WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Star India Private Limited v. Vishwajeet Kshirsagar, SEAES
Case No. D2015-0338
1. The Parties
The Complainant is Star India Private Limited of Mumbai, India, represented by Saikrishna & Associates, India.
The Respondent is Vishwajeet Kshirsagar, SEAES of Maharashtra, India, self-represented.
2. The Domain Name and Registrar
The disputed domain name <lifeokey.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 February 27, 2015. On February 27, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 27, 2015, 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 March 9, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was March 29, 2015. The Response was filed with the Center on March 28, 2015.
The Center appointed Harini Narayanswamy as the sole panelist in this matter on April 16, 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 corporate group of which the Complainant is a member, Star Group Limited, owns and operates various television channels. Some of its television channels are STAR PLUS, STAR GOLD, STAR UTSAV, STAR ONE, CHANNEL [V], MOVIES OK, JALSHA MOVIES, STAR MOVIES and STAR WORLD PREMIERE.
LIFE OK is a Hindi entertainment channel that is owned and managed by the Complainant. The Complainant has registered trademark rights for the LIFE OK trademark logo in India and has registered trademark rights for the LIFE OK mark in other jurisdictions such as Hong Kong, China and the United Kingdom of Great Britain and Northern Ireland (UK).
The Respondent registered the disputed domain name <lifeokey.com> on December 17, 2014. The Complainant has submitted evidence showing the disputed domain name is used in connection with pay-per-click links.
5. Parties’ Contentions
The Complainant states it broadcasts over sixty services in ten languages covering entertainment, sports, movies, music and documentaries. The Complainant states its channels serve fifty-three countries across Asia including India and its viewership exceeds three hundred million, with approximately one hundred million viewers every day.
The LIFE OK Channel, the Complainant states, is currently its fastest growing channel. It offers its services under the LIFE OK trademark logo and the earliest trademark registration of its mark is dated October 20, 2011. The Complainant provides a list of its national and foreign trademark registrations as evidence. The Complainant states some of its foreign trademark registrations are under the name of its parent company, the Star Group News America Incorporated. The Complainant states that LIFE OK is popular on social media, and the official Facebook page for the LIFE OK channel has over three million fans and its Twitter account has fifty four thousand followers.
The Complainant states its LIFE OK channel has been a tremendous success and has earned revenues in excess of USD eighteen million. The Complainant states it has spent in excess of USD seventeen million in promoting and advertizing LIFE OK. The Complainant submits that LIFE OK has been the subject of widespread unsolicited media publicity and has adduced evidence of several articles and news items appearing in various national and regional newspapers referring to LIFE OK and has also provided evidence of the various promotional material of the LIFE OK mark. The Complainant has referred to numerous awards won by the LIFE OK channel, which are: India Telly Awards, Zee Gold Award, Indian Television Academy Awards and Big Star Entertainment. The Complainant states that it has successfully obtained the transfer of the domain names <lifeok.info>, <lifeok.org>, <lifeoklive.com>, <lifeok.us> from third party registrants by filing similar complaints before UDRP panels.
The Complainant contends it is the prior adopter and owner of the LIFE OK mark. The disputed domain name is confusingly similar and phonetically identical to its LIFE OK mark despite the addition of letters “ey”.
The Complainant states the Respondent has no rights or legitimate interests in the disputed domain name, as the Respondent has no authorization to use its mark and is not associated with it. The Complainant further contends, the Respondent is not commonly known by the disputed domain name and there is no evidence of bona fide use of the disputed domain name.
The Complainant argues the Respondent has registered and used the disputed domain name in bad faith to gain unfair advantage. The “WhoIs” search results on “www.whois.net” show that the disputed domain name is for sale. Given the popularity of the mark, the Respondent was most probably aware of the Complainant’s mark and registered the disputed domain name based on the mark in bad faith. The Complainant requests for transfer of the disputed domain name.
The Respondent denies all allegations in the Complaint and argues that the disputed domain name is not identical or confusingly similar to the Complainant’s mark. The Respondent further argues that the Complainant does not have registered trademark rights in the word mark LIFE OK in India but has only registered rights for the pictorial part of its logo or device mark, which is not relevant to this dispute. The Respondent states that the word mark applications were filed at the same time as the logo mark but due to Trademark office objections, have not yet attained registration. The Respondent has filed as evidence the Trademark office examination reports regarding the Complainant’s LIFE OK word mark applications.
The Respondent argues that it is not open for an Indian Complainant to seek transfer from an Indian Respondent, when the Complainant does not have registered rights for the relevant mark in India. The Respondent further states that he has filed a trademark application for LIFE OKEY in class 44, on March 27, 2015, application number 2930836. He has provided as evidence a copy of the said trademark application.
The Respondent argues the present dispute is outside the jurisdiction of the UDRP as it involves questions that are not within the scope of the UDRP, these questions are: (i) Whether the Complainant has common law rights in the LIFE OK mark in India (ii) Whether LIFEOKEY is similar to the LIFE OK mark (iii) Whether the Complainant and the Respondent are using their marks in respect of similar services.
The Respondent argues that the adjudication of the dispute under the UDRP may lead to a situation of conflicting decisions if the Respondent is granted trademark registration for its LIFEOKEY trademark application, but is denied ownership of a domain name featuring its mark in these proceedings. The Respondent alleges that the Complainant has made tall claims, but has not filed any documentary evidence. The Respondent further argues the Complainant’s trademark applications are filed as “Proposed to be used” and as the Complainant has not filed any affidavit of use, the Complainant cannot claim common law rights in the mark.
The Respondent argues that the two marks are structurally and visually dissimilar and the word “okey” is a dictionary word. The Respondent denies that he lacks rights or legitimate interests in the disputed domain name and states that he intends on using it in connection with yoga, naturopathy and ancient sciences. The Respondent states he has a group of local residents (doctors, yoga instructors and other professionals for providing these services) and is contemplating a formal business launch and as evidence has filed a notarized declaration by a doctor. The Respondent also states that he has hired a web designer to develop the website and has attached as evidence a screen shot of the home page developed for the proposed website and a written a declaration given by the website designer.
The Respondent states he has been offering free yoga classes at his residence under the mark as a pre-launch strategy and that his mark has gained reputation and goodwill in the local society due to these free yoga classes. Therefore, based on his efforts to launch the mark, the Respondent claims he has rights and legitimate interests in the disputed domain name, and states that he is using the disputed domain name in legitimate noncommercial manner.
The Respondent argues that while the Complainant by its own admission, has registering its domain name <lifeok.com> in 2003 but launched its business only in October 2011, which is eight years after registration of its domain name. It is not open for the Complainant to allege bad faith use on the part of the Respondent, merely because the Respondent has not yet started using the disputed domain name or website within three months of registration of the disputed domain name. The Respondent denies the disputed domain name is for sale and asserts that the Complainant has falsely suggested it is for sale based on some general statements on the “www.whois.net” services.
The Respondent states he was not aware of the Complainant’s LIFE OK channel, which he states is a paid channel and refutes the popularity of the channel in India. He alleges he came to know about the LIFE OK channel only when he received the copy of the Complaint. The Respondent states that the mere fact that he has appointed a website designer to develop a website for use in connection with the disputed domain name, shows that he has not registered the disputed domain name for sale.
6. Discussion and Findings
Preliminary Issue - Jurisdiction
The Respondent has raised the issue of the jurisdiction of this Panel and posed three specific questions that he alleges are not within the scope of the UDRP. The questions are (i) Whether the Complainant has common law rights in the LIFE OK mark in India (ii) Whether LIFE OKEY is similar to the LIFE OK mark (iii) Whether the Complainant and the Respondent are using the marks in respect of similar services.
Based on the WIPO Overview of Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), the Panel finds that the dispute is within the scope of the UDRP and this Panel has jurisdiction over the present dispute. The Panel addresses each of the three questions raised by the Respondent:
First, under the Policy, an appointed panel has the jurisdiction to determine whether the Complainant has common law rights in a mark based on the evidence submitted by the parties (WIPO Overview 2.0, paragraph 1.7). Second, the Panel is expected and obligated to make a determination regarding the confusing similarity between the Complainant’s trademark and the disputed domain name under paragraph 4 of the Policy. Third, the question of similarity of goods and services is irrelevant to the dispute. It is well established in UDRP cases, that common field of activity is not decisive in determining cases under the Policy. See WIPO Overview 2.0, paragraph 1.1 (that goods and services for which the trademark is registered is irrelevant for the purpose of finding rights in a trademark under of the UDRP).
To obtain the remedy of transfer of the disputed domain name, the Complainant has to establish three requirements set out under paragraph 4(a) of the Policy. These are:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent lacks rights or legitimate interests in the disputed domain name; and
(iii) The disputed domain name was registered and is being used in bad faith by the Respondent.
A. Identical or Confusingly Similar
The first requirement under paragraph 4(a) of the Policy stipulates the Complainant has to establish the disputed domain name is confusingly similar to a trademark or a service mark in which it has rights.
The Respondent has argued that the Complainant has only pending trademark applications for its LIFE OK word marks in India, which does not prove its rights in a trademark for the purposes of the present case. The Panel acknowledges that the Respondent has made a valid argument that a pending application for trademark registration does not prove rights in a trademark. However, given the facts in the present case, this argument does not help the Respondent’s case, for the reasons below
The Respondent’s contention, outlined in section 5.B., that the Complainant only owns registered rights in the pictorial part of its logo or device mark is incorrect. The Complainant has submitted evidence that it owns relevant trademark registrations that contain both pictorial and textual elements. For example the Complainant’s Indian trademark registration no. 2223099 is comprised of a cartoon figure gesturing towards text reading “LIFE OK”.
The WIPO Overview 2.0 states at paragraph 1.11: “as figurative, stylized or design elements in a trademark are generally incapable of representation in a domain name, such elements are typically disregarded for the purpose of assessing identity or confusing similarity, with such assessment generally being between the alpha-numeric components of the domain name, and the dominant textual components of the relevant mark”. The dominant textual component of the Complainant’s registered trademark is LIFE OK, and the disputed domain name incorporates the entirety of this text. Accordingly the Panel finds the disputed domain name confusingly similar to the Complainant’s mark. In this regard see Star India Private Limited v. Suezen Jackson, WIPO Case No. D2014-0820.
Further, the Panel finds that the Complainant has shown that it has common law rights in the LIFE OK mark. Protection given to unregistered marks is on the basis of extensive advertisements and reputation associated with a mark. Prior use establishes rights in a mark, and the Panel finds the Complainant has provided ample evidence of prior use of the LIFE OK mark in commerce and its mark having acquired secondary meaning. Numerous unsolicited newspaper reports and articles in the media show the connection between the Complainant and the trademark. The Panel finds the disputed domain name is confusingly similar to the Complainant’s common law mark.
B. Rights or Legitimate Interests
The second element under paragraph 4(a) of the Policy requires the Complainant to make a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. Once the Complainant has made a prima facie case showing that the Respondent lack rights, the Respondent has the opportunity to rebut the Complainant’s contentions and demonstrate any rights in or legitimate interests in the disputed domain name.
The Complainant has submitted that the Respondent lacks rights or legitimate interests in the disputed domain name as he is not commonly known by the disputed domain name, and is not a licensee or affiliate of the Complainant or authorized to use its mark. The Respondent has submitted that he has made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of services prior to notice of the dispute in order to prove rights and legitimate interests in the disputed domain name. The documents submitted by the Respondent to substantiate his claims are: (i) the Respondent’s trademark application (Annexure 2), (ii) a declaration given by a group member of the Respondent’s contemplated business launch of services under the mark LIFEOKEY by May 2015 (Annexure 3), (iii) a declaration of the website designer (Annexure 4) and (iv) a copy of the screen shot of the webpage that the Respondent proposes to host at the disputed domain name (Annexure 5).
Prior cases have consistently held that the true intent of paragraph 4(c)(i) of the Policy is to recognize a respondent’s good faith registration and selection of domain name. See The New England Vein & Laser Center, P.C. v.Vein Centers for Excellence, Inc., WIPO Case No. D2005-1318 (the term “legitimate” in paragraph 4(c) of the Policy refers to the Respondent’s entitlement to the domain name selected rather than to the legality of the business).
In evaluating the bona fide purpose of the Respondent’s registration and use of the disputed domain name, certain circumstances may support or confirm bona fide intentions, while others may cast doubt or completely invalidate the Respondent’s arguments. Some circumstances that a Panel would consider to make the assessment, for instance, are: whether the Complainant’s trademark had acquired reputation and recognition at the time of registration of the disputed domain name, the public expectation from the mark in question, the likelihood of confusion in the minds of the consuming public as to the source of the mark.
The documents presented by the Respondent show the Respondent has filed a trademark application after being put on notice of the present dispute. The Respondent’s trademark application number 2930836 in class 44 is dated March 27, 2015, about a month after the Complaint was filed on February 27, 2015. The other documents filed by the Respondent are the web designer’s declaration and a notarized document stating that a medical doctor is in talks with the Respondent for launch of a business related to yoga, naturopathy and other ancient sciences. The Panel finds, the documents filed as evidence by the Respondent, demonstrates that he probably has a legitimate business model in mind and for which he has undertaken some preparatory work. However, the present dispute is regarding the disputed domain name and the legitimacy of adopting a domain name and not regarding the Respondent’s contemplated business and the legitimacy of the Respondent’s business.
In the Panel’s view, given the reputation and reach of the Complainant’s LIFE OK mark, as evidenced by the Complainant, it is doubtful whether the adoption of the disputed domain name by the Respondent was done without any expectation of capitalizing on the trademark of the Complainant. See The Coca-Cola Company v. MyFanta Networks, S.L., WIPO Case No. D2011-2063. (Respondent’s possible use or demonstrable preparations to use, the disputed domain name in connection with an offering of goods and services, whether for profit or otherwise, has to be bona fide. Registrationa domain name that is confusingly similar to the trademark of another is considered lacking in good faith and devoid of legitimate rights). When the adoption and registration of the name and domain name itself cannot be termed legitimate or bona fide, any further action taken is colorable. See also Abu Dhabi Future Energy Company PJSC v. John Pepin, WIPO Case No. D2008-1560 (respondent may well have in mind a legitimate business for <masdarcity.com> and <masdarcity.net>, but its registration of those domain name is evidence of “exploitative intent”).
On the basis of the facts and circumstances discussed, the Panel finds the Respondent has not shown any meaningful evidence that effectively shows the Respondent’s rights or legitimate interests in the disputed domain name <lifeokey.com>. The Complainant is found to have successfully put forward a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
The Panel finds the Complainant has established the second element under paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
The third element under paragraph 4(a) of the Policy requires the Complainant to establish the disputed domain name has been registered in bad faith and is being used in bad faith.
It is a well-settled proposition of trademark law, that the first party to adopt, use and promote the mark in commerce obtains ownership rights. A later entrant to the market is obligated to take up searches before adopting a mark or registering a domain name. The reputation of a mark is rooted in consumer recognition; the length of time the owner has used the mark and whether a sizable section of the public understands the mark as being associated with the owner.
The Complainant has established its prior rights in the mark and that a large segment of the public recognizes the LIFE OK mark as being associated with the Complainant. The disputed domain name is distinctly suggestive of the Complainant’s trademark. In the Panel’s view the use of the trademark in the disputed domain name is likely to cause consumer confusion as to sponsorship, source, sponsorship, affiliation or endorsement.
Under the circumstances described, including that the disputed domain name is used in connection with pay-per-click links, it is not unreasonable to infer that the disputed domain name was registered by the Respondent with the intention of deriving commercial advantage from the reputation associated with the Complainant’s mark. An intentional attempt to attract, for commercial gain, Internet users to the Respondent’s website or other online presence by creating a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the website constitutes bad faith registration and use under paragraph 4(b)(iv) of the Policy.
The Panel finds the Complainant has successfully established the third element under 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 <lifeokey.com> be transferred to the Complainant.
Date: April 30, 2015