WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Etechaces Marketing and Consulting Private Limited v. Atin Gupta
Case No. D2016-0588
1. The Parties
The Complainant is Etechaces Marketing and Consulting Private Limited of Haryana, India, represented by Wadhwa Law Chambers, India.
The Respondent is Atin Gupta of Gwalior, India.
2. The Domain Name and Registrar
The disputed domain name <antipolicybazaar.com> is registered with eNom, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 25, 2016. On March 29, 2016, 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 April 4, 2016. The Respondent did not answer the Complaint within the stipulated period on or before the due date April 24, 2016 for filing Response in accordance with the Rules, paragraph 5. Accordingly, the Center notified the Respondent’s default on April 25, 2016.
The Center appointed Ashwinie Kumar Bansal as the sole panelist in this matter on May 4, 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.
On May 8, 2016 the Respondent has submitted a Supplemental Filing via email to the Center.
4. Factual Background
The Complainant is a company incorporated in the year 2008 under the laws of India. On September 25, 2014, the Complainant had incorporated a wholly owned subsidiary company under the name “Policybazaar Insurance Web Aggregator Private Limited”. The Complainant, through Policybazaar Insurance Web Aggregator Private Limited, owns and operates an online insurance comparison portal at “www.policybazaar.com.” The Complainant holds trademark registrations for the trademarks POLICY BAZAAR and POLICYBAZAAR.COM (the “Trademarks”) since December 17, 2008. The Complainant also holds trademark applications for the trademark POLICY BAZAR.
The disputed domain name was registered on February 14, 2016. At the time the Complaint was filed the Respondent was operating a website under the disputed domain name where he seemed to criticize the Complainant, but where there was also a “giveaway” of several watches for users who “liked” his Facebook page.
5. Parties’ Contentions
The Complainant is operating a leading online insurance comparison portal under the Complainant’s Trademarks, which provides solutions to 5,000,000 Indian customers since 2008. During the year 2014, the Complainant’s website “www.policybazaar.com” received 8.1 million page views from 1.6 million users. In the year 2015, the domain name of the Complainant had 782 Alexa ranking in India and it has filed as evidence the Google Analytics Audience Overview for <policybazaar.com> for the period January 1, 2015 to December 31, 2015. The comparison engine of the Complainant is the result of intense research and periodic updating by a team of more than 1,500 employees. Leading funds like Intel Capital (Mauritius) Limited, Tiger GlobalEight Holdings, Inventus Capital Partners Fund II Limited, Ribbit Capital II, L.P have invested funds in the business of the Complainant through multiple rounds of funding. Since 2008, the Complainant has spent more than USD 18 million over advertising, promotion and branding for its Trademarks. The Complainant has won awards for the best financial website such as the Internet and Mobile Association of India (“IAMAI”) for two consecutive years (2013 and 2014) and E-commerce Website of the Year in 2015.
The Complainant has registered rights and common law rights in the Trademarks and the corresponding logo. The Complainant also owns several domain names formed with its Trademarks.
The disputed domain name <antipolicybazaar.com> incorporates the Trademark POLICYBAZAAR.COM in its entirety and, thus, is confusingly similar to it. The Complainant is the prior adopter, user and owner of the Trademarks.
The website of the Respondent accuses the Complainant of fraud and of fooling its customers and employees. The website opens up to a blog page having a Facebook link originated by the Respondent titled “Anti PolicyBazaar – For the cause of fraud company – Policy Bazaar”. The website also has links leading to a complaint form for no claim cases, no refund cases and medical delayed cases. The website also provides a list of cheated customers and a list of cheated employees along with a link showing claim settlement ratios of various insurance companies and a guide to cancellation of a policy.
The Respondent has no rights or legitimate interests in the disputed domain name, as the Respondent uses the Complainant’s Trademarks without any permission and is not known by the disputed domain name. The Respondent, Atin Gupta, is an ex-employee of the Complainant’s business and his employment was terminated on March 27, 2015. The Respondent is operating a website to tarnish the image of the Complainant. The registration and use of the disputed domain name by the Respondent confuses the public to believe that he is associated with the Complainant in some manner and such use violates the Complainant’s trademark rights.
The disputed domain name <antipolicybazaar.com> is confusingly similar to the Complainant’s Trademarks as the disputed domain name encapsulates the entire Trademark POLICYBAZAAR.COM of the Complainant with the addition of the pejorative prefix “anti”. The use of the pejorative prefix “anti” does not have any impact on the viewer of the disputed domain name in distinguishing it from the Complainant’s Trademarks and is an attempt to tarnish the Trademarks. The first and immediately striking element in the disputed domain name <antipolicybazaar.com> is the Complainant’s Trademark. Adoption of the Trademark in the disputed domain name is likely to lead some people to believe that the Complainant is connected with it and there is an association between the Complainant and the Respondent’s website under the disputed domain name.
The Complainant requests for transfer of the disputed domain name.
The Respondent did not submit a formal Response to the Complaint on or before due date for Response. However, the Respondent has submitted a Supplemental Filing which has been considered by the Panel. In such Supplemental Filing, the Respondent alleges he has decided to use another domain name for his purpose to avoid infringement of the Complainant’s Trademarks. The Respondent also claims that he has no objection if the Panel decides to cancel or transfer the disputed domain name to the Complainant.
6. Discussion and Findings
Paragraph 4(a) of the Policy sets out the three elements which the Complainant must prove to obtain its requested remedy:
“You [the respondent] are required to submit to a mandatory administrative proceeding in the event that a third party (a ‘complainant’) asserts to the applicable Provider, in compliance with the Rules of Procedure, that (i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and (ii) you have no rights or legitimate interests in respect of the domain name; and (iii) your domain name has been registered and is being used in bad faith.
In the administrative proceeding, the complainant must prove that each of these three elements are present.”
Before addressing the three aspects of the Policy listed above, the Panel will first address the issue of consent given by the Respondent in the Supplemental Filing and the necessity to decide the Complaint on its merits. The substance of the Respondent’s Supplemental Filing reads as follows:
“Regardless of panelist decision, I have decided to use an another [sic] domain name for our purpose which wouldn’t infringe the complainant trademark issue.
Following with, I seek no objections, and the panel is free to cancel or transfer the domain to the complainant under it’s sole decision.”
A number of UDRP decisions have considered the proper course where a respondent has consented to transfer a disputed domain name to a complainant. The panel in Cartoon Network LP, LLLP v. Mike Morgan, WIPO Case No. D2005-1132 has observed that there are at least three courses: (i) to grant the relief requested by the Complainant on the basis of the Respondent’s consent without reviewing the facts supporting the claim (see Williams-Sonoma, Inc. v. EZ-Port, WIPO Case No. D2000-0207; Slumberland France v. Chadia Acohuri, WIPO Case No. D2000-0195); (ii) to find that consent to transfer means that the three elements of paragraph 4(a) are deemed to be satisfied, and so transfer should be ordered on this basis (Qosina Corporation v. Qosmedix Group, WIPO Case No. D2003-0620; Desotec N.V. v. Jacobi Carbons AB, WIPO Case No. D2000-1398); and (iii) to proceed to consider whether on the evidence the three elements of paragraph 4(a) are satisfied because the Respondent’s offer to transfer is not an admission of the Complainant’s right (Koninklijke Philips Electronics N.V. v. Manageware, WIPO Case No. D2001-0796) or because there is some reason to doubt the genuineness of the Respondent’s consent (Société Française du Radiotéléphone-SFR v. Karen, WIPO Case No. D2004-0386; Eurobet UK Limited v. Grand Slam Co, WIPO Case No. D2003-0745).
The Panel has the discretion to either grant or deny the Respondent’s consent to transfer the disputed domain name without engaging in any substantive analysis. As per paragraph 10(a) of the Rules the Panel is required to conduct the administrative proceeding in such manner as it considers appropriate in accordance with the Policy and the Rules. Paragraph 15(a) of the Rules mandates the Panel to decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Paragraph 4(a) of the Policy provides that in the administrative proceeding, the complainant must prove that each of the three elements is present.
The Respondent has not given unambiguous consent to transfer the disputed domain name to the Complainant nor has he admitted the presence of the three elements referred in Paragraph 4(a) of the Policy. He has stated that “the panel is free to cancel or transfer the domain to the Complainant under its sole decision”, which means that he has left it to the decision of the Panel. The Panel is of the view that it must satisfy itself that the three elements are present in this case before ordering the transfer of the disputed domain name to the Complainant.
B. Identical or Confusingly Similar
The Complainant has produced evidence of registration of the Trademarks in its favour. The Panel finds that the Trademark POLICYBAZAAR.COM is widely known. The disputed domain name <antipolicybazaar.com> incorporates the Trademark POLICYBAZAAR.COM in its entirety and is, in the judgment of the Panel, confusingly similar to the Complainant’s Trademarks.
The Panel finds that the addition of the prefix “anti” is an attempt by the Respondent, who is an ex-employee of the Complainant, to tarnish the image of the Complainant. In past UDRP cases, a domain name which adds a pejorative term to a mark has been ordered to be transferred to the owner of the mark. In Direct Line Group Ltd, Direct Line Insurance plc, Direct Line Financial Services Ltd , Direct Line Life Insurance Company Ltd, Direct Line Unit Trusts Ltd, Direct Line Group Services Ltd v. Purge I.T., Purge I.T. Ltd, WIPO Case No. D2000-0583, the panel had ordered the transfer of the domain name <directlinesucks.com> to the complainant by determining that the domain name was confusingly similar to the complainant’s trademark by observing as follows:
“The Respondents’ registration, consisting of the Complainants’ name with the suffix, ‘sucks’ (plus ‘.com’), is not identical to the Complainants’ marks and the question arises whether the registration is confusingly similar to those marks.
Given the apparent mushrooming of complaints sites identified by reference to the target’s name, can it be said that the registration would be recognised as an address plainly dissociated from the Complainants? In the Panel’s opinion, this is by no means necessarily so. The first and immediately striking element in the Domain Name is the Complainants’ name and adoption of it in the Domain Name is inherently likely to lead some people to believe that the Complainants are connected with it. Some will treat the additional ‘sucks’ as a pejorative exclamation and therefore dissociate it after all from the Complainants; but equally others may be unable to give it any very definite meaning and will be confused about the potential association with the Complainants. The Complainants have accordingly made out the first element in its Complaint (see the rather similar conclusion on this element in Case D2000-0477 (walmartcanadasucks.com)).”
The Panel finds that the addition of the prefix “anti” does not change the overall impression created by the disputed domain name and is insufficient to escape a finding of confusing similarity. Thus, the disputed domain name is confusingly similar to the Complainant’s Trademarks.
The first element of paragraph 4(a) of the Policy is accordingly proven by the Complainant.
C. Rights or Legitimate Interests
The Complainant needs to establish at least a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name1 . Once such a prima facie case is made, the burden of production shifts to the Respondent to demonstrate that it has such rights or legitimate interests2 .
The website of the Respondent criticizes the Complainant and has links leading to a complaint form for no claim cases, no refund cases and medical delayed cases. The website also provides lists of allegedly cheated customer and employees of the Complainant. The Respondent in the Supplemental Filing has stated that he is an ex-employee of the Complainant and made allegations that the Complainant indulges in fraud with general consumers and holds refund payments of customers without any reason.
In the event that a domain name identical or confusingly similar to a trademark is being used for a genuine noncommercial free speech website, there are two main views as per paragraph 2.4 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”). As per the first view, the right to criticize does not necessarily extend to registering and using a domain name that is identical or confusingly similar to a complainant’s trademark. Whereas according to the second view is that irrespective of whether the domain name as such connotes criticism, the Respondent has a legitimate interest in using the trademark as part of the domain name of a criticism site if such use is fair and noncommercial.
In the present case, the Respondent has not alleged to be making a noncommercial or fair use of the disputed domain name. To the contrary, the Panel recalls the offer of a watch giveaway has a commercial context to it. He has stated that he has decided to use another domain name for his website to ensure that it does not infringe the Trademark of the Complainant. He has further stated that he has no objections and the panel is free to cancel or transfer the disputed domain name to the Complainant. In the absence of any claim or evidence produced by the Respondent that could amount to rights or legitimate interests in the disputed domain name, and also taking into account that the Respondent does not oppose to the transfer of the disputed domain name and has declared it is using another domain name to avoid infringement of trademark of the Complainant, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Panel also notes the decision in The Royal Bank of Scotland Group plc, National Westminster Bank plc A/K/A NatWest Bank v. Personal and Pedro Lopez, WIPO Case D2003-0166 where the panel found that “(…) in order to fully exercise free speech rights, is not indispensable to use someone else’s identical or confusingly similar trademark”.
The Panel also notes that the Complainant has not authorized the Respondent to use its trademark and seek registration of the disputed domain name nor is the Respondent affiliated with the Complainant. There is also no evidence before the Panel to suggest that the Respondent is commonly known as the disputed domain name, or any other evidence that the Respondent has any rights or legitimate interests in the disputed domain name. In view of the discussion above, the Complainant has accordingly met its burden under paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
The Complainant is required to prove that the disputed domain name was registered and used in bad faith. Hence, circumstances at the time of registration and thereafter are considered herein by the Panel.
Paragraph 4(b) of the Policy identifies, in particular but without limitation, four circumstances which, if found by the Panel to be present, shall be evidence of the registration and use of the disputed domain name in bad faith. Paragraph 4(b) of the Policy is reproduced below:
“Evidence of Registration and Use in Bad Faith. For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site or location.”
The Panel is not limited to the four circumstances set in paragraph 4(b) of the Policy, and it can make a finding of registration and use of a domain name in bad faith if other circumstances indicating bad faith are present.
The Complainant has produced evidence of registration of the Trademarks in its favour. Being a former employee of the Complainant, the Respondent definitely had knowledge of the Complainant’s rights on the Trademarks. The Respondent has registered the disputed domain name despite knowing about the Complainant’s rights in the Trademarks. Such unauthorized registration and use of the trademark by the Respondent suggests opportunistic bad faith.
Given the prior relationship between the parties, the content of the website under the disputed domain name, and the totality of the circumstances in this case, the Panel finds that the Respondent targeted the Complainant when registering the disputed domain name and that the Respondent’s true purpose in registering and using the disputed domain name was to tarnish the reputation of the Complainant and its Trademarks, which amounts to bad faith registration and use of the disputed domain name.
The Panel therefore finds that the domain name <antipolicybazaar.com> has been registered and is being used by the Respondent 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, <antipolicybazaar.com> be transferred to the Complainant.
Ashwinie Kumar Bansal
Date: May 19, 2016