WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bharti Airtel Limited v. Registration Private, Domains By Proxy, LLC / Vivek Bhardwaj, Viskon Consulting
Case No. D2018-2950
1. The Parties
The Complainant is Bharti Airtel Limited of New Delhi, India, represented by Inttl Advocare, India.
The Respondent is Registration Private, Domains By Proxy, LLC, of Scottsdale, Arizona, United States of America / Vivek Bhardwaj, Viskon Consulting, of New Delhi, India.
2. The Domain Name and Registrar
The disputed domain name <airtelthanks.com> 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 December 28, 2018. On December 28, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 28, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 3, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on January 3, 2019. The Center received a communication from the Respondent on January 3, 2019, offering the disputed domain name for sale.
The Center verified that the Complaint, together with the amended 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 January 7, 2019. In accordance with the Rules, paragraph 5, the due date for Response was January 27, 2019. The Center notified the Parties of the commencement of the panel appointment process on January 28, 2019. The Respondent sent an email communication on January 28, 2019.
The Center appointed Amarjit Singh as the sole panelist in this matter on January 30, 2019. 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 telecom service provider engaged in a variety of telecommunication services including broadband and Internet services, satellite, carrier, international services, calling card, e-business services, etc., operating under the mark AIRTEL. The Complainant was previously incorporated as Bharti Tele-Ventures Limited. Thereafter in the year 2006, the name of the company was changed to Bharti Airtel Limited. Complainant has provided the certificates of incorporation reflecting these changes as Annexure 4.
In the year 1994, the Complainant conceived, invented, coined, and adopted the mark AIRTEL as its trademark for its goods and services.
The Complainant is the registered owner, user, and proprietor of the trademark AIRTEL in India as well as in several jurisdictions worldwide. The first registration 648684 in respect of the mark AIRTEL dates back to December 14, 1994.
The Complainant is a registered proprietor of the trademark AIRTEL THANKS, #AIRTELTHANKS, AIRTEL THANKS – PREMIERE MEMBERSHIP, and #AIRTELTHANKS (Logo) in classes 9, 35, and 38 in India, registered in 2018. The Complainant has provided a list of trademark registrations along with the Complaint in Annexure 7, 8, 9, and 28 of the Complaint.
The Complainant has registered various domain names incorporating its mark AIRTEL. WhoIs print outs of all such registrations have been annexed as Annexure 10 to the Complaint.
The Complainant has protected its right in the mark AIRTEL including domain names such as <airtelworld.in>, <bhartiairtel.com>, <bharti-airtel.com>, and <airtelasia.com>. Court orders in favour of the Complainant in respect of such domain names have been annexed to the Complaint as Annexure 12, 14, 15, and 16 respectively. The Complaint has also sought protection, under the UDRP, for its domains <airtelusainc.com>, <airteluk.com>, <airtelasiapacific.com>, <airteleurope.com>, <airtel.com>, <airteldigitaldish.com>, and other such domains comprising the mark AIRTEL. Orders of each domain name dispute have been annexed to the Complaint as Annexure 17, 18, 19, 20, 21, 22, 23, 24, 25, and 26.
The disputed domain name was registered on November 21, 2018. At the time of the filing of the Complaint, the disputed domain name resolved to a parked landing page, stating that “[t]his Web page is parked FREE courtesy of GoDaddy”.
5. Parties’ Contentions
The Complainant in the present proceedings is Bharti Airtel Limited, a company incorporated under the laws of India, having its registered office in New Delhi.
The Complainant contends that in August 2018, the Complainant launched the AIRTEL THANKS/#AIRTELTHANKS program, its biggest digital program.
Ever since its launch, the Complainant has been extensively advertising and promoting its trade mark/brand AIRTEL THANKS/#AIRTELTHANKS, including on its website “www.airtel.in/airtel-thanks”, social media websites, mobile applications, print media, television, and other such forms of promotion.
The Complainant had conceived the distinctive trade mark AIRTEL THANKS/#AIRTELTHANKS much prior to its launch and obtained registrations for its trade mark AIRTEL THANKS on March 23, 2018 in classes 9, 35, and 38.
Shortly after the launch of the program under the trademark AIRTEL THANKS, the Complainant came to know that the Respondent herein had obtained a domain name registration for <airtelthanks.com>.
Complainant submits that when the Complainant sought to register the disputed domain name it was shocked to note that the Respondent herein had obtained domain name registration for <airtelthanks.com>. The Complainant immediately searched the WhoIs database for the disputed domain name and found the registrant information mentioned therein.
The Complainant submits that the name of the disputed domain name, i.e. <airtelthanks.com>, itself suggests that it has been registered with mala fide intent and without any legitimate interest. It is also submitted that the disputed domain name <airtelthanks.com> has been registered by the Respondent being fully aware of the rights of the Complainant in its well-known trademark AIRTEL and with the dishonest intent to capitalize on the same. It is also submitted by the Complainant that the registration has been done to extort money from the Complainant as when the Complainant sought to register the disputed domain name it was shocked to note that the purchase price for the same is about INR 7,000,000 (approximately USD 100,000).
Complainant contends that if the disputed domain name continues to be registered in the name of the Respondent, it may be used to promote illegal and unlawful conduct and disseminate misinformation about the Complainant’s program. There is also imminent threat that the disputed domain can be used to promote activities of the Complainant’s competitors or divert consumers from the Complainant. Eventually, it will be harming the goodwill of the Complainant.
The Complainant raised arguments on following three grounds:
a. that the disputed domain name is identical and confusingly similar to trade marks in which the Complainant has rights;
b. that the Respondent has no rights or legitimate interests in the disputed domain name; and
c. that the disputed domain name was registered in bad faith and is being used in bad faith.
The Respondent in the present proceedings is Vivek Bhardwaj, Viskon Consulting, of New Delhi, India.
The Respondent registered the disputed domain name on November 12, 2018.
The Respondent, after being notified about the Complaint, submitted on January 3, 2019, that it purchased this domain from GoDaddy a few months back and that it had put the disputed domain name up for premium listing there. The Respondent further submitted that if the Complainant was interested in buying the disputed domain name, the Respondent would be happy to trade the disputed domain name at a good price.
The Respondent did not dispute any contentions raised by the Complainant in its Complaint.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed in this administrative proceeding, the Complainant must prove that: (i) the disputed domain name is identical or confusingly similar to the trademark or service mark of Complainant; (ii) Respondent has no rights or legitimate interests in respect to the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith.
These elements are discussed in turn below. In considering these elements, paragraph 15(a) of the Rules provides that the Panel shall decide the Complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the trademarks acquired through use and registration.
The Complainant has shown that it owns trademark registrations in respect of the marks AIRTEL and AIRTEL THANKS in various jurisdictions including India.
There is no dispute that AIRTEL is, perhaps, one of the most famous trademarks that is recognized in India. There is also no dispute as to the adoption, use, and registration of the mark AIRTEL THANKS by the Complainant.
The disputed domain name incorporates the entirety of trademark AIRTEL THANKS. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.1; “If the complainant owns a registered trademark then it satisfies the threshold requirement of having trademark rights. The location of the registered trademark and the goods and/or services it is registered for are irrelevant when finding rights in a mark.” See also Uniroyal Engineered Products, Inc. v. Nauga Network Services, WIPO Case No. D2000-0503; Thaigem Global Marketing Limited v. Sanchai Aree, WIPO Case No. D2002-0358; Consorzio del Formaggio Parmigiano Reggiano v. La casa del Latte di Bibulic Adriano, WIPO Case No. D2003-0661.
In the above circumstances, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark and the first element of the Policy has, therefore, been met.
B. Rights or Legitimate Interests
The Panel does not automatically find that the Respondent has no rights or legitimate interests. Even when a respondent fails to participate in a UDRP dispute, a complainant is required to make out at least a prima facie case that the respondent lacks rights or legitimate interests. Once such a prima facie case is made, the burden shifts to the respondent to demonstrate rights or legitimate interests under the Policy. If the respondent fails to come forward with such appropriate allegations or evidence, the complainant is deemed to have satisfied the second element of the Policy.
The Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
The Complainant’s contention that the Respondent has registered the disputed domain name to block the Complainant from asserting its lawful rights and to extort money from the Complainant is accepted by the Panel in view of the Respondent’s intent of selling the domain name at a premium to the Complainant as per the Respondent’s email dated January 3, 2019.
The Complainant further submits that the Respondent has no business connection, approval, or consent from the Complainant, in any manner, to use the trademark AIRTEL/AIRTEL THANKS as part of its disputed domain name.
The Complainant has prima facie established that the Respondent lacks rights or legitimate interest in the disputed domain name. The burden now shifts to the Respondent to prove its legitimate interest in the disputed domain name. However, the Respondent failed to demonstrate its legitimate interest in the disputed domain name, as it states that it is willing to sell the disputed domain name to the Complainant for a premium. See WIPO Overview 3.0, section 2.1:
“[w]hile the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.Relevant decisions: Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o, WIPO Case No. D2004-0110.
Based on the evidence presented, the Panel concludes that Respondent lacks rights or legitimate interests in the disputed domain name.
The second element of the Policy has, therefore, been met.
C. Registered and Used in Bad Faith
The Policy provides guidance on activities that might be considered evidence of bad faith registration and use of a domain name. That guidance is found in paragraph 4(b) of the Policy. Circumstances are described in paragraph 4(b) that might lead a panel to conclude that the registration and use of a disputed domain name is in bad faith. The description of the circumstances are addressed to the respondent. They are:
“(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.”
The disputed domain name is listed for sale at a premium on GoDaddy for INR 7,0,06,971.83 plus INR 959 per year. The Respondent, by its email January 3, 2019, stated that he is willing to trade the disputed domain name for a good price.
This is sufficient to establish bad faith registration and use of the disputed domain name by the Respondent. The Respondent did not dispute any of the contentions raised by the Complainant. Where a domain name has been registered with a primary purpose of selling or profiting by capitalizing upon goodwill and reputation of the well-known mark by offering for sale to the owner of the trademark, it is prima facie evidence of bad faith.
It has been alleged by the Complainant that Respondent herein has also registered <airtelthanks.in> on November 21, 2018, with similar intent of profiting from the disputed domain name incorporating complainant’s well-known trade mark.
The registration of the disputed domain name incorporating the mark AIRTEL THANKS of the Complainant by the Respondent is subsequent to the adoption, use, and registration of the mark. Thus, by registering the disputed domain name, the Respondent has prevented the owner of the trademark to reflect the mark in corresponding domain names.
The Complainant is promoting its mark AIRTEL THANKS through its webpage “www.airtel.in/airtel-thanks"” and contends that the Respondent’s primary purpose for registering the disputed domain names is to capitalize upon the goodwill and reputation of the well-known mark and to divert the traffic to the disputed domain name. See, for instance, Maori Television Service v. Damien Sampat, WIPO Case No. D2005-0524:
“A finding of bad faith may be made whether the Respondent knew or should have known of the registration and use of the trade mark prior to registering the domain: see Faonnable SAS v. Names4Sale ( WIPO Case No. D2001-1365), Vakko Holding Anonim Sti. v. Esat Ist ( WIPO Case No. D2001-1173). The Respondent being a New Zealand resident, the Panel considers that it is most unlikely that he did not know of the name/mark, Maori Television, when he registered the domain name in question.”
This Panel concludes that the Respondent knew or should have known of the existence of the Complainant based on the facts that the Complainant's trademark are widely publicized globally and constantly featured throughout the Internet, and the Respondent is an Indian resident whom should have known of the rights of the Complainant in the mark AIRTEL THANKS. The Panel further finds that the Respondent used the disputed domain name in bad faith by registering it with the intention of selling it at a premium to the Complainant.
For all the above reasons, the Panel concludes that the disputed domain name has been registered and is being used in bad faith. Accordingly, 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 <airtelthanks.com> be transferred to the Complainant.
Date: February 13, 2019