WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Voltas Limited v. Gautam S, Phillips HVC consulting Pvt Ltd PHC
Case No. D2015-1749
1. The Parties
The Complainant is Voltas Limited of Mumbai, India, represented by Anand & Anand, India.
The Respondent is Gautam S, Phillips HVC consulting Pvt Ltd PHC, of Chandigarh, India.
2. The Domain Name and Registrar
The disputed domain name <voltasgroup.com> is registered with GoDaddy.com, LLC (the “Registrar”). According to the WhoIs, the details of registration are as follows:
(a) Domain ID : 1945256839_DOMAIN_com-VRSN
(b) Created on : July 7, 2015
(c) Update : July 7, 2015
(d) Expiring on : July 7, 2017
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 1, 2015. On October 1, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 1, 2015, the Registrar GoDaddy.com, LLC 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 October 23, 2015. In accordance with the Rules, paragraph 5, the due date for response by the Respondent was November 12, 2015. The Respondent was informed that if its response was not received by that date, the Respondent would be considered in default and the Panel would still proceed to decide the dispute. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 13, 2015. Hence, the case has to proceed ex-parte.
The Center appointed Vinod K. Agarwal as the sole panelist in this matter on November 24, 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
From the Complaint and the various annexures to it, the Panel has found the following facts:
The Complainant’s activities
The Complainant, a Tata Group Company, is a company incorporated in the year 1954 according to the corporate laws of India. The Complainant has stated that it is in the business of manufacturing and providing air conditioners, air conditioning solutions and refrigerators. It has set international standards in product design, quality and retailing in India through innovative products. The Complainant offers engineering solutions for a wide spectrum of industries in numerous fields, such as, heating, ventilation and air conditioning, refrigeration, climate control, electro-mechanical, textile machinery, mining and construction, water management, building management systems, pollution control, etc.
The Complainant also has international presence and is actively engaged in turnkey projects such as engineering procurement and constructions (EPC), electro-mechanical works comprising HVAC, electrical systems for buildings, plumbing, fire fighting, power and lighting, communication systems, water management and pollution controls. The Complainant also has ISO 9001-2008 standards certification and has successfully undertaken and executed high value projects in Middle East, Far East and South East Asia, CIS countries, Africa and India.
The Respondent’s identity and activities
The Respondent did not reply to the Complainant’s contentions. Hence, the Respondent’s activities are not known.
5. Parties’ Contentions
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are applicable to this dispute.
In relation to element (i), the Complainant contends that it is the owner of the trademark VOLTAS. The said word “voltas” was adopted in the year 1954 as a corporate name. The Complainant has been continuously and consistently using the trademark and trade name VOLTAS which is a coined mark possessing the distinctiveness of an invented word. In fact, it is the Complainant’s two promoters namely Volkart, a Swiss Company and Tatas an Indian Company which invented and coined the corporate name and mark VOLTAS.
For the first time, the said trademark was registered in the year 1955 almost after one year of the formation of the Complainant’s company. The Complainant is also the registered owner of the trademark VOLTAS in many countries of the world including Bahrain, Hong Kong, China, Kuwait, Oman, Qatar, Saudi Arabia, Singapore, South Africa and United Arab Emirates. It is registered in Classes 1, 2, 3, 5, 6, 7, 11 and 37.
Further that, the corporate name of the Complainant is Voltas. Due to extensive and continuous use of the trademark VOLTAS, the said trademark is associated with the Complainant. The Respondent has registered the disputed domain name by adopting the entire name of the Complainant.
The Complainant has further contended that it owns a number of domain names containing the words “voltas”, “voltaslimited” and “voltasltd”. The following are a few illustrations of such domain names: <voltas.com>; <voltasac.com>; <voltas.ac>; <voltas.ae>; <voltaswater.com>; <voltas.asia>; <voltas.hk>; <voltas.net.in>; <voltas.org.cn>; <voltas.org.in>; <voltaslimited.ae>; <voltaslimited.asia>; <voltaslimited.co.in>; <voltaslimited.com.cn>; <voltasltd.net.cn> and <voltas.net.in>.
The addition of the word “group” in the disputed domain name is immaterial. In fact, it indicates that the said website includes the group companies of the Complainant also. Therefore, it is misleading and confusing.
In support of its contentions, the Complainant has relied on the decision in the case of Magnum Piering Inc. v. The Mudjackers, WIPO Case No. D2000-1525 wherein it has been held that incorporation of a trademark in entirety in a domain name is sufficient to establish confusing similarity.
Thus, the disputed domain name <voltasgroup.com> is very much identical or confusingly similar to the name and trademarks of the Complainant.
In relation to element (ii), the Complainant contends that the Respondent (as an individual, business, or other organization) has not been commonly known by the disputed domain name <voltasgroup.com> as the Respondent is known as “Mr. S. Gautam”. The disputed domain name <voltasgroup.com> is not a descriptive word in which the Respondent may have a genuine interest. The Respondent is making no use of the disputed domain name in connection with a bona fide offering of goods or services. Further that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. The Respondent registered the disputed domain name for the sole purpose of confusing, misleading and misdirecting the public.
Regarding the element at (iii), the Complainant contends that the main object of registering the disputed domain name <voltasgroup.com> by the Respondent is to mislead the general public. The Complainant has contended that the website parked on the disputed domain name <voltasgroup.com> is a website promoting Human Resource Consultancy services provided by the Respondent. A perusal of the said website shows that the Respondent is trying to associate itself with the Complainant’s business. Thus, the Complainant believes that the Respondent is running a recruitment scam under the guise of being associated with the Complainant.
It is further contended by the Complainant that the disputed domain name has also been registered by the Respondent with a mala fide intent to prevent the Complainant from making a legitimate commercial use of the same for offering products and services and with the ulterior motive of coercing the Complainant to purchase the disputed domain name from the Respondent at an exorbitant price.
In support of its contentions, the Complainant has relied on a number of decisions of various courts (Annexure M to Annexure T to the Complaint). The same have been duly taken in to consideration. However, it has not been possible to reproduce them or analyze them here.
The Respondent did not submit any evidence or argument indicating its relation with the disputed domain name <voltasgroup.com> or any trademark right, domain name right or contractual right.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove that:
(i) The domain name is identical or confusingly similar to a trademark 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 has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The present dispute pertains to the domain name <voltasgroup.com>. The Complainant is the registered owner of the trademark VOLTAS in many countries, including India, as indicated above. Further, the Complainant also owns a large number of domain names containing the words “voltas” “voltaslimited” and “voltasltd”. Some of such domain names have been indicated above. The Respondent has also used the word “voltas” in the disputed domain name. As has been contended by the Complainant, the addition of the word “group” in the domain name is immaterial. The said addition does not have the effect of making the domain distinct and independent.
The Respondent’s disputed domain name is phonetically, visually and conceptually confusingly similar to the trademark of the Complainant. The addition of the word “group” does not affect the confusing similarity. A domain name that wholly incorporates a trademark attains confusing similarity with the trademark.
Thus, there is no doubt that the disputed domain name <voltasgroup.com> is confusingly similar to the trademark of the Complainant. The Panel finds that the disputed domain name is confusingly similar to the trademark of the Complainant.
B. Rights or Legitimate Interests
According to paragraph 4(c) of the Policy, the respondent may demonstrate its rights to or legitimate interest in the domain name by proving any of the following circumstances:
(i) before any notice to the respondent 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 (as an individual, business or other organization) has been commonly known by the domain name, even if the respondent 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.
The Respondent has not filed any response in this case. Based on the evidence in the Complaint and the Complainant’s contentions, the Panel finds that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name.
In the Panel’s view, it is evident that the Respondent does not have rights or legitimate interests in the disputed domain name. In view of the fact that the Complainant has not licensed or otherwise permitted the Respondent to use its trademark or to apply for or use a domain name incorporating said trademark and that the Respondent is using the word “voltas” seeking to create an impression of an association with the Complainant, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration or use of the domain name in bad faith:
(i) Circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or
(ii) The respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that it has engaged in a pattern of such conduct; or
(iii) The respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) By using the domain name, the respondent has intentionally attempted to attract, for commercial gain, internet users to its web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site or location or of a product or service on its web site or location.
The Complainant contends that the disputed domain name was registered or acquired primarily for the purpose of carrying on the business of recruitment of persons with the impression that they are being recruited by the Complainant. The Respondent has been aware prior to its registration of the disputed domain name that there was substantial reputation and goodwill associated with the Complainant’s trademark and/or service mark.
The adoption of the disputed domain name fully incorporating the Complainant’s name and trademark clearly shows that the Respondent has in bad faith obtained the registration for the disputed domain name for the purpose of confusing Internet users as to the source or affiliation of the Respondent’s website. This and other information submitted by the Complainant leads to the presumption that the disputed domain name was registered and used by the Respondent in bad faith.
This and other information submitted by the Complainant leads to the presumption that the disputed domain name was registered and used by the Respondent in bad faith. The Panel agrees with the contentions of the Complainant and concludes that the disputed domain name was registered and is being used 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 disputed domain name <voltasgroup.com> be transferred to the Complainant.
V. K. Agarwal
Dated: December 3, 2015