WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bharti Enterprises (Holding) Private Limited v. Privacydotlink Customer 2879670 / Houghton Richards Brokerage
Case No. D2017-1193
1. The Parties
Complainant is Bharti Enterprises (Holding) Private Limited of New Delhi, India, represented by Inttl Advocare, India.
Respondent is Privacydotlink Customer 2879670 of Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland (“United Kingdom”) / Houghton Richards Brokerage of Sydney, New South Wales, Australia, internally represented.
2. The Domain Name and Registrar
The disputed domain name <bharti.realty> (the “Domain Name”) is registered with Uniregistrar Corp (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 20, 2017. On June 20, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 22, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amendment to the Complaint on June 30, 2017.
The Center verified that the Complaint together with the amended 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 Respondent of the Complaint, and the proceedings commenced on July 3, 2017. In accordance with the Rules, paragraph 5, the due date for Response was July 23, 2017. Respondent did not submit any formal response; however, Respondent submitted informal communications, including its request to settle the dispute with Complainant. As the Parties could not reach a settlement, Complainant submitted its request to continue the administrative proceeding on August 3, 2017. On the same date, the Center notified the Parties that it would proceed to the Panel appointment.
The Center appointed Dinant T. L. Oosterbaan as the sole panelist in this matter on August 9, 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
Complainant is a company incorporated in India, founded in 1976. Complainant is a large Indian multinational company with a diverse portfolio of business activities that include telecom, insurance, retail, realty and food. The operations of Complainant span over 23 countries around the world, primarily in Asia and Africa. Since its inception, the trademark BHARTI has featured as the corporate name and umbrella trade mark of the Bharti Group. Complainant operates the website “www.bharti.com”. One of its group companies is Bharti Realty Limited, which is the real estate arm of the Bharti Group and operates the website “www.bhartirealty.com”. Bharti Realty is responsible for developing commercial and residential real estate space across prominent cities in India.
Complainant has a large number of trademark registrations for BHARTI, including the Indian trademark BHARTI, with number 1593233, the application date of August 22, 2007, the registration/journal date of October 7, 2013 and used since April 1, 1986.
The Domain Name <bharti.realty> was registered on April 25, 2017. It is parked by the Registrar and Complainant submitted evidence showing that the Domain Name was offered for sale through the website “www.uniregistry.com”.
The trademark registrations of Complainant were issued prior to the registration of the Domain Name.
5. Parties’ Contentions
According to Complainant the Domain Name is identical and confusingly similar to Complainant’s BHARTI trademarks. Complainant submits it has been using and depicting its trademarks in a similar manner for more than three decades and therefore its customers and people in general connected with various services of Complainant are bound to get confused with the Domain Name.
Complainant submits that it is apparent from the content of Respondent’s website that Respondent has no rights or legitimate interests in the Domain Name. Respondent is intentionally attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website. Complainant submits that the website to which the Domain Name resolves advertises Respondent’s business of domain name buying and selling and does not provide any information about Complainant’s services. According to Complainant Respondent has no business connection, approval or consent from Complainant in any manner to use the BHARTI marks as part of the Domain Name or any authorization to solicit or conduct any business thereunder. Complainant asserts that it is amply clear that the present is a classic case of cybersquatting and an attempt at riding upon the goodwill and reputation of Complainant’s well-known BHARTI marks. Complainant concludes that Respondent has no rights or legitimate interest in the Domain Name.
Complainant asserts that Respondent’s conduct establishes that the Domain Name was registered by Respondent to sell the Domain Name as the Domain Name resolves to a website offering the Domain Name for sale. The act of registration by Respondent of the Domain Name containing the entire corporate name and trademark of Complainant in itself constitutes passing off and thus prima facie shows that it has been registered in bad faith. Complainant submits that Respondent can transfer or sell the Domain Name to some competing interest of Complainant who may further develop the website at the Domain Name and damage the goodwill and reputation of Complainant even more by inserting prejudicial material in relation to Complainant. This will lead to complete tarnishment of Complainant’s mark and brand and may dissuade Complainant’s current and potential customers from availing the services of Complainant. Complainant concludes that Respondent’s registration and use of the Domain Name is a clear case of cybersquatting, whose intention is to take advantage of Complainant’s reputation and its prominent presence on the Internet in order to confuse the public to the detriment of Complainant.
Respondent did not reply to Complainant’s contentions. As mentioned under section 3 Respondent sent an email to the Center on July 22, 2017 mentioning the following: “My client had advised me that they were not aware of the trade mark and have no interest in impending the claimant in the recovery of their name. The have tried to delete the domain name forms here registry but they have been advices it is locked and can not delete it because of the claim.”
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
Paragraph 4(a) of the Policy requires that the complainant proves each of the following three elements to obtain an order that the disputed domain name be transferred:
(i) the disputed 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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Notwithstanding the informal communication the Center received from Respondent on July 22, 2017 that Respondent would be willing to delete the Domain Name the Panel will proceed to analyze whether the three elements of paragraph 4(a) of the Policy are satisfied in this proceeding.
A. Identical or Confusingly Similar
Pursuant to paragraph 4(a)(i) of the Policy, the complainant must first of all establish rights in a trademark or service mark and secondly that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights.
Complainant has established that it is the owner of numerous trademark registrations for BHARTI. The Domain Name, <bharti.realty>, incorporates the entirety of the BHARTI trademark as its distinctive element. Many UDRP decisions have found that a disputed domain name is confusingly similar to a complainant’s trademark where the disputed domain name incorporates the complainant’s trademark in its entirety. The addition of the generic Top Level Domain (“gTLD”) “.realty” does not avoid a finding of confusing similarity.
The Panel finds that Complainant has proven that the Domain Name is identical or confusingly similar to Complainant’s BHARTI trademark.
B. Rights or Legitimate Interests
In the opinion of the Panel, Complainant has made a prima facie case that Respondent lacks rights or legitimate interests in the Domain Name. Complainant has not licensed or otherwise permitted Respondent to use any of its trademarks or to register the Domain Name incorporating its marks. Respondent is not making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademarks of Complainant.
Based on the undisputed submission of Complainant, the Domain Name resolves to a website of Respondent advertising a business of domain name buying and selling and it does not provide any information about Complainant’s services. Such use cannot in these circumstances be considered a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the Domain Name. In addition, there has never been any business relationship between Complainant and Respondent that would give rise to any right for Respondent to register the Domain Name incorporating Complainant’s trademark. Respondent is also not commonly known by the Domain Name nor has it acquired any trademark or service mark rights.
No formal Response to the Complaint was filed and Respondent has not rebutted Complainant’s prima facie case.
Under these circumstances, the Panel finds that Respondent has no rights or legitimate interests in the Domain Name.
C. Registered and Used in Bad Faith
The Panel finds that the Domain Name has been registered and is being used in bad faith. The BHARTI trademarks of Complainant have been existing long before the registration of the Domain Name. Respondent knew or should have known that the Domain Name included Complainant’s trademarks. The Panel notes that Respondent’s use of the website at the Domain Name which incorporates Complainant’s trademark in its entirety indicates that Respondent possibly registered the Domain Name with the intention to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the trademarks of Complainant as to the source, sponsorship, affiliation, or endorsement of its website or location or of a service on its website or location.
The Panel also notes the undisputed assertion of Complainant that it appears that bad faith registration and use is further indicated by the fact that Respondent is offering the Domain Name for sale, which indicates that Respondent likely registered the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <bharti.realty>, be transferred to Complainant.
Dinant T. L. Oosterbaan
Date: August 14, 2017