The Complainant is Navi Mumbai International Airport Private Limited of Mumbai, India, represented by BananaIP Counsels, India.
The Respondent is Kim John of Mumbai, India, represented by Josey Oommen, India.
The disputed domain name <nmiairport.com> is registered with GoDaddy.com, LLC (the "Registrar").
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 12, 2018. On July 12, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 12, 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 July 19, 2018. In accordance with the Rules, paragraph 5, the due date for Response was August 8, 2018. The Center received six informal email communications between July 16 and 24, 2018.
The Center appointed Ashwinie Kumar Bansal as the sole panelist in this matter on August 16, 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.
The Government of India had given approval for the development of a greenfield international airport at Navi Mumbai and in turn, the Government of Maharashtra in July, 2008 had notified the City and Industrial Development Corporation of Maharashtra Limited ("CIDCO") as the nodal agency to act on its behalf to undertake the development of Navi Mumbai International Airport approved by the Government of India under the Public Private Partnership ("PPP") framework. The Complainant was incorporated on March 26, 2007 with the objective of designing, constructing, building, financing and operating the Navi Mumbai International Airport through PPP model with CIDCO.
The Complainant owns numerous trademark registrations, such as Indian trademarks no. 12041 NAVI MUMBAI INTERNATIONAL AIRPORT PRIVATE LIMITED (word), registered on December 18, 2017 and no. 3709742 NMIA (word) registered on December 22, 2017 (the "Trademarks").
The Respondent registered the disputed domain name <nmiairport.com> on August 2, 2016. The disputed domain name redirects to the website "www.kodukulanji.com/Local".
The Complainant is currently engaged in design, construction, operation and maintenance of Navi Mumbai International Airport which is commonly known as "NMIA" in abbreviated form. It is the second international airport being developed for the Mumbai Metropolitan area after the existing Chhatrapati Shivaji International Airport. Ever since the Government of Maharashtra announced its intention to design, develop, construct, finance and operate a new international airport at Navi Mumbai, the Complainant and its Trademarks NAVI MUMBAI INTERNATIONAL AIRPORT PRIVATE LIMITED and NMIA were extensively reported by the print, television and digital media and continue to be the subject of reports and discussions till date. The foundation stone of the airport was laid by Prime Minister of India Shri Narendra Modi on February 18, 2018. This event was widely reported by national and international news agencies.
The Trademarks NAVI MUMBAI INTERNATIONAL AIRPORT PRIVATE LIMITED and NMIA are exclusively associated with the Complainant. Any use of the Trademarks or substantially similar Trademarks like "NAVI MUMBAI AIRPORT" or "NMIAIRPORT" by any third party will mislead the public to believe that the Complainant has authorized him or her to use such trademarks or there exists an association between the Complainant and such party. The Trademarks NAVI MUMBAI INTERNATIONAL AIRPORT PRIVATE LIMITED and NMIA are known among the substantial segment of the public and therefore, qualify to be called well-known trademarks.
Aggrieved by the registration of the disputed domain name by the Respondent, the Complainant through its counsels issued legal notices to the Respondent requesting him to transfer the disputed domain name.
The Complainant issued First Cease and Desist Notice dated February 9, 2018, which was sent via registered post and through email. The Respondent failed to reply to the First Cease and Desist Notice. Therefore, the Complainant issued the Second Cease and Desist Notice dated February 19, 2018. Thereafter, on February 24, 2018, the Respondent replied to the Complainant's Second Cease and Desist Notice, via email, demanding an arbitrary amount of INR 200,000 for transferring the disputed domain name to the Complainant. In order to resolve the dispute amicably, the Complainant made a bona fide and reasonable counter offer of INR 25,000 to the Respondent in exchange of transferring the disputed domain name to the Complainant. The Respondent, via email dated April 9, 2018, made a second offer to the Complainant, demanding INR 50,000 in exchange of transferring the disputed domain name to the Complainant. The Complainant in good faith agreed to the second offer made by the Respondent and the Parties telephonically discussed the terms of the transfer. Based on the discussion between the Parties, the Complainant drafted a domain name transfer agreement and listed all the terms and conditions of transfer in the said agreement. The said domain name transfer agreement was sent to the Respondent via an email dated May 3, 2018. In the email dated May 3, 2018, the Complainant also requested the Respondent to schedule a meeting where the said domain name transfer agreement can be signed. After obtaining consent from the Respondent, the Complainant scheduled a meeting on May 24, 2018 at its office, for facilitating the signing of the domain name transfer agreement and informed about the same to the Respondent via email dated May 9, 2018. But the Respondent, via email dated May 23, 2018, informed the Complainant that the Respondent had purchased and maintained the disputed domain name on behalf of a third party and cannot transfer the disputed domain name to the Complainant.
The Respondent has failed to articulate how he has any claim, rights or interests over the disputed domain name or show any valid, actual or contemplated use of the disputed domain name that would not be illegitimate and illegal. Moreover, despite repeated efforts by the Complainant to resolve the dispute amicably and obtain the disputed domain name that should rightfully belong to the Complainant, the Respondent has fraudulently misrepresented that he was willing to transfer the disputed domain name with the intention of delaying legal proceedings.
The Government of India has approved the airport hence, the public at large and Internet users are likely to identify NAVI MUMBAI INTERNATIONAL AIRPORT PRIVATE LIMITED or NMIA as NMI AIRPORT. Any person who visits the website associated with the disputed domain name might assume that the information provided therein, if any, is true and correct information about the Complainant and its services.
Due to illegal and mala fide registration of disputed domain name by the Respondent, general public would be deceived into believing that information provided by the Respondent on the disputed domain, if any, is authentic and accurate information coming from the Complainant. The term NMIA is a coined term which does not have any dictionary meaning. The term NMIA is commonly used as an abbreviation for NAVI MUMBAI INTERNATIONAL AIRPORT. A Google search conducted for the terms NMIA and NAVI MUMBAI INTERNATIONAL AIRPORT has not provided any search results pertaining to the Respondent or his activities under the disputed domain name. The Respondent is not commonly known under the names "Navi Mumbai International Airport", "NMIA" or "NMI Airport" nor does it have any fair or legitimate reason to adopt the same. The Respondent neither has any legitimate interests in the disputed domain name nor is he making any legitimate, noncommercial or fair use of 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 "NMIA" or "Navi Mumbai International Airport".
The Complainant has no connection with the Respondent and has not licensed or otherwise permitted the Respondent to use its Trademarks NMIA or NAVI MUMBAI INTERNATIONAL AIRPORT or to register the disputed domain name that incorporates the Complainant's trademark in its entirety. The Respondent has neither made a legitimate use of the disputed domain name nor done any demonstrable preparations for using the disputed domain name. The Complainant submits that the Government of India gave "in-principle" approval in July 2007 and the Government of Maharashtra approved the same in 2008.
The Complainant submits that the Respondent is not associated with the Complainant in any manner and it has never granted any permission or authorization to the Respondent to use its Trademarks or substantially similar versions of its Trademarks like "NMIAIRPORT". The Complainant submits that the registration and use of the disputed domain name is a violation of the trademark rights held by the Complainant in the Trademarks NAVI MUMBAI INTERNATIONAL AIRPORT PRIVATE LIMITED and NMIA.
The Respondent has registered or acquired the disputed domain name primarily for the purposes of selling the disputed domain name either to the Complainant or to a competitor. The Respondent, via email dated February 24, 2018, demanded an arbitrary amount of INR 200,000 for transferring the disputed domain name to the Complainant.
The Respondent's act of not providing his complete and correct address while registering the disputed domain name also prove his mala fide intent. By registering the disputed domain name which corresponds to the well-known Trademark of the Complainant, the Respondent is trying to illegitimately lure traffic to its other website "www.kodukulanji.com/Local".
The Respondent did not file a formal response to the Complainant's contentions. However, he sent six emails to the Center and the Registrar, protesting against locking of the disputed domain name during the proceedings and further requesting for unlocking the same.
Paragraph 4(a) of the Policy, 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.
The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0") section 1.3 provides the consensus view of panelists: "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. Relevant evidence demonstrating such acquired distinctiveness (also referred to as secondary meaning) includes a range of factors such as (i) the duration and nature of use of the mark, (ii) the amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public (e.g., consumer, industry, media) recognition, and (v) consumer surveys". The second Trademark NMIA is abbreviation of NAVI MUMBAI INTERNATIONAL AIRPORT, which is closely connected with the Complainant. The Government of India and Government of Maharashtra had planned the construction and development of Navi Mumbai International Airport. The Complainant was incorporated in the year 2007 for this purpose. The first Trademark NAVI MUMBAI INTERNATIONAL AIRPORT PRIVATE LIMITED is also the name of the Complainant's company. Since the Complainant's incorporation, these trademarks have been used by the Complainant continuously without any interruption. Over the period of more than 10 years, the term NMIA has become popular in relation to airport and aviation business. General public has started using the term NMIA for NAVI MUMBAI INTERNATIONAL AIRPORT. By virtue of continuous use, the Trademarks NAVI MUMBAI INTERNATIONAL AIRPORT PRIVATE LIMITED and NMIA have become distinctive identifier, which the general public associate with the Complainant.
The Complainant on December 22, 2017 has applied for trademark registration of the Trademarks NAVI MUMBAI INTERNATIONAL AIRPORT PRIVATE LIMITED and NMIA under classes 8, 9, 12, 16, 18, 20, 24, 25, 32, 35, 36, 37, 39, 42 and 43. The Trademark NMIA has already been registered in classes 8, 9, 12, 16, 18, 20, 24, 25, 32, 36, 37, 39, 42 and 43. Twelve out of the fifteen applications filed by the Complainant for registration of Trademark NAVI MUMBAI INTERNATIONAL AIRPORT PRIVATE LIMITED have been accepted for publication.
The Complainant is owner of the Trademark NMIA. First three letters "n", "m" and "I" in the trademark refer to the words "Navi", "Mumbai" and "international" respectively and last letter "a" refers to the word "airport". NMIA is also an abbreviation of NAVI MUMBAI INTERNATIONAL AIRPORT which is connected with the Complainant. The disputed domain name incorporates the dominant part 'NMI' of the Trademark NMIA of the Complainant. The last letter "a" of the trademark has been replaced by the word "airport" in the disputed domain name. The Respondent has registered the disputed domain name, which is a combination of the Complainant's trademark and a suffix which is descriptive of the Complainant's business. The dominant features of the relevant Trademarks "NMI" and "Airport" are recognizable in the disputed domain name.
The 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 Trademark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that Trademark for purposes of UDRP standing."
In consideration of the foregoing paragraph, the Panel finds that the disputed domain name <nmiairport.com> is confusingly similar to the Trademarks in which the Complainant has rights.
Therefore, the Panel is satisfied that the first condition under the Policy is met.
The Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in the disputed domain name <nmiairport.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 coming forward with evidence demonstrating rights or legitimate interests in the disputed domain name.
The Respondent has registered the disputed domain name consisting of the dominant features of the Trademarks "NMI" and "Airport" which are recognizable in the disputed domain name. The Complainant had been using the Trademark for a long time. The Complainant has not authorized or permitted the Respondent to use the Trademark.
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 disputed 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 formal response or to produce any evidence in support of its claims 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 as per paragraph 4(c) of the Policy.
Based on the Complainant's contentions outlined under secion 5.A and the facts as stated above, the Panel finds that the Complainant has made out an unrebutted case. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name <nmiairport.com> in accordance with paragraph 4(a)(ii) of the Policy.
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 Complainant has produced evidence of long use of the Trademarks and also registration thereof in its favour given by the Trademark Registry. The disputed domain name which is a combination of the Complainant's trademark and a term which was descriptive of the Complainant's business is substantial evidence that the Respondent was targeting the Complainant at the time of registering the disputed domain name. The Respondent neither has any rights or legitimate interests in the disputed domain name nor he is making any legitimate, noncommercial or fair use of the disputed domain name.
The Complainant has not granted the Respondent permission or a license of any kind to use its Trademark or register the disputed domain name <nmiairport.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 of the disputed domain name.
Regarding the use of the disputed domain name, it redirects to the website "www.kodukulanji.com/Local" and the Respondent possibly receives some kind of income or other commercial benefit from this redirection. Although the website has no content, it does not prevent a finding of bad faith registration and use.
The Panel notes that in pre-complaint communications, the Respondent offered to sell the disputed domain name to the Complainant for INR 200,000. Such an amount clearly appears to exceed the Respondent's demonstrable out-of-pocket costs associated with the registration of the disputed domain name. From this, the Panel considers that the Respondent's intent in registering the disputed domain name was to profit from its sale to the Complainant who is the owner of the Trademarks, or to another. The Panel finds the Respondent's conduct to amount to bad faith under paragraph 4(b)(i) of the Policy.
The Respondent's true purpose in registering and using the disputed domain name <nmiairport.com> which incorporates the entire Trademark of the Complainant is, in the Panel's view, to capitalize on the reputation of the Trademark.
The Panel therefore finds that the disputed domain name <nmiairport.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 <nmiairport.com> be transferred to the Complainant.
Ashwinie Kumar Bansal
Sole Panelist
Date: August 24, 2018