WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Reliance Industries Ltd. v. P, PK
Case No. D2017-1323
1. The Parties
The Complainant is Reliance Industries Ltd. of Mumbai, India, represented by Anand & Anand, India.
The Respondent is P, PK of Mumbai, India.
2. The Domain Name and Registrar
The disputed domain name <jiodhandhanadhan.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 10, 2017. On July 10, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 12, 2017, 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 August 7, 2017. In accordance with the Rules, paragraph 5, the due date for Response was August 27, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 28, 2017.
The Center appointed Amarjit Singh as the sole panelist in this matter on August 31, 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 one of India’s largest private sector enterprises, with businesses in the oil and gas exploration and production, petroleum refining and marketing, petrochemicals, retail and telecommunications. The Complainant Group’s annual revenues are in excess of USD 66 billion. The flagship company, “Reliance Industries Limited”, is a “Fortune 500” company and is one of the largest private sector companies in India with a market capitalization of INR 2.82 trillion as of May 8, 2014.
“Reliance Jio Infocom Limited” is the telecom arm of the Complainant providing 4G services to its customers across India. The company was incorporated on February 15, 2007 and is registered with the Registrar of Companies, Mumbai. The Complainant through its group company “Reliance Jio Infocomm Limited” has tied up with various service providers and OEM Manufacturers in India to launch its 4G services in a big way. “Reliance Jio Infocomm Limited” is the first telecom operator in India to have Pan Unified License would allow “Reliance Jio Infocomm Limited” to offer 4G telecom service including voice telephony under a single license. There is a great buzz about the launch of the said services of the Complainant and the current affairs with respect to “Reliance Jio Infocomm” is quoted in newspapers, magazines and business journals almost on daily basis.
The Complainant is the registered proprietor of the trademark JIO in India, registered in class 9 under registration number 2247460 as of December 9, 2011 and in class 38 under application number 2247360 as of December 9, 2011. The Complainant is also the proprietor of service mark JIO DHAN DHANA DHAN and has secured registration thereof under registration number 3320801 in class 38 as of July 28, 2016.
The Complainant has launched a tariff plan for its customers under the offer name “Dhan Dhana Dhan”. “Dhan Dhana Dhan” is a play of words on the Hindi phrase “De Dhana Dhan” and is used to signify the monetary benefits being given to customers under the said offer (“Dhan” means “money” in Hindi). It is pertinent to note that the “Dhan Dhana Dhan” campaign was internally conceptualized by the Complainant as early as in May 2016. The idea was shared with a few advertising agencies to devise an advertising campaign around the offer.
Commercially the “Jio” services were launched on September 5, 2016. Within the first month of commercial operations, “Jio” announced that it had acquired 16 million subscribers. “Jio” crossed 50 million subscriber mark in 3 days since its launch. Jio crossed 100 million subscribers within 110 days of its launch and is the second largest telecom operator in India in terms of the users.
Furthermore, in preparation for the launch of its telecom services through “Reliance Jio Infocomm Limited”, the Complainant has registered approximately 4000 domain names incorporating the mark JIO therein.
The Respondent registered the disputed domain name <jiodhandhanadhan.com> on June 1, 2016. Currently, there is no active website corresponding to the address of the disputed domain name. According to the evidence provided by the Complainant, the disputed domain name resolved to a parking page with pay-per-click links.
5. Parties’ Contentions
The Complainant in this administrative proceedings is “Reliance Industries Limited” which is a company duly incorporated under the Indian Companies Act, 2013 having its registered office in Mumbai, India. The Complainant does business virtually in every state within India and in several foreign countries as well.
The Complainant was originally incorporated as “Mynylon Limited” on May 8, 1973 in the State of Karnataka under the provisions of the Act. In 1966, much prior to incorporation of the Complainant Company, the promoters of the Complainant Company had incorporated an entity “Reliance Textiles Private Limited”, whose name was changed to “Reliance Textiles Limited” in 1973. The said company “Reliance Textiles Limited” merged with the Complainant. As a result of the said merger, the Complainant acquired rights and goodwill associated with the mark RELIANCE since 1966. The name of the Complainant was subsequently changed to “Reliance Textile Industries Limited” on March 11, 1977. The enterprises promoted by the Complainant have laid the foundation in the industrial core sectors, textiles, chemicals, mineral exploration and refining, finance and telecommunication in India.
The Complainant enjoys a global leadership in its businesses being the largest polyester yarn and fibre producer in the world and ranks amongst the world’s top 10 producers for almost all of it major products. The Complainant has the largest refining capacity at any single location, and is fifth largest producers of Paraxylene (PX) and Polypropylene (PP) and eighth largest producer of Purified Terephthalic Acid (PTA) and Mono Ethylene Glycol (MEG). The Complainant is also the largest producer of Polyester Fibre and Yarn.
The Complainant has undertaken expansion, diversification and restructuring of its businesses from time to time by various routes including promoting new companies, supplying equipment and manpower and acquiring rights and assuming liabilities in new ventures. The telecom services are one of such expansion the Complainant is majorly investing into.
National and international publications cover the news about “Reliance Industries” regularly. “Reliance Jio Infocomm” in particular has been cited on several web pages having wide viewership. Reliance Jio Infocomm had recently won the auction for 4G spectrum in several sectors in India and is expected to launch its 4G data services in India soon. This has boosted the speculation and as a result investor and consumers are actively searching and updating themselves with information about “Reliance Jio Infocomm”.
The Complainant is the proprietor of the trademarks/service marks JIO and JIO DHAN DHANA DHAN by virtue of priority in adoption, continuous and extensive use and advertising, and the reputation consequently accruing thereto in the course of trade.
In addition to launching telecom services under the brand “Jio”, the Complainant has launched a slew of mobile applications for both Android and iOS mobile operating systems, providing a variety of different services. Some of these include “Jio Chat”, “Jio Money”, “Jio Play”, “Jio Mags” etc. All these applications are being advertised by the Complainant on its website “www.jio.com”.
According to the Complainant:
- The Respondent’s domain name is identical or at least confusingly similar to the Complainant’s JIO and JIO DHAN DHANA DHAN trademarks and service marks;
- At the time of the registration of the disputed domain name the Respondent must have been aware of the trademarks/service marks JIO and JIO DHAN DHANA DHAN being well known in India;
- The Respondent has no rights or legitimate interests in the trademark or service mark JIO or JIO DHAN DHANA DHAN;
- JIO and JIO DHAN DHANA DHAN are well-known trademarks/service marks, having been widely publicized in national and international publications. The disputed domain name has, therefore, been registered and used in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
To have the disputed domain name transferred, the Complainant must prove each of the following (Policy, paragraph 4(a)):
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
Where the Respondent is in default, the panel is to proceed to a decision on the Complaint (Rules, paragraph 14(a)). The panel must still examine whether the Complaint meets the conditions set forth in paragraph 4(a) of the Policy. It may draw such inferences as it deems appropriate from the Respondent’s failure to file its Response.
A. Identical or Confusingly Similar
The Complainant has shown that it holds valid rights in the trademarks JIO and JIO DHAN DHANA DHAN by virtue of priority in adoption, continuous and extensive use and advertising, and the reputation consequently accruing thereto in the course of trade.
The Complainant is the registered proprietor of the trademark JIO in India, registered in class 9 under registration number 2247460 as of December 9, 2011 and in class 38 under registration number 2247360 as of December 9, 2011.
The Complainant is also the proprietor of trademark JIO DHAN DHANA DHAN in India, registered in class 38 under registration number 3320801 as of July 28, 2016.
The complainant has further filed an application for registration of trademark JIO (Device) in class 9 under registration number 3016543 on July 27, 2015 claiming use of the mark from November 30, 2014 and the said trademark has been registered and renewed by the Complainant.
The disputed domain name is clearly identical to the well-known registered trademark and service mark JIO in which the Complainant has statutory rights as well as rights in common law, by virtue of being a long and continuous user and being a registered proprietor thereof. Further, the disputed domain name <jiodhandhanadhan.com> includes the marks JIO and JIO DHAN DHANA DHAN and a combination thereof. This is identical in part and confusingly similar to the well-known trademarks and service marks JIO and JIO DHAN DHANA DHAN in which the Complainant has statutory rights as well as rights in common law.
The Panel, thus, finds that the disputed domain name is identical or confusingly similar to the trademarks and service marks held by the Complainant.
B. Rights or Legitimate Interests
As the Respondent did not file a Response to the Complaint and has no obvious connections with the disputed domain name, it is sufficient for the Complainant to prima facie show that the Respondent has no rights or legitimate interests in the disputed domain name (Land Sachsen-Anhalt v. Skander Bouhaouala, WIPO Case No. D2002-0273; Volvo Trademark Holding AB v. Nicklas Uvelov, WIPO Case No. D2002-0521).
The Complainant’s argumentation implies that the Respondent does not have any rights or legitimate interests in the Complainant’s trademarks and service marks. There is nothing in the file indicating that the Respondent was granted such a license. Therefore, it can be assumed that no license had been granted to the Respondent with respect to the trademarks/service marks JIO and JIO DHAN DHANA DHAN. In addition, the term “Jio Dhan Dhana Dhan” is not the name of the Respondent or his business. The Respondent is not commonly known by the disputed domain name. The disputed domain name does not resolve to an active website and according to the evidence provided by the Complainant resolved to a parking page with pay-per-click links. The Respondent did not show any preparations to use or the actual use of the disputed domain name in connection with a bona fide offering of goods or services. Moreover, the Respondent did not make a legitimate noncommercial or fair use of the disputed domain name. The Respondent does not claim to have any rights or legitimate interests within the meaning of paragraph 4(c) of the Policy, and has not rebutted the Complainant’s prima facie case.
Therefore, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
JIO and JIO DHAN DHANA DHAN can be considered as well-known trademarks and service marks keeping in view the national and international publicity made in respect thereof and the instant joining of more than one million subscribers within few days of its launch.
The disputed domain name <jiodhandhanadhan.com> registered by the Respondent incorporates as a whole the Complainant’s well-known and famous trademarks JIO and JIO DHAN DHANA DHAN. In the short span of time since the announcement of the Complainant’s groups’ digital payments and e-wallet service under the trademark JIO DHAN DHANA DHAN has acquired tremendous goodwill and reputation which has accrued to the Complainant.
The Respondent, thus, at the time of registration must have known that it registered a domain name consisting to the main part of the well-known trademarks/service marks and that its use of domain name might be considered as in bad faith. There can be no doubt that the eventual use of the disputed domain name by the Respondent will lead to confusion and would be understood as a reference or an indication of association with the Complainant.
The proposition that the registration of a domain name incorporating a well-known trademark of a complainant is bound to be in bad faith has been upheld by numerous UDRP decisions. Some notable cases which have upheld this proposition are Marie Claire Album v. Marie-Claire Apparel, Inc., WIPO Case No. D2003-0767; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; Adidas-Salomon AG v. Domain Locations, WIPO Case No. D2003-0489wherein it was held that registration of a well-known trademark of which the respondent must reasonably have been aware of, is in itself sufficient to amount to bad faith.
The Panel notes that the use of the disputed domain name as a parking page with pay-per-click links in the present case does not amount to a bona fide use. In addition, the current passive holding of the disputed domain name does not prevent a finding of bad faith in the present circumstances.
The Panel, thus, finds that the Respondent has registered and used the disputed domain name in bad faith.
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 name <jiodhandhanadhan.com> be transferred to the Complainant.
Date: September 15, 2017