WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Onmobile USA LLC v. Domain Management, Syed Hussain
Case No. D2013-1038
1. The Parties
Complainant is Onmobile USA LLC of Coral Gables, Florida, United States of America, represented internally.
Respondent is Domain Management, Syed Hussain of Closter, New Jersey, United States of America.
2. The Domain Name and Registrar
The disputed domain name <onmobilelive.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 June 10, 2013. On June 11, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 12, 2013, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. On June 12, 2013, the Center received further submission of annexes to the Complaint from Complainant. In response to a request for confirmation by the Center, Complainant confirmed the name of Complainant and number of annexes to the Complaint on June 14, 2013.
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 Respondent of the Complaint, and the proceedings commenced on June 17, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was July 7, 2013. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 8, 2013.
The Center appointed Frederick M. Abbott as the sole panelist in this matter on July 15, 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
Complainant is a United States subsidiary of OnMobile Global Limited, based in Bangalore, India.1 Complainant’s parent company is owner of registration of the word trademark ONMOBILE on the register of Intellectual Property India, application number 1,230,857, application dated September 1, 2003, status “registered”, in International Class (IC) 9, covering, inter alia, voice activated software included in computers. Complainant’s parent company is the owner of word and design trademark registrations for ONMOBILE on the Principal Register of the United States Patent and Trademark Office (USPTO), registration number 4,050,054, registration dated November 8, 2011, in ICs 38, 41 and 42, covering, inter alia, telecommunication services, entertainment services and software application services, as further specified; on the register of the European Union Office for Harmonization in the Internal Market (OHIM) as a Community Trademark (CTM), registration number 009532698, registration dated April 1, 2011, in ICs 38, 41 and 42; on the register of Swiss Federal Institute of Intellectual Property (IPI), registration number 614,806, dated December 8, 2010, in ICs 35, 38, 41 and 42; and there are additional registrations of the word and design trademark in India. The word and design trademark features the letters ONMOBILE with an arching blue line arising through the “O” and culminating with a yellow circle over the “i”. Complainant and its parent company (as owner of the aforesaid trademark registrations) are hereinafter referred to as Complainant.
Complainant indicates that it is a global leader in “telecom value-added services”. On June 4, 2013, Complainant issued a press release stating, inter alia:
“Bangalore, India: June 4, 2013: OnMobile Global Limited, a global leader in telecom value-added services (VAS), announced today that it has entered into a definitive agreement to acquire the business assets and liabilities of Livewire Mobile, a leading provider of end-to-end managed mobile entertainment solutions for network operators and consumer device manufacturers. The resultant new U.S.-based entity will be called OnMobile Live Inc, a 100% subsidiary of OnMobile LLC, US.”
According to the Registrar’s verification, Respondent is the listed registrant of the disputed domain name. According to the publicly available WhoIs information, the record of registration of the disputed domain name was created on June 5, 2013. There is nothing on the record of this proceeding to suggest that the disputed domain name was initially created prior to that date.
There is no evidence on the record of this proceeding of any use by Respondent of the disputed domain name in connection with an active website.
Respondent has been the subject of numerous administrative panel findings under the Policy of bad faith registration and use of domain names. Complainant has specifically referred to the following administrative panel decisions.
Olivetti S.p.A. v. Mr. Syed Hussain, WIPO Case No. D2001-0326;
Japan Air Gases Limited v. MIC, WIPO Case No. D2003-0344;
Compagnie Gervais Danone v. Domain Management, Syed Hussain, WIPO Case No. D2008-1239;
Deutsche Telekom AG v. Domain Management, WIPO Case No. D2011-0924.
The afore-cited administrative panel decisions collectively refer to many other decisions finding that Respondent registered and used domain names in bad faith.
The registration agreement in effect between Respondent and the Registrar subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, of which the Center is one, regarding allegations of abusive domain name registration and use (Policy, paragraph 4(a)).
5. Parties’ Contentions
Complainant alleges that it has rights in the trademark and service mark ONMOBILE as evidenced by registration in the United States, Europe, Switzerland and India.
Complainant contends that Respondent has no rights or legitimate interests in respect of the disputed domain name because there is no evidence that Respondent has been using the name, service mark or trademark “OnMobile Live”.
Complainant argues that Respondent registered and is using the disputed domain name in bad faith because: (1) Respondent registered the disputed domain name one day following the issuance of a press release by Complainant that announced the use of Complainant’s trademark in association with a new entity “OnMobile Live”, indicating that Respondent registered the disputed domain name with plans to sell it to its legitimate owner, and; (2) Respondent has a history of buying domain names with the intention of selling them to the owner of the respective trademark.
Complainant requests the Panel to direct the Registrar to transfer the disputed domain name to Complainant.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.
It is essential to Policy proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).
The Center formally notified the Complaint to Respondent at the email and physical addresses provided in its record of registration. The express courier delivery service engaged by the Center successfully delivered the written notice to Respondent at the physical address provided in its record of registration, with proof of signature by an individual with the same surname as Respondent (i.e. Hussain). The Center took those steps prescribed by the Policy and the Rules to provide notice to Respondent, and those steps are presumed to satisfy notice requirements. The Panel is satisfied that Respondent was afforded a reasonable opportunity to respond to the Complaint in this proceeding.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use, and to obtain relief. These elements are that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and
(ii) 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.
Each of the aforesaid three elements must be proved by a complainant to warrant relief.
A. Identical or Confusingly Similar
Complainant had provided evidence of registration of the word trademark ONMOBILE in India, and registration of the word and design trademark ONMOBILE in India, the European Union, Switzerland and the United States (see Factual Background, supra). Those registrations establish a presumption of ownership of trademark rights by Complainant. Respondent has not challenged that presumption. The Panel finds that Complainant owns rights in the term ONMOBILE as a word trademark in India, and; as a word and design trademark in India, the European Union, Switzerland and the United States.
The disputed domain name <onmobilelive.com> directly incorporates the word term of Complainant’s word trademark registered in India, and adds the term “live”. The term “live” has a number of meanings. In the context of telecommunications and media content it refers to communication or transmission occurring directly at the time of production or origination.2 Internet users viewing the disputed domain name that connects Complainant’s ONMOBILE trademark with “live” would likely conclude that Complainant was the source of a form of communication. The disputed domain name <onmobilelive.com> is confusingly similar to Complainant’s ONMOBILE trademark.3
The Panel determines that Complainant has rights in the ONMOBILE trademark, and that the disputed domain name is confusingly similar to that trademark.
B. Rights or Legitimate Interests
The second element of a claim of abusive domain name registration and use is that the respondent has no rights or legitimate interests in respect of the domain name (Policy, paragraph 4(a)(ii)). The Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(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.” (Policy, paragraph 4(c))
Complainant has argued that Respondent has no rights or legitimate interests in respect of the disputed domain name because there is no evidence that Respondent has been using the name, service mark or trademark “OnMobile Live”. Because use or demonstrable preparations to use the disputed domain name is part of each way by which Respondent might have established rights or legitimate interests, Complainant’s argument is sufficient to establish a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name.
Respondent has not furnished a response to the Complaint. There is no evidence on the record of this proceeding that suggests a basis for a finding of rights or legitimate interests on the part of Respondent. Respondent has not rebutted the prima facie case made by Complainant.
The Panel determines that Complainant has established that Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
In order to prevail under the Policy, Complainant must demonstrate that the disputed domain name “has been registered and is being used in bad faith” (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy states that “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.” Among those circumstances are: “(i) circumstances indicating that [respondent has] registered or [respondent has] 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) [respondent has] 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 [respondent has] engaged in a pattern of such conduct.”
Respondent registered the disputed domain name one day following the announcement by Complainant of the establishment of a new business entity making use of its trademark with an adjective related to its business (i.e. “OnMobile Live”). This is a distinctive combination of terms. The disputed domain name <onmobilelive.com> is identical to the distinctive name of Complainant’s new business entity. The Panel considers it highly unlikely that Respondent serendipitously or inadvertently decided to register the distinctive disputed domain name one day following Complainant’s announcement. The Panel draws the inference that Respondent registered the disputed domain name intending to take unfair advantage of Complainant by selling the disputed domain name to Complainant, or to Complainant’s competitor, at a price in excess of its out-of-pocket costs.
In addition, by registering the disputed domain name, Respondent is preventing Complainant from reflecting its trademark in that domain name, which for Complainant would be a logical way to identify its new business venture. Furthermore, as indicated above (see Factual Background, supra), Respondent has a well-established pattern of registering the trademarks of third parties as domain names, thereby preventing the trademark owners from reflecting their trademarks in those domain names.
The Panel determines that Respondent registered and is using the disputed domain name in bad faith by registering it primarily for the purpose of selling it to Complainant or its competitor for a price in excess of Respondent out-of-pocket costs, and by registering the disputed domain name to prevent Complainant from reflecting its trademark in that domain name, in a pattern of such conduct.
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, <onmobilelive.com>, be transferred to Complainant.
Frederick M. Abbott
Date: July 26, 2013
1 According to the website of Complainant’s parent company:
About OnMobile: OnMobile [NSE India: ONMOBILE], headquartered in Bangalore, India, with services in 59 countries, is the leading Value Added Services [VAS] company for Mobile, Landline and Media Service Providers. OnMobile offers an innovative array of products in Mobile Entertainment, Search and Discovery and Mobile Cloud services. The products span a range of delivery channels, enabling OnMobile’s 92 telecom and media customers to generate high revenues. With over 1,600 employees worldwide, OnMobile has offices around the globe, including London, Paris, Madrid, Silicon Valley, Miami and Seattle. “http://onmobile.com/news_coverage_pr_48.html” (the Panel visit of July 26, 2013).
2 See, e.g., definition of “live” as an adjective in Miriam-Webster online dictionary, definition 8, including “b : broadcast directly at the time of production <a live radio program>”, at “www.merriam-webster.com/dictionary/live”. (the Panel visit of July 26, 2013).
3 Because Complainant has rights in the registered word trademark ONMOBILE, the Panel need not address whether the disputed domain name is also confusingly similar to Complainant’s word and design trademark.
Respondent's intent in registering the disputed domain name immediately following Complainant's announcement of a new business entity incorporating the term used in the disputed domain name might also be used as a factor in establishing confusing similarity. However, the Panel does not consider it necessary to address the issue of intent in order to establish confusing similarity in the circumstances here.