WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Voltas Limited v. Vietnam Domain Privacy Services / Pham Dinh Nhut
Case No. D2018-0012
1. The Parties
The Complainant is Voltas Limited of Mumbai, India, represented by Anand & Anand, India.
The Respondent is Vietnam Domain Privacy Services / Pham Dinh Nhut of Ho Chi Minh City, Viet Nam.
2. The Domain Name and Registrar
The disputed domain name <voltasindia.com> (the "Domain Name") is registered with April Sea Information Technology Corporation (the "Registrar").
3. Procedural History
The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 5, 2018. On January 5, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On January 17, 2018, 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. The Center sent an email communication to the Complainant on January 17, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. In response to the latter and a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on January 19, 2018.
Pursuant to the Complaint submitted in English and the registrar verification dated January 17, 2018 stating that Vietnamese is the language of the registration agreement of the Domain Name, on January 17, 2018, the Center sent a request in English and Vietnamese that the Parties submit their comments on the language of the proceeding. On January 19, 2018, the Complainant submitted its request for English to be the language of the proceeding. The Respondent did not submit any request regarding the language of the proceeding.
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 the Respondent of the Complaint, and the proceedings commenced on January 23, 2018. In accordance with the Rules, paragraph 5, the due date for Response was February 12, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on February 14, 2018.
The Center appointed Nicholas Smith as the sole panelist in this matter on February 20, 2018. 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, founded in 1954 in India, is a manufacturer of air conditioners and air conditioning solutions. Its business includes providing engineering solutions in the fields of heating, ventilation, refrigeration and mining and construction. The Complainant advertises its goods and services at its website located at "www.voltas.com". The Complainant has traded under the word mark VOLTAS (the "VOLTAS Mark") since 1954 and during that time has won significant accolades throughout India and has received significant media coverage.
The Complainant holds registered trademarks in India for the VOLTAS Mark with the earliest registration dating to May 1955 (registration number 169302). The VOLTAS Mark has been registered since 1955 for a diverse range of goods in India in classes 1, 2, 3, 5, 6, 7 and 9.
The Domain Name was registered by the Respondent on April 1, 2004. It redirects to a website (the "Respondent's Website") that appears to be a parking webpage but contains links purporting to relate to electrical products ("Volta battery") and the Complainant itself ("Voltas Ltd").
5. Parties' Contentions
The Complainant makes the following contentions:
(i) that the Domain Name is identical or confusingly similar to the Complainant's VOLTAS Mark;
(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
The Complainant is the owner of the VOLTAS Mark, having registered the VOLTAS Mark in various jurisdictions including India, Singapore, Hong Kong, China, United Arabic Emirates and South Africa. The Domain Name is confusingly similar to the VOLTAS Mark, containing the VOLTAS Mark in its entirety and the geographical term "India".
There are no rights or legitimate interests held by the Respondent in respect of the Domain Name. The Respondent is not commonly known as the Domain Name nor has the Complainant provided a licence or authorization to register the Domain Name or any domain name incorporating the VOLTAS Mark. There is no evidence, since the Respondent registered the Domain Name, of the Respondent's use 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 for a legitimate non-commercial purpose. The Domain Name resolves to a page with various links to businesses that will cause confusion for the Complainant's customers and force the Complainant to purchase the Domain Name from the Respondent; which does not provide the Respondent with rights or legitimate interests.
The Domain Name was registered and is being used in bad faith. The Respondent had knowledge of the VOLTAS Mark by virtue of the Complainant's widespread use and trade mark registrations. Such knowledge is an indication of bad faith registration. The Respondent is using the Domain Name for a pay-per-click site which amounts to bad faith use. Furthermore the Respondent is a serial cybersquatter, having been the participant in 16 separate proceedings under the Policy, in which each of the panels made the finding that the Respondent acted in bad faith. The Respondent has been engaged in a pattern of conduct whereby it registers well-known trade marks as domain names to prevent the legitimate owner of those trade marks from registering those domain names.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
6.1. Language of the Proceeding
In the present case, the language of the registration agreement for the Domain Name is Vietnamese.
Pursuant to paragraph 11 of the Rules, unless otherwise agreed by the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding. The Complainant, upon receiving a notification that the language of the registration agreement for the Domain Name was Vietnamese from the Center, submitted a request for this dispute to proceed in English. The Center made a preliminary determination to accept the Complaint filed in English, subject to a determination by the Panel pursuant to paragraph 11 of Rules.
"Against this background, panels have found that certain scenarios may warrant proceeding in a language other than that of the registration agreement. Such scenarios include (i) evidence showing that the respondent can understand the language of the complaint, (ii) the language/script of the domain name particularly where the same as that of the complainant's mark, (iii) any content on the webpage under the disputed domain name, (iv) prior cases involving the respondent in a particular language, (v) prior correspondence between the parties, (vi) potential unfairness or unwarranted delay in ordering the complainant to translate the complaint, (vii) evidence of other respondent-controlled domain names registered, used, or corresponding to a particular language, (viii) in cases involving multiple domain names, the use of a particular language agreement for some (but not all) of the disputed domain names, (ix) currencies accepted on the webpage under the disputed domain name, or (x) other indicia tending to show that it would not be unfair to proceed in a language other than that of the registration agreement.
The credibility of any submissions by the parties and in particular those of the respondent (or lack of reaction after having been given a fair chance to comment) are particularly relevant.
Where it appears the parties reasonably understand the nature of the proceedings, panels have also determined the language of the proceeding/decision taking account of the panel's ability to understand the language of both the complaint and the response such that each party may submit pleadings in a language with which it is familiar."
In adopting a language other than that of the registration agreement, the panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties' ability to understand and use the proposed language, time and costs; see Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004; Finter Bank Zurich v. Shumin Peng, WIPO Case No. D2006-0432.
The Panel finds that in the circumstances of this case, paragraph 11 of the Rules is best served by allowing the proceedings to be conducted in English. The Panel has noted that the content of the Respondent's Website is English, the Respondent has registered numerous domain names that consist of English words which resolved to English-language websites and that the Respondent has been the named Respondent in numerous proceedings under the Policy that were conducted in English. Given these facts it would appear that the Respondent is familiar with the English language and it would be appropriate to continue these proceedings in that language. Furthermore the Respondent has been given a fair chance to object to the Complainant's choice of English as the language of the proceeding, but has not done so, nor has it participated in the proceeding generally.
6.2. Substantive Issues
A. Identical or Confusingly Similar
To prove this element the Complainant must have trade or service mark rights and the Domain Name must be identical or confusingly similar to the Complainant's trade or service mark.
The Complainant is the owner of the VOLTAS Mark, having registrations for the VOLTAS Mark as a trade mark in India and selected other countries.
The Domain Name consists of the VOLTAS Mark in its entirety and the geographic term "india". The Panel finds the Domain Name is confusingly similar to the Complainant's VOLTAS Mark. Consequently the requirement of paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name.
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name:
"Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue."
The Respondent is not affiliated with the Complainant in any way. The Respondent has not been authorized by the Complainant to register or use the Domain Name or to seek the registration of any domain name incorporating the VOLTAS Mark or a mark similar to the VOLTAS Mark. There is no evidence that the Respondent is commonly known by the Domain Name or any similar name. There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Name in connection with a legitimate non-commercial fair use or a bona fide offering of goods and services; the use of the Domain Name for what appears to be a parking page with pay-per-click links including a pay-per-click link referring to the Complainant itself does not amount to use for a bona fide offering of goods and services.
The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. The Respondent has failed to rebut that prima facie case and establish that it has rights or legitimate interests in the Domain Name under the Policy. The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
For the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the Respondent has registered or has 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 trade mark or service mark or to a competitor of the Complainant, for valuable consideration in excess of its 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 trade mark 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 online 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 the Respondent's website or location. (Policy, paragraph 4(b)).
The Panel finds that the Respondent must have been aware of the Complainant and its reputation in the VOLTAS Mark at the time the Respondent registered the Domain Name. While the Domain Name was registered over 13 years ago, I note that the Respondent's Website contains links referring to the Complainant. The Domain Name consists of the coined word "voltas" along with the geographical term "India", the location of the Complainant. The Respondent has provided no explanation, and none is immediately obvious, why an entity would register a domain name containing "voltas" and "india", the location of the Complainant, unless there was an awareness of and an intention to create a likelihood of confusion with and the Complainant and its VOLTAS Mark. The addition of the geographic term does not prevent a finding of confusing similarity and in the present case the addition of "india" may cause Internet users to think that the Domain Name is related to a website operated by the Complainant since the Complainant is primarily based in India.
The Respondent's Website offers what appear to be pay-per-click links to websites with at least one of these links directly referring to the Complainant. In these circumstances where the Respondent has offered no plausible explanation for the registration of the Domain Name the Panel finds that that the Respondent is using the Domain Name to intentionally attempt to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the VOLTAS Mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's Website. As such the Panel finds that the Domain Name is being used in bad faith.
Accordingly, the Panel finds that the Respondent has registered and is using the Domain Name in bad faith under paragraph 4(a)(iii) 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 Domain Name <voltasindia.com> be transferred to the Complainant.
Date: February 23, 2018