WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

FINO Payments Bank Limited v. Sachin Khot

Case No. D2017-0927

1. The Parties

The Complainant is FINO Payments Bank Limited of Mumbai, India, represented by Chadha & Chadha, India.

The Respondent is Sachin Khot of Mumbai, India, self-represented.

2. The Domain Names and Registrar

The disputed domain names <finopaymentsbank.biz>, <finopaymentsbank.com>, and <finopaymentsbank.net> are registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 8, 2017. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On May 9, 2017, 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 May 10, 2017. In accordance with the Rules, paragraph 5, the due date for Response was May 30, 2017. The Response was filed with the Center on May 29, 2017.

The Center received an email communication from a third party on May 10, 2017.

On June 2, 2017, the Center received a supplemental filing from the Complainant. On June 3, 2017, the Center received a supplemental filing from the Respondent.

The Center appointed Harini Narayanswamy as the sole panelist in this matter on June 13, 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 a banking company that has approval from the Reserve Bank of India to operate a payments bank. The Complainant has used the term “Fino” as part of its corporate name and the FINO trademark for about ten years.

The Complainant’s parent company, Fino Paytech Limited, holds the registered trademarks for several FINO marks. The Complainant has filed a trademark application for FINO PAYMENTS BANK (device) under class 36 bearing application number 3406716 on November 8, 2016. The trademark application is pending and the status of the application is mentioned as “objected”.

The Respondent is a director in a company called Iqodis Software Private Limited, a company incorporated under Indian laws on August 12, 2016. The Respondent registered the disputed domain name <finopaymentsbank.com> on August 14, 2016, the disputed domain name <finopaymentsbank.net> on August 16, 2016, and the disputed domain name <finopaymentsbank.biz> on September 13, 2016. The disputed domain names resolve to GoDaddy parking pages displaying pay-per-click links for, inter alia, business loans, home loans, and state bank home loans.

The Respondent has filed a trademark application for FINOPAYMENTSBANK (word mark) under class 36 bearing application number 3350847 on August 31, 2016, claiming use of the mark from August 1, 2016.

The trademark application is pending and the status of the application is mentioned as “objected”.

5. Parties’ Contentions

A. Complainant

The Complainant states it is a pioneer in micro banking and has a presence in India and other countries. Its parent company, Fino Paytech Limited, applied to the Reserve Bank of India (“RBI”) for a payments bank license and received an in-principle license on September 7, 2015. The Complainant states it is one among eight entities eligible to operate payments banks in India, under the RBI license.

The Complainant states that it received the final license to operate a payments bank on March 30, 2017. As per mandatory provisions, the Complainant states it changed its name from “Fino Fintech Limited” to “Fino Payments Bank Limited”, and a certificate of the name change, dated April 4, 2017, is attached as evidence.

The Complainant states that since its corporate name is Fino Payments Banks Limited, it has rights and legitimate interests in the disputed domain names. The Complainant has provided details of its pending trademark applications, extracts from the online status pages for its pending trademark applications and copies of trademark registration certificates of its registered marks.

The Complainant argues that the Respondent registered the disputed domain names with knowledge of the Complainant’s application for the payments bank license. The Complainant states that the Respondent has registered the disputed domain names comprised of its FINO trademark with the terms “payments bank” after the Complainant had obtained the in-principle license from the RBI. The Complainant contends that the Respondent’s motive in registering the disputed domain names is primarily to get undue gains, cause loss to the Complainant and create confusion among customers.

The Complainant submits that the Respondent’s intention of trafficking in domain names is apparent from the fact that the Respondent has registered domain names that contain trademarks of established businesses like FINO, RELIANCE, IDEA and ADITYA BIRLA. A list of domain names owned by the Respondent has been filed as evidence by the Complainant. The Complainant further contends that there are about 37 domain names that are registered by the Respondent with the suffix “bank”. The Complainant asserts that the banking business in India is highly regulated and specific permissions are required from the RBI to start a banking business.

The Complainant contends that it is the first to conceive, adopt, use and promote the FINO trademark in respect of business correspondence since 2007 and for a payments bank. The Complainant re-asserts that due to its corporate name being “Fino Payments Bank Limited”, it has rights to the disputed domain names that are similar to or identical with its trademark and its corporate name.

The Complainant argues that the disputed domain names were registered between August 2016 and September 2016, which is after the Complainant received its in-principle license on September 7, 2015, and it was made public. The Complainant argues that the Respondent registered the disputed domain names as he knew that the Complainant would need the said disputed domain names for its bona fide activities.

The Complainant states that the Respondent communicated with officers of the Complainant his intention to sell the disputed domain names at an exorbitant amount, which was not acceptable to the Complainant. The Complainant states that it sent a cease-and-desist notice to the Respondent on August 25, 2016, that was replied by him on September 26, 2016. In the reply, the Respondent refused to surrender or transfer the disputed domain names based on wrong assumptions and erroneous interpretations of statutory provisions and settled law.

The Complainant states that on account of extensive use of its FINO mark, the mark is identified solely with the Complainant and none other. Further, the use of any deceptive mark for banking services, which is a high stake business, would amount to fraud and cheating the general public. The Complainant further argues that it is a guideline for the banking industry globally, that websites which are likely to be used for deceiving unwary customers or involved in phishing should be taken down to protect Internet users.

The Complainant argues that the disputed domain names are not being used by the Respondent, and are merely parked with a view of selling these to the legitimate owner of the mark. The Complainant states that the Respondent is a cyber-squatter who has no bona fide justification to adopt the disputed domain names and intends to get commercial gains through pay-per-view links or by selling the disputed domain names.

The Complainant requests for the transfer of the disputed domain names based on the three elements of the Policy: that the disputed domain names are identical or confusing similar to a mark in which the Complainant has rights, the Respondent has no rights or legitimate interests in the disputed domain names and the disputed domain names have been registered and are being used in bad faith.

B. Respondent

The Respondent states that the Complainant had filed a police complaint against the Respondent at the Turbhe Police Station, Navi Mumbai. The Respondent states that the Complainant has not mentioned the result of the Turbhe Police complaint. According to the Respondent, the Turbhe Police found that the domain names were registered by different companies and not by the Complainant’s company and those companies are owned by different directors and promoters. The Respondent further states that the Turbhe Police found that the Complainant’s trademark application for FINO PAYMENTS BANK has been objected to by the Trade Marks Registry in February 2017, the trademark is not registered, and the proprietor’s name in the trademark application is Fino Fintech Private Limited.

The Respondent further states that the Turbhe Police allegedly found that the Respondent has a trademark for FINOPAYMENTSBANK. The Respondent states that although the police found the Respondent’s trademark application showed an “objected” status, when the Respondent showed the Turbhe Police the reply to the objection filed by the Respondent’s attorney to the Trade Marks Registry, the police declined to proceed further against the Respondent due to the “misguiding” statements provided by the Complainant.

The Respondent argues that the Complainant has cleverly mixed three different Acts and the Madrid Protocol Guidelines. The three Acts according to the Respondent are the Indian Trade Marks Act, 1999, the Indian Companies Act, 2013, and the Reserve Bank of India Act, 1934. The Respondent states that he has also included the Madrid Protocol Guidelines, as the Complainant has stated that it has a presence in other countries. The Respondent argues that the statements made by the Complainant create confusion and hide facts that the Respondent has rights in the disputed domain names, and the Respondent alleges he has provided evidence.

The Respondent states that the Complainant has not provided any evidence of its presence abroad and from which year. The Respondent further states that Non Banking Finance Companies (“NBFC”) are not allowed to have a presence abroad without prior approval from the RBI. As the Complainant has stated that it has a presence abroad, the Respondent argues that the Madrid Protocol will apply to the Complainant, due to India having “accepted” the Madrid Protocol on July 8, 2013.

The Respondent argues that the FINO mark has been registered by other entities under the Indian Trade Marks Act, 1999 and under the Madrid Protocol. The Respondent states that the Madrid Protocol database reveals the trademark FINO is a registered mark for other big corporations such as Samsung Aerospace Industries Limited and DT&SHOP GmbH, a German company. The Respondent states that DT&SHOP GmbH also owns the domain name <fino.com>.

As FINO is a registered trademark of many companies and individuals in India and abroad, the Respondent argues that although other persons and entities had rights in the word mark FINO, the Complainant went ahead and registered the domain name <fino.co.in> on February 14, 2006, and started using the trademark FINO from June 15, 2006. The Complainant’s FINO trademark was registered in the year 2009, and therefore the Complainant has exploited the confusion of other FINO trademarks and now claims to have sole and exclusive rights in the word mark FINO, which the Respondent argues is a misguiding statement made by the Complainant. The Respondent further argues that the Complainant wants to suffix the FINO mark with the words “payments bank” to show rights on the disputed domain names registered by the Respondent.

The Respondent argues that the Complainant has cleverly adopted and changed its corporate name two times. The corporate name adopted by the Complainant is like the Respondent’s trademark FINOPAYMENTSBANK and the disputed domain names registered by the Respondent. Further, within a few days of adoption of the new corporate name, the Complainant has filed the present Complaint with its newly adopted corporate name. According to the Respondent, the timing proves the intention of the Complainant to grab the disputed domain names registered by the Respondent and the Respondent’s trademark.

The Respondent argues that the RBI is not an authority to decide trademark names or corporate names of banking license holders. The Respondent further argues that having a banking license is not a confirmation of “[c]orporate or [t]rade mark name of the company”. The Respondent further argues that words like “cash”, “money”, “bank”, “banking”, “payment”, and “payments” are considered generic words in the economy. Therefore, the Respondent argues, the word “bank” could be used by entities other than RBI license holders in India for their corporate names or trademark names. The Respondent has provided as evidence a list of third-party trademarks including the word “bank”, and argues that these entities do not have a bank license yet use the word “bank” in their trademarks. Evidence provided by the Respondent is a list of search results from the Indian Trade Marks Registry’s database showing trademarks like BANK PLUS (label) (owned by NIIT Institute of Finance Banking and Insurance), LAND BANK (with device) (owned by Anand Mane), VRL KNOWLEDGE BANK (owned by VRL Publishing Ltd.), CAR BANK (owned by Bipin B. Bhavsar), BANKING ON-LIFE (owned by Birla Sun Life Insurance Co. Ltd.), and several other such marks where the word “bank” is used by diverse businesses primarily for non-banking activities.

The Respondent argues that the Complainant has adopted new corporate names twice. First, in the same month, that the trademark department of India raised an “objection” on the Complainant’s FINO PAYMENTS BANK trademark, which was applied for under the name “Fino FinTech Private Limited”, the Complainant changed its corporate name from “Fino FinTech Private Limited” to “Fino FinTech Limited”. Thereafter, the Respondent argues that the Complainant changed its corporate name from “Fino FinTech Limited” to “Fino Payments Bank Limited” and did not opt for “Fino Fintech Payment Bank Limited”. This, the Respondent argues, was due to the similarity of the name “Fino Payments Bank Limited” with the disputed domain names registered by the Respondent, which the Complainant wanted to show its rights in the disputed domain names.

The Respondent argues that the Complainant has not mentioned the “objected” status of its trademark application, and has merely mentioned that the trademark application is pending. The Respondent further argues that the Complainant received its in-principle license on September 7, 2015, but the Respondent registered the disputed domain name <finopaymentsbank.com> as on August 14, 2016, which is much after the Complainant received the in-principle license.

The Respondent states that he owns a software development company, and that company needs domain names for its in-house brands that are under development and for its client’s projects. The evidence provided by the Respondent is the incorporation certification of the Respondent’s company.

Alluding to the Complainant’s statements that the Respondent has demanded an exorbitant amount for the disputed domain names, the Respondent states that the Complainant has not furnished any proof or evidence for this. The Respondent states that the Complainant has called the Respondent several times for purchasing the disputed domain names, but the Respondent was not interested in selling the disputed domain names due to the Respondent’s future project in the “FinTech category”.

The Respondent states the Complainant’s officer had sent a domain name purchase offer by email as well as an offer to meet the Respondent at a mall. In the said email communication, the Complainant’s officer had allegedly used a fake email ID and a fake name, states the Respondent. This was investigated by the MIDC police officials, and it was found that the said person was employed at FinoPay Tech Ltd. and allegedly accepted his guilt in front of the police officials. The Respondent has submitted evidence of the said emails and the police complaint in Annexures to the Response.

The Respondent argues that the Complainant has intentionally avoided the information about the police complaint filed at MIDC Police Station and what MIDC police officials found in the investigation.

The Respondent states that he has the trademark FINOPAYMENTSBANK under the Indian Trade Mark Act, 1999. The Respondent states that he also owns a software company with a majority stake. The Respondent alleges that he has never made any auction, sale offer, pay-per-click or sponsored links.

The Respondent mentions that before making a trademark application for the FINOPAYMENTSBANK mark, the Respondent had gone through a trademark search under all classes. Not finding any mark similar to the said mark, the Respondent made an application for the said mark on August 31, 2016.

The Respondent argues that the Complainant has not provided a certificate of registration for the trademark FINO PAYMENTS BANK. The Respondent alleges that he has rights in the trademark FINOPAYMENTSBANK due to his trademark application which is pending in “objected” status, and the Respondent’s attorney has answered and replied to the trademark department against the objection.

The Respondent argues that the Complainant does not own the domain name <fino.com>, which is owned by DT&SHOP GmbH since the year 2000, and DT&SHOP GmbH has registered several trademarks since 1995. The Respondent argues that the Complainant has registered the “second-level-domain” <fino.co.in> on February 14, 2006, and taking advantage of the keyword “fino”, the Complainant uses the <fino.co.in> domain name primarily for the purpose of diverting potential customers of DT&SHOP GmbH’s “fino.com” website. The Respondent argues that the Complainant is attempting to exploit the confusion from the previously registered domain name <fino.com>.

The Respondent states that he owns the company Iqodis Software Private Limited, registered under the Indian Companies Act, 2013. The Respondent further states that the disputed domain names have not been registered for selling, renting or transferring, but for the Respondent’s upcoming FinTech projects, which will soon be legalized under its Non Banking Financial Company’s (“NBFC”) subsidiary. The Respondent states that the Respondent’s company is developing a FinTech project for pre paid instruments.

The Respondent states that he made the trademark FINOPAYMENTSBANK by merging “fin” (for finance), “o” (for online), “payments” (generic), and “bank”, and states that he duly searched the trademark database before using the trademark. The Respondent requests for a finding of Reverse Domain Name Hijacking (“RDNH”) on grounds that:

- The Complainant has sent an email of a purchase offer for the disputed domain names stating an exact figure in Indian Rupees from a fake email address, and the same was detected by the MIDC Police, Mumbai during the investigation and the Complainant’s acceptance statement is recorded in writing with the Complainant’s signature.

- The Complainant never mentioned clearly that its trademark FINO PAYMENTS BANK is in “objected” status.

- The Complainant changed its corporate name multiple times within a few days of the objection from the trademark department. The Complainant renamed its company with a corporate name that is similar to the Respondent’s trademark FINOPAYMENTSBANK and the Respondent’s disputed domain names.

- The Complainant did not rename its company the second time from “Fino FinTech Limited” to “Fino FinTech Payment Banks Limited”. The Complainant renamed its company to “Fino Payments Bank Limited” to show rights in the Respondent’s trademark and the disputed domain names registered by the Respondent.

- The Complainant received an incorporation certificate after renaming itself, on April 4, 2017, and filed the UDRP Complaint within a few days, on May 8, 2017.

- The Complainant intentionally avoids the information about the police complaint filed at MIDC Police Station.

- The Complainant has intentionally highlighted that the FINO mark is “solely” and “exclusively” the word mark of the Complainant in India and abroad, whereas there are many entities and individuals that own the mark FINO in India and abroad since 1999.

- The Complainant does not own the domain name <fino.com>, which is owned by DT&SHOP GmbH since the year 2000, and DT&SHOP GmbH also has registered trademarks in several countries since 1995. The Complainant has registered “second–level-domain” <fino.co.in> on February 14, 2006, taking advantage of the keyword “fino”. The Complainant registered the second-level domain name for the primary purpose of diverting potential customers of DT&SHOP GmbH ’s website at the domain name <fino.com>.

- The Complainant has called the Respondent several times for purchasing the disputed domain name. The Respondent’s brother, a police official by profession, called back the Complainant and respectfully informed the Complainant about the Respondent’s legal rights in the disputed domain names and the Respondent’s mark under the Trade Marks Act, 1999. The Complainant has wrongly portrayed in the complaint filed at Turbhe Police station that the Respondent’s brother’s profession as police is like a crime.

- The Complainant has harassed the Respondent through multiple sources for a few months, by sending a cease-and-desist notice by email, calling, sending purchase offers by email and filing police complaints.

C. Supplemental Filings by the Parties

The Parties have filed unsolicited supplemental submissions. The Panel had not expressly requested for any additional submissions from the Parties. Under the Rules, there is no express provision for unsolicited submissions. Such submissions are typically not entertained by UDRP panels in view of the Rules, paragraph 10, which requires the Panel to conduct the administrative proceedings with due expedition. The Panel exercises its discretion vested under the Rules and declines to entertain the additional supplemental submissions of both the Parties.

6. Discussion and Findings

The key elements that are required to be established by the Complainant to obtain the remedy of transfer of the disputed domain names under paragraph 4(a) of the Policy are:

(i) The disputed domain names are 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 names; and

(iii) The disputed domain names were registered and are being used in bad faith by the Respondent.

A. Identical or Confusingly Similar

The first element requires the Complainant to establish the disputed domain names are identical or confusingly similar to a trademark or a service mark in which it has rights. The Panel finds the Complainant has provided evidence of its pending trademark applications, its registered rights in the FINO trademark and its variants. Details as given in the Complainant’s listing are:

Trademark Application Number

Trademark

Services Class

Status

1540585

FINO (LABEL)

36

Registered

1690329

FINO BHARAT

36

Registered

1690331

FINO COS 32K VER 1.0

27

Registered

1776684

FINO PARICHAY (DEVICE)

36

Registered

1776686

FINO SAYANA RAVI (DEVICE)

36

Registered

1776688

FINO SARAL (DEVICE)

36

Registered

1776690

FINO TATKAAL (DEVICE)

36

Registered

1776692

FINO TIJORI (DEVICE)

36

Registered

1540581

FINO (LABEL)

42

Registered

1690330

FINO BHARAT (LABEL)

42

Registered

1690332

FINO COS 32K VER 1.0 (DEVICE)

42

Registered

1776685

FINO PARICHAY (DEVICE)

42

Registered

1776687

FINO SARAL (DEVICE)

42

Registered

1776689

FINO SAYANA RAVI (DEVICE)

42

Registered

1776693

FINO TATKAL (DEVICE)

42

Registered

1776695

FINO TIJORI (DEVICE)

42

Registered

3445477

FINO (DEVICE)

42

Accepted & Advertised

3445479

FINO (DEVICE)

42

Accepted & Advertised

3406716

FINO PAYMENTS BANK (DEVICE)

36

Objected

3445476

FINO (DEVICE)

36

Accepted & Advertised

3445478

FINO (DEVICE)

36

Accepted & Advertised

The evidence on record shows that the Complainant has established its use of the FINO mark for about ten years. The Respondent has not disputed this fact, but has admitted that the Complainant has used the FINO mark from 2007. The Respondent has also admitted that the Complainant has registered the domain name <fino.co.in> in 2006.

The Respondent has argued that the Complainant does not own the domain name <fino.com>, which is owned by DT&SHOP GmbH, thereby implying the Complainant’s adoption of the FINO mark was not in good faith. If DT&SHOP GmbH or any other entity having a registered trademark in the FINO mark had issues with the Complainant’s use of the FINO trademark, it certainly has no relevance to this dispute. It would be the subject matter of another dispute. The Respondent’s arguments that the Complainant’s initial adoption of the FINO mark was not in good faith is therefore irrelevant to the present dispute. As discussed, the Complainant has demonstrated that it has made use of the FINO mark in relation to its banking business for a number of years. It is therefore held that the Complainant has demonstrated rights in the FINO trademark.

The Respondent’s allegation that the Complainant has suppressed the “objected” status of its trademark application is an incorrect allegation made by the Respondent. The Panel finds that the Complainant has clearly mentioned in the list of its trademark applications provided in the Complaint, that the trademark application for the FINO PAYMENTS BANK (device) mark under class 36, bearing application number 3406716, shows the status as “objected”.

The Panel finds the disputed domain names registered by the Respondent are confusingly similar to the Complainant’s FINO mark and the addition of the words “payments bank” to the mark does not eliminate the confusing similarity, as it reflects the Complainant’s business. It is therefore found that the disputed domain names are confusingly similar to the Complainant’s mark in which it has rights.

Accordingly, it is found that that the Complainant has satisfied the first requirement under paragraph 4(a) of the Policy.

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. Where the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests, the burden of proving rights or legitimate interests in the disputed domain name shifts to the Respondent. If the Respondent fails to come forward with relevant evidence establishing rights in the disputed domain name, the Complainant is deemed to have satisfied the second element. The overall burden to show that the Respondent lacks rights or legitimate interests, however, rests with the Complainant. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1.

The Panel finds the Respondent has not been able to establish rights or legitimate interests in the disputed domain names. The Respondent has submitted that he owns the company Iqodis Software Private Limited., which is in the business of software development. The Respondent alleges that the company needs domain names for its in-house brands that are under development and that domain names are required for purposes of its client’s projects. The Respondent has further stated that the disputed domain names have not been registered for selling, renting or transferring, but for the Respondent’s upcoming FinTech projects for pre paid instruments, which will soon be “legalized” under its NBFC subsidiary.

The Respondent’s justification for registering the disputed domain names are therefore allegedly for the purpose of future projects. However, the Respondent has failed to provide any relevant convincing evidence to support these claims. The only evidence that the Respondent has offered in support of these submissions is the incorporation certificate of the Respondent’s company Iqodis Software Private Limited and the RBI’s Press Release seeking comments on “draft circular on Master Directions on Issuance and Operation of Pre‑paid Instruments (PPIs) in India”.

The Panel finds the Respondent has offered no credible evidence in support of his submissions. Such evidence for instance, could be letters from the Respondent’s clients, authorizing the Respondent or his company to register the disputed domain names for the alleged upcoming projects that the Respondent has mentioned. In the Panel’s view, it is highly unlikely that any such clients would register domain names in connection with a proposed project that is in such a nascent stage that the NBFC subsidiary company, referred to by the Respondent, has not yet been formed.

The Panel further finds from the Respondent’s submissions that the Respondent seems to be under the impression that he has trademark rights for the trademark FINOPAYMENTSBANK, as his attorney has filed a reply to the examination report of the relevant trademark office for his pending trademark application. Whereas, according to the Respondent, the Complainant does not have trademark rights in the mark FINO PAYMENTS BANK, although the Complainant’s trademark application is in a similar stage, of being a pending application, and a reply to the “objected” status of the application has been filed by the Complainant’s attorney in reply to the examination report of the relevant trademark office.

The Respondent has also drawn attention to the fact that his trademark application was filed on August 31, 2016, which is prior to the Complainant’s trademark application that was filed on November 8, 2016. Merely filing a trademark application earlier than the Complainant does not help the Respondent’s case, as trademark rights are obtained by virtue of use and by showing bona fide use of the mark in commerce with respect to a specified class of goods and services.

For argument’s sake, even if the Respondent had a registered trademark in the said mark, it is well established that the existence of a respondent’s trademark does not automatically confer rights or legitimate interests on the respondent. Where the overall circumstances demonstrate that the respondent may have obtained the trademark primarily to circumvent the application of UDRP or otherwise prevent the complainant from exercising its rights, a respondent would be found to lack rights and legitimate interests in the disputed domain name. See section 2.12.2 of WIPO Overview 3.0. The evidence filed by the Respondent in the present proceeding does not establish that the Respondent has any legitimate interests or rights in the disputed domain names, but as discussed in the next section on bad faith, circumstances show the disputed domain names were registered to prevent the Complainant from exercising its rights in corresponding domain names.

For the reasons discussed, it is found that the Complainant has made a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain names and has satisfied the second requirement under paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

The third element requires the Complainant to establish that each of the disputed domain names has been registered and is being used in bad faith by the Respondent.

The Panel refers to the Respondent’s statements on page 5 of the Response where the Respondent states:

“The Complainant is very well aware of that the Complainant’s Trade mark ‘FINO PAYMENTS BANK’ is OBJECTED by the Trade Mark Department of India in February 2017, which do not gives guaranty of registration.”

The Respondent has alleged that the Complainant has made misleading and “misguiding” statements. On the contrary, the Panel finds that the Respondent has made misleading statements in these proceedings and has stated in the Response that he has rights in the trademark, when he clearly knows that his trademark application is pending and has been “objected”. The statement quoted from the Response, shows that the Respondent is well aware that a pending trademark application does not indicate registered trademark rights. The fact that the Respondent has shown absolutely no use of the FINOPAYMENTSBANK trademark in commerce or shown any conceivable reason to have applied for or adopted the trademark, the Panel surmises under the circumstances, is because the trademark application was made by the Respondent to justify his registrations of the disputed domain names.

The Panel finds the timing of registration of the disputed domain names, i.e., after the Complainant had received the in-principle license from the RBI, to be further evidence of the Respondent’s bad faith. Evidence of purposefully targeting the Complainant’s mark by using the words “payments bank” with the FINO trademark, and more importantly, the fact that the Respondent has not submitted any convincing evidence to counter the allegation of the Respondent’s pattern of registering several domain names using others’ well-known trademarks, are also indicative of the Respondent’s bad faith.

Under paragraph 4(b)(ii) of the Policy, if a respondent registers domain name(s) to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, and it can be established that the respondent has engaged in a pattern of such conduct, it is considered as evidence of registration of the domain name(s) in bad faith. See section 3.1.2 of WIPO Overview 3.0, on the question of what constitutes a pattern of conduct under paragraph 4(b)(ii) of the Policy.

For the reasons discussed, the Panel finds that the Respondent has registered and uses the disputed domain names in bad faith, and the Complainant has satisfied the third requirement under paragraph 4(a) of the Policy.

D. Reverse Domain Name Hijacking

The Respondent has requested the Panel to make a finding of Reverse Domain Name Hijacking in this case. The Panel finds that the Respondent has not made a case that the present dispute was brought in bad faith by the Complainant or in abuse of the Policy. Therefore, a finding of Reverse Domain Name Hijacking is not applicable in this case.

7. Decision

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 <finopaymentsbank.biz>, <finopaymentsbank.com>, and <finopaymentsbank.net> be transferred to the Complainant.

Harini Narayanswamy
Sole Panelist
Date: June 27, 2017