WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Nowfloats Technologies Pvt. Ltd. v. Ajit Singh
Case No. D2016-1830
1. The Parties
The Complainant is Nowfloats Technologies Pvt. Ltd. of Hyderabad, India, represented by Bharucha & Partners, India.
The Respondent is Ajit Singh of New Delhi, India, represented by Aniket Bharti, India.
2. The Domain Name and Registrar
The disputed domain name <webfloats.com> is registered with GoDaddy.com, LLC (the "Registrar").
According to the WhoIs record, the details of registration are as follows:
(a) Domain ID : 1946580371_DOMAIN_com-VRSN
(b) Created on : July 13, 2015
(c) Expiring on : July 13, 2017
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 9, 2016. On September 9, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 10, 2016 and September 15, 2016, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent's 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 September 16, 2016. In accordance with the Rules, paragraph 5, the due date for Response was October 6, 2016. The Response was filed with the Center on October 10, 2016.1 .
The Center appointed Vinod K. Agarwal as the sole panelist in this matter on October 21, 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 engaged in the business of online marketing and digital marketing, particularly in the promotion, designing and marketing of websites. The Complainant has been using the mark FLOATS since August 1, 2011. The Complainant's brand and services have been widely and consistently recognized in various sectors, and the Complainant applied in 2012 for the registration of the mark FLOATS in the Trade Marks Registry in Delhi, India. In the same year, the Complainant also filed applications for the registration of the mark NOWFLOATS in the Trade Marks Registry in Chennai, India.
The Respondent is a website developer and promoter. The Respondent has stated that it develops and floats its clients' products on the web.
The Complainant has stated in its Complaint that the Respondent is carrying on activities similar to those of the Complainant; this has been denied by the Respondent.
The disputed domain name was registered on July 13, 2015.
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 paragraph 4(a)(i) of the Policy, the Complainant contends that the Complainant has been using the mark FLOATS as a part of its corporate name since August 1, 2011. According to the Complainant, use of the word "floats" as the trademark for an online / digital marketing service is arbitrary, having no specific or established meaning prior to its adoption by the Complainant as a trademark. Further that, it serves no other purpose then to identify the source, i.e., the Complainant's goods and services. The Complainant has been continuously and consistently using another name, "Nowfloats", also.
On March 7, 2012, the Complainant submitted an application with the Trade Marks Registry in Delhi, India for the registration of its trade/service mark FLOATS in Classes 9, 12, 35, 38, 41 and 42 of the International Classification of Goods and Services published by the World Intellectual Property Organization. The same is expected to be decided shortly.
Further to that, the corporate name of the Complainant is Nowfloats Technologies Pvt. Ltd.. Due to extensive and continuous use of the trademark FLOATS, the said trademark is associated with the Complainant. According to the Complaint, the Respondent is a "Digital Marketing Advisor" and has been providing digital marketing services using the domain name <websitemaker.co.in> since 2014. Therefore, the Respondent is a competitor of the Complainant as the two operate in the same field, from the same country.
The registration of the disputed domain name is a blatant attempt to lead Internet users into confusion and diversion and is highly likely to succeed in doing so. The Respondent's use of the disputed domain name reveals a clear case of domain-squatting and there exists a definite possibility that the use of the disputed domain name may tarnish the reputation and good name of the Complainant.
The Complainant has further contended that it owns a number of domain names containing the words "floats" and "nowfloats". The following are a few of such domain names: <nowfloats.com >; <nowfloats.in>; <nowfloats.net>; <nowfloats.org>.
The addition of the word "web" in the disputed domain name to the Complainant's trademark FLOATS is immaterial. Further that "web" is a generic word. The addition of the word "web" in no way distinguishes the Respondent's services from that of the Complainant's and in fact, it purposefully links the two.
Thus, the disputed domain name <webfloats.com> is very much identical or confusingly similar to the Complainant's trademark.
In relation to paragraph 4(a)(ii), the Complainant contends that the Complainant has never authorized, licensed, or otherwise permitted the Respondent to use its trademark. The Respondent does not use the disputed domain name, or any variant of it, in its business name, and there is no evidence that the Respondent is commonly known by the term "floats". Although the Respondent is purportedly providing digital marketing services, these services are not bona fide because the Respondent is using the disputed domain name in bad faith for the purpose of diverting users to the Respondent's website through confusion.
Regarding paragraph 4(a)(iii), the Complainant contends that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the website of the disputed domain name by creating a likelihood of confusion with the Complainant's mark.
The Respondent has contended that the business of the Respondent is not the same as the business of the Complainant and the Respondent is carrying on his business in a totally different form and name.
The Respondent further contends that the Complainant has been using the word "floats" since August 1, 2011 and has filed an application for the registration of the trademark NOWFLOATS, i.e., "floats" with the prefix "now". The Respondent states that this shows that the Complainant understands that "floats" and "nowfloats" are different words, but are now assuming that "webfloats" is similar despite the difference in prefix, meaning, and sound.
The Respondent has further contended that he has created an appreciable market in Delhi. The Respondent appears to contend that the Complainant is attempting to engulf the Respondent's established business by acquiring a transfer of the disputed domain name — the Complainant has already surveyed the business activities of the Respondent through web and the intention of the Complainant is to grab local markets like Delhi from the Respondent.
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 disputed domain name <webfloats.com>. It was registered by the Respondent on July 13, 2015.
The Complainant has been using the trademark FLOATS or NOWFLOATS since 2011. Further, the Complainant owns a number of domain names containing the words "floats" and "Nowfloats". Some of such domain names have been indicated above. The Respondent has also used the word "floats" in the disputed domain name. As has been contended by the Complainant, the addition of the word "web" in the disputed domain name does not, in this Panel's opinion, avoid confusing similarity. The said addition does not have the effect of making the domain distinct and independent. The Panel finds for the purposes of this proceeding that the Complainant has established unregistered trademark rights.
The Respondent has not submitted any evidence indicating its relation with the disputed domain name <webfloats.com> or any trademark right, domain name right or contractual right.
The Respondent's disputed domain name is phonetically, visually and conceptually confusingly similar to the mark of the Complainant. The addition of the word "web" does not affect the confusing similarity. A domain name that wholly incorporates a trademark attains confusing similarity with the trademark.
Thus, the Panel finds that the disputed domain name <webfloats.com> is confusingly similar to the mark of the Complainant.
B. Rights or Legitimate Interests
According to paragraph 4(c) of the Policy, a 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 Panel finds that the Complainant has made a prima facie showing that Respondent does not have rights or legitimate interests in the disputed domain name. The Panel notes that the Respondent appears to contend that the Complainant is attempting to engulf the Respondent's established business by acquiring the transfer of the disputed domain name. The Panel finds the Respondent's submissions unconvincing. The Respondent has not submitted any evidence of its associated business. The Panel further finds that the Respondent's unsubstantiated submissions are rather an attempt to avoid these Policy proceedings, and the Respondent's use of the disputed domain name is an attempt to mislead Internet users. In view of the fact that the Complainant has not licensed or otherwise permitted the Respondent to use its mark or to apply for or use a domain name incorporating said mark and that the Respondent is using the word "floats" 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 online 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 adoption of the disputed domain name incorporating the Complainant's name and/or 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. The Respondent, asserted to be working in a similar sector of business as the Complainant, was more likely than not aware prior to the Respondent's registration of the disputed domain name that there was substantial reputation and goodwill associated with the Complainant's trademark and/or service mark.
On February 23, 2016, the Complainant gave a cease and desist notice to the Respondent calling upon the Respondent to cease and desist from, in any manner, using the disputed domain name and to remove the contents of the website of the disputed domain name. According to the Complainant, after receiving the cease and desist notice, the Respondent merely re-directed the Internet consumers to another domain name.
This and other information submitted by the Complainant leads to the conclusion that the disputed domain name <webfloats.com> 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.
In light of the foregoing findings, namely, that the domain name is confusingly similar to the mark in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the domain name, and that the domain name was registered in bad faith and is being used in bad faith, in accordance with paragraph 4(i) of the Policy and Rule 15 of the Rules, the Panel orders that the disputed domain name <webfloats.com> be transferred to the Complainant.
Vinod K. Agarwal
Date: November 4, 2016
1 Although the Response was filed late, the Panel has decided, in the interest of fairness, to exercise its discretion pursuant to the Rules paragraph 10 and paragraph 12 to take the Response into consideration in rendering its Decision.