WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Fashion Design Council of India v. Ashish Pawaskar, Internet Wizards
Case No. D2015-2296
1. The Parties
The Complainant is Fashion Design Council of India of New Delhi, India, represented by LexOrbis, India.
The Respondent is Ashish Pawaskar, Internet Wizards of Mumbai, India, self-represented.
2. The Domain Name and Registrar
The disputed domain name <indiafashionweek.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 December 17, 2015. On December 17, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 18, 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 December 22, 2015 the Center notified the Complainant that the complaint contained deficiencies. On December 23, 2015 the Complainant filed an amended Complaint.
The Center verified that the Complaint together with the amended 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 December 28, 2015. In accordance with the Rules, paragraph 5, the due date for Response was January 17, 2016. The Response was filed with the Center on January 11, 2016. On January 20, 2016 the Complainant filed an unsolicited Supplemental Filing. The Respondent replied to the Complainant's unsolicited filing on January 21, 2016.
The Center appointed Harini Narayanswamy as the sole panelist in this matter on January 20, 2016. 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 society that was founded by Indian fashion designers and is supported by the government of India through the Ministry of Commerce and Industry and the Ministry of Textiles. The Complainant hosts a bi-annual event known as "India Fashion Week". The Complainant has registered trademark rights for INDIA FASHION WEEK, some of its registered trademark registrations are:
Date of Registration
INDIA FASHION WEEK
May 25, 2000
INDIA FASHION WEEK
May 25, 2000
INDIA FASHION WEEK
May 13, 1999
The Respondent, located in Mumbai, India, registered the disputed domain name <indiafashionweek.com> on August 14, 2002.
5. Parties' Contentions
The Complainant states it is an apex body of the Indian fashion industry that assists fashion designers and related professionals to improve their professional standards and business practices. The Complainant states that it is known for its flagship and famous event "India Fashion Week" that is attended by the who's who of the Indian and the international fashion industry. The event India Fashion Week, it states, has acquired immense reputation and goodwill and is synonymous with the Complainant as an exclusive indicator of source of origin of services and events originating from the Complainant.
The Complainant states that several business houses patronize and sponsor its shows and events. The Complainant has filed figures related to its events that include the sponsorship amounts and has also filed published copies of press releases, articles, newspapers clippings of its events and other activities related to the Complainant as evidence.
The Complainant states that it is the sole and exclusive owner of the goodwill in the trademark
INDIA FASHION WEEK that it uses in connection with its domestic and international fashion events, its domain names and merchandise associated with the events. The Complainant states that it has been diligent in protecting its well known trademark and had filed a suit before the Delhi High Court in 2014 (Suit No CS (OS) 2143/2014) and obtained interim injunction against a party that had adopted the Complainant's mark INDIA FASHION WEEK.
The Complainant states the disputed domain name fully incorporates the trademark INDIA FASHION WEEK and that it was registered in disregard of the Complainant's rights in the mark. The use of the disputed domain name is likely to falsely induce and confuse customers to believe that the services and information offered by the Respondent are approved by or associated with the Complainant.
The Complainant states that the Respondent has no rights or legitimate interests in the disputed domain name and is not commonly known by the disputed domain name. The Respondent is not affiliated with the Complainant and has not been authorized by the Complainant to use the trademark INDIA FASHION WEEK. The Complainant's adoption of the trademark precedes the registration of the disputed domain name. The Complainant adds that the disputed domain name was created on August 14, 2002 to confuse customers. The Respondent offers services and news using the disputed domain name that is confusingly similar to its mark, and such use is not bona fide use.
The disputed domain name has been registered and is being used in bad faith argues the Complainant, as the Respondent is illegally hosting a website offering fashion related news and designer profiles using its well known trade mark. The Respondent's website has a link that is selling replica hand bags of various luxury brands and uses the trademark to free ride on the Complainant's goodwill. The Complainant states it had sent a cease and desist notice to one Mr. Taparia of Kan Softek Solutions Pvt. of Mumbai who was the registrant until recently, and Mr. Taparia did not respond. The Complainant requests for the transfer of the disputed domain name.
The Respondent requests for denial of remedies sought for by the Complainant and submits that the case is one of Reverse Domain Name Hijacking and the Complainant is trying to subvert the UDRP process. The Respondent further alleges that the Complainant is attempting to pressurize small web developers into relinquishing their properties and goodwill earned over thirteen years. The Respondent states the Complainant made an attempt of claiming false registration to the Registrar, and when that failed, it filed the present Complaint against the Respondent.
Replying to the Complainant's statement that the Respondent is not commonly known as "India Fashion Week", the Respondent states that the Complainant has in the past co-branded its mark INDIA FASHION WEEK as "Lakme India Fashion Week", "Wills India Fashion week" or "Delhi Fashion Week." The Respondent states that the Delhi High Court judgment in favor of the Complainant is irrelevant to the present dispute and is merely an attempt to put pressure on the Panel. The Respondent further states that no sale of any merchandise or advertisement has been done from the website linked to the disputed domain name nor has any fashion event been hosted either online of offline by the Respondent.
The Respondent states it has placed a disclaimer on the website and does not offer any services except free news and information on Indian fashion. The Respondent states the disputed domain name was registered in a legal manner from an ICANN accredited registrar and further argues that the Complainant has not provided any evidence of bad faith as per the Policy.
The Respondent admits to knowing about the Complainant's event, but denies knowing about the trademark registration, as the Complainant has not placed symbols such as "TM" or ® with its mark and also because the Respondent is located in a different city. The Respondent further states that in year 2002, Indian trademark information was not available online and it became available only from 2010. The Respondent states he is not in the domain name speculating business, and argues that the Complainant has not objected to the disputed domain name for the past fifteen years, and the Respondent has not offered the disputed domain name for sale but has used it since 2002. The Respondent argues the disputed domain name comprises generic dictionary words and is used to provide information and news about the Indian fashion industry.
The Respondent further argues that the Complainant cannot become a sole custodian of "the Indian Fashion industry" by registering trademarks in different classes. The Respondent states that there was no attempt on his part to hide his identity by using privacy protection services or any attempt to passively hold the disputed domain name and therefore there is no bad faith on his part.
The Panel, before taking up the discussion on the merits of the case, first addresses the issue of the uninvited supplemental submissions made by the Parties to the Center. On January 20, 2016, the Complainant sent a supplemental submission and on January 21, 2016 the Respondent filed a reply to the Complainant's supplemental submission. Supplementary filing by a party merely to respond or reply to issues or points raised by the other parties which could have otherwise been raised in its complaint or response has not been seen to be reason enough to allow supplemental filings. See for instance, Mejeriforeningen Danish Dairy Board v. Cykon Technology, WIPO Case No. D2010-0776. (Given the expeditious and speed nature of the remedy offered to parties under the Policy, additional evidence or submissions can be allowed only under exceptional circumstances).
Panels are generally not inclined to allow unsolicited supplemental filings by the parties unless the party seeking to make the supplemental submission has shown some exceptional circumstances or the panel in its discretion finds there is some additional information or pertinent facts in the supplemental submissions that is crucial to the case and such new information could not have possibly been included in its original pleadings. The Panel having reviewed the supplemental submission by the Parties, finds there is no such exceptional circumstance, crucial information or pertinent facts that necessitates allowing the supplemental submissions filed by the Parties. The Panel, for the reason stated, declines to allow the supplemental pleadings filed by the Parties.
6. Discussion and Findings
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 Complainant has established its rights in the INDIA FASHION WEEK mark. The Panel bases this finding on the documents of trademark registration and the documents of use including evidence of third party and media recognition filed by the Complainant. The disputed domain name is found to be identical to the Complainant's INDIA FASHION WEEK mark as it replicates the entire mark.
The Complainant has successfully established the first requirement under paragraph 4(a) of the Policy, that the disputed domain name is confusingly similar to a trademark or a service mark in which the Complainant has rights.
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 showing that the Respondent lack rights or legitimate interests, the Respondent has the opportunity to rebut the Complainant's contentions and demonstrate any rights or legitimate interests in the disputed domain name.
The Panel finds based on the material on record and from the Complainant's submissions, the Respondent is not commonly known by the disputed domain name. The Respondent has no authorization to use the Complainant's trademark but uses the disputed domain name that is confusingly similar to the Complainant's trademark.
The Respondent has argued that the disputed domain name is being used for providing information and news on Indian fashion and due to such use, the Respondent alleges, he has built goodwill. The Panel finds there is no indication of any original content on the Respondent's website. The Respondent has merely placed several links to other sites, and some links are unrelated to Indian fashion news. Registration of a domain name that is confusingly similar to a trademark and using it to place links may be considered as use that is lacking in good faith and is devoid of legitimate rights under the Policy. See for example, Twenty Ones Incorporated NY Corp. v. MP3 Zones, Use, WIPO Case No. D2006-1553 (Use of the disputed domain name to attract Internet traffic to a website by deception, such as, where users are likely to confuse the domain name with the trademark of another, is not considered bona fide use).
Additionally, the Panel is convinced, as described further below under "Registered and used in Bad Faith", that the Respondent's bad faith registration and use of the disputed domain name prevents the Respondent from claiming any defence under a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name.
In the Panel's view, the disputed domain name is likely to mislead and divert Internet users to the Respondent's website, and the disclaimer on the Respondent's site does not itself cure bad faith, when bad faith has been established by other factors. Accordingly, the Panel finds that the Respondent lacks rights or legitimate interests in the disputed domain name.
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 Complainant has established that it has rights in the INDIA FASHION WEEK mark since the year 2000.
The Panel notes the Complainant's submission that the disputed domain name may have recently been transferred to a new registrant, thus resetting the time at which the Panel is to assess registrations in bad faith. However, noting that the Complainant itself treats the Respondent as having registered the disputed domain name in 2002, the Panel proceeds on the basis that the Respondent registered the disputed domain name at that time.
The Respondent has not attempted to explain a key issue here, and that is, his choice of the disputed domain name. Use of words "India fashion week", in the Panel's view, seems an unlikely choice for a website that is allegedly offering news on Indian fashion and does not seem to update the contents on a weekly basis. It is therefore not unreasonable to infer that the choice of the disputed domain name was most likely inspired by the Complainant's mark. Further, there has been no specific development of the website linked to the disputed domain name and the fashion news that the Respondent alludes to are just links to other sites.
In the Panel's view, the Respondent no doubt receives Internet traffic that is meant for the Complainant, and it is likely that the Respondent is deriving advantage from the prominence and goodwill associated with the Complainant's mark. Given facts and circumstances discussed here, the Panel finds the Respondent has registered and is using the disputed domain name in bad faith. 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. See Deutsche Lufthansa v. Acme Mail, WIPO Case No. D2008-1580, where it was found that the disputed domain name was being used in bad faith by placing links for purposes of generating traffic and revenue due to the choice of domain name by the respondent in that case.
The Panel has noted the Respondent's arguments that the disputed domain name has not been offered for sale and as the Respondent has not tried to hide his name behind a privacy service, and therefore there is no bad faith on his part. The Panel is not convinced with this argument, as the entire set of circumstances indicates registration and use of the disputed domain name in bad faith. The use of the trademark in a domain name that clearly belongs to another that is used for placing third party links that are related to the trademark has been consistently found to be bad faith registration and use under the Policy in several domain name disputes. The underlying reasoning being that, such use boosts or diverts Internet traffic to a respondent's website based on the fame of a complainant's trademark and is therefore considered exploitative or abusive registration and use of a domain name under the Policy.
On balance, for the reasons discussed, the Panel finds the Complainant has successfully established the third element under paragraph 4(a) of the Policy.
The Panel notes the Respondent's arguments that the Complainant has filed the present case more than thirteen years after the registration of the disputed domain name. There is no limitation period to seek remedy under the UDRP. As the remedy under the Policy is considered akin to trademark injunctive remedy, delay in filing is not fatal to the Complaint.
Reverse Domain Name Hijacking
The Respondent has made a plea of Reverse Domain Name Hijacking. The Panel finds the requirements of Reverse Domain Name Hijacking are not met under the circumstances of the case. The Respondent has not demonstrated that the Complaint has been brought in bad faith by the Complainant.
The Panel finds the requirements under the Policy for the transfer of the disputed domain name have been met by the Complainant. No case of Reverse Domain Name Hijacking has been sustained by the Respondent.
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, <indiafashionweek.com> be transferred to the Complainant.
Date: February 4, 2016