WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Delta Corp Limited v. Jass, Deltin
Case No. D2018-1103
1. The Parties
The Complainant is Delta Corp Limited of Pune, Maharashtra, India, represented by AZB & Partners, India.
The Respondent is Jass, Deltin of Tbilisi, Georgia.
2. The Domain Names and Registrars
The disputed domain names <coindeltin.com> and <deltinmine.com> (the “Domain Names”) 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 May 16, 2018. On May 16, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On May 18, 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 May 31, 2018. In accordance with the Rules, paragraph 5, the due date for Response was June 20, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 22, 2018.
The Center appointed David Taylor as the sole panelist in this matter on July 6, 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 company operating casinos and hotels in India and providing services related to cruise ships, restaurants, caterers, cafés, clubs, health clubs, night clubs, retail, shopping, sightseeing, lodging, and other vacation attractions. The Complainant has supplied evidence that it owns numerous registered trademarks including the term DELTIN, for example:
- THE DELTIN India trademark registration No. 2938124, registered on April 8, 2015,
- DELTIN PALMS India trademark registration No. 2938121, registered on April 8, 2015,
- DELTIN EMPRESS India trademark registration No. 2938118, registered on April 8, 2015,
- DELTIN CARAVELA India trademark registration No. 2938117, registered on April 8, 2015,
- DELTIN SUITES India trademark registration No. 2455285, registered on April 4, 2013,
all of which predate the registration of the Domain Names.
The Respondent appears to be an individual based in Georgia.
The Domain Names were registered by the Respondent on January 1, 2018 and at the time the Complaint was filed they were not resolving to active websites.
5. Parties’ Contentions
The Complainant asserts that it has developed a strong name and reputation in relation to gambling and hospitality business. The Complainant claims to be the only listed company engaged in the casino gaming industry in India. Moreover, the Complainant contends that its DELTIN trade marks are a distinctive indicator of the source of its goods and services in India. As evidence, the Complainant has supplied copies of its trade mark registration certificates.
Furthermore, the Complainant claims to be the owner of a number of generic Top-Level Domain (“gTLD”) domain names which contain the DELTIN trade mark and were registered years prior to the date Respondent registered the Domain Names. The Complainant submits that these domain names include domain names such as <deltin.com>, <deltinhotels.com>, <deltinroulette.com>, <dealsatdeltin.com>, <deltinpoker.com>, <deltincasinos.com>, <winbigatdeltin.com>, <clubdeltin.com>, <deltin.org> and <deltinroyale.in>.
In response to each of the requirements under the Policy, the Complainant asserts as follows:
(i) The Domain Names are confusingly similar to the Complainant’s trade mark
The Complainant submits that it is the exclusive owner of DELTIN trade marks. The Complainant states that it has many registered trade marks for the DELTIN term, which can be traced back as early as 2013. Furthermore, the Complainant asserts that its brand has built up substantial recognition, fame and goodwill in the public domain, supported by the awards and accolades.
According to the Complainant, the Domain Names are identical, or at the very least, confusingly similar to the Complainant’s DELTIN trade mark as they incorporate it in its entirety, with the addition of the generic terms “coin” and “mine”. The Complainant claims that the addition of these terms does nothing to avoid the confusing similarity.
(ii) The Respondent has no rights or legitimate interests in the Domain Names
The Complainant submits that the Respondent has no authorization or permission from the Complainant to either use or register the Domain Names. The Complainant further contends that the Respondent is not associated with the Complainant in any manner. Moreover, according to the Complainant, the Respondent has no reasonable justification for adoption of the mark DELTIN, as DELTIN is a unique term which has been coined by the Complainant and having no meaning in the English language.
The Complainant avers that the Domain Name <deltinmine.com> is not resolving to an active website and the Domain Name <coindeltin.com> is currently inaccessible but was previously hosting a website related to cryptocurrency services. The Complainant therefore concludes that the Respondent does not have a legitimate business interest in the Domain Names.
Moreover, the Complainant states that as the website hosted on the Domain Name <coindeltin.com> offered services related to mining of cryptocurrency, it is also likely to severely tarnish the reputation of the Complainant and bring the Complainant under the scanner of the Indian financial regulators as cryptocurrency has not been legitimized under Indian law. According to the Complainant, given the fact that there are several domain names which are operated by the Complainant, which incorporate the trade mark DELTIN, regulators and authorities are also likely to be confused and mistakenly believe that the Domain Names emanate from the Complainant. The Complainant states that the Domain Names effectively impersonate and suggest sponsorship and endorsement by the Complainant and therefore cannot constitute far use.
(iii) The Domain Names were registered and were being used in bad faith
The Complainant argues that its trade marks for the term DELTIN have been in existence since 2013 having a significant presence over the Internet with over 50 domain names incorporating the term “deltin” in them. According to the Complainant, it is therefore highly unlikely that the Respondent did not have prior knowledge of the DELTIN trade marks or the business of the Complainant.
Furthermore, the Complainant submits that it conducted a search for the Respondent's name on the Internet and several social media pages of the Respondent seem to indicate that the Respondent is most likely Indian by nationality. The Complainant also claims that 82 percent of page views for the Domain Name <coindeltin.com> were from Indian IP addresses.
The Complainant also states that there is currently no operational website related to the Domain Names which implies passive holding constituting bad faith.
The Complainant further contends that the Respondent by registering the Domain Names has intentionally attempted to attract, for commercial gain, users of the Complainant’s website and public at large towards the Domain Names.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that to obtain the transfer of the Domain Name, the Complainant must prove the following three elements:
(i) the Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Names; and
(iii) the Domain Names have been registered and are being used in bad faith.
Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable. Furthermore, paragraphs 10(b) and 10(d) of the Rules provide that the Panel shall ensure that the parties are treated with equality and shall determine the admissibility, relevance, materiality, and weight of the evidence.
In addition, paragraph 14(b) of the Rules provides that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under, the Rules, the Panel shall draw such inferences therefrom as it considers appropriate.
The Panel notes that the Respondent did not reply to the Complainant’s contentions. The Respondent’s failure to respond, however, does not automatically result in a decision in favour of the Complainant, although the Panel is entitled to draw appropriate inferences therefrom, in accordance with paragraph 14(b) of the Rules. See paragraph 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Taking the aforementioned provisions into consideration, the Panel finds as follows:
A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Panel to consider first whether the Complainant has established relevant trade mark rights. The Complainant has provided evidence of a number of registered trademarks including the term DELTIN. The Panel is therefore satisfied that the Complainant has established relevant trade mark rights.
The Panel is also required under paragraph 4(a)(i) of the Policy to examine whether the Domain Names are identical or confusingly similar to the Complainant’s trade mark. The Domain Names incorporate the Complainant’s DELTIN trade mark in its entirety with the addition of the descriptive terms “coin” and “mine”. Prior panels deciding under the same Policy have held that when a domain name wholly incorporates a complainant’s trade mark, it is sufficient to establish identity or confusing similarity. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525. Furthermore, the addition of the generic terms “coin” and “mine” does not diminish the confusing similarity with the Complainant’s trade mark as the Complainant’s trade mark is the dominant recognizable component in the Domain Names. See, for instance, Pfizer Inc. v. William James, WIPO Case No. D2004-0583 (<buy-generic-viagra-sildenafil-citrate.biz>) (“It is an established principle that the mere addition of generic terms does not create a different trademark in which the respondent has rights and cannot be considered sufficient to avoid confusion between the domain name at issue and the complainant’s trademark”).
The “.com” gTLD is generally disregarded under the identity or confusing similarity test as it is a functional element. See paragraph 1.11 of the WIPO Overview 3.0.
The Panel therefore finds that the Domain Names are confusingly similar to the Complainant’s trade mark.
The Complainant has therefore satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy requires the Complainant to demonstrate that the Respondent has no rights or legitimate interests in the Domain Name. Paragraph 4(c) of the Policy sets out the following list of non-exhaustive circumstances that may suggest that a respondent has rights or legitimate interests in a domain name, including:
“(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 trade mark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.”
A complainant is required to establish a prima facie case that the respondent does not have rights or legitimate interests in the disputed domain name. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name in question. If, however, the respondent fails to come forward with such relevant evidence, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP. See paragraph 2.1 of the WIPO Overview 3.0.
The Panel has considered the evidence put forward by the Complainant and considers that the Complainant has made a prima facie showing of the Respondent’s lack of rights or legitimate interests in the Domain Names and that, as a result of its default, the Respondent has failed to rebut such a showing.
The Complainant has alleged that the Respondent is not in any way affiliated with the Complainant and it has not authorised the Respondent to make any use of its DELTIN trade mark. Furthermore, it is highly unlikely that the Respondent would be “commonly known” by the Domain Names, given the notoriety surrounding the Complainant’s trade mark. The Respondent’s passive holding of the Domain Names cannot be considered use in connection with a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the Domain Names.
Furthermore, the Respondent’s lack of rights or legitimate interests in the Domain Names may be inferred from the Respondent’s failure to submit a response to the Complaint. See Pomellato S.p.A v. Richard Tonetti, WIPO Case No. D2000-0493 (“non-response is indicative of a lack of interests inconsistent with an attitude of ownership and a belief in the lawfulness of one’s own rights”) and GA Modefine S.A. and Giorgio Armani S.p.A. v. Yoon-Min Yang, WIPO Case No. D2005-0090.
The Panel therefore finds that the Respondent has no rights or legitimate interests in the Domain Names.
Accordingly, the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires the Complainant to demonstrate that the Domain Name was registered and is being used in bad faith. Paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances that may indicate bad faith, including but not limited to:
“(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 trade mark 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 trade mark 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 online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
The Complainant has trade mark rights in the term DELTIN in connection with gambling and hospitality services that predate the date of acquisition of the Domain Names by at least four years. The Complainant’s DELTIN trade mark has also acquired considerable goodwill and renown. Given the nature of the Domain Names, which identically reproduce the Complainant’s DELTIN trade mark in conjunction with the generic terms “coin” and “mine”, the Panel is convinced that, on the balance of probabilities, the Respondent had the Complainant in mind at the time of registration of the Domain Names and deliberately registered them to take advantage of the Complainant’s rights, especially as the Respondent’s WhoIs details mention “Deltin” as Registrant Organization. It seems likely from the evidence that the Respondent provided a false address in Georgia. The Panel therefore finds that the Respondent registered the Domain Names in bad faith.
The Domain Names were not resolving to an active website at the time of filing. However, the consensus view amongst WIPO panelists is that “the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding. While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.”. See paragraph 3.3 of the WIPO Overview 3.0. In this case, the Panel is convinced that the overall circumstances of this case strongly suggest that the Respondent’s current non-use of the Domain Names is nevertheless indicative of bad faith. Such circumstances include the strength and renown of the Complainant’s DELTIN trade mark, the Respondent’s failure to take part in the present proceedings and the use of false details to conceal the Respondent’s identity. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
The Panel finds that the Domain Names were registered and are being used in bad faith.
Accordingly, the Complainant has satisfied 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 Names, <coindeltin.com> and <deltinmine.com>, be transferred to the Complainant.
Date: July 20, 2018