WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
People Interactive (I) Pvt. Ltd v. CDN Properties Incorporated
Case No. D2014-0932
1. The Parties
The Complainant is People Interactive (I) Pvt. Ltd of Worli, Mumbai, India, represented internally ("Complainant").
The Respondent is CDN Properties Incorporated of Panama City, Panama, represented by Weblegal, Italy ("Respondent").
2. The Domain Name and Registrar
The Disputed Domain Name <shadhi.com> is registered with Internet.bs Corp. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 3, 2014. On June 10, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 15, 2014, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. Complainant filed an amendment to the Complaint on June 9, 2014. Complainant filed a further amendment to the Complaint on June 18, 2014.
The Center verified that the Complaint together with the amendments to 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 Respondent of the Complaint, and the proceedings commenced on June 19, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was July 9, 2014. The Response was filed with the Center on July 8, 2014.
The Center appointed Maxim H. Waldbaum as the sole panelist in this matter on July 14, 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 has the following registered trademarks:
SHAADI.COM, Registration number 1874286, India, dated October 16, 2009
SHAADI.COM, Registration number 1267772, India, dated February 19, 2004
SHAADI.COM, Registration number 9817529, Community Trademark – European Union, dated October 19, 2011
SHAADI, Registration number 3615622, Community Trademark – European Union, dated June 23, 2005
SHAADI.COM, Registration number 242278, Pakistan, dated 1999
Respondent created the Disputed Domain Name on January 24, 2003.
5. Parties' Contentions
Complainant alleges that the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. Complainant is a match making services company in India operating the websites "www.shaadi.com" and "www.shaadi.in". Complainant is the owner of five trademarks in India, the European Union, and in Pakistan, each of which uses the word "shaadi" (the "SHAADI Marks").
Complainant alleges that Respondent has no rights or legitimate interests in the Disputed Domain Name.
Complainant alleges that the Disputed Domain Name was registered and is being used in bad faith. Complainant states that the Disputed Domain Name is used to advertise services and is relying on Internet users to stumble on their website through typos, thus, "typo squatting," while trading on Complainant's brand and goodwill. In further communications with the Center, and in support of their contention that Respondent is typo squatting, Complainant points to three prior cases in which Respondent was ordered to transfer a domain to the complainant in those cases: Humana Incorporated v. CDN Properties Incorporated, WIPO Case No. D2008-1688; Sydney Water Corporation Limited v. CDN Properties Incorporated, WIPO Case No. D2013-1837; GROUP CANAL+ SA v. CDN Properties Incorporated, WIPO Case No. D2009-0457. Complainant does not discuss the cited cases, but rather provides a simple list. Complainant also states in such further correspondence with the Center that Respondent "changed the URL page" after receiving the Complaint. Complainant does not specify how the page was changed.
Respondent argues that the Disputed Domain Name is not identical or confusingly similar to Complainant's SHAADI Marks because the Disputed Domain Name uses the word "Shadhi" which is different from the Complaint's marks which use the word "Shaadi." Respondent presents evidence that Shadhi is both a family name and the name of a popular song in India frequently viewed on YouTube. Respondent points out that "Shadhi" is a common family name in India, Pakistan, Bangladesh as well as other countries in that region and claims that its use of the word in the Disputed Domain Name is for the purpose of engaging in the legitimate business of vanity mail services to be marketed to all people bearing the family name Shadhi who might have such an interest. In contrast, Complainant's marks use the word "shaadi" which is a generic and descriptive word for "wedding."
Respondent contends that it has rights and legitimate interests in the Disputed Domain Name as it is engaged in the legitimate business of vanity mail services and, through use of the common family name "Shadhi" in the Disputed Domain Name, is marketing those services to individuals bearing that name. Respondent's service allows users to purchase vanity email addresses with the format "[name]@shadhi.com". Respondent cites to earlier UDRP decisions in support of the argument that vanity mail services are a legitimate business. See, USA, LLC v. Eddie Nguyen, NAF Claim No. 1449521 (stating that "Respondent's use of the disputed domain name to enable Respondent to use to <onelove.net> suffix in a vanity email address used for personal correspondence demonstrates rights and legitimate interests under UDRP."); and see, Raccords et Plastiques Nicoll v. Tucows.com Co., WIPO Case No. D2008-1322 (finding that a website providing a vanity mail service may constitute a legitimate use of a domain name). Respondent also shows that its registration of the Disputed Domain Name, while post-dating Complainant's trademark registrations in Pakistan, pre-dates any registration by Complainant in Europe and Respondent, being located in Panama, was not aware of Complainant's rights.
Respondent argues that it did not register nor is it using the Disputed Domain Name in bad faith. Respondent contends that Complainant has failed to carry its burden of proof on this count by failing to produce any documentary evidence and by basing statements on mere assumptions. Respondent presents evidence that it has refused to sell the Disputed Domain Name in the past to third parties as well as to Complainant.
Respondent argues that Complainant's actions amount to Reverse Domain Name Hijacking and cites paragraph 15(e) of the Rules for the standard that such a finding may be made if the Panel finds that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceedings. In support, Respondent argues that Complainant has been aware of the Disputed Domain Name since 2003 when it first offered to purchase it, Complainant has not provided documentary evidence in support of their claims, and Complainant has made further offers to purchase the Disputed Domain Name and threatened further legal action against Respondent.
6. Discussion and Findings
A. Identical or Confusingly Similar
Despite Complainant's assertions, the Panel is not convinced that the Disputed Domain Name is identical or confusingly similar to Complainant's SHAADI Marks. The Disputed Domain Name uses a different word and is therefore not identical to Complainant's Marks. Complainant's use of the word "shaadi," meaning "wedding," corresponds with Complainant's business which consists of match making services. The word "shadhi" used in the Disputed Domain Name has no such corresponding meaning and the terms are not per se confusingly similar. In any event, given the Panel's findings under the second and third element, it is not necessary to make a final determination as to whether the Disputed Domain Name is identical or confusingly similar to Complainant's Marks pursuant to the Policy.
B. Rights or Legitimate Interests
The Panel finds that Complainant has failed to demonstrate that Respondent has no rights or legitimate interests in the Disputed Domain Name. Respondent submits that it registered the Disputed Domain Name for the purpose of engaging in the business of offering vanity mail services and marketing such services to people bearing the common family name "Shadhi." Respondent rightly points out, Shadhi is a common family name in India and elsewhere, and the business of vanity mail services to offer customized email addresses to individuals has been found to be a legitimate use of a domain name.
C. Registered and Used in Bad Faith
The Panel finds that Complainant has failed to demonstrate that Respondent registered and is using the Disputed Domain Name in bad faith. The burden of proof rests squarely on Complainant. Complainant has failed to put forth a convincing case. Complainant cites, but does not discuss, three earlier UDRP decisions in which Respondent was ordered to transfer a domain name based on accusations of typo squatting. The cases are all distinguishable from the facts at hand. In all three cited cases the entirety of the complainant's trademark was used in the disputed domain name. The words were the same words, not similar, but identical. In both Humana Incorporated and Sydney Water Corporation the difference rested on the use of a generic Top-Level-Domain which the panel correctly found to be insufficient to distinguish the identical words from the complainant's trademark in each case. Here, the words making up the Complainant's trademark and the Disputed Domain Name are different from one another.
Complainant states that Respondent "changed the URL page" after receiving the complaint, but fails to offer any explanation, description, or evidence of any kind as to how it was changed.
D. Reverse Domain Name Hijacking
Despite Complainant's failure to meet its standard of proof, the Panel does not find that Complainant's conduct amounts to Reverse Domain Name Hijacking.
For the foregoing reasons, the Complaint is denied.
Maxim H. Waldbaum
Date: August 11, 2014