WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bennett, Coleman & Co. Ltd. v. Ravinder Malik, The Weekly Times of India Inc.
Case No. D2017-1415
1. The Parties
The Complainant is Bennett, Coleman & Co. Ltd. of Mumbai, Maharashtra, India, represented by Inttl Advocare, India.
The Respondent is Ravinder Malik, The Weekly Times of India Inc. of Brampton, Ontario, Canada.
2. The Domain Name and Registrar
The disputed domain name <weeklytimesofindia.com> (the "Domain Name") is registered with Launchpad.com Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 21, 2017. On July 24, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 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 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 10, 2017. In accordance with the Rules, paragraph 5, the due date for Response was August 30, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on August 31, 2017.
The Center appointed Alan L. Limbury as the sole panelist in this matter on September 5, 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, a member of a group of media and entertainment companies, is the registered proprietor of numerous trademarks incorporating the words THE TIMES OF INDIA, including Indian device trademark No. 552518, registered on June 11, 1991 in Class 16 for, inter alia, news papers, supplements, periodicals and magazines. The words are the dominant and distinctive feature of the mark.
Since its inception in 1861, the group's newspaper THE TIMES OF INDIA has become India's most widely circulated English daily, with a daily circulation of more than a million copies.
The Domain Name was registered by the Respondent, a resident of Canada, on July 11, 2003. It resolves to a website entitled "The Weekly Times of India" presenting online news, articles and advertisements to the South-Asian community living in the Greater Toronto area, including content relating to events in India. The words "The Weekly" appear above and are much smaller than the words "Times of India".
5. Parties' Contentions
Apart from the word "weekly", the Domain Name is identical and confusingly similar to the well-known trade mark TIMES OF INDIA, in which the Complainant has both common law and registered trademark rights. The Respondent has no rights or legitimate interests in respect of the Domain Name, which was registered and is being used in bad faith.
As to legitimacy, the Complainant says the Respondent has no business connection, approval or consent from the Complainant to use the distinctive, unique and invented mark the Complainant has used since 1838. The Domain Name is being used by the Respondent for his competing business of news reporting. The Respondent's website invites advertisements in order to make commercial gain. It is apparent from the content of the website that the Respondent is intentionally attempting to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the website. The Respondent's registration of the Domain Name is contrary to the conditions outlined under paragraph 4(c) of the Policy.
As to bad faith, the Complainant says the Respondent's conduct clearly establishes that the Domain Name was registered by the Respondent to traffic the Domain Name, in which the Complainant alone has proprietary and legitimate legal rights.
The Respondent has registered the Domain Name primarily for the purpose of interfering with and disrupting the business of the Complainant. The contents of the webpage suggest that it has been created to prejudicially affect the business activities of the Complainant and thus it can be said beyond doubt that the Domain Name has been registered in bad faith.
The illegality in the registration of the Domain Name arises from the fact that domain names today are a part and parcel of corporate identity. A domain name acts as the address of the company on the Internet and can be termed as a web address or a web mark just like a trade mark or service mark. It is also the Internet address of a company. The mere act of registration by the Respondent of the Domain Name containing the entire trade mark of the Complainant in itself constitutes passing off and thus, prima facie shows that it has been registered in bad faith.
The Respondent has obtained registration for the Domain Name in bad faith for either or all of the following motives:
(a) the Domain Name could be used by the Respondent to extract huge sums of money from the Complainant who has legitimate interests in the Domain Name. Obviously, the intention of the Respondent is to blackmail the Complainant and compel it to buy the Domain Name for a huge sum of money;
(b) the Respondent can transfer or sell the Domain Name to some competitor of the Complainant who may further develop the website and damage the goodwill and reputation of the Complainant even more by inserting prejudicial material in relation to the Complainant. This will lead to complete tarnishment of the Complainant's mark and brand and may dissuade the Complainant's current and potential customers from availing the Complainant's services.
The Respondent's registration and use of the Domain Name is a clear case of cyber-squatting, whose intention is to take advantage of the Complainant's immense reputation and its prominent presence on the Internet in order to confuse the public to the detriment of the Complainant.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, to obtain transfer of the Domain Name, the Complainant must prove the following three elements: (i) the Respondent's Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) the Respondent has no rights or legitimate interests in the Domain Name; and (iii) the Respondent has registered the Domain Name and is using it in bad faith.
Under paragraph 15(a) of the Rules, "A Panel shall 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".
A respondent is not obliged to participate in a proceeding under the Policy, but if it fails to do so, asserted facts may be taken as true and reasonable inferences may be drawn from the information provided by the complainant. See Reuters Limited v. Global Net 2000, Inc, WIPO Case No. D2000-0441.
A. Identical or Confusingly Similar
The Domain Name differs from the dominant and distinctive words of the Complainant's THE TIMES OF INDIA design trademark only by the presence of the word "weekly" instead of "the" and the addition of the inconsequential generic Top-Level Domain ".com", which may be disregarded. The word "weekly" does nothing to distinguish the Domain Name from that trademark and indeed conveys the idea that it will lead to a website at which the Complainant presents weekly news. Accordingly the Panel finds that the Domain Name is confusingly similar to the Complainant's mark.
The Complainant has established this element.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by the Respondent, shall demonstrate rights to or legitimate interests in the Domain Name for purposes of paragraph 4(a)(ii) of the Policy, i.e.
(i) before any notice to the Respondent of the dispute, the use by the Respondent 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 (as an individual, business or other organization) has been commonly known by the Domain Name, even if the Respondent has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
The Panel finds that the Complainant's THE TIMES OF INDIA mark is distinctive and widely known around the world, not merely in India. The Complainant's assertions are sufficient to constitute a prima facie showing of absence of rights or legitimate interests in respect of the Domain Name on the part of the Respondent. The evidentiary burden therefore shifts to the Respondent to show that he does have rights or legitimate interests in the Domain Name. See Cassava Enterprises Limited, Cassava Enterprises (Gibraltar) Limited v. Victor Chandler International Limited, WIPO Case No. D2004-0753. The Respondent has made no attempt to do so. In particular, the Panel notes that, despite the Respondent's organization name being "The Weekly Times of India Inc.", the Respondent has not sought to invoke the Policy, sub-paragraph 4(c)(ii).
In the circumstances of this case, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
The Complainant has established this element.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which, though not exclusive, shall be evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, i.e.
"(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website 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 the respondent's website or location or of a product or service on its website or location."
In view of the fact that the Domain Name was registered as long ago as 2003, the Panel is not persuaded that the Complainant has shown, on the balance of probabilities, that the Respondent's purpose in registering the Domain Name was within any of sub-paragraphs 4(b)(i),(ii) or (iii).
However, the Panel finds that the Respondent's current use of the Domain Name falls within the circumstances described in sub-paragraph 4(b)(iv) because the Respondent has not sought to establish that it had no knowledge of the Complainant's trademark when he registered the Domain Name and because the Respondent's website is directed at providing similar services to those of the Complainant to the same audience as the Complainant, namely people interested in news about India. That audience would be well aware of the Complainant's trademark and would be likely either to believe or to wonder whether the website to which the Domain Name resolves is operated by the Complainant. Nothing on the website would dispel any such conclusion. The presence of advertisements on the Respondent's website demonstrates that the Domain Name is being used for commercial gain.
Accordingly the Panel finds that, by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website. Hence the Panel finds, pursuant to the Policy, paragraphs 4(b)(iv) and 4(a)(iii), that the Domain Name was registered and is being used by the Respondent in bad faith.
The Complainant has established this element.
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 <weeklytimesofindia.com> be transferred to the Complainant.
Alan L. Limbury
Date: September 10, 2017