WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Wipro Limited v. Big Shi
Case No. D2015-1353
1. The Parties
The Complainant is Wipro Limited of Bangalore, Karnataka, India, represented by K&S Partners, India.
The Respondent is Big Shi of Beijing, China.
2. The Domain Name and Registrar
The disputed domain name <wiproserver.com> ("the Domain Name") is registered with Shanghai Meicheng Technology Information Development Co., Ltd. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 31, 2015. On July 31, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 3, 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.
On August 5, 2015, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On August 5, 2015, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.
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 and 4, the Center formally notified the Respondent of the Complaint in English and Chinese and the proceedings commenced on August 17, 2015. In accordance with the Rules, paragraph 5, the due date for Response was September 6, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 7, 2015.
The Center appointed Karen Fong as the sole panelist in this matter on September 18, 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 is a registered company in India, established in 1945 as a vegetable oil manufacturer under the name Western India Vegetable Products Limited. Thereafter, the Complainant changed its name to Wipro Product Limited on June 17, 1977 and then to Wipro Limited on April 28, 1984. Since the year 1977, the Complainant has been known as Wipro.
The Complainant has since diversified its business activities to include the following industries: aerospace, automotive, banking, communication service providers, consumer goods. Energy, engineering and construction, government, health care, hi-tech, insurance, manufacturing, media, entertainment and publishing, medical devices, natural resources, network equipment provider, pharmaceuticals and life sciences, professional services, retail, securities and capital markets, transportation and utilities. The Complainant is one of the largest global information technology, consulting and outsourcing companies. It has a group of companies in more than 60 countries globally bearing the name Wipro as part of their company names. The Complainant also has a significant presence in China, particularly Shanghai, Chengdu, Dongguan, Quanzhou, Changzhou, in Hong Kong, China and in Taiwan Province of China. It began doing business in China since 2004. The Complainant employs over 150,000 employees and posted revenue of USD 7.5 billion for the financial year ended March 31, 2015.
The Complainant owns trade mark registrations for WIPRO globally including in India, China, United States of America and Europe. It's earliest registration in India dates back to 1974. The Complainant also owns many domain names including its WIPRO trade mark. This includes <wipro.com>, <wipro.org>, <wipro.jp>, <wipro.co.in>, <wipro.hk> and <wipro.us>.
The Respondent registered the Domain Name on May 4, 2015. The Domain Name resolved to IP addresses that were linked to advanced persistent threat (APT) activity involving malware and monitoring technology used by hackers to access sensitive corporate information. The Domain Name does not appear to be active at the moment.
5. Parties' Contentions
The Complainant contends that the Domain Name is identical or confusingly similar to the WIPRO trade marks, that the Respondent has no rights or legitimate interests with respect to the Domain Name and that the Domain Name was registered and is being used in bad faith. The Complainant requests transfer of the Domain Name.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name was registered and is being used in bad faith.
B. Preliminary Procedural Issue – Language of the Proceeding
The Rules, paragraph 11(a), provide that unless otherwise agreed by the parties or specified otherwise in the Registration Agreement between the respondent and the registrar in relation to the disputed domain name, the language of the proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceedings. According to the information received from the Registrar, the language of the Registration Agreement is Chinese.
The Complainant submits in Section IV of the Complaint and in an email dated August 5, 2015 to the Center that the language of the proceeding should be English. The Complainant contends amongst other things that the Domain Name has been registered in English rather than Chinese characters, made up of the Complainant's trade mark WIPRO and the English word 'server'. The Respondent did not respond to the Complainant's legal notice in English and Chinese sent by email. Translating the Complaint into Chinese would be cumbersome, expensive and will cause unnecessary delay. The Complainant is based in India, has no knowledge of Chinese.
The Panel accepts the Complainant's submissions and notes that all of the communications from the Center to the parties were transmitted in both Chinese and English. The Respondent did not respond to the Center's request regarding the language of the proceeding. The Panel is of the view that the Complainant may be unduly disadvantaged by having to conduct the proceedings in Chinese especially having regard to the serious nature of the harm that could potentially be caused to the Complainant through the Respondent's activities in connection with the Domain Name. Having considered all the circumstances of this case, the Panel determines that English is the language of the proceeding in accordance with paragraph 11(a) of the Rules.
C. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has established that it has rights to the trade mark WIPRO and also that WIPRO is a well known trade mark.
The threshold test for confusing similarity involves the comparison between the trade mark and the domain name itself to determine likelihood of Internet user confusion. The trade mark would generally be recognizable within the domain name. In this case the Complainant's registered trade mark WIPRO is the dominant portion of the Domain Name. The addition of the word "server" after the word "wipro" does nothing to minimise the risk of confusion especially since this descriptive word relates directly to products and services within the industries the Complainant operates. Moreover, for the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy it is permissible for the Panel to ignore the generic Top-Level Domain suffix ".com".
The Panel finds that the Domain Name is identical or confusingly similar to a trade mark in which the Complainant has rights.
D. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in the disputed domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent's use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain, to misleadingly divert consumers, or to tarnish the trademark or service mark at issue.
Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name, it is well established that, as it is put in paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") that 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 does come forward with some allegations of evidence of relevant rights or legitimate interests, the panel weighs all the evidence, with the burden of proof always remaining on the complainant.
The Complainant submits that it has no relationship whatsoever with the Respondent and not authorized the Respondent to use its WIPRO trade mark in the Domain Name or any other manner. Further, the Respondent is not commonly known by the Domain Name. WIPRO is an invented word with no other meaning except as the trade mark and business of the Complainant.
The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not responded and the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the Domain Name.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
E. Registered and Used in Bad Faith
To succeed under the Policy, a Complainant must show that the Domain Name has been both registered and used in bad faith. It is a double requirement.
The Panel is satisfied that the Respondent must have been aware of the Complainant's WIPRO trade mark when it registered the Domain Name. The fact that the Domain Name incorporates the Complainant's well-known trade mark in its entirety is in the Panel's view evidence that the registration of the Domain Name was in bad faith.
The Panel also concludes that the actual use of the Domain Name was in bad faith. The Complainant's cyber security team was tipped off that the Domain Name resolved to IP addresses that were linked to advanced persistent threat (APT) activity involving malware and monitoring technology used by hackers to access sensitive corporate information. Further, the Respondent's contact details are incorrect and likely to be false and he/she is probably concealing his/her true identity. Both the Complainant and the Center have had message delivery failures when attempting to contact the Respondent through email and post. The Domain Name is calculated to confuse Internet users that the Respondent is an authorised franchisee, licensee or somehow connected with the Complainant when this is not the case.
The Panel concludes that the Respondent's registration and use of the Domain Name are in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <wiproserver.com> be transferred to the Complainant.
Date: September 28, 2015