WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Star India Private Limited v. About.com Domain Privacy / Nish Patel, Ready Asset
Case No. D2014-0822
1. The Parties
The Complainant is Star India Private Limited of Mumbai, India, represented by Saikrishna & Associates, India.
The Respondent is About.com Domain Privacy of Victoria, Australia / Nish Patel, Ready Asset of Fujian, China.
2. The Domain Name and Registrar
The disputed domain name <lifeoklive.com> is registered with Above.com, Inc. (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 23, 2014, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 26, 2014 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on June 3, 2014.
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 on June 4, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was June 24, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 25, 2014.
The Center appointed Syed Naqiz Shahabuddin as the sole panelist in this matter on July 4, 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, China 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 <lifeoklive.com> comprises of the Complainant's LIFE OK trademark in its entirety with the addition of the word "live". The addition of the word "live" is not sufficient to distinguish and differentiate the disputed domain name from the Complainant's LIFE OK trademark.
(b) the disputed domain name <lifeoklive.com> is copied in its entirety and is identical to the Complainant's domain name <lifeok.com> with the addition of the word "live" which is a common word. The addition of the word "live" may misinform and induce the public to falsely believe that the Complainant's LIFE OK channel can be viewed "live" on the Respondent's website.
(c) the inclusion of the generic Top-level Domain (gTLD) ".com" 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 in the disputed domain name because:
(a) the Respondent has not adduced any evidence to indicate the Respondent's right 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 <lifeoklive.com> on November 28, 2013 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 hosting website containing various sponsored links, i.e. a parking page intended to make profits every time an Internet user clicks on one of the links.
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 or 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, China and the UK, where the mark has been registered. The Panel finds that the dominant textual string component of the LIFE 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 disputed domain name comprises the Complainant's LIFE OK trademark with the additional word "live". The addition of this word does not detract from the general impression left by the Complainant's trademark. On the contrary, the additional generic word merely lends to the confusion that the dispute domain name could be an extension of the Complainant's trademark offering live streaming of the Complainant's media content.
The Panel therefore finds that the Complainant has rights to the trademark LIFE OK and that the disputed domain name is confusingly similar to the Complainant's trademark, for the purposes of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant's assertions had not been rebutted by the Respondent to indicate whether it has any rights or legitimate interests in 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 hosting website located at "www.lifeoklive.com" containing various sponsored links, i.e. a parking page intended to make profits every time an Internet user clicks on one of the links. Some of the links at the disputed domain name appear to be connected with the trademark LIFE OK making reference to television channels. 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 in 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 "life 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 <lifeoklive.com> is confusingly similar 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 it sought to register the disputed domain name. While not conclusive itself, even if the Respondent did not know of the Complainant's LIFE OK website and domain name, it would have presumably attempted to undertake a general website search on the disputed domain name prior to registration in which the search results will show the top links which are linked to the Complainant's "www.lifeok.com" website.
(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 <lifeoklive.com> be transferred to the Complainant.
Syed Naqiz Shahabuddin
Date: July 18, 2014