WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
WIPRO Limited v. Wipro Limited
Case No. D2018-0746
1. The Parties
The Complainant is WIPRO Limited of Bangalore, India, represented by K&S Partners, India.
The Respondent is Wipro Limited of Pune, India.
2. The Domain Name and Registrar
The disputed domain name <wiproltd.com> is registered with BigRock Solutions Pvt Ltd. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 4, 2018. On April 4, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 5, 2018, 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. On April 19, 2018, the Complainant filed an amended Complaint to address an administrative formality.
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 April 20, 2018. In accordance with the Rules, paragraph 5, the due date for Response was May 10, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 11, 2018.
The Center appointed Dr. Ashwinie Kumar Bansal as the sole panelist in this matter on May 22, 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 is a registered company in India, established in the year 1945 as a vegetable oil manufacturer under the name "Western India Vegetable Products Limited". Thereafter, the Complainant changed its name to "Wipro Product Limited" with effect from June 17, 1977. The name WIPRO is derived from, and is an abbreviation of the Complainant's original company name "Western India Vegetable Products Limited". Since the year 1977, the Complainant has been known as WIPRO.
The Complainant subsequently changed its name to WIPRO LIMITED with effect from April 28, 1984. The Complainant has obtained registration of the name and trademark WIPRO in India.
The Respondent has registered the disputed domain name <wiproltd.com> on May 5, 2017 incorporating the trademark of the Complainant; hence, the present Complaint has been filed by the Complainant.
5. Parties' Contentions
The name WIPRO is the Complainant's corporate name / trade name, and the Complainant is known worldwide by the name WIPRO. The Complainant has registrations for the name and trademark WIPRO in India, USA, and Europe.
The Complainant has diversified its business activities covering various industries like aerospace, automotive, banking, communication service providers, consumer goods, energy, etc. Over the years, the Complainant has grown to be one of the largest global information technology, consulting, and outsourcing companies.
The Complainant is listed in all the major stock exchanges including National Stock Exchange of India, Bombay Stock Exchange, New York Stock Exchange, and NASDAQ in the United States and is listed in the Dow Jones Sustainability Index. The Complainant was listed in the National Stock Exchange in the year 1995 and since then has been known by the trading name WIPRO.
By virtue of prior adoption, long and continuous use and extensive publicity and promotion, the trade name and trademark WIPRO has acquired tremendous goodwill and reputation worldwide and is associated exclusively with the Complainant and their business, services and products by the trade and public.
The Complainant has also registered several domain names incorporating the trademark WIPRO. The Complainant has generic Top-Level Domain ("gTLD") names and country specific domain names registered in its name. Some of the domain names in the name of the Complainant include <wipro.com>, <wipro.org>, <wipro.jp>, <wipro.co.in> and <wipro.hk>. The Complainant has been known by the name and trademark WIPRO and the name and trademark WIPRO is extremely well-known in India and the same has become a household name in India.
The disputed domain name <wiproltd.com> is identical to the Complainant's trademark WIPRO. The trademark WIPRO is the Complainant's corporate name and the Complainant is known by the name WIPRO globally. The trademark WIPRO has been continuously used by the Complainant since 1977 in respect of its various businesses – IT, telecommunications, banking, consumer care, healthcare, manufacturing, professional services, etc. The trademark WIPRO is exclusively associated with the Complainant.
The disputed domain name <wiproltd.com> consists of the Complainant's registered trademark WIPRO. WIPRO is the principal part of the disputed domain name. The word "ltd" used in the disputed domain name is a generic word indicative of type of the company i.e., Limited Company. Internet users coming across the disputed domain name <wiproltd.com> will immediately relate and will be misled into believing that the disputed domain name belongs to the Complainant, when in reality, the disputed domain name does not belong to the Complainant.
The Respondent by asking to make initial monetary deposit to aspiring candidates is running a massive recruitment and job fraud racket through this disputed domain name. The Respondent being well aware of the Complainant and the huge desire among people to join the employment of the Complainant registered the disputed domain name to carry on the recruitment and job fraud scam in the name and guise of the Complainant. The use of the disputed domain name to ask candidates for initial payment, is in itself a massive recruitment and job fraud which tarnishes the immense goodwill and reputation associated with the Complainant.
The Respondent chose to register the disputed domain name in order to create a direct association with the Complainant. By registering the disputed domain name <wiproltd.com> the Respondent is illegally diverting and attracting Internet users into believing that disputed domain name belongs to or is endorsed by the Complainant or is authorized by the Complainant, which is not the case. The Complainant has not given any license to the Respondent to use its mark in any domain name or in any manner whatsoever. The Respondent is not commonly known by the disputed domain name and trademark WIPRO.
The Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has no relationship with the Respondent and has never authorized the Respondent to register or use its trademark in a domain name.
The Respondent's registration and use of the disputed domain name has been made in bad faith. The Respondent is an Indian from Pune, India, where the Complainant has four (4) offices, and therefore, it is unimaginable that the Respondent is not aware of the Complainant.
The Complainant started its operations in India way back in the year 1945 and the trademark WIPRO has been in continuous use by the Complainant since 1977. The trademark WIPRO is extremely well-known in India as the Complainant is one of the top IT consulting and outsourcing companies in India.
The Respondent being well aware of the Complainant has registered and used the disputed domain name knowing well that Internet user, coming across the disputed domain name will assume that the disputed domain name belongs to and/or is associated with the Complainant.
The Complainant being an extremely well-known Indian IT company, there are thousands of students and candidates who wish to seek employment with the Complainant. It is these students and candidates who will be misled and fall prey to this job and recruitment fraud that the Respondent is carrying on through the disputed domain name.
The bad faith use and registration of the disputed domain name <wiproltd.com> by the Respondent is further evident from the fact that the Respondent has copied the look and feel as well as the content of the Complainant's website to make student's and candidates believe that the Respondent is actually the Complainant.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
As per paragraph 5(e) of the Rules where a respondent does not submit a response, in the absence of exceptional circumstances, the panel may decide the dispute based upon the Complaint. The Panel does not find any exceptional circumstances in this case preventing it from determining the dispute based upon the Complaint, notwithstanding the failure of the Respondent to file a response. As per paragraph 14(b) of the Rules, where a party does not comply with any provision of the Rules, the Panel is to draw such inferences there from as it considers appropriate. It remains incumbent on the Complainant to make out its case in all respects under paragraph 4(a) of the Policy, which sets out the three elements that must be present for the proceeding to be brought against the Respondent, which the Complainant must prove to obtain a requested remedy. It provides as follows:
"4(a). Applicable Disputes. You are required to submit to a mandatory administrative proceeding in the event that a third party (a 'complainant') asserts to the applicable Provider, in compliance with the Rules of Procedure, that
(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.
In the administrative proceeding, the complainant must prove that each of these three elements are present."
The Panel will address the three aspects of the Policy listed above.
A. Identical or Confusingly Similar
The Complainant has produced registration certificates granted by the Registrar of Trademarks, in its favour in respect of the trademark WIPRO and its derivatives in the class 9, 16, 35, and 42, dating back to May 27, 1976.
The disputed domain name incorporates the Complainant's trademark WIPRO in its entirety, together with the suffix "ltd". The Complainant's trademark WIPRO is clearly recognizable in the disputed domain name, and the addition of "ltd" does not serve to avoid a finding of confusing similarity. The gTLD ".com" may be disregarded for the purposes of comparison under this element.
The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 1.7 provides the consensus view of panelists: "While each case is judged on its own merits, in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing."
The disputed domain name <wiproltd.com> is confusingly similar to the Complainant's trademark WIPRO in which the Complainant has rights. Therefore, the Panel is satisfied that the first condition under the Policy is met.
B. Rights or Legitimate Interests
The Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in the disputed domain name <wiproltd.com>. Nevertheless, it is well settled that the Complainant needs only to make out a prima facie case, after which the burden of production shifts to the Respondent who is required to rebut such prima facie case by demonstrating rights or legitimate interests in the disputed domain name.
The Respondent has registered the disputed domain name consisting of the trademark WIPRO of the Complainant. The Complainant had been using the trademark for a long time since 1974. The Complainant has not authorized or permitted the Respondent to use the trademark WIPRO.
Paragraph 4(c) of the Policy lists circumstances, in particular but without limitation, which, if found by the Panel to be proved, may demonstrate the respondent's rights or legitimate interests in a disputed domain name for the purposes of paragraph 4(a)(ii) of the Policy. Section 2.1 of WIPO Overview 3.0 provides: "While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of 'proving a negative', requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element."
The Respondent has failed to file a response to rebut the Complainant's prima facie case or to explain his rights or legitimate interests. The Respondent has thus failed to demonstrate any rights or legitimate interests in the disputed domain name <wiproltd.com> as per paragraph 4(c) of the Policy.
In the absence of the Respondent's response, and in light of the evidence submitted by the Complainant, the Panel finds that the Complainant has satisfied its burden to make out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Panel is satisfied that the second element of the Policy has been met.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy identifies, in particular but without limitation, four circumstances which, if found by the Panel to be present, shall be evidence of the registration and use of the disputed domain name in bad faith. Each of the four circumstances in paragraph 4(b) of the Policy, if found, is evidence of "registration and use of a domain name in bad faith". The Complainant is required to prove both that the disputed domain name was registered in bad faith and that it is being used in bad faith. Hence, circumstances at the time of registration and thereafter have to be considered by the Panel.
Section 3.1.1 of WIPO Overview 3.0 provides: "If on the other hand circumstances indicate that the respondent's intent in registering the disputed domain name was in fact to profit in some fashion from or otherwise exploit the complainant's trademark, panels will find bad faith on the part of the respondent. While panel assessment remains fact-specific, generally speaking such circumstances, alone or together, include: (i) the respondent's likely knowledge of the complainant's rights, (ii) the distinctiveness of the complainant's mark, (iii) a pattern of abusive registrations by the respondent, (iv) website content targeting the complainant's trademark, e.g., through links to the complainant's competitors, (v) threats to point or actually pointing the domain name to trademark-abusive content, (vi) threats to "sell to the highest bidder" or otherwise transfer the domain name to a third party, (vii) failure of a respondent to present a credible evidence-backed rationale for registering the domain name, (viii) a respondent's request for goods or services in exchange for the domain name, (ix) a respondent's attempt to force the complainant into an unwanted business arrangement, (x) a respondent's past conduct or business dealings, or (xi) a respondent's registration of additional domain names corresponding to the complainant's mark subsequent to being put on notice of its potentially abusive activity."
The bad faith registration and use of the disputed domain name is evident from the fact that the Respondent has intentionally given the Complainant's name i.e. Wipro Limited as its Registrant Name for registration of the disputed domain name. Further, the Respondent, being fully aware of the Complainant's office address in Pune, India, has used an address that is almost exactly the same. This clearly shows the Respondent's knowledge about the Complainant and its intention of associating itself with the Complainant.
The Complainant has produced evidence of registration of the trademark WIPRO in its favour given, inter alia, by the Indian Trademarks Registry. The Respondent has registered the disputed domain name <wiproltd.com> on May 5, 2017 incorporating in it the trademark WIPRO of the Complainant. The Complainant has not granted the Respondent permission or a license of any kind to use its trademark and register the disputed domain name <wiproltd.com>. Such unauthorized registration by the Respondent suggests opportunistic bad faith. In view of these facts, use of the trademark in the disputed domain name is likely to cause confusion as to source, sponsorship, or affiliation, which constitutes bad faith registration and use under paragraph 4(b)(iv) of the Policy. The Respondent's true purpose in registering and using the disputed domain name <wiproltd.com> which incorporates the entire trademark of the Complainant is, in the Panel's view, to capitalize on the reputation of the trademark.
In view of the above, the Panel concludes that the third and last condition provided for by paragraph 4(a)(iii) of the Policy is met. The Panel therefore finds that the disputed domain name <wiproltd.com> has been registered and is being used by the Respondent 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, <wiproltd.com>, be transferred to the Complainant.
Dr. Ashwinie Kumar Bansal
Date: June 5, 2018