WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
SBI Card & Payment Services Pvt. Ltd. v. R. Kumar and R. Murti, Like this domain! - Want to know more? Email now.
Case No. D2017-08731
1. The Parties
The Complainant is SBI Card & Payment Services Pvt. Ltd. of Gurgaon, Haryana, India, represented by Athena Legal, Advocates and Solicitors, India.
The Respondents are R. Kumar and R. Murti, Like this domain! - Want to know more? Email now. of Macomb, Michigan, United States of America (“United States”), self-represented.
2. The Domain Name and Registrar
The disputed domain name <sbicreditcard.com> (the “Disputed Domain Name”) is registered with Fabulous.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 1, 2017. On May 1, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On May 2, 2017, the Registrar transmitted by email to the Center its verification response confirming that the Respondents are 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 Respondents of the Complaint, and the proceedings commenced on May 4, 2017. In accordance with the Rules, paragraph 5, the due date for Response was May 24, 2017. The Response was filed with the Center on May 23, 2017.
The Center appointed Nick J. Gardner as the sole panelist in this matter on June 12, 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 relevant facts can be summarized as follows.
The Complainant is a joint venture between the State Bank of India (“SBI”) and GE Capital Services. It commenced business in 1998. As its name suggest, it provides credit card services. It does so under the trademark SBI CARD. SBI is the largest bank in India. The SBI CARD has a market share of approximately 15% of the Indian credit card market which makes it the second largest credit card in India. It has been widely promoted and is successful and well known and has won numerous awards and been widely recognized in the press. The Complainant promotes its credit card via a website at “www.sbicard.com” which also offers various services to the Complainant’s customers. That website receives approximately 14 million visits a month. The website was first launched in 1999. In financial year 2015/16 the Complainant spent INR 248 million advertising its credit card and INR 3.6 billion in sales promotion activities. The Complaint owns Indian registered trademark no. 2962690 for the term SBI CARD registered on May 14, 2015 in class 42 (the “SBI CARD trademark”).
The Respondents registered the Disputed Domain Name on March 23 2005. The Respondents have used it to link to a website. As at the date of this decision that website is a “parking page” containing automatically generated links to third-party sites. Almost all of these are to sites relating to credit cards and inevitably these include sites operated by competitors of the Complainant. In the past the Disputed Domain Name has been linked to a website which contains blog type entries about credit cards – see further below.
5. Parties’ Contentions
The Complainant’s contentions are straightforward. Numerous previous UDRP decisions are relied upon by the Complainant and where relevant they are addressed in the Panel’s discussion below.
The Complainant’s contentions can be summarized as follows.
The Disputed Domain Name is confusingly similar to the SBI CARD trademark, involving only the addition of the descriptive word “credit”.
The Complainant says the Respondents have no rights or legitimate interests in the term “SBI Card” or “SBI Credit Card”.
In consequence the Complainant alleges that the Disputed Domain Name was registered and is being used in bad faith. The Complainant says using the Disputed Domain Name for parking page which links to third-party sites is bad faith use.
A lengthy and detailed response has been filed which is to some extent repetitive. The main points made by the Respondents are as follows:
The Respondents run a business buying and selling domain names. They have over 10,000 domain names. That is a legitimate business.
The Disputed Domain Name was acquired by the Respondents “for the purpose of educating and helping consumers avoid high interest credit cards”. In this respect “SBI” is an acronym for “Save Big Interest”. The Respondents have placed in evidence archived screenshots (from “www.archive.org”) of a website that they say they created and which was at one stage linked to the Disputed Domain Name. This has a header “SBI Creditcard.com” with under that a line that reads “SBI-Credit-Card = ‘Save Big Interest’ Credit Card” and then under that a series of links to what appear to be fairly short text entries and articles about different types of credit cards. It is not clear to the Panel how the contents of this website were generated though it appears to the Panel that it may well be a site which was automatically created using individual blog entries that were then collated into a website. In any event the site includes numerous short entries, which would appear to be manually written blog type posts. By way of example one such entry is entitled “Why you should keep track of your credit card limit” and reads as follows:
“July 24, 2008 · Filed Under Everything Credit Card · Comment
A Texas woman says her credit card company allowed her to go way over her limit. She racked up fees and is now deep in debt. http://www.wbir.com
SBI Credit Card advises its readers that as with anything you sign, always read the FINE PRINT! Credit card companies are not obliged to let you know once you have reached your limit or are going over it. If it does happen, you may not know it until you get the monthly statement and have a hefty fee included in it.
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Tags: credit card, credit card companies, credit card company, credit card limit, s b i credit Card, Sbi Card, Sbi Cards, Sbi Credit Cards, SBI-Credit-Card, SbiCreditCard”
It is not clear to the Panel whether this website carried third-party advertising or sponsored links to third-party websites. It des however on its home page include a prominent link “Advertising Info” – this links to a “coming soon” message. This would seem to suggest that advertising may have been contemplated, although it may also simply be a feature of the template used to create the website.
On the basis of this website the Respondents say they have a legitimate interest in the Disputed Domain Name and acted in good faith. They also go on to make the following additional points:
The Complainant does not have any trademark rights in the terms “SBI Credit Card”.
Such trademarks as the Complainant has in any event postdate the Respondents’ registration of the Disputed Domain Name.
The Complainant does not have exclusive rights in the term “SBI”.
The Complainant has not in the past enforced its rights – for example it (or a connected entity) previously won a UDRP case in relation to <sbicards.com> but then allowed that domain name to lapse and it is now registered by someone else.
The Complainant is “trying to trick” the Panel as its name is “SBI Cards and Payment Services” (the Panel understands that the point the Respondents are making is that the Complainant’s name includes “Cards” (plural) as opposed to “Card” (singular)).
There are many other “sbi card” related domain names not owned by the Complainant including <sbicreditcards.com> and <sbicards.com>. The Respondents list various further examples of similar domain names involving the term “sbi” and either “card” or “cards” and “credit”.
The Respondents have owned the Disputed Domain Name for 12 years and the doctrine of laches applies preventing the Complainant’s case succeeding.
The Respondents have received anonymous phone calls requesting them to drop the Disputed Domain Name or “face the consequences”.
The Respondents say they have never sought to sell the Disputed Domain Name to the Complainant who they say is a “serial liar”. They request a finding of reverse domain name hijacking.
6. Discussion and Findings
To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel in that:
(i) The Disputed Domain Name is identical with or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) The Respondents have no rights or legitimate interests in respect of the Disputed Domain Name;
(iii) The Disputed Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the trademark SBI CARD.
So far as the Complainant’s registered trademarks are concerned the earliest of these was filed in 2014. This in itself does not matter – the Panel agrees with the consensus approach as explained in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) section 1.1.3:
“1.1.3 While the UDRP makes no specific reference to the date on which the holder of the trademark or service mark acquired its rights, such rights must be in existence at the time the complaint is filed.
The fact that a domain name may have been registered before a complainant has acquired trademark rights does not by itself preclude a complainant’s standing to file a UDRP case, nor a panel’s finding of identity or confusing similarity under the first element.
Where a domain name has been registered before a complainant has acquired trademark rights, only in exceptional cases would a complainant be able to prove a respondent’s bad faith.” (see below as to bad faith issues).
However in the present case the filed evidence establishes that the Complainant launched its SBI CARD in 1998 or 1999, and by the time the Disputed Domain Name was registered in 2005, it had built up a very substantial and well-known business in India under and by reference to that term. The Panel would in any event conclude the nature and extent of that business means that the Complaint had established unregistered trademark rights in SBI CARD by the time the Disputed Domain Name was filed.
The Panel considers the Disputed Domain Name to be confusingly similar to the Complainant’s trademark SBI CARD. It is established that the addition of a descriptive term (such as here “credit”) to the disputed domain name has little, if any, effect on a determination of legal identity between the domain name and the mark (Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253); furthermore, mere addition of a generic or descriptive term does not exclude the likelihood of confusion (PRL USA Holdings, Inc. v. Spiral Matrix, WIPO Case No. D2006-0189).
Accordingly the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s trademark and hence the first condition of paragraph 4(a) of the Policy has been fulfilled.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a domain name:
(i) before any notice to the respondent of the dispute, 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 has been commonly known by the domain name, even if the respondent has acquired no trade mark or service mark rights; or
(iii) the respondent is making a legitimate non-commercial 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 Complainant has not authorised, licensed, or permitted the Respondents to register or use the Disputed Domain Name or to use the SBI CARD trademark. For the reasons explained above the Panel considers the Complainant has prior rights in the SBI CARD trademark which precede the Respondents’ registration of the Disputed Domain Name. The Complainant has therefore established a prima facie case that the Respondents do not have any rights or legitimate interests in the Disputed Domain Name and thereby the burden of production shifts to the Respondents to produce evidence demonstrating rights or legitimate interests in respect of the Disputed Domain Name (see for example Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
The Respondents claim to have used the Disputed Domain Name in connection with a bona fide offering of goods or services, namely its website devoted to educating consumers about “save big interest” (see above).
The Panel does not find this explanation to be credible. The Panel accepts that the archive material introduced in evidence by the Respondents did exist and does show the website which was linked to the Disputed Domain Name. However looking at the evidence as a whole the Panel on the balance of probabilities does not accept this material establishes a legitimate interest in the way suggested by the Respondents. The Panel is conscious that proceedings under the UDRP are of a limited and restricted nature, do not involve oral hearings, discovery or cross examination, and hence are only applicable to clear cut cases, and it is not usually appropriate to decide disputed questions of fact or matters of truth or falsehood. That does not however mean the Panel cannot reach a conclusion as to the veracity of a case that is being advanced where the only evidence is inherently not credible, and which is not supported by relevant corrobative or third-party evidence. The Panel considers this to be such a case for the following reasons:
There are no obvious reasons why the Respondents, as dealers in domain names, should want to start a blog site devoted to educating consumers about high interest issues concerning credit cards.
Even if they did want to do so there are much more readily relevant and memorable domain names that could no doubt have been identified and used.
The suggestion that the acronym “sbi” would be identified and recognised as meaning “save big interest” seems to the Panel to be fanciful.
The website content which the Respondents have placed in evidence involves a considerable number of individual entries and clearly involved some effort to create. However each individual entry seems short, amateurish and very unlikely to have been of any real use or interest to anyone.
It seems much more likely that the Disputed Domain Name was selected precisely because it was directly referable to the Complainant and its by then successful and well-known SBI CARD, and that the website in question was generated as a pretext to legitimize the Respondents’ registration of the Disputed Domain Name. It may also have been intended to generate commercial revenue as a result of attracting customers who may have been confused by the Disputed Domain name into thinking the website was something to do with the Complainant. In fact the evidence if studied clearly indicates this website was confusing consumers in this regard – see for example user comments which the website has recorded in relation to the entry “winning the war on plastic” as follows:
“[name] on December 15th, 2008 11:35 am. my self [name] from udaipur, due to some reason i did not paid your some credit card payment but your credit card recovery agent is doing wrong thing with me abusing me & my family between 15-20 day. due to this type of things i m mentaly distrub & going in court against you & your company recovery agent.i m attempting the case of mental herasment. Your credit card recovery girls & boys both r saying welgour thing to me. its not good for………????/from [name]”
“[name] on February 10th, 2009 7:52 am
I want a Bissnes Creditcar so plz cont to this no [number]”
“[name] on February 10th, 2009 7:53 am
I want credit card plz cont to this no [number]”
“[name] on February 15th, 2009 8:21 am
I need a Credit card of SBI. I m having the cr. cards of other banks. pls call me.
“[name] on May 22nd, 2009 5:43 am
i have a credit card & i think my points redeemed
my credit card numaber-[number]
pl advise me for way of redeemed”.
In any event the website in question seems to have been relatively static and not developed as an ongoing information portal, which seems inconsistent with what the Respondents say was their motive, and at some stage that website was removed and the Disputed Domain Name resolved to a parking page. All of this throws doubt on the Respondents’ explanation of their motives.
Overall the Panel finds that the Respondents’ website was intended in some manner to take advantage of the Complainant and its SBI CARD trademark and that the Respondents have failed to produce credible evidence to establish their rights or legitimate interests in the Disputed Domain Name. Accordingly the Panel finds the Respondents have no rights or any legitimate interests in the Disputed Domain Name and the second condition of paragraph 4(a) of the Policy has been fulfilled.
C. Registered and Used in Bad Faith
In the present circumstances, for the reasons discussed above in relation to legitimate interest the Panel concludes that on the balance of probabilities the Respondents’ registration of the Disputed Domain Name was intended to take advantage of the Complainant’s well known SBI CARD trademark. The Respondents are correct that the Complainant does not have a monopoly on the initials “sbi” – there are no doubt many organisations which exist where those letters form an acronym for the organisation’s name. However there is no evidence before the Panel of any other financial organisation having that acronym, still less any financial organisation involved in the issuing of credit cards. Given the evidence as to the Complainant’s business as at the date the Disputed Domain Name was registered the Panel considers an inference is raised that the Respondents more likely than not knew of the Complainant and its SBI CARD trademark when registering the Disputed Domain Name. The Respondents have not displaced that inference – indeed although the Respondents advance a positive case as to why they used the term “sbi credit cards”, nowhere do they expressly state they were unaware of the Complainant and its SBI CARD trademark at the time they registered the Disputed Domain Name. Even were it the case the Respondents chose the name independently (which the Panel does not think was the case) it seems likely that any sort of rudimentary Internet search would have quickly alerted the Respondents to the Complainant and its business. On the balance of probabilities the Panel concludes the Respondents knew of the Complainant and its SBI CARD trademark when registering the Disputed Domain Name.
The website currently linked to the Disputed Domain Name comprises a series of pay-per-click (“PPC”) links to other third-party websites. The Panel infers that some consumers, once at this website will follow the provided links and “click through” to other sites which offer products some of which may compete with those of the Complainant. The Respondents presumably earn “click through” linking revenue as a result. The Panel infers the website is automatically generated. This does not however matter. It is well established that where a domain name is used to generate revenue in respect of “click through” traffic, and that traffic has been attracted because of the name’s association with the Complainant, such use amounts to use in bad faith, see for example Shangri-La International Hotel Management Limited v. NetIncome Ventures Inc., WIPO Case No. D2006-1315; Owens Corning v. NA, WIPO Case No. D2007-1143; McDonald’s Corporation v. ZusCom, WIPO Case No. D2007-1353; Villeroy & Boch AG v. Mario Pingerna, WIPO Case No. D2007-1912; Rolex Watch U.S.A., Inc. v. Vadim Krivitsky, WIPO Case No. D2008-0396.
Accordingly the Panel finds that the present use was in bad faith. For the reasons discussed above the Panel rejects the Respondents’ argument that the original registration was to promote a website devoted to educating customers about “save big interest” on credit cards. The Panel finds on the balance of probabilities that the registration was intended to take advantage of the Complainant’s well-known SBI CARD trademark. If the intention was to attract traffic to the site and derive commercial gain then the conduct clearly amounts to that specified in paragraph 4(b)(iv) of the Policy as being evidence of registration and use in bad faith, namely “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”. Even if the Respondents’ intention in attracting traffic was not for commercial gain the examples specified in paragraph 4(b) are non-exhaustive and the Panel considers the conduct in question was taking unfair advantage if the Complainant and its SBI CARD trademark and as such, whatever the Respondents’ precise motives, was in bad faith.
So far as the other arguments advanced by the Respondents are concerned the Panel finds as follows:
It would appear that the Complaint as filed misidentifies the Complaint’s name which should be SBI Cards & Payment Services Pvt. Ltd. It is this name which appears on the trademark certificates the Complainant relies upon, and on the formal wording found in places on the Complainant’s website at “www.sbicard.com”. However the Panel does not consider this error as sinister as the Respondents suggest. The full name only appears in the formal parts of the Complaint and there is no dispute that the Complainant’s product is named SBI CARD. The inclusion or not in the word “card” of an “s” in the Complainant’s full name does not seem to the Panel to be material and certainly this issue does not affect the Panel’s overall reasoning.
So far as laches is concerned the Panel adopts the approach in WIPO Overview 3.0, section 4.17 as follows:
“4.17 Does “delay” in bringing a complaint bar a complainant from filing a case under the UDRP?
Panels have widely recognized that mere delay between the registration of a domain name and the filing of a complaint neither bars a complainant from filing such case, nor from potentially prevailing on the merits.
Panels have noted that the UDRP remedy is injunctive rather than compensatory, and that a principal concern is to halt ongoing or avoid future abuse/damage, not to provide equitable relief. Panels have furthermore noted that trademark owners cannot reasonably be expected to permanently monitor for every instance of potential trademark abuse, nor to instantaneously enforce each such instance they may become aware of, particularly when cybersquatters face almost no (financial or practical) barriers to undertaking (multiple) domain name registrations.
Panels have therefore declined to specifically adopt concepts such as laches or its equivalent in UDRP cases.
Panels have however noted that in specific cases, certain delays in filing a UDRP complaint may make it more difficult for a complainant to establish its case on the merits, particularly where the respondent can show detrimental reliance on the delay.”
The Panel does not consider that any detrimental reliance issues arise in the present case and declines to apply the doctrine of laches to this case.
The Panel does not know whether or not the allegation that the Respondents make that the Complainant has declined to enforce its rights against other similar domain names is correct. Even if correct the Panel does not consider this relevant. A complainant is generally entitled to choose which domain name(s) it proceeds against in circumstances where multiple abusive registrations exist. Were it not the case a complainant could not succeed unless it proceeded against all or most of such names – which could impose a wholly disproportionate and unfair burden on a complainant.
The Panel is unable to asses the Respondents’ allegations about receiving anonymous telephone calls and without further evidence does not consider this allegation relevant.
As a result the Panel finds that the Disputed Domain Name has been registered and is being used in bad faith. Accordingly the third condition of paragraph 4(a) of the Policy has been fulfilled.
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 Names <sbicreditcard.com> be transferred to the Complainant. The Respondents’ claim for a finding of reverse domain name hijacking fails.
Nick J. Gardner
Date: June 27, 2017
1 The Respondent says this is not the Complainant’s correct name which it says is SBI Cards & Payment Services Pvt. Ltd (i.e. “Cards”, plural) – see discussion below.