WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
MILIPOL v. Punit Thakkar
Case No. D2018-0917
1. The Parties
The Complainant is MILIPOL of Paris, France, represented by Cabinet Beau de Lomenie, France.
The Respondent is Punit Thakkar of Mumbai, Maharashtra, India, self-represented.
2. The Domain Name and Registrar
The disputed domain name <milipolhk.com> (the “Disputed Domain Name”) is registered with Wild West Domains, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 24, 2018. On April 24, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On April 25, 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.
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 April 27, 2018. In accordance with the Rules, paragraph 5, the due date for Response was May 17, 2018. The Response was filed with the Center on May 16, 2018.
The Center appointed Nick J. Gardner as the sole panelist in this matter on May 24, 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 French Economic Interest Group (GIE), which organizes trade shows and exhibitions related to police equipment, civil and military security, and related services. For example, it organizes the events MILIPOL Paris (“www.milipol.com”) and MILIPOL Qatar (“www.milipolqatar.com”), and MILIPOL
Asia-Pacific (“www.milipolasiapacific.com“). The MILIPOL Paris show in 2017 attracted 29,939 visitors and 1,005 exhibitors from 53 countries. The MILIPOL Qatar show in 2016 attracted 6,583 visitors and 261 exhibitors from 30 countries.
The Complainant has been using the trade name MILIPOL in this connection since at least as early as 1995. The Complainant owns various registrations for the trademarks MILIPOL and MP MILIPOL throughout the world. By way of example the Complainant owns International trademark for the word MILIPOL No. 1379315 which was registered on September 12, 2017. Its registered trademarks for the word MILIPOL are referred to in this decision as the “MILIPOL trademark”.
The Complainant also owns several “milipol” related domain names, including: <milipol.com> (created on June 11, 1997), <milipolqatar.com>, <milipol.us>, <milipolusa.com>, <milipol.org>, <milipol.net>, <milipol.ch>, <milipol.eu>, <milipolkorea.com>, <milipolkorea.net>, <milipolkorea.org> and <milipolintl.com>.
The Respondent is an individual apparently based in India. He registered the Disputed Domain Name on March 5, 2018. It is linked to a website with a single page with the following text:
M.O.D. Strategic Partners Hongkong
MILIPOL HONGKONG – Established in 2014 with a vision to be a Strategic Partners with Ministry of Defence (MOD) Globally, started with a core team with a rich experience of 20 years, now successfully working with the MOD of China, Singapore, Malaysia, France, Spain, Chile, Saudi Arabia, Kuwait. To Associate with us, write us @ […]@milipolhk.com”.
5. Parties’ Contentions
The Complainant’s case is in summary as follows:
a) The Disputed Domain Name is identical or confusingly similar to its MP Milipol and Milipol trademarks
b) The Respondent does not have any rights or legitimate interests in the Disputed Domain Name.
c) The Respondent uses the Disputed Domain Name in bad faith as it is not linked to any bona fide website. The Complainant relies on various UDRP cases as to the passive holding of domain names that correspond to well-known trademarks.
The Respondent has field a lengthy Response making numerous points. The main ones are as follows:
The Respondent says he is not aware about “the fact the trademark Milipol and MP Milipol is used in connection with the above said services by the complainant since 1995”.
The Respondent says he is not aware of “the events being organised in the name and style Milipol Paris and Milipol Qatar which are world wide well-known exhibitions”.
There is no registration for the trademark Milipol by the Complainant in Hong Kong. The Complainant does not do any business in Hong Kong.
The Respondent says that he “was keen to start business in Hong Kong for military and police uniforms” and “After thinking of several names, the respondent in bona fide manner applied for registration of his company in the name Hong Kong Milipol Industrial Limited”. A copy of the incorporation certificate showing the company adopting this name in 2014 is provided.
The Respondent also says “that the complainant is into organizing exhibitions whereas the respondent is into business of selling fabric and rolls etc”.
The Respondent denies acting in bad faith. He says that “since the respondent wanted to trade for business of fabric/ rolls for military and police as well, he decided the Milipol which according to him includes the combination of military and police (mili for military and pol for police). Thus, it is apparent that the respondent has started using the name in bona fide manner”.
The Respondent also says that “the domain names of the complainant are country specific like milipolkorea.com, milipolusa.com, milipolkorea.net, milipolkorea.org etc. whereas the respondent’s domain name is not country specific. In other words, the complainant applied for domain name registration for the countries using the complete name of the country but the respondent is just using the initial milipolhk.com”.
The Respondent makes various other points which where relevant are addressed below.
6. Discussion and Findings
Paragraph 4(a) of the Policy states that the Complainant must prove each of the three following elements:
(i) the Disputed Domain Name is identical to 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 Disputed Domain Name;
(iii) the Disputed Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has submitted detailed evidence that it is the owner of the MILIPOL trademark.
The Panel holds that the Disputed Domain Name is confusingly similar to the above trademark. The Disputed Domain Name, as registered by the Respondent, incorporates the MILIPOL trademark. Previous UDRP panels have consistently held that domain names are identical or confusingly similar to a trademark for purposes of the Policy, “when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662). The only difference in the present case is the addition of the geographic designation “hk” (for Hong Kong). This addition does not suffice to negate the similarity between the Disputed Domain Name and the Complainant’s MILIPOL trademark.
It is established that, where a mark is the distinctive part of a disputed domain name, the disputed domain name is considered to be confusingly similar to the registered mark (DHL Operations B.V. v. DHL Packers, WIPO Case No. D2008-1694).
It is also established that the addition of a geographic or descriptive term (such as here “hk” which is a common abbreviation for Hong Kong) to the disputed domain name has little, if any, effect on a determination of identity or confusing similarity between the domain name and the mark (Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253); furthermore, mere addition of a geographic or descriptive term does not prevent a finding of confusing similarity (PRL USA Holdings, Inc. v. Spiral Matrix, WIPO Case No. D2017-0284).
Further the generic Top-Level Domain (“gTLD”) (here “.com”) is generally disregarded when considering identity or confusing similarity between the disputed domain name and the complainant’s trademark – see for example Herbalife International, Inc. v Herbalife.net, WIPO Case No. D2002-0234.
Accordingly the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s trademark and hence the first condition of paragraph 4(a) of the Policy has been fulfilled.
B. Rights or Legitimate Interests
The Respondent’s case in substance is to say that he has rights and legitimate interests in the Disputed Domain Name as the following provision of the Policy applies: “Before any notice to the Respondent of the dispute, the Respondent was using the Disputed Domain Name in connection with a bona fide offering of services (paragraph 4(c)(i) of the Policy)”.
The Respondent has produced no evidence at all to support his case beyond documentation showing the existence of a company called Hong Kong Milipol Industrial Limited which adopted this name in 2014. In this regard the Panel adopts the approach identified in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.2, as follows:
“What qualifies as prior use, or demonstrable preparations to use the domain name, in connection with a bona fide offering of goods or services?
As expressed in UDRP decisions, non-exhaustive examples of prior use, or demonstrable preparations to use the domain name, in connection with a bona fide offering of goods or services may include: (i) evidence of business formation-related due diligence/legal advice/correspondence, (ii) evidence of credible investment in website development or promotional materials such as advertising, letterhead, or business cards (iii) proof of a genuine (i.e., not pretextual) business plan utilizing the domain name, and credible signs of pursuit of the business plan, (iv) bona fide registration and use of related domain names, and (v) other evidence generally pointing to a lack of indicia of cybersquatting intent. While such indicia are assessed pragmatically in light of the case circumstances, clear contemporaneous evidence of bona fide pre-complaint preparations is required.
Acknowledging that business plans and operations can take time to develop, panels have not necessarily required evidence of such use or intended use to be available immediately after registration of a domain name, but the passage of time may be relevant in assessing whether purported demonstrable preparations are bona fide or pretextual.
If not independently verifiable by the panel, claimed examples of use or demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services cannot be merely self-serving but should be inherently credible and supported by relevant pre-complaint evidence.”
There is no evidence at all of the Respondent having undertaken any activities of any kind in connection with his claimed business of supplying cloth to military and police forces. There is no evidence as to what the company Hong Kong Milipol Industrial Limited does or how it relates to the Respondent. There is no evidence to explain how or why the Respondent who appears to be based in India is doing business in Hong Kong. Further the website to which the Disputed Domain Name is linked (see above) does not reflect any real business but is simply a short holding page. It claims to be about a business which is working with the Ministries of Defence in various countries in some unspecified manner, but no evidence of any such activities has been provided. It does not appear to be a website of a bona fide business. Taking all of this into account the Panel concludes that no credible evidence of a pre-existing business has been provided. In these circumstances the Panel rejects the Respondent’s claim to have established rights or legitimate interests in the Disputed Domain Name.
It seems to the Panel that the Respondent is also relying on the Hong Kong company, Hong Kong Milipol Industrial Limited, as providing him with a legitimate interest under paragraph 4(c)(ii) of the Policy – “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”.
The evidence about this company as unsatisfactory as the Panel does not know what, if anything, it does, or how, if at all, it is connected to the Respondent. In any event absent further evidence the Panel does not consider it provides the Respondent a legitimate interest. The Panel infers that if it is in some way connected to the Respondent then it too was part of whatever the Respondent’s intention was in seeking to take advantage of the Complainant and its MILIPOL trademark. The Panel does not consider that a respondent who deliberately adopts a name which corresponds to, or is similar to, that of a complainant, with a view to taking advantage of that complainant’s fame and reputation, can then take advantage of an “own name” provision to justify its actions. The right to use one’s own name is not unlimited and cannot be used to circumvent well-known prior rights in a similar name – see for example Peter Frampton v. Frampton Enterprises, Inc., WIPO Case No. D2002-0141:
“While the Panel recognizes that any individual has a right to use his (her) name in connection with a business, that right is not unfettered; instead, it is circumscribed by the prior trademark rights of others who use that name in connection with specific goods and services, as is certainly the case here.
A party alleging, under paragraph 4(c)(ii), as the Respondent purports to do here, that it is commonly known by a particular name, sufficient to show legitimate rights and interest in a domain name that contains that particular personal name (e.g., a surname), must provide adequate extrinsic proof that a corresponding group of consumers, e.g., Internet users, who are likely to access that party’s web site, associates that domain name with that party rather than with the trademark owner, i.e., that domain name possesses requisite secondary meaning, or at least that party has used or is using that name sufficiently broadly such a panel can infer that such meaning exists.”
The Panel agrees with that approach in the circumstances of the present case. More fundamentally it should be noted that what paragraph 4(c)(ii) of the Policy requires is that the Respondent demonstrates that it is commonly known as the Disputed Domain Name. It is not sufficient for the Respondent to say he has a company with the name “Hong Kong Milipol Industrial Limited” – he has to show that either he or possibly the company is commonly known as “milipolhk”. No evidence at all to this effect has been produced by the Respondent. The Panel therefore does not consider that the existence of Hong Kong Milipol Industrial Limited entitles him to claim a right or legitimate interests in the Disputed Domain Name.
The Respondent also appears to say that he has a legitimate interest under the Policy paragraph 4(c)(iii) as he is making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. That makes no sense at all, as even on the Respondent’s own case his business is clearly not “noncommercial”. This provision of the Policy cannot be relevant.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name and the second condition of paragraph 4(a) of the Policy has been fulfilled.
C. Registered and Used in Bad Faith
Looking at the evidence as a whole the Panel on the balance of probabilities does not accept the explanation offered by the Respondent. The Panel is conscious that proceedings under the UDRP are of a limited and restricted nature, do not involve oral hearings, discovery or cross examination, and hence are only applicable to clear cut cases, and it is not usually appropriate to decide disputed questions of fact or matters of truth or falsehood. That does not however mean the Panel cannot reach a conclusion as to the veracity of a case that is being advanced where the only evidence that is provided is in the form of conclusory statements that are inherently not credible, and which are not supported by relevant corrobative or third party evidence. The Panel considers this to be such a case. The Respondent’s case is simply not credible. “Milipol” is not a word nor is there any evidence before the Panel of it being a common abbreviation, nor of it being used commercially by anyone other than the Complainant. The obvious similarity between the Complainant’s name and the Disputed Domain Name suggests the Respondent likely had the Complainant in mind when registering the Disputed Domain Name. Further the similarity between the Complainant’s practice of owning domain names in the form <milipolcountry.[tld]> (as listed above) and the Respondent’s choice of <milipolhk.com> is striking. The fact that Hong Kong is a territory rather than a country, as noted by the Respondent, is irrelevant as the same general format is clearly being adopted. The Panel does not believe the similarity is coincidental but concludes that the Respondent selected the Disputed Domain Name because of its possible relevance to the Complainant.
The Panel concludes that the Respondent chose to register a name comprising the Complainant’s trademark combined with a geographical identifier. The evidence before the Panel does not provide sufficient material for the Panel to reach a conclusion on exactly what the Respondent’s intention was in so doing. Under paragraph 4(b) of the Policy, a non-exhaustive list of factors evidencing registration and use in bad faith comprises:
“(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location.”
In the present circumstances the Panel cannot clearly determine which, if any, of the above factors may apply. However the Panel notes that in any event this list is non exhaustive and considers that the registration of the Disputed Domain Name with knowledge of the Complainant’s trademark is itself evidence of bad faith – see The Channel Tunnel Group Ltd. v. John Powell, WIPO Case No. D2000-0038. In this case the Panel considers that any substantive use of the Disputed Domain Name would amount to an attempt to trade off the Complainant’s reputation and this must have been apparent to the Respondent when registering the Disputed Domain Name. It does not matter that the Respondent has not as yet used the Disputed Domain Name for such a purpose. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Jupiters Limited v. Aaron Hall, WIPO Case No. D2000-0574; Ladbroke Group Plc v. Sonoma International LDC, WIPO Case No. D2002-0131; Westdev Limited v. Private Data, WIPO Case No. D2007-1903; Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393; and Intel Corporation v. The Pentium Group, WIPO Case No. D2009-0273.
It does not in this regard matter that the Complainant does not itself do business in Hong Kong or have any registered trademarks in Hong Kong. It clearly operates internationally and it seems likely that Hong Kong could be an area of potential interest to its business of organising exhibitions – the Panel infers that in all probability this was at least part of the Respondent’s motives in registering the Disputed Domain Name.
Accordingly, and applying the principles in the above noted UDRP decisions the Panel finds that the Disputed Domain Name has been registered and is being used in bad faith. The third condition of paragraph 4(a) of the Policy has been fulfilled.
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 <milipolhk.com> be transferred to the Complainant.
Nick J. Gardner
Date: June 12, 2018