WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Havells India Limited, QRG Enterprises Limited v. Jitender Bansal, Oxyzen Infolab Pvt Ltd
Case No. D2018-2509
1. The Parties
The Complainants are Havells India Limited and QRG Enterprises Limited, both of New Delhi, India, represented by Scriboard Advocates & Legal Consultants, India.
The Respondent is Jitender Bansal, Oxyzen Infolab Pvt Ltd of Indore, India.
2. The Domain Name and Registrar
The disputed domain name <havells.app> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 2, 2018. On November 2, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 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.
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 November 8, 2018. In accordance with the Rules, paragraph 5, the due date for Response was November 28, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 29, 2018.
The Center appointed Dr. Vinod K. Agarwal as the sole panelist in this matter on December 10, 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
According to the Complaint, there are two Complainants. The First Complainant, Havells India Limited, is the owner of the trademark HAVELLS for electrical goods. The Second Complainant, QRG Enterprises Limited, is the owner of the HAVELLS trademark under trademark classes associated with non-electrical goods. The Complainants are registered companies incorporated under the laws of India. The First Complainant is a Fast Moving Electrical Goods (FMEG) company and is a major power distribution equipment manufacturer. The Complainants manufacture a variety of products, such as, industrial and domestic circuit protection devices, cables and wires, motors, fans, home appliances, water heaters, power capacitors, CFLs, luminaries for domestic, commercial and industrial applications, etc.
According to the Complainants, the mark HAVELLS corresponds to a word coined and adopted by the Complainants’ predecessor in title, Late Haveli Ram Gandhi in the year 1942 and has been extensively used by them ever since.
According to the Complaint, the Complainants have secured the registration of the HAVELLS trademark in India as early as 1955. The Complainants have secured several trademark registrations for the HAVELLS mark in India as well as several other jurisdictions. Around 700 trademark applications and registrations for the HAVELLS trademark have been finalized or obtained across the world. The details of the countries where the Complainants have obtained registration of the HAVELLS trademark are given in Annexure G to the Complaint.
The Complainants have also obtained copyright registrations for the “Havells” logo and a stylized rendering of the word “Havells”.
The Complainants and their subsidiaries own more than 45 different domain names. Each such domain name comprises the word “havells”, such as <havells.net>, <havells.asia>, <havells.biz>, <havells.in>, etc. A list of such domain names is available at Annexure I to the Complaint.
The Complainants have a joint venture in China and have subsidiaries in around 50 different countries. The Complainants have acquired a number of international certifications, such as BASEC, KEMA, TUV Rheinland, CB certification for Fans, SABS Approved – AB Cables - South Africa and CE for Consumer Lighting.
The Complainants are also promoters and sponsors of various cricket events in India, such as the T20 World Cup, India-Australia Series and first four seasons of the Indian Premiere League (IPL). The Complainants have also sponsored some television programmes.
The disputed domain name was registered on May 12, 2018 and does not resolve to an active website.
5. Parties’ Contentions
The Complainants contend that each of the three elements specified in paragraph 4(a) of the Policy are applicable to the present dispute.
In relation to element (i), the Complainants contend that they are using the word “Havells” as their trade name and trademark. The HAVELLS trademark of the Complainants has acquired distinctiveness and is a well-known trademark associated solely and exclusively with the Complainants and their business and is identified by the purchasing public exclusively with the Complainants.
The use by any other person of the HAVELLS trademark or any other phonetically, visually or deceptively similar mark would not only result in immense confusion and deception but would also be in violation of the Complainants’ rights in the said trademark. The services rendered by the Complainants under the HAVELLS trademark have acquired formidable goodwill and enviable reputation amongst the members of the trade, consumers and the public.
The registration of the domain name <havells.app> by the Respondent is confusing inasmuch as it causes the public to believe that the Respondent is associated with the Complainants and also violates the Complainants’ trademark rights in the HAVELLS trademark. Thus, the intention of the Respondent is to create confusion in the commercial market.
The Complainants have further contended that the addition of suffixes or words such as “.app”, “.com”, “.org”, “.net” or “.travel” in the disputed domain name will not make any difference. It is not sufficient enough to distinguish and differentiate the disputed domain name with the registered trademark of the Complainants. It adds to the confusion.
Therefore, the domain name <havells.app> registered by the Respondent is identical or confusingly similar to the HAVELLS trademark in which the Complainants have rights.
In relation to element (ii), the Complainants contend that their HAVELLS trademark has become highly distinctive of the goods and services of the Complainants on account of extensive use, viewership and promotion. Further, the Respondent has no connection with the Complainants’ or any associated company of the Complainants, the Respondent is not commonly known by the disputed domain name or trademark, and the Respondent was not and is not authorized by the Complainants to register, hold or use the disputed domain name.
The Respondent is in no way related to the Complainants. The Complainants have not licensed or otherwise permitted or granted to the Respondent an authorization or a right to use their trademark or to apply for or use the domain name incorporating the mark and that nobody would use the word “havells” unless seeking to create an impression of an association with the Complainants.
The act of the Respondent constitutes passing off of the trademark of the Complainants. The Respondent registered the domain name for the sole purpose of creating confusion and misleading the general public and the customers of the Complainants. Thus, it is contended that there were no legitimate rights or interests of the Respondent in the disputed domain name.
Regarding the element (iii), the Complainants contend that the domain name was registered in bad faith and with an ill-motive to gain unfair commercial advantage, at the expense of the Complainants. The HAVELLS trademark, having being extensively used in relation to the business of the Complainants, has acquired distinctiveness and is understood and associated by consumers all around the world as the mark of the Complainant denoting their goods, services and business. The Respondent is only trying to usurp the reputation and goodwill of the Complainants’ HAVELLS trademark through the disputed domain name. The Respondent has not made any legitimate offering of goods or services through the disputed domain name. The disputed domain name does not have a functional website.
Further that, the main object of registering the domain name <havells.app> by the Respondent is to attract Internet users, for commercial gains to its website, by creating a likelihood of confusion with the Complainants’ HAVELLS trademark as to the source, sponsorship, affiliation or endorsement of the website. Therefore, the Respondent is using the disputed domain name in bad faith.
In support of their contentions, the Complainants have relied on a number of decisions of various UDRP panelists.
The Respondent did not reply to the Complainants’ contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel as to the principles the Panel is to use in rendering its decision. It says that, “A panelist shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
According to paragraph 4(a) of the Policy, the Complainant must prove that:
(i) The domain name is identical 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 respect of the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
A. Consolidation of Complainants
According to section 4.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0)”, complaints consolidating multiple complainants filing against a single respondent may be accepted by panels pursuant to paragraph 10(e) of the UDRP Rules. The Panel has examined whether the Complainants have “a common grievance against the respondent, or the respondent has engaged in common conduct that has affected the complainants in a similar fashion” and whether “it would be equitable and procedurally efficient to permit the consolidation”. The Panel finds that the Respondent’s behavior in registering and using the disputed domain name affects the Complainants in a similar fashion, as the First Complainant and Second Complainant each hold HAVELLS trademark registrations relating to different goods/services. Given the substantive link between the Complainants, it would also be equitable and procedurally efficient to permit consolidation in this case. Therefore, the Panel permits consolidation of the Complainants in this case.
B. Identical or Confusingly Similar
As per the WhoIs information, the Respondent created the disputed domain name <havells.app> on May 12, 2018.
According to the information submitted by the Complainants, the Complainants are the owners of the HAVELLS trademark. The HAVELLS trademark is registered in India and in certain countries of the world for many years.
The present dispute pertains to the domain name <havells.app>. The Complainants possess a large number of other domain names with the word “havells” as indicated above. The Complainants are also the owners of the HAVELLS trademark. Most of these domain names and the trademark have been created or registered by the Complainants long before the date of creation of the disputed domain name <havells.app>. The disputed domain name is similar or identical to the trademark of the Complainants.
Therefore, the Panel finds that the disputed domain name contains the HAVELLS trademark in its entirety and the generic Top-Level Domain “.app”, and the Panel finds therefore that the disputed domain name <havells.app> is confusingly similar or identical to the trademarks of the Complainant.
C. Rights or Legitimate Interests
According to paragraph 4(c) of the Policy, the Respondent may demonstrate its rights to or legitimate interest in the domain name by proving any of the following circumstances:
(i) before any notice to the Respondent of the dispute, the Respondent’s 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) the Respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights; or
(iii) The Respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent has not filed any response in this case. The Respondent is not, either as an individual, business or other organization, commonly known by the disputed domain name anywhere in the world. The Respondent is known by the name of Jitender Bansal. Further, no information is available regarding whether the Respondent has filed any application for the registration of the HAVELLS mark anywhere in the world.
In view of the fact that the Complainants have not licensed or otherwise permitted the Respondent to use their trademark or to apply for or use a domain name incorporating the HAVELLS trademark, and that nobody would use the word “havells” unless seeking to create an impression of an association with the Complainants, the Respondent’s display of the webpage when considered in its entirety does not constitute bona fide offering of goods and services.
The use of the disputed domain name by the Respondent does not amount to the bona fide offering of goods or services. Based on the Respondent’s default and the evidence in the Complaint, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration or use of the domain name in bad faith:
(i) Circumstances indicating that the Respondent has registered or 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 documented out-of-pocket costs directly related to the domain name; or
(ii) The Respondent has 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 it has engaged in a pattern of such conduct; or
(iii) The Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) By using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, internet users to its website 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 the Respondent’s website or location or of a product or service on its website or location.
The Complainant contends that the disputed domain name was registered or acquired primarily for the purpose of misleading the customers of the Complainants and to cash-in on the reputation of the Complainants. The Respondent is not making a noncommercial or fair use of the disputed domain name.
The registration of the disputed domain name fully incorporating the Complainants’ names clearly shows that the Respondent has in bad faith obtained the registration for the disputed domain names for the purpose of illegal trading and marketing. This and other information submitted by the Complainant leads to the presumption that the disputed domain name was registered and used by the Respondent in bad faith. The Panel notes that the disputed domain name does not resolve to an active website, and passive holding does not prevent a finding of bad faith registration and use.
Therefore, the Panel agrees with the said contention of the Complainants and concludes that the registration of the disputed domain name <havells.app> amounts to the registration and use of the domain name in “bad faith”. Paragraph 4(a)(iii) of the Policy is satisfied.
For the foregoing reasons, namely, that the domain name is confusingly similar to the mark in which the Complainants have rights, that the Respondent has no rights or legitimate interests in respect of the domain name, and that the domain name was registered in bad faith and is being used in bad faith, in accordance with paragraphs 4(i) of the Policy and Rule 15 of the Rules, the Panel orders that the disputed domain name <havells.app> be transferred to the Complainants.
Vinod K. Agarwal
Date: December 19, 2018