WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bharti Airtel Limited v. Isha Aggarwal
Case No. D2015-1814
1. The Parties
The Complainant is Bharti Airtel Limited of New Delhi, India, represented by Vutts & Associates LLP, India.
The Respondent is Isha Aggarwal of New Delhi, India, self-represented.
2. The Domain Name and Registrar
The disputed domain name <airtelpaymentbank.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 October 12, 2015. On October 12, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 28, 2015. In accordance with the Rules, paragraph 5, the due date for Response was November 17, 2015. On October 28, 2015 the Respondent requested an extension to file his response. On October 30, 2015 the Center notified the parties that the new response due date was November 23, 2015. On November 20, 2015 the Respondent requested further extension, to which the Complainant objected. In light of the first extension, the lack of exceptional circumstances and the Complainant’s objection, the Respondent’s second extension was not granted. The Response was filed with the Center on November 23, 2015.
The Center appointed Harini Narayanswamy as the sole panelist in this matter on December 2, 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 leading telecom company and owns the registered trademark AIRTEL dating back to 1997. The Complainant has registered several variants of its AIRTEL mark and has provided a list giving details of its registered mark. The Complainant has also registered several domain names that contain its AIRTEL mark, some of these are <airtel.in>, <airtel.com>, <bharathiairtel.com>, <bharati-airtel.com>, <airtelwallet.com>, <airtelmoney.com>, <airtelmbanking.com> and <airtelgurus.com>.
The Respondent is allegedly in the business of providing e-commerce solutions to the Indian government and small microfinance institution in India. The Respondent has registered the disputed domain name <airtelpaymentbank.com> on July 11, 2015.
5. Parties’ Contentions
The Complainant states that it started its operations in the year 1995 and is presently considered a blue chip company with over three hundred million subscribers. The services it offers include: 2G, 3G, 4G and wireless services, mobile commerce and fixed wireless services, high speed digital subscriber line (“DSL”), broadband, Internet Protocol Television (“IPTV”), Direct to Home (“DTH”) services, enterprise services including national and international long distance services. The Complainant states that AIRTEL is its flagship trademark and that it has continuously protected its mark by initiating various legal actions against infringers of its mark. It has submitted brief write ups and reference of these cases.
The Complainant states it has operations in over twenty countries across Asia and Africa and its services are available mainly through its websites from the domain names <airtel.com> and <airtel.in>. Its websites allegedly receive a quarter million hits a day from different parts of the world. The Complainant asserts that this shows the goodwill and public knowledge associated with its mark and it is evidence of its wide public recognition. The Complainant further states that consumers in Asia and Africa associate the AIRTEL mark with the Complainant and its services and that it spends millions of dollars globally to promote its mark and the revenue it earns under the mark also run into several millions of dollars.
The Complainant states the Complaint is based on the grounds that the disputed domain name is confusingly similar to a mark in which it has rights. The mark is an invented word and the Complainant contends that it has shown prior use of its well-known mark. The use of the mark in its entirety in the disputed domain name is sufficient to establish confusing similarity as the mark is well known.
The Complainant further states the Respondent has no rights or legitimate interests in the disputed domain name. The disputed domain name was registered to cause deception, which amounts to cybersquatting. The Respondent, Isha Aggarwal, is not commonly known by the disputed domain name and is not affiliated with the Complainant and has no authorization or license to use the Complainant’s mark. The disputed domain name has been registered for purposes of trading on the reputation of the mark argues the Complainant, or derive illegal profit, traffic or sell the disputed domain name to the Complainant or to disrupt the Complainant’s business. The disputed domain name is not used in connection with a bona fide offering of goods or services, but is being passively held by the Respondent.
The Complainant argues that the disputed domain name has been registered and is being used in bad faith to intentionally attract Internet users to the Respondent’s online location by creating a likelihood of confusion with the Complainant’s mark. The Complainant states it had sent a legal notice in September 2015 which was followed by another reminder, but there was no response from the Respondent. The Complainant requests for transfer of the disputed domain name based on its submissions.
The Respondent states the disputed domain name is being held for the purpose of providing information about the latest development and practices in e-payment solutions. It is alleged by the Respondent that the intention in registering the disputed domain name is to exhibit the Indian Government’s e-governance model for streamlining payments at unbanked areas. The Respondent adds that payment banks were recently authorized by the Reserve Bank of India as a step to enhance the banking platform for unbanked rural areas in India.
The Respondent states that the intention for registering the disputed domain name is for putting forward views and analysis of different officials engaged in the area of financial inclusion. The Respondent further argues that the disputed domain name is being legitimately held as it has not been put up for sale on any website or negotiated for sale with the Complainant. The Respondent adds that the disputed domain name has been purchased in good faith and not for gaining any commercial advantage from any company, person or brand.
The Respondent further argues that cybersquatting involves the registration of a domain name in bad faith, such as to gain commercial advantage, or attempting to selling it at an inflated price to a party that has interest in the domain name or redirecting Internet traffic to the Respondent’s website or to the website of a trade competitor of the trademark holder for the payment of a commission.
The Respondent argues that under the Policy it is necessary for the Complainant to prove both aspects of bad faith, that of bad faith registration and of bad faith use of the disputed domain name. The Respondent argues that the non-exhaustive list of instances showing bad faith use include diverting users to other sites. Respondent states that the disputed domain name has not been used for purposes of diverting users to other sites by creating a likelihood of confusion, but has been purchased for purposes of writing a blog. The Respondent argues that multiple domain names have not been registered and there has been no attempt to sell the disputed domain name.
The Respondent states an email was sent to the Complainant on October 23, 2015 suggesting a mutual settlement, and the Respondent argues that a settlement negotiation between the parties does not “automatically” constitute bad faith and adds that the disputed domain name has not been offered for sale on any website, or to any individual or organization. The Respondent states lack of bad faith is garnered from the fact that it has been easy to contact the Respondent, who has responded when required.
The Respondent also argues that the Complainant has not entered or started its business of “payment banks” at the time of registration of the disputed domain name whereas the Respondent is in the area of providing consultancy to the Government of India on e-payment platform. The Respondent further argues that other domain names such as <airtelpaymentsbanks.com> and <airtelpaymentbanks.com> are still available for registration by the Complainant for its purposes. The Respondent then goes on to state that it is the responsibility of the Complainant to block all such domain names or for the registrar to restrict the purchase of such domain names. The Respondent requests for retaining the disputed domain name based on its submissions.
6. Discussion and Findings
To obtain the remedy requested 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 Complainant has provided evidence of its registered trademarks rights for the AIRTEL marks and its variants. The Panel finds the disputed domain name contains the Complainant’s trademark in its entirety with the addition of the term “payment bank”. It is well established proposition that a domain name that incorporates a complainant’s mark in its entirety is confusingly similar to the mark. See for instance Eli Lilly and Company v. Private Whois Service, WIPO Case No. D2011-0624, citing the case Max Rohr, Inc v. Puros Dawa HB S.A, WIPO Case No. D2005-0488.
It is also well established in domain name cases that the addition of generic terms with a trademark in a disputed domain name does not lessen the confusing similarity with the trademark, as the trademark is the dominant part of the disputed domain name. The Panel finds, based on material on record, that the disputed domain name is confusingly similar to the AIRTEL trademark in which the Complainant has rights.
The Complainant has successfully established the first requirement under paragraph 4(a) of the Policy.
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 and legitimate interests in the disputed domain name. Once the Complainant has made a prima facie showing that the Respondent lack rights, the Respondent has the burden to rebut the Complainant’s contentions and demonstrate any rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy has provided a non-exhaustive list that a respondent may rely on to demonstrate rights or legitimate interests in a domain name that is in dispute. These are:
(i) before any notice of the dispute, 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) Respondent (as an individual, business or other organization) has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) 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 Panel finds that the Respondent has not submitted sufficient grounds or evidence that indicates the Respondent has any rights or legitimate interests in the disputed domain name. The Respondent’s pleadings mainly state that the Respondent has the intention of starting a blog or a website regarding e-commerce and e-payment solutions. However, the Respondent has failed to explain why such a blog would require the use of another’s trademark in the disputed domain name. On the one hand, the Respondent states that the intention for registering the disputed domain name is to write a blog for discussing payment solutions being offered by the Indian government and various private telecom companies, however on the other hand, in the Panel’s view, the Respondent’s arguments claiming rights to use the AIRTEL mark for its intended purposes, without prior permission of authorization from the owner of the mark fails to provide a right or legitimate interest under the Policy. In the Panel’s view, the Respondent’s arguments that the disputed domain name has been registered to be used for a blog pertaining to the area of payment banks, e-payment solution or offering ecommerce solutions, does not present a convincing argument for the use of the Complainant’s trademark in the disputed domain name.
The Respondent is not a licensee or an authorized user of the Complainant’s trademarks and there is no indication that the Respondent is commonly known by the disputed domain name. There can be no honest legitimate use by the Respondent of a known trademark, since any such use would inevitably mislead the public to believe there is some affiliation with the Complainant, due to expectations that the public have from a known mark. See Deutsche Bank Aktiengesellschaft v. New York TV Tickets Inc., WIPO Case No. D2001-1341.On the basis of these facts and circumstances, the Complainant is found to have successfully put forward a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name which was not successfully rebutted by the Respondent.
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 by the Respondent.
The Panel has noted the Respondent’s arguments that the disputed domain name has not been put up for sale on any website and that there has been no attempt by the Respondent to divert users to any other site and therefore no bad faith on the part of the Respondent. The term “bad faith” is widely defined under the Policy and the set of circumstanced described under paragraph 4(b) of the Policy, as rightly argued by the Respondent, are non-exclusive. The Panel finds the use of the trademark AIRTEL in the disputed domain name without authorization from the owner of the trademark is evidence of bad faith registration and use, particularly when the mark is a widely known mark, as in the present case.
The mark being widely known in India, the use of the trademark or even a confusingly similar variant of the mark by an unauthorized user would in all likelihood be with an intention of capitalizing from the reputation associated with the mark.
The Panel finds, as discussed in the previous section, writing a blog on the topics mentioned by the Respondent does not necessarily justify the use of a proprietary trademark of a third party in the domain name. The Complainant’s objection is regarding the use of its trademark by the Respondent in the disputed domain name and not the Respondent’s intentions to start a blog. The Respondent has failed to explain why it was necessary to use the Complainant’s mark to accomplish its intended purpose. The use of another’s trademark for attracting Internet users to the Respondent’s online location, without authorization or consent from the owner of the trademark, constitutes bad faith registration and use under the Policy.
The Respondent has filed evidence of email communication with the Complainant, where the Respondent has indicated willingness to settle the dispute with the Complainant. The Panel has noted the Respondent’s arguments that settlement negotiations do not constitute bad faith per se and accepts the Respondent’s argument on this point. However, the entire set of circumstances and facts discussed here show bad faith registration and use of the disputed domain name. On the basis of the submissions made by the parties and given facts and circumstances discussed here, the Panel finds the Respondent has registered and used the disputed domain name in bad faith.
The Panel finds the Complainant has successfully established the third element under paragraph 4(a) of the Policy. For the reasons discussed, the Panel finds the Complainant has established its case under 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, <airtelpaymentbank.com>, be transferred to the Complainant.
Date: December 16, 2015