WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Reliance Telecom Limited v. Domains ByProxy.com and Sukhraj Randhawa
Case No. D2013-1470
1. The Parties
The Complainant is Reliance Telecom Limited of Mumbai, Maharashtra, India, represented by Krishna & Saurastri, India.
The Respondents are Domains ByProxy.com of Scottsdale, Arizona, United States of America and Sukhraj Randhawa of Drums, Pennsylvania, United States of America (collectively, the “Respondent”).
2. The Domain Name and Registrar
The disputed domain name <reliancegroup.com> (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 20, 2013. On August 20, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On the same day, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 29, 2013 providing the registrant and contact information disclosed by the Registrar and invited the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on September 2, 2013.
The Center verified that the Complaint together with 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 September 3, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was September 23, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 24, 2013.
The Center appointed Nicholas Smith as the sole panelist in this matter on October 1, 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
The Complainant is an Indian corporation with its principal office in Mumbai, India. The Complainant was founded in 1994 and is part of a wider group of Indian companies founded by Dhirubhai H Ambani, known as the Reliance Group. Starting in the 1970s with Reliance Textiles, Mr. Ambani formed a group of companies which share the use of the word “Reliance”, including the Complainant, Reliance Capital, Reliance Communications, Reliance Entertainment and Reliance Power. According to the Complaint, the group of companies that are commonly referred to as the Reliance Group have assets in excess of INR 251,000 crore and a net worth of INR 89,600 crore, with a customer base of 200 million.
The Complainant or related companies that are part of the Reliance Group have held trade mark registrations for RELIANCE (the “RELIANCE Mark”) both in India and internationally, including the United States, Canada, and the European Union. The RELIANCE Mark has been registered in India by the Complainant since as early as December 1999. The Complainant also maintains an official website at “www.relianceadagroup.com” and owns over 500 domain names containing the word “reliance”.
The Domain Name <reliancegroup.com> was created on September 21, 1997. The Domain Name redirects to a website (“Respondent’s Website”) that appears to be a parking page maintained by the Registrar, which, when visited by the Panel on or around October 4, 2013, contained advertisements for financial services products that appear to be unrelated to the Complainant.
5. Parties’ Contentions
The Complainant makes the following contentions:
(i) that the Domain Name is identical or confusingly similar to the Complainant’s RELIANCE Mark;
(ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
The Complainant is the owner of the RELIANCE Mark. It owns trade mark registrations for the RELIANCE Mark in India. The Complainant is part of the Reliance Group, which is one of India’s top three private business sector houses. Other companies that are part of the Reliance Group own trade marks for the RELIANCE Mark in the United States and Europe. The Reliance Group has a customer base of over 200 million and a shareholder base of over 10 million, the largest of in the world. The Complainant maintains a website at “www.relianceadagroup.com” which receives 250,000 hits a day.
The Domain Name consists of the RELIANCE Mark in its entirety with the addition of the word “group”. It has been held by numerous UDRP panels that the fact that a domain name wholly incorporates a complainant’s registered trade mark is sufficient to establish confusing similarity for the purposes of the Policy despite any addition of other words to such marks.
The Respondent has no rights or legitimate interests in the Domain Name. The Respondent is not commonly known by the Domain Name. The Respondent is not a licensee of the Domain Name. The Respondent has neither used nor made any demonstrable preparations to use the Domain Name and therefore is not making any noncommercial or fair use of the Domain Name.
The Domain Name was registered and is being used in bad faith. The RELIANCE Mark is has been popularly and extensively used in the past few decades. The Respondent must have had actual and constructive knowledge about Complainant’s RELIANCE Mark when acquiring the Domain Name. The Respondent appears to be of Indian origin and had no reason not to know of the RELIANCE Mark. Furthermore the Respondent has engaged in cyberflight.
The Domain Name is not in use. The Domain Name has not been used for 16 years since registration, which is indicative of the Respondent’s intention to hoard the Domain Name. In view of the facts, registration and use of the Domain Name is prejudicial to and dilutes and tarnishes the reputation and goodwill acquired by the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
To prove this element, the Complainant must have trade or service mark rights, and the Domain Name must be identical or confusingly similar to the Complainant’s trade or service mark.
The Complainant is the owner of the RELIANCE Mark, having registrations for RELIANCE as a trade mark in India.
The Domain Name consists of the RELIANCE Mark and the word “group”. The addition of the word “group” suggests a group of companies or individuals. As noted in LEGO Juris A/S v Private, Registration/Dohe Dot, WIPO Case No. D2009-0753, the addition of a term that is generic or descriptive is likely to produce confusion since it creates an association with the Complainant. As such, the addition of the word “group” does not distinguish the Domain Name from the RELIANCE Mark in any significant way. The Panel finds that the Domain Name is confusingly similar to the Complainant’s RELIANCE Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name.
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name:
“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 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))”.
The Respondent is not affiliated with the Complainant in any way. It has not been authorised by the Complainant to register or use the Domain Name or to seek the registration of any domain name incorporating the RELIANCE Mark or a mark similar to the RELIANCE Mark. There is no evidence that the Respondent is commonly known by the Domain Name or any similar name. There is no evidence of any demonstrable preparations to use the Domain Name.
The Complainant has established a prima facie case that the Respondent lacks rights or interests in the Domain Name. The Respondent has had an opportunity to rebut the presumption that it lacks rights or legitimate interests but has chosen not to do so. The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
For the purposes of paragraph 4(a)(iii) of the Policy, 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 the Domain Name in bad faith:
(i) circumstances indicating that the Respondent has registered or 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 trade mark or service mark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or
(ii) the Respondent has registered the Domain Name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 or of a product or service on the Respondent’s website or location.
The registration and use requirements of paragraph 4(a)(iii) of the Policy are conjunctive, and a complainant bears the burden of proof on each. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. If either of the required elements are not established, the Complaint must fail. Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270 (denying transfer of the Domain Name because Complainant failed to prove bad faith registration).
The Domain Name has been registered for almost 16 years. “The longer the time a disputed domain name has been registered, the more difficult it is for a complainant to prove bad faith registration”. AVN Media Network, Inc. v. Hossam Shaltout, WIPO Case No. D2007-1011. There was no explanation for Complainant’s delay in filing a complaint about the Domain Name. Although the Panel’s decision in this case does not rest simply on the passage of time between registration of the Domain Name and Complainant’s assertion of its rights, it is a fact that the Panel cannot ignore.
There is no evidence that the Respondent has engaged in a pattern of conduct of registering domain names (including the Domain Name) to prevent trade mark owners from registering a corresponding domain name.
There is no evidence that the Respondent has ever registered a domain name other than the Domain Name. Nor is there any evidence that the Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor: the Complainant and the Respondent are not competitors.
There are no circumstances that indicate that the Respondent has registered the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to the Complainant. The Domain Name has been registered for more than 16 years, and there is no evidence that the Respondent has ever attempted to sell the Domain Name. While the Respondent’s Website contains a reference to purchasing the Domain Name, at the time of this Decision the Respondent’s Website is a parking page maintained by the Registrar, and clicking on the relevant link merely takes the visitor to the DomainBuy service operated by the Registrar, where people interested in purchasing a name can use the Registrar as an intermediary with owners. The mere existence of a parking webpage maintained by the Registrar does not prove that the Respondent has registered the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to the Complainant or a competitor.
The Panel finds that the Complainant has not satisfied the burden of proof to show that the Respondent registered the Domain Name to intentionally attempt to attract, for commercial gain, Internet users to its 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. This is a decision reached with some difficulty as there is:
a) no evidence whatsoever from the Respondent about its reason for registering the Domain Name;
b) no evidence whatsoever about the use of the Domain Name for the last 16 years, other than an unproven assertion in the Complaint that the Domain Name has never been used; and
c) no evidence of where the Respondent was located in 1997, at the time of the Domain Name registration; and
d) essentially no evidence of the Complainant’s reputation in the Reliance Mark in 1997, at the time of the registration and none about the Complainant’s reputation in the Reliance Mark outside of India.
The Reliance Group of companies started in the 1970s in India with the formation and growth of Reliance Textiles. In 1994, the Complainant was founded.
Based on the information contained in the Complaint, in 1997 the Complainant and its related companies had no registered trade marks for the RELIANCE Mark in India or internationally; the earliest trade mark registered was registered two years later in 1999. The Complainant’s earliest registered trademark appears to be RELIANCE MOBILE, which was registered in 1998, after the registration of the Domain Name in 1997. In 1997 the Complainant had no registered domain names and there is no evidence in the Complaint of its Internet presence in 1997. It appears from the Complaint that the earliest of the Complainant’s 618 domain names was registered in 2001, approximately three and a half years after the registration of the Domain Name. The Panel also notes that search engine technology in 1997 was in its infancy and is not prepared to reach the conclusion that the Respondent would have been made aware of the Reliance Group by conducting an Internet search at the time.
While the Complaint does contain evidence about the Complainant’s present reputation in the RELIANCE Mark, in the form of advertising, sponsorship and customer size data, it contains no clear documentary evidence of the reputation of the Reliance Mark in 1997, such that the Panel can reach a conclusion that the Complainant had unregistered trade mark rights in the RELIANCE Mark in 1997.
The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) states that, in respect of UDRP matters in which the Domain Name was registered before any trade mark rights were established, that the consensus view is that:
“Generally speaking, although a trademark can form a basis for a UDRP action under the first element irrespective of its date [see further paragraph 1.4 above], when a domain name is registered by the respondent before the complainant's relied-upon trademark right is shown to have been first established (whether on a registered or unregistered basis), the registration of the domain name would not have been in bad faith because the registrant could not have contemplated the complainant's then non-existent right.”
But that “In certain situations, when the respondent is clearly aware of the complainant, and it is clear that the aim of the registration was to take advantage of the confusion between the domain name and any potential complainant rights, bad faith can be found. This has been found to occur: shortly before or after a publicized merger between companies, but before any new trademark rights in the combined entity have arisen; or when the respondent (e.g., as a former employee or business partner, or other informed source) seeks to take advantage of any rights that may arise from the complainant's enterprises; or where the potential mark in question is the subject of substantial media attention (e.g., in connection with a widely anticipated product or service launch) of which the respondent is aware, and before the complainant is able to obtain registration of an applied-for trademark, the respondent registers the domain name in order to take advantage of the complainant's likely rights in that mark. (In all such cases, in order to have a chance to succeed in any filed UDRP complaint, the complainant must actually demonstrate relevant trademark rights, as these are a precondition for satisfying the standing requirement under the first element of the UDRP for rights in a mark.)”
Even in the event that the Complainant did have unregistered trade mark rights in the RELIANCE Mark in 1997, the Panel is not prepared to reach the conclusion that the Respondent was aware of the Complainant at the time of the registration and that the aim of the registration was to take advantage of the confusion between the Domain Name and any potential Complainant’s rights.
It is unclear where the Respondent is located or was located in 1997. The Respondent’s listed address is in the United States but that appears to be an address that refers to Network Solutions, a registrar (but not the current Registrar of the Domain Name). There is no further evidence of the location of the Respondent, either currently or in 1997.
The Complainant suggests that because the Respondent has a name that indicates that it is of Indian origin or descent, it must have heard of the Complainant at the time the Domain Name was registered. In the absence of any evidence of the reputation of the Complainant in 1997 in India, the Panel is not prepared to make a finding that the Complainant was so well known that any person of Indian descent or origin, regardless of where they were located, would be aware of the Complainant and its (then unregistered) RELIANCE Mark.
The failure to adduce any evidence of the reputation of the RELIANCE Mark at the time of registration would be less of an issue if the Domain Name was a coined word, such that there was no other logical reason for the Respondent to register the Domain Name. This is not the case with the Domain Name, which consists of two fairly common English words that could easily be used for another purpose. It is not implausible that a party unaware of the Complainant would seek to register a Domain Name consisting of the words “reliance” and “group” to represent the a group that can be relied upon or operates in reliance on a product or service.
This Panel’s notes at the time of this Decision that the Respondent’s Website is now a site that offers advertisements, presumably on a pay-per click basis and may be evidence that the Respondent is currently using the Domain Name in bad faith. Present use may be used to infer that a domain name was registered in bad faith, although it is more difficult to make the inference when the present use is close to 16 years after the registration date. However the mere fact that the Domain Name is currently used for a site maintained by the Registrar that offers advertisements on a pay-per click basis is not sufficient for the Panel to reach a finding that in 1997 the Domain Name was registered in bad faith. In particular, the Respondent’s Website is clearly a holding page operated by the Registrar and not the Respondent. Furthermore, the Panel is not aware, and the Complainant does not provide any evidence, that pay-perclick pages existed in 1997, and if they did, the Internet advertising industry would have been in its infancy. The Panel is not prepared to make the inference that the Domain Name was registered in 1997 for use in a pay-per-click site in the absence of any evidence of the existence/penetration of such sites.
The Complaint makes the allegation that the Respondent has engaged in cyberflight by changing its registration details between the receipt of the Complaint and the Notification of Complaint. That is factually incorrect. The Domain Name had been registered using Domains by Proxy, which is a privacy service operated by GoDaddy that operates to “hide” a registrant’s name from the public WhoIs record. The use of a privacy or proxy registration service is not in and of itself an indication of bad faith. Upon receipt of the Complaint the Center contacted the Registrar, which indicated that the actual identity of the registrant was an individual called Sukhraj Randhawa. There is no evidence that the Respondent has changed its details in response to the Complainant, rather information about the actual identity of the registrant, as opposed to the privacy service on the WhoIs record, was provided to the Center by the Registrar in response to the Request for Registrar Verification.
There is insufficient evidence that any of the four circumstances listed in paragraph 4(b) of the Policy as evidence of bad faith exist in the present proceeding. However, the list of circumstances is non-exhaustive. See TV Globo Ltda. v. Radio Morena WIPO Case No. D2000-0245. The Panel also considers whether the fact that the Domain Name has been passively held for 16 years amounts to bad faith.
It is not clear that the Domain Name has been passively held, as there is no evidence of what use has been made of the Domain Name in the previous 16 years. However, the failure of the Respondent to file a Response providing evidence of such use leads to the inference that there has been no such use in the past 16 years. The mere failure to maintain an active website at a domain name does not automatically result in a finding of bad faith, the WIPO Overview 2.0 notes in relation to cases in which the domain name is passively held:
“With comparative reference to the circumstances set out in paragraph 4(b) of the UDRP deemed to establish bad faith registration and use, panels have found that the apparent lack of so-called active use (e.g., to resolve to a website) of the domain name without any active attempt to sell or to contact the trademark holder (passive holding), does not as such prevent a finding of bad faith. The panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith. Examples of what may be cumulative circumstances found to be indicative of bad faith include the complainant having a well-known trademark, no response to the complaint having been filed, and the registrant’s concealment of its identity. Panels may draw inferences about whether the domain name was used in bad faith given the circumstances surrounding registration, and vice versa.”
When examining all the circumstances of the case the matters considered above would suggest that, despite the fact that there has no evidence of use of the Domain Name, this is not a case where the mere fact that the Domain Name has been passively held should lead to a finding that the Domain Name was registered in bad faith.
In this case, there is insufficient evidence for the Panel to reach a conclusion that the Complainant had such a reputation in its then unregistered RELIANCE Mark in 1997 that the registration of the Domain Name was for the purpose of cybersquatting. Furthermore, given the fact that the Domain Name consists of two ordinary English words, it is not implausible that there was another purpose in the registration of the Domain Name. There is no evidence that the Respondent is a domain name trader or has ever registered any other domain names for illegitimate commercial purposes.
In this case the Panel has been asked to infer the intention of the Respondent in registering the Domain Name 16 years ago, in the absence of any evidence from the Respondent, any evidence about the Respondent other than its name, and any evidence of the Complainant’s reputation in the RELIANCE Mark, both in India and internationally, in 1997. In the present case, by reason of the limited evidence provided by the parties, the Panel finds that the Complainant has not satisfied its burden of showing that circumstances that bring the case within the provisions of paragraph 4(b) of the Policy exist, or other facts showing that Respondent registered the Domain Name in bad faith.
For the foregoing reasons, the Complaint is denied.
Date: October 8, 2013