WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Star India Private Limited v. Munzurul Mamun
Case No. D2014-0821
1. The Parties
The Complainant is Star India Private Limited of Mumbai, India represented by Saikrishna & Associates, India.
The Respondent is Munzurul Mamun of Dhaka, Bangladesh.
2. The Domain Name and Registrar
The disputed domain name <lifeok.org> 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 May 17, 2014. On May 19, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 20, 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.
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 May 26, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was June 15, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 16, 2014.
The Center appointed Syed Naqiz Shahabuddin as the sole panelist in this matter on June 24, 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
The following summary sets out the uncontested factual submissions made by the Complainant:
4.1 The Complainant is part of the Star Group Limited group of companies which owns and operates various television channels broadcasted over 60 services in ten languages reaching more than 300 million viewers in 53 countries.
4.2 One of the channels owned and operated by the Complainant is the LIFE OK channel, a “Hindi General Entertainment Channel” which first started airing on December 18, 2011 in India. The LIFE OK channel currently enjoys a market share of 13% and is viewed by close to 100 million viewers each week.
4.3 The Complainant has created and is using a trademark containing a logo and the words LIFE OK to symbolize the LIFE OK channel.
(a) The trademark is registered in India under the registration numbers 2223117, 2223118, 2223099, 2223122, 2223123 with eight further applications pending in several classes since October 20, 2011.
(b) The LIFE OK trademark is also registered in several classes in Hong Kong and the United Kingdom of Great Britain and Northern Ireland (“UK”), with further applications pending in Canada, Singapore and the United Arab Emirates.
4.4 The popularity of the LIFE OK channel can be seen from the channel’s official Facebook page with more than 1.7 million fans and on the official Twitter account with more than 25,000 followers.
4.5 The Complainant has spent money in excess of USD 17.24 million to promote and advertise the LIFE OK channel, which has earned in excess of USD 18.69 million since airing.
5. Parties’ Contentions
5.1 The Complainant asserts that LIFE OK is a well-known trademark. The Complainant contends further that the disputed domain name is confusingly similar to the Complainant’s LIFE OK trademark for the following reasons:
(a) the disputed domain name comprises of the Complainant’s LIFE OK trademark in its entirety with no prefix or suffix.
(b) the disputed domain name <lifeok.org> is identical to the Complainant’s registered domain name <www.lifeok.com>.
(c) the inclusion of the generic Top-Level Domain (gTLD) “.org” is inconsequential when determining similarities between domain names and trademarks.
5.2 The Complainant further contends that the Respondent does not have any rights or legitimate interests to the disputed domain name because:
(a) the Respondent has not adduced any evidence to indicate the Respondent’s rights to the disputed domain name.
(b) the Respondent is not, in any way, related to the Complainant’s business, is not one of its agents and does not carry out any activity or has any business with the Complainant. The Complainant has not licensed or authorised the Respondent to register or to use the disputed domain name in any way.
(c) the registration of the disputed domain name <lifeok.org> on March 13, 2014 was subsequent to the Complainant’s application for registration of the LIFE OK trademark on October 20, 2011 and registration of the Complainant’s domain name <lifeok.com> on September 4, 2003.
(d) the disputed domain name is being used by the Respondent solely for commercial gain as it resolves to a website which appears to be an e-commerce website, whereupon Internet users can purchase various electronic goods such as laptops, tablets, mobile phones, etc.
5.3 The Complainant further contends that the Respondent registered and used the disputed domain name in bad faith and relies on the following:
(a) the Complainant has not found any evidence to suggest that the Respondent has any rights or legitimate interests to the trademark LIFE OK including any license or authorization from the Complainant.
(b) the Respondent is using the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to the website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website.
(c) the Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services but is instead seeking to ride and usurp the Complainant’s reputation and goodwill in the LIFE OK trademark. The disputed domain name will cause confusion and divert Internet users away from the Complainant’s official website at “www.lifeok.com”.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In order to succeed in its Complaint, the Complainant is required to establish the following elements set out under paragraph 4(a) of the Policy:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has adduced evidence indicating ownership of the LIFE OK trademark by the Complainant in India, Hong Kong and the UK, where the mark has been registered. The Panel finds that the dominant textual string component of the LIKE OK trademark is the character string “Life OK”.
Apart from these trademark registrations, the Complainant has also adduced evidence of inter alia viewership, financial performance, media coverage and social media demographics to reflect the fame and repute of the LIFE OK Hindi channel and correspondingly, the goodwill of the LIFE OK trademark.
The Panel does not hesitate to find that the Complainant has rights to the words and trademark LIFE OK for the purposes of paragraph 4(a)(i) of the Policy.
The disputed domain name comprises the words “life OK” in its entirety and is identical to the LIFE OK trademark in which the Complainant has rights.
Accordingly, the Panel concludes that the first element of the Policy is satisfied.
B. Rights or Legitimate Interests
The Complainant’s assertion had not been rebutted by the Respondent to indicate whether it has any rights or legitimate interests to the disputed domain name. There was also no evidence put forward by the Respondent to indicate that the Respondent was licensed or authorised by the Complainant to use the LIFE OK trademark.
The disputed domain name resolves to a website located at <lifeok.org> which allows Internet users to purchase various electronic goods such as laptops, tablets, mobile phones, etc. The products being sold at the disputed domain name do not appear to have any connection with the disputed domain name and trademark LIFE OK. The website appears to be used solely for commercial gain.
The Complainant also asserts that the Respondent, as an individual, is not commonly known by the disputed domain name and appears to have no connection to the disputed domain name and the trademark LIFE OK.
By operating a commercial website using a reasonably reputable (in the context of Hindi media entertainment) domain name that bears no connection with the Respondent, the Respondent is presumably seeking to ride on the Complainant’s reputation and goodwill in the LIFE OK trademark so as to cause confusion and to divert Internet users seeking to find the Complainant’s services, products or information to its website rather than to exercise any form of legitimate interest, justification or right to the disputed domain name.
The Panel could not find any right or legitimate interest on the part of the Respondent to the disputed domain name. Based on the above circumstances, the Panel is satisfied that the second element of Paragraph 4(a) of the policy is met.
C. Registered and Used in Bad Faith
In assessing whether the Respondent has registered the disputed domain name with the Complainant’s trademark in mind and used it in bad faith, the Panel also took into account the fact that the words “life” and “OK” are generic words and that, beyond the disputed domain name, there is no evidence that the Respondent has used the words “like OK”, which are actually used by the Complainant for its products and services.
However, the Panel finds that on a balance of probabilities, the Respondent must have had knowledge of the Complainant’s rights to the LIFE OK trademark when it registered and started using the disputed domain name. The factors that were taken into account to arrive at this conclusion include:
(a) the disputed domain name <lifeok.org> is identical to the Complainant’s registered domain name, <lifeok.com> and the LIFE OK trademark. Given that the disputed domain name was only registered well after the Complainant started using the LIFE OK trademark and after it had registered the <lifeok.com> domain name, it is highly improbable that the Respondent was not aware of the Complainant’s LIFE OK Hindi media channel or the fact that the <lifeok.com> domain name had already been registered to the Complainant, when he sought to register the disputed domain name. While not conclusive of itself, as with most applicants of commercial domain names, even if the Respondent did not know of the Complainant’s LIFE OK website and domain name, it would have presumably attempted to apply for the “.com” gTLD first, failing which, it sought to register the disputed domain name instead.
(b) although the words “life” and “OK” are generic words and the Respondent could have intended for them to be used in a descriptive manner, they seem to bear relatively little or no real connection with the products which are sold at the Respondent’s website.
(c) the Panel is not aware of any other reason or justification by the Respondent for the registration or use of the disputed domain name as the Respondent failed, refused and/or neglected to respond to the Complaint. If the Respondent indeed had a credible explanation as to the registration and use of the disputed domain name, it could have done so.
In light of the above circumstances, the Panel could not find any explanation for the registration and use of the disputed domain name except to find that the Respondent is using the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website.
As such, the Panel finds that bad faith has been demonstrated under paragraph 4(b)(iv) of 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 <lifeok.org> be transferred to the Complainant.
Syed Naqiz Shahabuddin
Date: July 7, 2014