WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
PATANJALI AYURVED LTD. v. Vinod Abbey, A2Z Solutions
Case No. D2017-2112
1. The Parties
The Complainant is PATANJALI AYURVED LTD. of Haridwar, Uttrakhand, India, internally-represented.
The Respondent is Vinod Abbey, A2Z Solutions of New Delhi, Delhi, India.
2. The Domain Names and Registrar
The disputed domain names <patanjalimedicine.com>, <patanjalimedicines.com> and <swamiramdevpatanjali.com> are 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 October 29, 2017. On October 30, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On October 31, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 7, 2017 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on November 9, 2017.
The Center verified that the Complaint together with the amendment to 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 November 15, 2017. In accordance with the Rules, paragraph 5, the due date for Response was December 5, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 6, 2017.
The Center appointed Harini Narayanswamy as the sole panelist in this matter on December 15, 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 an Indian company manufacturing and marketing Ayurvedic medicinal products among other products. The Complainant sells its products in India and several countries under the PATANJALI trademark. Trademark registrations have been obtained by the Complainant for the said mark, in India and other jurisdictions, for example, Indian trademark registration no.1292898, registered on February 1, 2010.
The three disputed domain names as per the registration records are held by Vinod Abbey of A2Z Solutions, the Respondent in these proceedings. The disputed domain name <patanjalimedicine.com> was registered on February 22, 2014, the disputed domain name <patanjalimedicines.com> was registered on February 22, 2014, and the disputed domain name <swamiramdevpatanjali.com> was registered on March 4, 2014. According to the evidence provided by the Complainant, the disputed domain names resolved to websites selling the Complainant’s products and displaying the PATANJALI trademark.
5. Parties’ Contentions
The Complainant states it is in the business of procuring, processing, manufacturing and marketing of herbal products, including extracts and similar products, Ayurvedic medicinal products, food, beverage, personal and home care products. The Complainant states that it came to know that the three disputed domain names are registered by a single registrant and has filed the present Complaint. The Complainant contends that the use of the PATANJALI mark by the Respondent is unauthorized, and such use of its mark is likely to confuse the public to believe that the Respondent is acting on behalf of the Complainant.
The Complainant states it owns common law trademark rights and all intellectual property rights associated with PATANJALI. The Complainant further states that PATANJALI is a well-established brand in India and in other parts of the world and has provided evidence of its trademark registrations. The Complainant states that it is the registered owner of the PATANJALI logo in several countries including Australia, Switzerland, European Union, Republic of Korea, Norway, New Zealand, Oman, Philippines, Russian Federation, Singapore, United Arab Emirates and Mauritius. The Complainant submits that it has filed trademark applications in Bangladesh, Nepal, Sri Lanka, Bhutan, Malaysia, Kuwait, Indonesia, United Arab Emirates, Canada, United States of America, Jamaica, Trinidad and Tobago, Dominican Republic and Peru. The Complainant alleges that it has used the PATANJALI mark since 2003 and argues that the disputed domain names are confusingly similar to the mark in which it has prior rights. The Complainant further states that the Respondent has falsely mentioned an association with the Complainant, when no such connection exists between the parties.
The Complainant argues that the Respondent has no rights or legitimate interests in the disputed domain names and has no permission to use its mark in the disputed domain names. The Complainant submits that the Respondent, who is a resident of India, is not commonly known by the disputed domain names. The Complainant argues that the Respondent makes no bona fide offering of goods or services, or use of the disputed domain names for legitimate fair use purposes. The Complainant asserts that the Respondent uses the disputed domain names to tarnish its trademark and to make malicious statements about its products.
The Complainant argues that the Respondent has primarily registered the disputed domain names in bad faith for the purpose of disrupting a competitor’s business. The disputed domain names are used by the Respondent to attract Internet users for personal gains by creating a likelihood of confusion with its mark, asserts the Complainant. The use of the PATANJALI logo on the Respondent’s websites, is likely to cause confusion for the public, as to the source and the information. The Complainant therefore requests for the transfer of the disputed domain names.
The Respondent did not reply to the Complainant’s contentions or file any response in these proceedings.
6. Discussion and Findings
To obtain the remedy of transfer of the disputed domain names, the Complainant has to establish three requirements set out under paragraph 4 (a) of the Policy. These 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 requirement under paragraph 4(a) of the Policy mandates that the Complainant has to establish the disputed domain names are confusingly similar to a trademark or a service mark in which it has rights.
The Complainant has provided evidence of its registered trademarks rights for the PATANJALI mark. Evidence of trademark rights, is sufficient to demonstrate rights in a mark under the Policy. See Horten Advokatpartnerselskab v. Domain ID Shield Service Co., Limited / Krutikov Valeriy Nikolaevich, WIPO Case No. D2016-0205, (<horten-canda.com>) (A complainant’s ownership of a registered trademark meets the threshold requirement of having trademark rights and is the consensus view of UDRP panels). See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), Section 1.2.1 regarding this point. On the basis of the evidence submitted, the Panel accordingly finds that the Complainant has established rights in the PATANJALI trademark.
It is recognized in numerous prior UDRP decisions that a domain name which wholly incorporates a trademark, is a sufficient basis to find confusing similarity with the trademark for purposes of the Policy. The addition of a word or words to a known trademark does not serve to distinguish the disputed domain name from the trademark. See for instance, Reebok International Limited v. Domain Privacy Service, Hong Kong Names LLC, WIPO Case No. D2008-0358 (<reebokhockey.com>) (Finding that, it has been consistently decided in domain name disputes, that the addition of generic or descriptive terms to a distinctive trademark is to be considered confusingly similar to the registered trademark).
The use of descriptive words that are indicative of the products or services offered by the Complainant, or the use of terms that are associated with the business of the Complainant, has been found to reinforce the confusing similarity of the disputed domain name with the mark. See Alstom v. Alan Farzami, Royal Lepage Realty Inc., WIPO Case No. D2017-2002 (<alstomconstruction.com>) (Where it was found the addition of the word “construction”, which is descriptive of the services offered by the complainant, did not operate to distinguish the disputed domain name <alstomconstruction.com> from the ALSTOM mark in any significant way).
In numerous cases, facts show that registrants use a trademark along with words connected to the mark in a bid to confuse and draw attention of the public to the respondent’s online location. See Volvo Trademark Holding AB v. Unasi, Inc., WIPO Case No. D2005-0556 (where the domain name <volvoautomobiles.com> among others, was found to be confusingly similar to the VOLVO trademark. Also see eBay Inc. v. SGR Enterprises and Joyce Ayers, WIPO Case No. D2001-0259 (<ebaylive.com> and <ebaystores.com>) (Where it was found that the respondents were trying to capitalize on the eBay name, due to the resulting confusion created by the respondents adopting domain names that incorporated the identical EBAY mark and by simply adding generic terms).
In the present case, the Panel finds the PATANJALI mark has been used in its entirety in the three disputed domain names, along with the suffix “medicine”, “medicines” and the prefix “swamiramdev”. The Panel finds the terms “medicine,” or “medicines”, have specific reference to products that are offered by the Complainant. The name Swami Ramdev, is connected with the Complainant’s mark, as Swami Ramdev, is a yoga guru, who founded Patanjali. In the Panel’s view, the use of the additional suffixes or prefix along with the trademark does not lessen the confusing similarity of the disputed domain names with the mark as the trademark is the distinctive part of the disputed domain names. Accordingly, for the reasons discussed, the Panel finds the disputed domain names are confusingly similar to the Complainant’s PATANJALI mark.
The Complainant has successfully established 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 names.
The Complainant has contended that the Respondent has no rights or legitimate interests in the disputed domain names and that the Respondent is not commonly known by the disputed domain names. The Complainant has also submitted that the disputed domain names are being used by the Respondent for selling the Complainant’s Ayurvedic medicinal products online. The question whether a respondent has rights to use the mark as reseller, even if he has not been expressly authorized by the complainant to use the mark has been discussed in several previous cases. The pivotal case on this topic is the decision rendered in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (<okidataparts.com>)(hereinafter “Okidata”), where it was held that resellers, distributors or service providers using a domain name containing the complainant’s trademark to undertake sales or repairs related to the complainant’s goods or services may be making bona fide offering of goods or services and thus have legitimate rights in the domain name incorporating the trademark in question. The Okidata case has also spelt out certain cumulative requirements, these are:
i) The respondent must actually be offering the goods and services at issue;
ii) The respondent must use the site to sell only the trademarked goods;
iii) The site must accurately and prominently disclose the registrant’s relationship with the trademark holder;
iv) The respondent must not try to “corner the market” in domain names that reflect the trademark (see WIPO Overview 3.0, section 2.8.1).
Based on the material on record in the present case, it is evident that the websites linked to the disputed domain names seem to be offering only the Complainant’s products for sale. The websites however do not mention that the Respondent is not associated with the Complainant (as it only mentions that the Respondent is a distributor) and no such disclaimer has been placed on the website. It is therefore likely that Internet users and consumers may mistake the Respondent’s site as being associated with the Complainant, as the webpages prominently displays the PATANJALI mark and logo. Therefore, in the present case, the Respondent’s reselling activities may not be considered legitimate use of the mark as discussed under the Okidata case.
The consensus view of UDRP panels, with regard to resellers rights, based on the Okidata principles has been broadly discussed in General Motors LLC v. Flashcraft, Inc. DBA Cad Company, WIPO Case No. D2011-2117 (<cadillacperformance.com>). It is relevant to mentioned here, that the panel in General Motors LLC case [supra] had discussed the reasons why the Okidata principles easily lend itself to the automotive parts industry and not so in the case of other more regulated industries. The panel expressly cautioned against the use of Okidata principles to all cases of unauthorized resellers, particularly in industry such as pharmaceuticals or medicinal products.
Similar views have been expressed by other panels who have held that, a reseller’s use of a trademark does not necessarily extend to a right to incorporate the trademark into a domain name without authorization. The Panel finds that this line of thinking has been followed in several previous cases notably with respect to the area of pharmaceuticals, medicines and such products. Some of the relevant cases are: AVENTIS Pharma S.A and Merrell Pharmaceuticals Inc. v. Rx USA, WIPO Case No. D2002-0290, where it was held that while the selling of goods which originate from the complainant might entitle the respondent to use the mark associated with the goods in connection with their sale, this does not give it right to register and use the mark as a domain name without the consent of the holders of the trademark. In Hoffmann-La Roche Inc. v.#1 Viagra Propecia Xenical & More Online Pharmacy WIPO Case No. D2003-0793, it was held that a reseller does not havethe right to incorporate the trademark to the resold goods into the domain name of the reseller. Similar findings were made in F. Hoffmann-La Roche AG v. Canadian Pharmacy Network Online, WIPO Case No. D2005-1203 (<canadian-pharmacy-xeloda.com>), and Himalaya Global Holdings Limited v. Niyaz Khan, WIPO Case No. D2010-1583 (<liv52.com>).
In Johnson & Johnson v. Ebubekir Ozdogan, WIPO Case No. D2015-1031 (<listerineturkiye.com>), it was discussed that it is strongly arguable that there are no rights or legitimate interests (and there is bad faith) even if the Oki Data requirements might be satisfied. The rationale for this approach is that the intentional adoption of a domain name that is essentially identical or confusingly similar to a mark and does not distinguish itself from another’s trademark will involve an impermissible impersonation of the trademark owner (citing the case 1066 Housing Association Ltd. v. Mr. D. Morgan, WIPO Case No. D2007-1461).
In F. Hoffmann-La Roche AG v. WhoisGuard Protected, WhoisGuard, Inc. / Vladimir Talko, WIPO Case No. D2017-0678 (<valium.online>), referring to the Okidata factors, it was discussed that the complainant has described that the website is being used to resell the complainant’s products, however on the question whether such an offering could be termed a “bona fide offering of goods or services” under the Policy, it was found that in the absence of authorization for use the complainant’s mark in the disputed domain name, the respondent lacked rights of legitimate interests in the disputed domain name.
The Panel concurs with the views expressed by the panels in the previous decisions discussed above. The Respondent is clearly not a licensee or an authorized user of the Complainant’s trademarks. There can be no honest legitimate use of a known trademark by the Respondent, since such use would inevitably mislead the public to believe there is some affiliation with the Complainant, due to expectations that the public have from a known mark. The Respondent’s use of the trademark in the disputed domain names for the reasons discussed, present no valid grounds to find the Respondent has any rights or legitimate interests in the disputed domain names.
On the basis of these facts and circumstances, the Complainant is found to have successfully put forward a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Panel finds the Complainant has established the second element under paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
The third element under paragraph 4(a) of the Policy requires the Complainant to establish the disputed
domain name has been registered in bad faith and is being used in bad faith by the Respondent.
Based on the given facts and circumstances, the Panel is of the view that the Respondent ought to have been aware of the Complainant’s trademark. First, because the Complainant has prior rights in the mark and has adopted and used the mark extensively for over a decade before the Respondent registered the disputed domain names. Second, the Respondent is offering the Complainant’s products from the webpages linked to the disputed domain names. Third, the website to which the disputed domain names resolve, prominently display the Complainant’s PATANJALI mark and logo, which is a distinctive mark associated with the Complainant. Based on these facts and the evidence on record, the Panel finds that the disputed domain names have been registered in bad faith by the Respondent.
The Panel finds the disputed domain names are presently being used by the Respondent to sell the Complainant’s products, through various linked sites. The disputed domain name <swamiramdevpatanjali.com> appears to be connected with other domain names such as <patanjalimeds.com> that offer PATANJALI products for sale. The website clearly mentions that a customer visiting the site has the option of choosing a specific jurisdiction and accordingly prices are displayed in the local currency applicable to that jurisdiction. The relevant portion of the post on the website is:
“… medicinal products from Provedic in the USA, UK, Canada, Australia, New Zealand, Ireland, Singapore and Switzerland. Other countries can always place orders on our Global Store or our European Store.”
The Respondent is therefore attracting Internet users and potential customers looking for the Complainant’s products online, and diverting Internet traffic to the Respondent’s online location, where the Complainant’s products are being offered for sale. Such use of the disputed domain names squarely falls under the scope of paragraph 4(b)(iv) of the Policy, which is to attract for commercial gain Internet users to the Respondent’s website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement website, which is bad faith use recognized under the Policy.
The Panel finds, for the reasons discussed, that the Complainant has successfully established the third element under paragraph 4(a) of the Policy.
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, <patanjalimedicine.com>, <patanjalimedicines.com> and <swamiramdevpatanjali.com>, be transferred to the Complainant.
Date: December 28, 2017