WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Puravankara Projects Limited v. Saurabh Singh
Case No. D2014-2054
1. The Parties
The Complainant is Puravankara Projects Limited of Bengaluru, India, represented by Sathish Kumar, India.
The Respondent is Saurabh Singh of Homebush, Australia.
2. The Domain Name and Registrar
The disputed domain name <puravankaraprojects.com> 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 November 21, 2014. On November 21, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 21, 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on December 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 December 10, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was December 30, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 31, 2014.
The Center appointed Adam Taylor as the sole panelist in this matter on January 13, 2015. 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 Complainant was incorporated in India in 1986 and has been trading under the name “Puravankara” since around that time. The Complainant is in the business of design, development, construction and marketing of residential and commercial property projects. It has undertaken such projects in all major cities in India as well as in the United Arab Emirates.
The Complainant owns various trade marks for “PURAVANKARA” including Indian trade mark number 1182588 dated March 12, 2003, in class 19. The Complainant also owns Indian trade mark number 1182587 dated March 12, 2003, in class 19 for the stylized words “PURAVANKARA PROJECTS LIMITED SINCE 1975” plus “P” logo.
The disputed domain name was registered on November 13, 2013.
As of November 13, 2013, or thereabouts, there was a blog at the website at the disputed domain name entitled “Purvankara Projects. Be Careful of Puravankara Projects limited. Buy at your own risk.” The blog consisted of:
1. a paragraph criticizing large Indian real estate companies generally;
2. a disclaimer: “[t]his website is not owned or operated by Puravankara Projects Pvt Ltd, based out of Bangalore, India. This website is run to educate public to make the right choices and become aware of their rights when buying or investing in the Indian real estate.”;
3. under the heading “Puravnakara Complaints”, extracts from and links to two negative reviews of the Complainant on another website relating to allegedly poor quality building work by the Complainant; and
4. a list of upcoming projects of the Complainant together with a warning to “remember these names”.
5. Parties’ Contentions
Here is a summary of the Complainant’s contentions:
The Complainant is a highly successful real estate developer, with a substantial reputation.
The disputed domain name includes the Complainant’s well known mark and trade name and is identical or confusingly similar thereto.
The Complainant has never licensed or otherwise permitted the Respondent to use its trade mark.
The Respondent is not offering any goods or services at the website at the disputed domain name. The Respondent has no connection with the Complainant and is using the disputed domain name solely to tarnish the Complainant’s trade mark and to defame the Complainant. The right of free speech does not require use of the Complainant’s trade mark in the disputed domain name. The Respondent is using a domain name which falsely conveys an association with the Complainant to lead Internet users to its website and is trading off the Complainant’s goodwill in its trade mark. The Respondent has done nothing to make it clear that the disputed domain name will lead to a website that criticizes or protests against the Complainant. Also, the content of the website goes beyond a legitimate and fair criticism due to the extent of the defamatory comments and misrepresentations.
The Respondent has not been commonly known by the disputed domain name.
There is no evidence that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name.
The bad faith of the Respondent is demonstrated by the content of the website, which contains only a single page with highly offensive, abusive and derogatory comments regarding the Complainant. The fact that the Respondent has posted such comments under the Complainant’s name indicates the Respondent’s awareness of the rights of the Complainant. Further, the Respondent has also used the identical corporate name and logo of the Complainant, further indicating bad faith registration and use. The Respondent has no purpose other than to cause damage to the Complainant and hence the registration is in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant owns registered trade marks for the term “PURAVANAKARA”.
Paragraph 1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) makes clear that the threshold test for confusing similarity under the UDRP involves a comparison between the trade mark and the disputed domain name to determine likelihood of Internet user confusion and that, in order to satisfy this test, the relevant trade mark would generally need to be recognizable as such within the disputed domain name, with the addition of common, dictionary, descriptive, or negative terms typically being regarded as insufficient to prevent threshold Internet user confusion.
Paragraph 1.9 of the WIPO Overview 2.0 adds that, in itself, the addition of merely generic, descriptive, or geographical wording to a trade mark in a domain name is normally insufficient to avoid a finding of confusing similarity and that panels have usually found the incorporated trade mark to constitute the dominant or principal component of the domain name.
Here, the Complainant’s trade mark is undoubtedly the dominant component of the disputed domain name and, as indicated in paragraphs 1.2 and 1.9 of WIPO Overview 2.0, the addition of the descriptive term “projects” is insufficient to avert a finding of confusing similarity.
For the above reasons, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trade mark.
The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
“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, the Complainant has not licensed or otherwise authorised the Respondent to use its trade mark.
The Panel subscribes to “View 1” expressed in paragraph 2.4 of the WIPO Overview 2.0, that the right to criticize does not necessarily extend to registering and using a domain name that is identical or confusingly similar to the Complainant’s trade mark. While these are potentially legitimate activities, that is not the case here as the Respondent has used a domain name which is closely aligned to the Complainant’s trade mark and which is likely to make a misrepresentation to Internet users that any associated website is connected with the Complainant.1 In particular, the Respondent has used a domain name consisting purely of the Complainant’s distinctive trade mark PURAVANKARA together with the descriptive term “projects” which is not only descriptively referable to the Complainant’s services, but also closely reflects the Complainant’s actual corporate name: “Puravankara Projects Limited.”
There is no evidence that paragraphs 4(c)(i) to (iii) of the Policy apply in the circumstances of this case.
The Panel finds that the Complainant has established a prima facie case of lack of rights or legitimate interests and there is no rebuttal by the Respondent.
The Panel concludes that the Complainant has therefore established the second element of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
As explained above, the Panel considers that the Respondent has used for its criticism website a domain name which is likely to make a misrepresentation to Internet users that any associated website is connected with the Complainant. As the panel in Compagnie Generale des Matieres Nucleaires v. Greenpeace International, WIPO Case No. D2001-0376 puts it, the disputed domain name would “catch by surprise” visitors intending to reach the Complainant’s website. In the Panel’s view, the foregoing constitutes registration and use in bad faith, which is not cured by the disclaimer – see paragraph 3.5 of the WIPO Overview 2.0.
The Panel emphasizes that it makes no finding – and it is not qualified to make a finding – in relation to the content of the criticism website, including as to whether or not any part of it is defamatory. The issue here is solely the nature of the disputed domain name which the Respondent has opted to register and use in conjunction with its website.
The Panel finds that the Complainant has established the third element of paragraph 4(a) 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 <puravankaraprojects.com> be transferred to the Complainant.
Date: January 29, 2015
1 The Panel considers that the disclaimer on the website described in the Factual Background, supra, cannot negate the false impression of association with the Complainant created by the disputed domain name itself. This language is only viewable once Internet users have accessed the website and so does nothing to cure user confusion caused by reference to the disputed domain name itself.