WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bharti Airtel Limited v. Nyasa Hub, NyasaHub.com / Registration Private,
Domains By Proxy, LLC
Case No. D2016-2589
1. The Parties
The Complainant is Bharti Airtel Limited of New Delhi, India, represented by Inttl Advocare, India.
The Respondent is Nyasa Hub, NyasaHub.com of Norwalk, Connecticut, United States of America (“United States”) / Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States.
2. The Domain Name and Registrar
The disputed domain name <airtelmalawi.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 December 21, 2016. On December 21, 2016 the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 22, 2016, 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 January 9, 2017. In accordance with the Rules, paragraph 5, the due date for Response was January 29, 2017. The Respondent did not submit any formal response. Accordingly, the Center informed that it would proceed to appoint the Administrative Panel on January 30, 2017.
The Center appointed Clive Duncan Thorne as the sole panelist in this matter on February 2, 2017. 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 Bharti Airtel Limited, an Indian company with its registered office in Delhi. It is one of the biggest telecom companies and is engaged in a variety of services including cellular phones, broadband and Internet services, satellite carrier, international services, calling cards, business services etc. Its flagship brand and mark is the mark AIRTEL.
In 2006, the Complainant changed its name to Bharti Airtel Limited. It is a leading global telecommunications company with operations in twenty countries including Asia and Africa. It ranks amongst the top three mobile service providers globally in terms of subscribers. In India, the Complainant’s products and offerings include 2G, 3G and 4G wireless services, mobile commerce, fixed line services, high speed DSL, broadband, IPTV, DTH and enterprise services including international long distance services to carriers. Elsewhere it offers 2G, 3G and 4G wireless services and mobile commerce. As at the end of May 2016, it had over 361 million customers. Relevant extracts from the Complainant’s website are set out at Annex 6 to the Complaint.
The Complainant has numerous registered trademarks for the mark AIRTEL and marks incorporating the mark AIRTEL. The mark was conceived, invented and coined by the Complainant in 1994 as its trademark for goods as well as services. The mark is not used in common language and is not found in any dictionary. It is a coined word.
At paragraph 5 to the Complaint, there is set out a list of the Complainant’s registered trademarks in India incorporating the mark AIRTEL. Copies of the trademark registrations are annexed at Annex 7 to the Complaint.
Additionally, the Complainant is the proprietor and owner of a number of national and international trademarks for the mark AIRTEL including in the United States, European Union, Hong Kong, China, Singapore, Ghana, Kenya, Malawi, Sierra Leone, Tanzania, Zambia, African Intellectual Property Organization and Madagascar. Copies of these trademark registrations are annexed as Annex 8 to the Complaint. Additionally, there are a number of applications for trademarks in India, which incorporate the mark AIRTEL.
The Complainant which has uninterrupted use of the mark AIRTEL also claims “common law rights in these marks”.
The Complainant also has a large number of domain name registrations incorporating the mark AIRTEL and an illustrative list of these are set out at paragraph 9 to the Complaint.
The Complainant publicises its use of the mark AIRTEL in India. It has incurred very large expenses for marketing, advertising and promoting the mark AIRTEL so that it is known throughout the world including in India. The Complainant maintains that as a result of such advertising it has increased sales for its goods, products and services under the mark AIRTEL.
The Complainant has a history of protecting its rights in the mark AIRTEL including in courts, tribunals and other authorities throughout the world including India. At paragraph 14 to the Complaint are details of some of the actions taken by the Complainant.
In particular, the Complainant has been successful in earlier administrative proceedings under the UDRP in relation to domain names incorporating the mark AIRTEL. These are also listed at paragraph 14 to the Complaint.
Upon obtaining evidence of the Respondent’s use of the disputed domain name, the Complainant accessed the Respondent’s website, an extract of which is set out at Annex 22 to the Complaint. The Complainant submitted notice of trademark infringement on the Compliant Form maintained by Domains By Proxy LLC, following which Domains By Proxy LLC disclosed details of the Registrant. The Complainant’s counsel received an email from the Respondent dated December 16, 2016 (annexed as Annex 23 to the Complaint), under which the Respondent indicated its willingness to sell the disputed domain name to the Complainant on the basis that a “lengthy and costly legal battle” would be avoided.
In the absence of a Response, the Panel proceeds to determine this Complaint on the basis of the evidence adduced by the Complainant which it finds to be true.
5. Parties’ Contentions
The Complainant maintains:
(i) The disputed domain name is identical or confusingly similar to the trademark AIRTEL in which the Complainant has rights. An Internet user wishing to visit the Complainant’s site would be at risk of being taken to the Respondent’s website that prejudices the commercial interest of the Complainant.
(ii) There is no evidence that the Respondent has any rights or legitimate interests in respect of the disputed domain name.
(iii) The evidence shows dishonesty on the part of the Respondent which constitutes evidence of registration and use of the disputed domain name in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
On the basis of the evidence of the registration of the mark AIRTEL set out above, the Panel is satisfied that the Complainant has trademark rights in the mark AIRTEL. The disputed domain name consists of the mark AIRTEL together with the geographic description “malawi”. In the Panel’s view, this suggests that it is descriptive of the Complainant’s trading activities in Malawi. The Panel finds that the disputed domain name is confusingly similar to a trademark or service mark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Complainant submits that the Respondent has no business connection, approval or consent from the Complainant in any manner to use the mark AIRTEL as part of its domain name. It submits that the present complaint is a “classic case of riding upon the immense good will and reputation of the Complainant’s well known mark”. The Respondent is doing so on an unauthorised basis in the course of its business to divert business to itself with intent to obtain commercial gain and to misleadingly divert consumers from the Complainant’s own website <airtel.com>.
In the absence of any evidence to the contrary, the Panel accepts this submission and finds for the Complainant with regard to this element.
C. Registered and Used in Bad Faith
The Complainant relies upon the Respondent’s email dated December 16, 2016 addressed to the Complainant’s counsel whereby the Respondent expressed its ready willingness to sell the disputed domain name to the Complainant. It submits that this is clear evidence that the disputed domain name was registered for the purposes of trafficking the disputed domain name.
It also submits that the Respondent has registered the disputed domain name primarily for the purposes of disrupting the business of the Complainant. This is shown by the contents of the webpage accessed through the disputed domain name which suggests that the webpage has been created by a competitor of the Complainant and that this is evidence of bad faith.
The Complainant also submits that the Respondent has obtained registration of the disputed domain name in bad faith for either or all of the following motives:
(a) in order to extract large sums of money from the Complainant who has a legitimate interest in the disputed domain name and relies upon the Respondent’s email of December 16, 2016 to support this;
(b) the Respondent may wish to transfer or sell the disputed domain name to some competing interest of the Complainant who may develop further the Respondent’s website by inserting prejudicial material in relation to the Complainant so as to damage its mark and grand and dissuade customers from using the Complainant’s telecom services.
Taking into account the fact that there is no evidence to the contrary from the Respondent and, taking into account all the above factors and, in particular, the content of the Respondent’s website exhibited at Annex 22 to the Complaint, the Panel finds that the disputed domain name was registered and is being used in bad faith by the Respondent.
For the foregoing reasons, in accordance with paragraphs 4(1) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <airtelmalawi.com> be transferred to the Complainant.
Clive Duncan Thorne
Date: February 13, 2017