WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Ascom Holding AG v. Privacy Protection Service Inc. / Mr. Rupesn Seth, Ascom Infotech Pvt. Ltd.
Case No. D2014-0681
1. The Parties
The Complainant is Ascom Holding AG of Bern, Switzerland, represented by Troller Hitz Troller & Partner, Switzerland.
The Respondent is Privacy Protection Service Inc. of Nobby Beach, Queensland, Australia / Mr. Rupesn Seth, Ascom Infotech Pvt. Ltd. of Navi Mumbai, Maharashtra, India, represented by Thakore Jariwala & Associates Advocates & Solicitors, India.
2. The Domain Name and Registrar
The disputed domain name <ascomindia.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 25, 2014. On April 25, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 28, 2014, 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. On April 28, 2014, the Complainant filed an amended Complaint with the Center.
The Center verified that the Complaint together with the 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 May 8, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response May 28, 2014. The Response was filed with the Center May 26, 2014.
The Center appointed Luca Barbero, Daniel Kraus and Maninder Singh as panelists in this matter on July 2, 2014. 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.
As a preliminary issue, the Panel notes that one of the Respondents (Privacy Protection Service Inc.) is a privacy or proxy registration service while the other Respondent (Rupesn Seth, Ascom Infotech Pvt. Ltd) is the substantive Respondent. The Panel adopts the approach outlined in the paragraph 4.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"): "Most panels in cases involving privacy or proxy services in which such disclosure of an underlying registrant has occurred, appear to have found it appropriate to record in their issued decision both the name of the privacy or proxy registration service appearing in the WhoIs at the time the complaint was filed, and of any disclosed underlying registrant". Therefore, this decision is issued in the name of both the Respondents, even though the substantive Respondent is Rupesn Seth, Ascom Infotech Pvt. Ltd, and, accordingly, any reference in this decision to "the Respondent" shall read as a reference to Rupesn Seth, Ascom Infotech Pvt. Ltd.
4. Factual Background
The Complainant is an IT solution provider specializing in wireless solution, security solutions and network testing. It conducts its business in more than 130 countries and has subsidiaries in 17 countries.
In 1996, the Complainant founded a subsidiary in India called Ascom India Pvt. Ltd. Such company was sold to a third party in 2003.
In July 2009, another subsidiary of the Complainant was established in India, Ascom Network Testing Pvt. Ltd. (as per Certificate of Incorporation attached to the Complaint as Annex 5).
The Complainant is the owner of trademark applications and registrations for ASCOM in several countries of the world, including the following:
- The Indian trademark registration No. 528187, filed on April 19, 1990, in class 9;
- The Indian trademark application No. 2259445, filed on December 30, 2011, in classes 9, 38 and 42
- The International trademark registration No. 1133183, registered on March 1, 2012, in classes 9,10, 37, 38, 42 and 44;
- The Italian trademark registration No. 0000584495, filed on May 17, 1990, in classes 35, 36, 37, 38 and 42;
- The United States trademark registration No. 1839234, registered on June 14, 1994, in International class 9;
The Complainant is also the owner, since February 9, 1997, of the domain name <ascom.com>, at which it operates its main web site, and, since October 4, 1999, of the domain name <ascom.co.in>. The Complainant also owns additional domain names identical to the trademark ASCOM, such as <ascom.in>, <ascom.de>, <ascom.ch>, <ascom.fr>, <ascom.co.uk>, <ascom.us>, <ascom.eu>, <ascom.asia>, <ascom.at>, <ascom.se> and <ascom.dk>.
The disputed domain name <ascomindia.com> was registered on March 19, 2001. According to the evidence on records, consisting in screenshots of the web site "www.ascomindia.com" stored by the Wayback Machine provided on "www.archive.org", the disputed domain name was not actively used until December 2009. Since then, the disputed domain name has been resolved to a web site under construction with links referring to hardware like servers, desktops or notebooks, networking and maintenance services as well as email solution, power solution, security or anti-virus services. One of the links resolved to page displaying the contact details of Ascom Infotech Pvt. Ltd..
The Complainant sent a cease and desist letter to the Respondent on October 7, 2011, to which the Respondent replied, through its representative, contesting the infringement of the Complainant's rights. For a period of time since 2012, the Respondent's web site was deactivated but it was subsequently re-activated.
At the time of the drafting of the decision, the disputed domain name is pointed to a blank page.
5. Parties' Contentions
The Complainant contends that the disputed domain name reproduces the trademark ASCOM in its entirety and is therefore identical or at least confusingly similar to the Complainant's trademarks. The Complainant highlights that the addition of merely generic, descriptive or geographical wording to a trademark in a domain name is considered as generally insufficient in itself to avoid a finding of confusing similarity under paragraph 4(a)(i) of the Policy.
The Complainant asserts that the likelihood of confusion is increased by the following elements: (i) ASCOM is a distinctive term; (ii) the addition of a geographical term, "India", which induce users to believe that the disputed domain name be closely linked to the Complainant, which is present in India through its subsidiary Ascom Network Testing Pvt. Ltd. and furthermore owns the domain names <ascom.in> and <ascom.co.in>; and (iii) the Respondent has used the Complainant's logo in a quasi-identical form on the web site published at the disputed domain name.
The Complainant states that the Respondent is not affiliated with the Complainant in any way, nor has the Respondent been authorized by the Complainant to use the Complainant's trademark ASCOM and to register a domain name incorporating said trademark.
The Complainant also asserts that the Respondent has no trademark rights for, and is not commonly known by, ASCOM and points out that there is no evidence showing that the Respondent is doing any effective business by using "Ascomindia" or "Ascom" or similar usage that would provide a legitimate reason to justify the Respondent's interest in the disputed domain name.
The Complainant highlights that ASCOM has no meaning in English or in other languages and contends that the Respondent's goal in registering the disputed domain name was likely to benefit from the reputation and goodwill attached to the Complainant's mark. The Complainant alleges that the disputed domain name has not been used for a bona fide offering of goods and services or for a legitimate noncommercial or fair use, since the disputed domain name has been pointed to a web page offering goods and services identical to the Complainant's ones.
With reference to the bad faith requirement, the Complainant states that it is not plausible that the Respondent was unaware of the Complainant's trademark at the time of the registration, since: (i) a quick trademark search on online databases would have revealed the Complainant's trademarks registrations; (ii) ASCOM is the corporate name of the Complainant and a search on Google using the keyword ASCOM demonstrates that the first results relate to the Complainant's products, services or news; (iii) ASCOM is a coined mark with no meaning; (iv) trademark reputation transcends national borders due to the Internet and today's advancement in Information Technology and the trademark ASCOM is protected worldwide; and (v) the Respondent's data in the WhoIs were masked with a privacy shield, thus suggesting bad faith through the conceilment of the Respondent's identity.
The Complainant highlights that it has had a well-established business in connection with the ASCOM goods and services in India, since at least the early nineties, through its subsidiaries Ascom India Pvt. Ltd. (sold to a third party in 2003) and Ascom Network Testing Pvt. Ltd, established in 2009, as well as online, through the domain names <ascom.com>, <ascom.co.in> and others. The Complainant contends that, through the extensive advertising, use and sales of its goods and services under the trademark ASCOM, the Complainant has developed an excellent reputation for its goods and services and owns valuable rights in the trademark and the goodwill associated therewith.
With reference to the use of the disputed domain name, the Complainant contends that the lack of active use does not prevent a finding of bad faith and asserts that the concept of passive holding has to be applied even in the event of sporadic use. The Complainant points out that the requirement of passive holding can be qualified as given as the web site at the disputed domain name was not active for a long time, from 2001 to December 16, 2009, when some information about a certain Ascom Infotech Pvt. Ltd. appeared on the homepage and a logo similar to the Complainant's one was used.
The Complainant notes that, on September 29, 2010, the homepage had a sightly different look but, however, the remaining pages did not show any content: the web site was under construction (with a "Coming Soon" statement) and no link, apart from the one with the contact details, was working.
The Complainant asserts that, when it became aware of the disputed domain name in 2011, it sent a cease and desist letter to the Respondent. Following such communication and after initial resistance, the Respondent shut down the web site published at the disputed domain name, in 2012. The Complainant alleges that such behaviour shows the Respondent's acceptance that it had no legitimate interest in respect of the disputed domain name. Subsequently, the Complainant noticed that the disputed domain name was again resolving to the web site under construction described above.
The Complainant states that the Respondent's use of the disputed domain name constitutes bad faith as the Respondent has been attempting to attract consumers for commercial gain by deceptively leading them to believe either that the Respondent is affiliated with the Complainant or that the web site is sponsored, approved, or endorsed by the Complainant.
The Complainant underlines that the Respondent has used a logo quasi-identical to the Complainant's one on the correspondent web site, where it allegedly provided products and services directly competitive with those offered by the Complainant. The Complainant therefore concludes that the Respondent has registered and used the disputed domain name with the intention to trade upon the goodwill and reputation earned by the Complainant.
The Respondent preliminarily contests the jurisdiction and authority of the Center to decide the present dispute and states that a proceeding concerning the present dispute should be held in Mumbai, India. It also states that the Complaint should be rejected since it has been filed 13 years after the registration of the disputed domain name.
The Respondent states that it is selling computers and its peripherals manufactured by others, including IBM, MICROSOFT, LENOVO, D-LINK, APC etc. and that it has been using the logo ASCOM since 2001, about eight years prior to the existence in India of the Complainant through its subsidiary established in 2009 and ten years before the registration of the trademark ASCOM in India.
The Respondent asserts that it had no knowledge of the name, existence and activities of the Complainant until it received the Complinant's cease and desist letter in 2011.
The Respondent states that it had established its trading business in 2001 in the name of Messrs. Ascom, and that said firm was converted into a Private Limited Company in 2009, with the name Ascom Infotech Pvt. Ltd.
The Respondent alleges that the name Ascom was coined by the Respondent and that it has an emotional and sentimental value. The Respondent asserts that it has never intended to use the Complainant's trademark ASCOM and explains that the name Ascom was selected since the letter "a" stands for the initial of the name of the Respondent's father, the letter "s" for the initial of its family name the "com" for its trading activities on computer and peripherals.
The Respondent indicates that, following receipt of the cease and desist letter from the Complainant, it replied requesting to produce evidence in support of the Complainant's claim for use of the trademark, but the Complainant did not provide the documentation requested as to its applications for trademark registration and its business activities in India.
The Respondent asserts that, even if it is admitted that the Complainant had any right to the trademark ASCOM, said rights were surrendered through the selling of the Complainant's subsidiary Ascom India Private Limited in 2003 to a third party and the Complainant cannot maintain any action on the basis of such trademark and the rights of the Respondent to the disputed domain name, which the Respondent acquired in 2001, would prevail over the Complainant's rights. The Respondent contends that the alleged trademark rights of the Complainant can have effect only as of December 30, 2011, about 10 years after the Respondent's rights in the name Ascom.
The Respondent denies to have registered the disputed domain name in bad faith and states that it was not aware of the alleged long history, goodwill and reputation of the Complainant.
The Respondent also states that the home page of the Respondent's web site has a different look compared to that of the Complainant and that the Respondent does not sell any goods or services under the name Ascom. The Respondent also submits that the products and services stated dealt with by the Complainant are totally different and at variance with the products and services sold by the Respondent.
6. Discussion and Findings
A. Preliminary issue: the mandatory administrative proceeding and the Panel's authority to decide the dispute
As mentioned above, the Respondent contested the jurisdiction and authority of the Center to decide the present dispute.
In this respect, the Panel notes that the Policy sets forth the terms and conditions that must be applied in connection with a dispute arisen between a registrant and a third party over a domain name registered through an ICANN-accredited registrar. The provisions of the Policy, which are incorporated by reference into the Registration Agreement subscribed by each registrant at the time of the registration of a domain name, defines, at paragraph 4, the type of disputes for which a registrant is required to submit to a mandatory administrative proceeding, providing that these proceedings be conducted before one of the administrative-dispute-resolution service providers listed at "www.icann.org/en/dndr/udrp/approved-providers.htm" (each, a "Provider"), including the Center.
In particular, paragraph 4(a) of the Policy directs that a registrant is "required to submit to a mandatory administrative proceeding in the event that a third party (a "complainant") asserts to the applicable Provider, in compliance with the Rules of Procedure, that
(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.
In the administrative proceeding, the complainant must prove that each of these three elements are present.
As to the Panel's decisions, paragraph 15(a) of the Rules states that the Panel appointed by a Provider shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
However, according to paragraph 4(k) of the Policy, the mandatory administrative proceeding requirements set forth in paragraph 4 shall not prevent either of the parties from submitting the dispute to a court of competent jurisdiction for independent resolution before the mandatory administrative proceeding is commenced or after the proceeding is concluded.
B. Identical or Confusingly Similar
The Complainant has provided evidence of ownership of several registered trademark registrations for ASCOM.
As highlighted in the WIPO Overview 2.0, ownership of a trademark generally satisfies the threshold requirement of having trademark rights. The registration date, the country of registration and the goods and services for which a trademark is registered are not relevant to establish the first requirement of the Policy.
According to previous UDRP decisions, the addition of merely generic, descriptive, or geographical wording to a trademark in a domain name and of the generic Top-Level Domain ("gTLD") ".com" is insufficient in itself to avoid a finding of confusing similarity under the first element of the UDRP. Moreover, in the present case, the association of ASCOM with the term "India" is apt to induce Internet users to believe that the disputed domain name is registered and used by the Complainant to promote its business in India.
The Panel therefore finds that the disputed domain name is confusingly similar to the Complainant's registered trademark ASCOM according to paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
With respect to this requirement, a complainant is generally required to make a prima facie case that a respondent lacks rights or legitimate interests and, once such prima facie case is made, the burden of production shifts to the respondent to submit appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name (WIPO Overview 2.0, paragraph 2.1).
In the present case, the Panel finds that the Complainant has made a prima facie case and that the Respondent has failed to provide sufficient evidence to demonstrate any rights and/or legitimate interests in the disputed domain name.
The Panel observes that there is no relation, disclosed to the Panel or otherwise apparent from the record, between the Respondent and the Complainant. The Respondent is not a licensee of the Complainant, nor has the Respondent otherwise obtained an authorization to use the Complainant's trademark.
As highlighted in the paragraphs above, the Respondent stated that it had established its trading business in 2001 in the name of Messrs. Ascom, and that said firm was converted into a Private Limited Company in 2009, with the name Ascom Infotech Pvt. Ltd. It further states that the name "Ascom" was coined by the Respondent, and that the letter "a" stands for the initial of the name of the Respondent's father, the letter "s" for the initial of its family name and the three letters "com" for its trading activities on computer and peripherals.
However, no evidence has been submitted as to the alleged establishment of a firm named Ascom by the Respondent in 2001 and to demonstrate that the Respondent might have been commonly known by the name Ascom or Ascom India.
Furthermore, according to the screenshots submitted by the Complainant, which have not been contested by the Respondent, the web site at the disputed domain name has been inactive for several years since its registration and only few months after the incorporation of the Complainant's subsidiary in India, in 2009, the domain name was pointed to an active web site - though under construction - where a logo with a design and layout very similar to the Complainant's one and the Respondent's contact details were published, along with links related to computers and related devices.
In the Panel's view, despite the Respondent's contentions to the contrary, the above circumstances suggest the Respondent's awareness of the Complainant and of its trademark and the Respondent's will to somehow benefit from the notoriety of the Complainant mostly likely for commercial gain. Therefore, the Panel finds that the Respondent has not made preparations to use, or used, the disputed domain name in connection with a bona fide offering of goods or services or for a legitimate, noncommercial or fair use.
Thus, in light of the above, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name, in accordance with paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
The Panel finds that, in light of the Complainant's prior registration and use of the trademark ASCOM online and in several countries of the world, including India, where the Respondent is based, and the trademark is protected since 1990 through the Indian trademark No. 528187, which was duly renewed, and in particular the presence of the Complainant in said country through its subsidiary Ascom India Pvt. Ltd since 1996, the Respondent should have been aware of the Complainant and the Complainant's trademark at the time of the registration of the disputed domain name.
According to the evidence on records, as mentioned above, the disputed domain name was passively held by the Respondent between 2001 and 2009 when, a few months after the establishment of a new subsidiary of the Complainant in India, the disputed domain name resolved to an active web site featuring links related to computers and peripherals and publishing the contact information of the Respondent.
Furthermore, the Respondent's pointing of the disputed domain name to a web site featuring a logo very similar to the Complainant's one indeed suggests that the Respondent was aware of the Complainant's trademark and registered the disputed domain name with the intention to trade on the notoriety acquired by the Complainant's trademark.
In view of the above, the Panel finds that the Respondent has intentionally attempted to attract for commercial gain Internet users to its web site by creating a likelihood of confusion with the Complainant's trademark as to the source, sponsorship, affiliation or endorsement of its site and of the products and services promoted thereon.
In 2012, following the Complainant's cease and desist letter and subsequent correspondence with the Respondent's representative, the Respondent again deactivated the web site to which the disputed domain name resolved. The disputed domain name was subsequently pointed to the same web site and, at the timed of the drafting of this decision, is pointed to a blank page.
The Panel notes that, as stated by several prior UDRP panels, the passive holding of a domain name does not as such prevent a finding of bad faith. In view of the circumstances of the case, including, amongst others, the adoption of a privacy service, which suggests the owner's attempt to hide its identity, the Panel finds that the disputed domain name has also been used by the Respondent in bad faith.
In addition, the Panel also finds that, as stated in the WIPO Overview 2.0, the delay in bringing a complaint does not prevent a complainant from being able to succeed under the UDRP where, like in the present case, a complainant can establish a case on the merits under the requisite three elements.
In view of the above, the Panel finds that the disputed domain name was registered and is being used in bad faith.
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 <ascomindia.com> be transferred to the Complainant.
Date: July 16, 2014