WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Savills Plc v. Ashu Asnani / Savills
Case No. D2014-0363
1. The Parties
The Complainant is Savills Plc of London, the United Kingdom of Great Britain and Northern Ireland, represented by Lane IP Limited, the United Kingdom of Great Britain and Northern Ireland.
The Respondent is Ashu Asnani / Savills of New Delhi, India represented by Kochhar & Co., Gurgaon, India.
2. The Domain Name and Registrar
The Disputed Domain Name <savillsindia.com> is registered with Net 4 India Limited.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 6, 2014. On March 10, 2014, the Center transmitted by email to Net 4 India Limited a request for registrar verification in connection with the disputed domain name. On March 12, 2014, Net 4 India Limited transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details, and also confirmed that the expiry date of the domain name was May 22, 2013. On March 13, 2014 the Center emailed the Registrar noting that the domain name was expired asking them to confirm that the disputed domain name would be placed under “lock” status and inquiring whether any action was required by the parties. After a reminder, the Registrar replied on March 24, 2014 that the domain name was locked and no action was required by the parties.
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 March 28, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was April 17, 2014.
On April 16, 2014, the Center received an email from Kochhar & Co. stating that they represented the Respondent and requested an extension of five days to file a response. The Complainant objected to the extension request. On April 17, 2014 the Center granted the extension, and the Response was filed with the Center on April 22, 2014.
The Center appointed Douglas M. Isenberg as the sole panelist in this matter on May 7, 2014. 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 states that it is “a global real estate services provider listed on the London Stock Exchange” with “an international network of more than 500 offices and associates throughout the Americas, the UK, continental Europe, Asia Pacific, Africa and the Middle East, offering a broad range of specialist advisory, management and transactional services to clients all over the world under the SAVILLS brand”. Complainant further states that it “was first set up in 1855,” that it “re-branded as Savills” in the 1970s and that in the 1980s it “became a limited company”, “obtained a full listing on the London Stock Exchange” and “became Savills plc.” Complainant further states that it “had worldwide revenue of £806.4million in 2012” and that it “has a total of 3503 staff across 92 offices in the UK; 817 staff across its 26 offices in continental Europe; 20,657 staff across its 39 offices in Asia Pacific and 39 staff across its 4 offices in the US”.
Complainant states, and provides evidence to support, that it is the owner of numerous trademark registrations for the mark SAVILLS, including Community Trade Mark (“CTM”) Reg. No. 001593912; U.S. Reg. No. 3,547,038; and International Reg. No. 938581. Complainant further states that it has filed trademark applications for the mark SAVILLS in numerous countries, including India.
Complainant further states that it has twice before had the Disputed Domain Name “taken down” by two different Internet service providers before the Respondent moved the Disputed Domain Name to its current ISP, where Respondent redirected the Disputed Domain Name to a website at “www.thefoundation.co.in”, which redirection has since been removed.
Respondent states that “from the last over 15 years,” it “has offered the services under its mark/name SAVILLS in the area of executive search, human resource consulting and other recruitment activities”; that it was founded in 1999 as “Savills Manpower Consultants”; that it was incorporated as “Savills Human Resource Solutions (P) Limited” in 2005 “under the Indian Companies Act”; and that it “has over 700 clients spread all across the globe”. In support thereof, Respondent provides what it describes as “a true copy of certificate issue[d] by the Chartered Accountants firm (Kapoor & Associates, registration No. 311025), evidencing the existence of the Respondent company ‘Savills Human Resource Solutions (P) Limited’ since March 2nd, 2005 and prior to it the Respondent was carrying its business activities through a proprietor ship [sic] firm call ‘Savills Manpower Consultants’”.
Respondent further states “[t]he name/mark SAVILLS was adopted by combining the two words namely ‘SAVE’ and ‘ILLS’. The significance of these words is ‘TO SAVE PERSONS FROM THE ILLS OF BAD EMPLOYMENT’”. Respondent further states that it applied for registration of the trademark SAVILLS in India on July 3, 2006, Serial No. 1466648. (Complainant states that Complainant “lodged an opposition against this application”).
The Disputed Domain Name was created on May 22, 2004.
5. Parties’ Contentions
Complainant contends, in relevant part, as follows:
- The Disputed Domain Name is confusingly similar to the SAVILLS trademark because it “contains the Complainant’s identical trade mark SAVILLS”.
- Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because “Respondent has registered the domain and refers to their ‘foundation’ as being a ‘unit’ of the Complainant[’]s brand”.
- The Disputed Domain Name was registered and is being used in bad faith because, inter alia, “the SAVILLS brand is extremely well known around the world and is synonymous with the Complainant and the Complainant’s business”; “[i]n 2007 the Complainant conducted an investigation into the business activities of the Respondent and discovered that at the time it was offering recruitment services for the real estate sector, amongst other things”; Respondent’s “specific reference to The Foundation being ‘a unit of Savills’… implies some form of partnership, association or affiliation between the Respondent and the Complainant’s business, which is not and never has been the case”; and “Respondent is operating in a similar and overlapping field to that of the Complainant and so the services will be directed at the same consumers and as such the parties are competitors”.
Respondent contends, in relevant part, as follows:
- The Disputed Domain Name is not confusingly similar to the SAVILLS trademark because, inter alia, “the subject domain name and the Complainant’s domain name differ visually, phonetically and structurally”; “the goods/services and the trade channels are distinctive in nature”; and “[i]t is categorically denied that the Complainant’s alleged trade mark SAVILLS is extremely well-known as a result of extensive use”.
- Respondent has rights or legitimate interests in respect of the Disputed Domain Name because, inter alia, “Respondent honestly and independently adopted the SAVILLS as a trading name/mark in India with respect to its aforementioned services in 1999”; and “the Policy does not aim to adjudicate between genuine conflicting interests”.
- The Disputed Domain Name was not registered and is being used in bad faith because, inter alia, “the goods/services involved of the parties are distinctive in nature as well as the channels of trade”; “[i]t is pertinent to mention that the Complainant has filed two trade mark applications [in India] for the SAVILLS on ‘proposed to be used’ basis on August 31, 2006, which are subsequent to the Respondent’s application no. 1466648”; “the record is devoid of any proof that by acquiring the domain name, the Respondent intended to confuse or deceive consumers in any manner”; and “Respondent is not a competitor of the Complainant and there is no evidence that Respondent’s registration has disrupted the business of the Complainant or that it was registered for that purpose”.
Further, Respondent seeks a ruling of Reverse Domain Name Hijacking because Complainant has acted in bad faith by “entering into frivolous domain dispute proceedings” and the Complainant “has been presented for an improper purpose”.
6. Discussion and Findings
Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (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. Policy, paragraph 4(a).
Where a complainant does not prove one or more of these elements, the panel is compelled to issue a decision denying the complaint, regardless of the complainant’s ability to prove the other element(s) required by the Policy. Accordingly, under such circumstances, any discussion by the panel with respect to such other element(s) would be unnecessary in reaching a decision to deny the complaint. See, e.g., Admerex Limited v. Metyor Inc., WIPO Case No. D2005-1246 (“[s]ince the Complainant must prove all three elements of the Policy, and since the Complainant fails under the third element,… it is not necessary to make a finding under the second element of the Policy”); Micro Electronics, Inc. v. MicroCenter, WIPO Case No. D2005-1289 (where the complainant failed to prove the second element of the Policy, “there is no need for the Panel to address the third element of the Policy”). Therefore, given that the Panel in the instant case finds, as discussed below, that the Complainant has failed to prove the third element of the Policy – that is, paragraph 4(a)(iii) – the Panel makes no findings with respect to the second element of the Policy.
A. Identical or Confusingly Similar
Based upon the trademark registrations cited by Complainant, it is apparent that Complainant has rights in and to the SAVILLS trademark.
As to whether the Disputed Domain Name is identical or confusingly similar to the SAVILLS trademark, the relevant comparison to be made is with the second-level portion of the domain name only (i.e., “savillsindia”), as it is well-established that the top-level domain (i.e., “.com”) is typically disregarded for this purpose. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.2 (“The applicable top-level suffix in the domain name (e.g., ‘.com’) would usually be disregarded under the confusing similarity test (as it is a technical requirement of registration), except in certain cases where the applicable top-level suffix may itself form part of the relevant trademark”).
Inclusion of the geographic identifier “india” in the Disputed Domain Name in addition to the Complainant’s trademark does nothing to alleviate any confusing similarity, as numerous panels have repeatedly held. See, e.g., Blanco GmbH + Co KG v. Traffic-Domain.com, Roy Lee, WIPO Case No. D2012-1799 (“[t]he addition of a geographic term does not affect a finding that the disputed domain name is identical or confusingly similar to a complainant’s trademark”); and Swarovski Aktiengesellschaft v. kay kom, WIPO Case No. D2014-0149 (“the addition of a geographical name or indicator to a trademark… does not serve to differentiate the domain name from the Complainant”).
Accordingly, the Panel finds that Complainant has proven the first element of the Policy.
B. Rights or Legitimate Interests
In support of its arguments under paragraph 4(a)(ii) of the Policy, Complainant has stated, in full, as follows: “Respondent has registered the domain and refers to their ‘foundation’ as being a ‘unit’ of the Complainant[’]s brand”.
As set forth in paragraph 2.1 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”):
While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP. If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interest, the panel then weighs all the evidence, with the burden of proof always remaining on the complainant.
Here, Complainant has effectively failed to make any case, let alone a prima facie case, that the Respondent lacks rights or legitimate interests in respect of the disputed domain name. Nor has Complainant directly addressed any of the factors set forth in paragraph 4(c) of the Policy, pursuant to which a respondent can demonstrate its rights or legitimate interests in a domain name.
Further, Respondent’s statements that it “honestly and independently adopted the SAVILLS as a trading name/mark in India with respect to its aforementioned services in 1999” as well as Complainant’s admission that it has only a pending trademark application for SAVILLS in India are indications that Respondent may have used the Disputed Domain Name in connection with a bona fide offering of goods or services before any notice of the dispute and/or that Respondent has been commonly known by the domain name – either of which would give Respondent rights or legitimate interests, pursuant to either paragraph 4(c)(ii) or 4(c)(iii).
On the other hand, the Panel does not have any reason to question the strength of Complainant’s SAVILL trademark, and finds the Respondent’s assertion that it selected the name “SAVILL” as shorthand for “SAVE” and “ILLS” dubious. Nevertheless, the Policy and the Rules do not provide the Panel with any authority to ascertain the Respondent’s credibility given the limitations on filings, the absence of discovery and the procedural efficiencies inherent in this process. See, e.g., Nicholas Lee Jumblatt, Jumbie LLC v. SlantMedia, WIPO Case No. D2012-1011 (“[t]he Panel takes into account that the Policy was designed to deal with a certain limited category of abusive registration of domain names, but not as a means of litigating all disputes involving domain names”).
In light of its concerns about the sincerity of Respondent’s assertions, this Panel notes that “[i]t may be that Complainant could develop evidence of… lack of legitimate interest in a legal proceeding that would allow more evidentiary development. The Policy, however, was not designed to transfer domain names in every case that a trademark owner might ultimately win”. Trans Continental Records, Inc. v. Compana LLC, WIPO Case No. D2002-0105.
Accordingly, on the record before it, the Panel finds that Complainant has not prevailed in showing that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
Given that, for the reasons set forth above and below, it is unnecessary for the Panel to make a finding with respect to the third element of the Policy, paragraph 4(a)(iii), the Panel refrains from doing so.
7. Reverse Domain Name Hijacking
The Panel declines to find that Complainant has engaged in Reverse Domain Name Hijacking.
For all the foregoing reasons, the Complaint is denied.
Douglas M. Isenberg
Date: May 20, 2014