are very well-known in India. The WhoIs details for these domain names were also changed to WhoisGuard on January 25, 2013.
5. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:
(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 has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules directs the Panel to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.
A. Identical or Confusingly Similar
The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant’s trademark rights.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.
The Complainant has proven ownership of the registered trademarks for GENPACT referred to above. The Panel also notes that previous UDRP panels have also accepted that the Complainant (or its predecessors) has very substantial common law rights in many parts of the world for GENPACT. See for example M/s Genpact Limited v. Li Ye, supra.
On the question of identity or confusing similarity, what is required is simply a comparison and assessment of the disputed domain name itself to the Complainant’s proved trademarks: see for example, Disney Enterprises, Inc. v. John Zuccarini, Cupcake City and Cupcake Patrol, WIPO Case No. D2001-0489; IKB Deutsche Industriebank AG v. Bob Larkin, WIPO Case No. D2002-0420. This is different to the question under trademark law which can require an assessment of the nature of the goods or services protected and those for which any impugned use is involved, geographical location or timing. Such matters, if relevant, may fall for consideration under the other elements of the Policy.
In undertaking that comparison, in the present circumstances it is permissible to disregard the “.info” component of the disputed domain name as a functional aspect of the domain name system: Telstra Corporation Limited v. Ozurls, WIPO Case No. D2001-0046; Ticketmaster Corporation v. DiscoverNet Inc., WIPO Case No. D2001-0252.
Accordingly, the Panel finds that the Complainant has established that the disputed domain name is identical to the Complainant’s trademarks and the requirement under the first limb of the Policy is satisfied.
B. Rights or Legitimate Interests
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which a respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant. Panels have recognized the difficulties inherent in disproving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. See for example WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 2.1.
In the present case, the Complainant points out that its trademark is a coined or fanciful term which has no meaning. So far as the Complainant can ascertain, the Respondent has not been commonly known by the name Genpact, nor is it derived from his name or any name under which he carries on business. The Complainant points out further that it has not been able to find any evidence that the Respondent is in fact offering goods or services under or by reference to the name “Genpact” or from any website to which the disputed domain name resolves. In addition, the Complainant relies on the extensive and valuable goodwill it and its predecessors have built up in the name, including in India, long before the Respondent registered the disputed domain name.
These matters raise a strong prima facie case in this case against the Respondent.
As foreshadowed above, the Respondent contends that he registered the disputed domain name on behalf of a Dr. Gangadharan for his Ayurvedic Cure Treatment for GENP related diseases. The Annexures to the Response include an agreement between the Respondent (under the name Getty Domain) and a Mr. Gangadharan for domain name and web design and web hosting apparently dated December 18, 2012, two receipts each for half the amount specified in the agreement and what appears to be a mock up or design for a website or webpage. This appears to be a print out of a page in the Respondent’s website, “www.gettydomain.com/works/genpact/index.html”. It is headed “GENP? ACT Ayurvedic Cure Treatments for GENP’S.” It also has a large heading “Genital Neoplasia – Papilloma Syndrome – Ayurvedic Remedies”.
The Complainant’s registered trademarks do not relate directly to medical treatment. Assuming that there is a Dr. Gangadharan operating an Ayuvedic clinic, he or she would appear to operate in a very different field to the Complainant.
However, the Complainant’s trademark has a very substantial reputation. As the Complainant contends, the word “genpact” is a coined or fancy expression. It does not directly describe anything. It has significance only in identifying goods and services sourced from the Complainant’s corporate group.
In this connection, the website designed by the Respondent for Dr. Gangadharan does not itself use the expression GENPACT except in an email address and the URL set out above. There is, as already noted, a heading GENP? ACT. There are also references to GENP or GENP’s. The Respondent appears to contend that GENP is a descriptive expression for the types of diseases Dr. Gangadharan treats. It is not one with which the Panel is familiar personally and the Panel’s searches of dictionaries and Google do not throw up clearly recognized meanings for GENP in the medical context. In any event, that relates to the term “genp” and not “genpact”, the distinctive component of the disputed domain name.
As previously noted, the disputed domain name does not itself appear to resolve to the website depicted in the Respondent’s print out at the time of this decision. Rather, it is a page or site within the Respondent’s own website. No information is given about when Dr. Gangadharan started his clinic or adopted the expression Genp, let alone Genpact.
Under the web design and hosting agreement dated December 18, 2012, payment is specified to be made in two components: the first in advance and the second on completion. The receipts submitted with the Response, however, show the payments being made on May 21, 2012 and July 20, 2012. If correct, these dates are long before the Respondent registered the disputed domain name in September 2012. If the year 2012 is stated incorrectly for 2013, it is not possible for the receipt dated July 20, 2012 to be right and, in any event, the payment in May is several months after the cease and desist letter was sent in January 2013 and also around the time the Respondent claimed his client was intending to sell the disputed domain name to a buyer in China.
In light of these problems, the Panel is unable to find that there has been a bona fide offering of goods or services by reference to, or genuine preparations to use, the disputed domain name before notice of the dispute or that Dr. Gangadharan had a prior established business under the name “Genpact”.
Accordingly, the Panel finds that the Respondent has not rebutted the prima facie case established by the Complainant and therefore the Complainant has established the second requirement under the Policy.
C. Registered and Used in Bad Faith
Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and is being used in bad faith by the Respondent.
The Respondent’s failure to establish that he, or. Dr Gangadharan, have rights or legitimate interests in the disputed domain name under the Policy gives rise to a strong inference that the disputed domain name was registered to take advantage of the Complainant’s reputation and goodwill in its trademark. As previously noted, whatever the status of Genp, Genpact is an invented or fancy expression which is not descriptive and, on the record in this case, has significance only as denoting an association with the Complainant and its group.
The Respondent does not dispute the Complainant’s contention that he offered to transfer the disputed domain name to the Complainant for sums in excess of USD 3,000,000 – sums well in excess of any likely out of pocket registration costs, which have not in any event been documented.
The Respondent also does not dispute the Complainant’s contention that he has registered a number of other trademarks well-known in India as domain names.
In these circumstances, the Panel concludes that the Respondent registered the disputed domain name in bad faith and is using it in bad faith under the Policy.
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, <genpact.info>, be transferred to the Complainant.
Warwick A. Rothnie
Date: June 21, 2013