WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Multi Screen Media Private Limited v. Privacy Protection Service INC d/b/a PrivacyProtect.org / Syed Fahim Jafari, Zindoro
Case No. D2015-1457
1. The Parties
Complainant is Multi Screen Media Private Limited of Mumbai, India, represented by MarkScan, India.
Respondent is Privacy Protection Service INC d/b/a PrivacyProtect.org of Queensland, Australia / Syed Fahim Jafari, Zindoro of Punjab, Pakistan.
2. The Domain Name and Registrar
The Disputed Domain Name <itnakaronamujhepyar.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 18, 2015. On August 18, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On August 20, 2015, 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 Complainant on August 20, 2015 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint.
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 Respondent of the Complaint, and the proceeding commenced on September 8, 2015. In accordance with the Rules, paragraph 5, the due date for Response was September 28, 2015. On September 26, 2015, Respondent submitted an email to the Center. Respondent did not submit any formal Response. Accordingly, the Center informed the parties about the commencement of panel appointment process on September 29, 2015.
The Center appointed Richard W. Page as the sole panelist in this matter on October 15, 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.
The Complaint was filed against Privacy Protection Service INC d/b/a PrivacyProtect.org and the Registrar disclosed Syed Fahim Jafari. For purposes of this proceeding, the Panel will treat both as Respondent.
4. Factual Background
The Disputed Domain Name was registered on May 6, 2015.
“Itna Karo Na Mujhe Pyaar” is a television show (the “Show”) for which all rights, including but not limited to trademark and/or copyrights are owned and controlled by Complainant. The Show is one of Complainant’s leading television programs on its flagship channel, Sony Entertainment Television (“SET”). The Show was originally commissioned by Complainant who chose the producer to create the Show on behalf of Complainant. The title of the Show is unique and was originally created by Complainant. Complainant’s website features the Show along with the Show’s Wikipedia page mentioning Complainant as the owner.
The Show first aired on November 18, 2014 and has been successfully running on Complainant’s channel SET since that date, every Monday through Thursday evening in a primetime slot which is viewed by millions of households in India. The Show has been successful and has completed 155 episodes (as of August 13, 2015). The Show won the 2015 Star Guild Award for best actor for the lead.
Apart from India, the Show is aired in over 200 countries where Complainant’s channel is broadcast, reaching a viewership of several million households worldwide. Episodes of the Show are available on the Internet through Complainant’s online platform “www.sonyliv.com” and on Complainant’s official YouTube Channel where episodes of the Show have been viewed approximately 3.68 million times in India alone.
Additionally, the Show enjoys high online video views from all over the world including the United States of America, United Kingdom of Great Britain and Northern Ireland and Australia, among others.
5. Parties’ Contentions
Complainant contends that the Disputed Domain Name is an exact copy of the title of the Show. Respondent has uploaded full episodes of the Show onto its website and is running such pirated content along with third party advertisements and banners.
Complainant further submits that Respondent’s website features not only Complainant’s Show, but also shows from other television broadcasters which also appear to be unauthorized.
Complainant alleges that the Disputed Domain Name was registered and Respondent’s website was developed with the bad faith intent of attracting Internet users to Respondent’s site for consumption of pirated content. Complainant further alleges that Respondent is trying to create the appearance that it has some relationship to Complainant, such as a licensee or partner.
Complainant contends that Respondent has no rights or legitimate interests with respect to the Disputed Domain Name. Respondent has not been commonly known by the Disputed Domain Name and Respondent is using the Disputed Domain Name for a commercial purpose by confusing Internet users into believing Respondent has a relationship to Complainant, which is not a legitimate use of the Disputed Domain Name.
Complainant further alleges Respondent’s bad faith as supported that the activities of Respondent in registering the confusingly similar Disputed Domain Name, pirating copies of the Show and profiting through paid advertisements and banners.
Respondent did not file a formal Response to the Complainant’s contentions. Respondent did state in an email to the Center that “our country [presumably Pakistan] does not have applicable copyright laws and that the Disputed Domain Name contains a short “a” in the word “pyar,” while the title of the Show has a long “aa” in the word “pyaar.”
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules, and any rules and principles of law that it deems applicable.”
A respondent is not obliged to participate in a domain name dispute proceeding, but if it were to fail to do so, asserted facts that are not unreasonable would be taken as true and the respondent would be subject to the inferences that flow naturally from the information provided by the complainant: (See Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441.)
Even though Respondent has failed to file a formal Response or to contest Complainant’s assertions, the Panel will review the evidence proffered by Complainant to verify that the essential elements of the claims are met and will consider the comments of Respondent in its email to the Center.
Paragraph 4(a) of the Policy directs that Complainant must prove each of the following:
i) that the Disputed Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii) that 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
Complainant has not demonstrated any trademark registrations of the Show. However, Complainant alleges that it is the owner of all common law trademark and copyrights in the title “Inta Karo Na Mujhe Pyaar.” Indian law is a common law system which recognizes both registered trademarks and common law trademark rights. Complainant has shown sufficient evidence of passing off to demonstrate that it has common law rights for the purposes of this Complaint (i.e. the title of the Show is unique, it was created in 2014 and has enjoyed an important success with over 155 episodes, see also Section 4).
Respondent’s states in his email to the Center asserting that Pakistan does not have copyright [or other] law sufficient to support Complainant’s present action. This statement is not relevant, because Complainant’s common law rights arise under Indian law.
The Panel finds that the Disputed Domain Name contains the entirety of the Show’s title and is confusingly similar to Complainant’s common law trademark. Respondent’s assertion that the Disputed Domain Name contains a short “a” in the word “pyar” while the title of the Show has a long “aa” in the word “pyaar” is not sufficiently distinctive to defeat Complainant’s rights. Therefore, the Panel finds that Complainant has shown the elements of the Policy, paragraph 4(a)(i).
B. Rights or Legitimate Interests
As stated above, Complainant contends that Respondent has no rights or legitimate interest in the Disputed Domain Name. The Panel finds that Complainant has sustained it burden of making a prima facie showing that Respondent lacks any rights to or legitimate interests in the Disputed Domain Name. Respondent has not contested the elements of the prima facie showing. Therefore, the Panel finds that the contentions of Complainant are sufficient under the Policy, paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
As stated above, Complainant contends that the Respondent has registered and used the Disputed Domain Name in bad faith. Respondent has not contested these allegations. Therefore, the Panel finds that the undisputed contentions of Complaint (along with its annexes) of the use of the confusingly similar Disputed Domain Name for commercial purposes attracting Internet users to a website with third party advertisements are sufficient to show bad faith under the Policy, paragraphs 4(b)(iv) and 4(a(iii).
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, <itnakaronamujhepyar.com> be transferred to Complainant.
Richard W. Page
Date: November 1, 2015