WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Navi Mumbai International Airport Private Limited v. Sugra Haider / Sugra
Case No. D2018-1146
1. The Parties
The Complainant is Navi Mumbai International Airport Private Limited of Mumbai, India, represented by BananaIP Counsels, India.
The Respondent is Sugra Haider / Sugra of Hyderabad, India, self-represented.
2. The Domain Name and Registrar
The disputed domain name <navimumbai-airport.com> is registered with Dynadot, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 23, 2018. On May 23, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 23, 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 Response was filed with the Center on June 15, 2018. On June 19, 2018, the Center received an email from the Complainant regarding the resubmission of an annex, and accordingly, the Center granted the Respondent until June 24, 2018 to make further submissions relating to the resubmitted annex. The Center received amended Responses on June 16, 2018, June 19, 2018, and June 23, 2018. On June 25, 2018, the Center informed the Parties of the commencement of the panel appointment process.
The Center appointed Amarjit Singh as the sole panelist in this matter on July 2, 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.
On July 4, 2018, the Complainant submitted supplemental filings, and on July 6, 2018, the Respondent submitted supplemental filings. The Panel has decided to consider the Parties’ supplemental filings in accordance with paragraphs 10 and 12 of the Rules. On July 10, 2018, the Panel issued a procedural order to which the Complainant replied on the same day.
4. Factual Background
The Complainant is Navi Mumbai International Airport Private Limited, having its registered office in Mumbai, India. The Complainant is engaged in the design, construction, operation and maintenance of the Greenfield International Airport (Navi Mumbai International Airport or NMIA) at Navi Mumbai in Maharashtra, India. The Government of India had given its “in-principle” approval for the development of a Greenfield International airport at Navi Mumbai in July 2007. The Government of Maharashtra also notified City and Industrial Development Corporation of Maharashtra Limited (“CIDCO”) to be its nodal agency and to act on its behalf for the development of “Navi Mumbai International Airport” in July 2008.
The Complainant was originally incorporated on March 26, 2007 under the name “Navi Mumbai Airport Developers Private Limited” with the objective of designing, construction, building, financing and operating the Navi Mumbai International Airport through a public-private partnership with CIDCO.
Since the declaration of the Maharashtra Government of its intention to design, develop, construct, finance and operate a new international airport at Navi Mumbai, the news concerning the establishment of the second International Airport at Navi Mumbai was extensively reported by print, television and digital media.
The name of the Complainant’s company was changed to “Navi Mumbai International Airport Private Limited”, pursuant to which a fresh Certificate of Incorporation dated November 11, 2017 was issued. The foundation stone of the Complainant’s project was laid by the honorable Prime Minister Shri Narendra Modi on February 18, 2018, which was reported by both national and international press.
The Complainant applied for registration of the marks NAVI MUMBAI INTERNATIONAL AIRPORT PRIVATE LIMITED and NMIA (the abbreviated name of Navi Mumbai International Airport) on December 22, 2017 for a variety of goods and services. Some such applications have been accepted for registration by the Indian Trademark Office, including trademark application 3711304 for NAVI MUMBAI INTERNATIONAL AIRPORT PRIVATE LIMITED, with a journal date of April 23, 2018.
The Respondent registered the disputed domain name <navimumbai-airport.com> on March 3, 2017. Currently there is no active website corresponding to the address of the disputed domain name. According to the evidence provided by the Complainant, the disputed domain name redirects to a parked page stating the disputed domain name is for sale, which further redirects to the website at “www.sedo.com”.
5. Parties’ Contentions
According to the Complainant:
- The Complainant is the proprietor of the marks NAVI MUMBAI INTERNATIONAL AIRPORT PRIVATE LIMITED and NMIA. The claims of common law proprietorship of the said marks are made on account of the priority in adoption as well as use of the said marks.
- The disputed domain name <navimumbai-airport.com> is identical or at least deceptively similar to the Complainant’s mark NAVI MUMBAI INTERNATIONAL AIRPORT PRIVATE LIMITED.
- At the time of registration of the disputed domain name, the Respondent must have been aware of the approvals granted by the Government of India and the Government of Maharashtra for the establishment of the second international airport at Navi Mumbai.
- The Respondent has no rights or legitimate interests in the disputed domain name either as an individual, business, or organization.
- A Google search of NAVI MUMBAI AIRPORT doesn’t show any activity on the disputed domain name.
- The Respondent’s attempt of selling it to the Complainant establishes bad faith registration and use of the disputed domain name.
Broadly, the Respondent’s case is that:
- The disputed domain name <navimumbai-airport.com> is a descriptive domain name.
- The disputed domain name was registered long before the Complainant’s mark NAVI MUMBAI AIRPORT came into existence.
- The Complainant’s mark was applied for registration on December 26, 2017, which is much later than the date of the registration of the disputed domain name.
- The trademarks for NAVI MUMBAI AIRPORT and NAVI MUMBAI INTERNATIONAL AIRPORT, are not registered.
- The use of the said name on the part of the Complainant did not materialize until November 2017, when the GVK Group won the bid for construction of the airport at Navi Mumbai.
- The disputed domain name was registered in good faith and putting it on SEDO, which is a worldwide domain name marketplace, is absolutely legitimate and does not infringe the rights of the Complainant. The use of parking page shows related links, and clicking on those sponsored links makes no reference to the Complainant.
6. Discussion and Findings
To have the disputed domain name transferred, the Complainant must prove each of the following:
(i) that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name;
(iii) that the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has shown that it holds valid common law rights in the marks NAVI MUMBAI INTERNATIONAL AIRPORT PRIVATE LIMITED and NMIA, on account of priority in adoption as well as use and the reputation consequently accruing thereto in the course of trade.
The Government of India gave its “in-principle” approval for the development of the Greenfield International Airport in July 2007. The Government of Maharashtra announced its intention for the construction of new International Airport at Navi Mumbai in July 2008. The project for the construction of the second international airport at Navi Mumbai was publicized in the print, television and electronic media. In pursuance of the said approval, notification and the appointment of a nodal agency, process for the construction of an international airport at Navi Mumbai commenced and on account of the said efforts the foundation stone for the project was made on February 18, 2018. The proposal for the construction of the second international airport at Navi Mumbai was the subject of news and debates in the print and electronic media since July 2007. Several news reports published by leading media houses like Economic Times, Business Today, The Hindu, Financial Express, The Indian Express, DNA India, NDTV, Business Standard, Business Line, India Today, Firstpost, Live Mint, Republic TV, Asian Age, Times Group, Daily Pioneer and articles are accessible to the general public online and in print enhancing the knowledge for the project of the second international airport at Navi Mumbai. Moreover, national and local television channels closely monitored and covered various activities of the Complainant.
It was a matter of public knowledge that a second International Airport is coming up at Navi Mumbai for which the process had begun in July 2007. In consequence of the said approval, further steps for the designing, construction, financing and the operation of the “Navi Mumbai International Airport” were in place. The mark NAVI MUMBAI AIRPORT DEVELOPERS PRIVATE LIMITED was adopted on March 26, 2007. NAVI MUMBAI AIRPORT forms an essential feature of the corporate name of the said company.
In G. Bellentani 1821 S.p.A v. Stanley Filoramo, WIPO Case No. D2003-0783, the panel held that it is possible to obtain unregistered trademark/service mark rights to a trade name and unregistered trademark and/or service mark rights are sufficient for the purposes of paragraph 4(a)(i) of the Policy.
In Nu Mark LLC v. Bui, Long, WIPO Case No. D2013-1785, the panel held that common law rights may give rise to trademark rights under paragraph 4(a)(i) of the UDRP. In Sydney Opera House Trust v. Trilynx Pty. Limited, WIPO Case No. D2000-1224, the panel found that the body corporate charged with the management and administration of the centre for performing arts was entitled to use the mark SYDNEY OPERA HOUSE as a common law trademark. Moreover, in BAA plc, Aberdeen Airport Limited v. Mr. H. Hashimi, WIPO Case No. D2004-0717, the panel found that the complainant had common law rights in the mark ABERDEEN AIRPORT.
The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.3 states that “to establish unregistered or common law trademark rights for purposes of the UDRP, the complainant must show that its mark has become a distinctive identifier which consumers associate with the complainant’s goods and/or services”.
The Respondent contends that the term “Navi Mumbai Airport” is generic / descriptive and bona fide use thereof cannot be prevented. However, this Panel notes that descriptive words or other devices used as trademarks may acquire distinctiveness or secondary meaning over a period of time, when such mark has come to signify that particular goods or services are rendered by a particular person or entity. It could be demonstrated by providing material to show public knowledge or awareness of such mark.
The Government of India approved only one airport in Navi Mumbai. This Panel finds that Internet users will identify NAVI MUMBAI INTERNATIONAL AIRPORT only with the Complainant. Moreover, any person who is seeking information about the Complainant may type the name “navi mumbai – airport” into his/her web browser expecting to be connected with a website operated by the Complainant and not a third party.
In Airport Authority v. Hong Kong Airport Inc, WIPO Case No. D2001-1417, the panel held that the disputed domain name <hongkongairport.com> was confusingly similar to the Complainant’s HONG KONG INTERNATIONAL AIRPORT Mark. The panel observed that in Hong Kong, China, there is only one airport and the absence of the word “international” from the domain name is insignificant to the members of the public and hence insufficient to prevent consumer confusion.
Moreover, the inclusion of a “-“ (hyphen) as part of the domain name will also be regarded as insufficient to prevent the threshold of consumer confusion (see section 1.8 of WIPO Overview 3.0). In Ulysse Nardin SA v. Wang Xin, WIPO Case No. D2015-0541, the panel held that a hyphen has no distinctiveness by itself.
The other contentions of the Respondent that the domain name was registered prior to the date when Navi Mumbai Airport came into existence is also not sustainable for the reason that the proposal for establishment of second international airport at Navi Mumbai was in the public domain since July 2007.
The Panel finds that the Complainant has submitted relevant evidence demonstrating common law trademark rights in NAVI MUMBAI INTERNATIONAL AIRPORT since July 2007 for purposes of the UDRP. Further, several of the Complainant’s trademark applications have been accepted for registration by the Indian Trademark Office, including no. 3711304 for NAVI MUMBAI INTERNATIONAL AIRPORT PRIVATE LIMITED, which has a journal date of April 23, 2018.
The Panel, thus, finds that the disputed domain name is confusingly similar to the common law or registered trademarks and service marks held by the Complainant.
B. Rights or Legitimate Interests
The Complainant’s argumentation implies that the Respondent does not have any rights or legitimate interests in the disputed domain name. The Complainant has never authorized the Respondent to register or use the disputed domain name in any manner whatsoever. The Respondent either as an individual, business or organization is not known under the name “Navi Mumbai Airport”.
A Google search conducted for the term “Navi Mumbai Airport” has not provided any search results pertaining to the Respondent or her/his activities under the disputed domain name, which suggests that the Respondent is not commonly known under the name “Navi Mumbai Airport” or has any fair or legitimate reason to adopt the same. Nor has the Respondent alleged it is commonly known under that name.
The Respondent failed to explain as to how he holds any rights or legitimate interests in the disputed domain name. In Sydney Airport Corporation v. John Crilly, WIPO Case No. D2005-0989, the panel held that as the respondent had appropriated the Complainant’s name, the prima facie assumption was that the respondent did so for an illegitimate purpose. (Also see Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; NEUSIEDLER AKTIENGESELLSCHAFT v. VINAYAK KULKARNI, WIPO Case No. D2000-1769).
The Respondent has neither made a legitimate or fair use of the disputed domain name nor done any demonstrable preparations for using the disputed domain name. The Government of India gave “in-principle” approval in July 2007 and the Government of Maharashtra approved the same in 2008. The Respondent after seeing the publicity and media presence around this project, registered the disputed domain name in March 2017. The disputed domain name redirects to a parked page which states the following:
“Buy This Domain:
The domain navimumbai-airport.com may be for sale by its owner!”
A search conducted on the website “www.archive.org” made by the Panel indicated that the Respondent had not at all used the disputed domain name in any manner whatsoever. The Respondent has never developed any website at the disputed domain name and is therefore not using the disputed domain name in connection with any bona fide offering of any goods or services.
Internet users who click on the hyperlinks provided over and above the text “Buy This Domain” will be redirected to the website “www.sedo.com”.
In Master Card International Incorporated v. North Tustin Dental Associates, WIPO Case No. D2007-1412, the panel held that respondent holds no right or legitimate interests over the disputed domain name as he has not developed any website at the domain name and is therefore not using the domain name in connection with offering any goods or services. (See also Teachers Insurance and Annuity Association of America v. Wreaks Communication Group, WIPO Case No. D2006-0483). Moreover, in Euromarket Designs, Inc. v. Domain For Sale VMI, WIPO Case No. D2000-1195, the panel stated that as “the domain has been registered since mid-March 2000, it is fair to infer that the [r]espondent has not made, nor taken any preparatory steps to make” any legitimate use of the domain name.
In light of the abovementioned facts and submissions, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name and is not making any legitimate, noncommercial or fair use of the disputed domain name.
C. Registered and Used in Bad Faith
The registration of the disputed domain name indicates the opportunistic behaviour and bad faith of the Respondent. The fame and popularity of the Complainant’s project of the second international airport at Navi Mumbai has been established since July 2007.
The disputed domain name incorporates the Complainant’s mark and the word “airport” related to the Complainant’s project, and any person who visits the website associated with the disputed domain name might therefore falsely assume a business connection between the Respondent and the Complainant, or believe that the information provided therein, if any, as the true and correct information about the Complainant and its services.
The Respondent, who is also located in India, registered the disputed domain name in 2017 after significant media attention around the airport, and therefore the Panel finds that the Respondent registered the disputed domain name in bad faith. Further, the Panel finds that the Respondent registered the disputed domain name primarily for the purposes of selling either to the Complainant or to a competitor. If a visitor clicks on the hyperlink provided along with the text “Buy This Domain”, on visiting the disputed domain name the visitor will be redirected to another website at “www.sedo.com” (“SEDO parking website”) where the disputed domain name is listed for sale with the minimum offer as GBP 75.
Additionally, the disputed domain name website also incorporates sponsored links. In Smith & Nephew plc v. Wesley Perkins, Smith and Nephew Trading, WIPO Case No. D2008-1029, the panel explained the nature of domain name parking. The panel observed “It is now well-known that how these sorts of pages operate. A domain name owner “parks” the domain name with a domain name parking service provider such as Sedo. The service provider then generates a page that incorporates sponsored links or links to sponsored links. When an Internet user clicks on these sponsored links, the entity sponsoring that link will make a payment. This “click-through revenue” is then ordinarily split between the domain name parking service provider and the owner of the domain name”. The Respondent in this case also uses the disputed domain name as a parking page with a link to “www.sedo.com” and providing a website with sponsored links or links to sponsored links.
Finally, the email correspondence between the Parties indicates that the disputed domain name was registered by the Respondent with the primary purpose of selling the domain name. On November 16, 2017, an authorized representative of the Complainant contacted the Respondent to acquire the disputed domain name along with other domain names. However, the Respondent responded to the Complainant as hereunder:
“I am looking at 10 figures, in dollars. I am also willing to accept payments in instalments over a 10 year period and hand over full ownership after this period. The domains can be used by you immediately.”
Thereafter, on the same day Respondent changed the said exorbitant price to the following:
“Sorry, that is 8 figures US Dollars, not 10 as stated below.”
The Respondent’s act of demanding an exorbitant amount which is in excess of the expenses incurred by him prove his bad faith intent. In World Wrestling Federation Entertainment, Inc. v. Michael Bosman, WIPO Case No. D1999-0001, the respondent’s offer to sell the disputed domain name for a valuable consideration in excess of any out-of-pocket costs directly related to the domain name was declared as a bad faith use of the disputed domain name by the panel.
Furthermore the WhoIs relating to the disputed domain name indicates that the Respondent has not given his complete contact details while registering the disputed domain name, with “For Inquiries Contact Email Below” provided in place of a street address. The Respondent’s act of not providing his complete and correct address while registering the disputed domain name may also suggests bad faith. In Home Director, Inc. v. HomeDirector, WIPO Case No. D2000-0111, the panel held that providing false or misleading information in connection with the registration of the domain name is evidence of bad faith.
In light of the aforementioned facts and submissions, the Panel finds that the Respondent’s registration and use of the disputed domain name <navimumbai-airport.com> is in bad faith and is with the intention of gaining valuable consideration in excess of the out-of-pocket costs related to the disputed domain name, and with the intention of attempting to attract, for commercial gain, Internet users to the disputed domain name website by creating a likelihood of confusion with the Complainant’s marks.
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 <navimumbai-airport.com> be transferred to the Complainant.
Date: July 16, 2018