WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Ver Se Innovation Private Limited v. Mahendra Kumar Singh
Case No. D2019-0790
1. The Parties
The Complainant is Ver Se Innovation Private Limited of Bangalore, India, represented by BananaIP Counsels, India.
The Respondent is Mahendra Kumar Singh of Lucknow, India.
2. The Domain Name and Registrar
The disputed domain name <dailynewshunt.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 April 8, 2019. On April 8, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 9, 2019, 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on April 15, 2019.
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 April 23, 2019. In accordance with the Rules, paragraph 5, the due date for Response was May 13, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 14, 2019.
The Center appointed Harini Narayanswamy as the sole panelist in this matter on May 23, 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 in the business of online news and content aggregation. Its website “www.newshunt.com” and its mobile application “Newshunt” provide publishers and authors a platform to publish news and other content. The Complainant owns the trademarks NEWSHUNT and DAILYHUNT and has provided evidence of its trademark registrations and pending applications under different classes and various jurisdictions. Some of the Complainant’s registered marks in India, are: NEWSHUNT bearing number 1907414 under class 38 dated August 1, 2010 and is valid till August 1, 2020 (held by its wholly owned subsidiary Eterno Infotech Pvt. Ltd); and DAILYHUNT bearing number 3018703, under class 35 dated July 27, 2015, and valid until July 27, 2025.
The registration record reveals that the Respondent is located in the city of Lucknow. The Respondent Mahendra Kumar Singh registered the disputed domain name <dailynewshunt.com> on October 15, 2015. The Respondent has previously used the disputed domain name to display news and other content. Presently, the disputed domain name does not resolve to an active website. There is just a message which states “SUSPENDED, This Website has been Suspended. Please contact Technical Support Department”.
5. Parties’ Contentions
The Complainant states that it has adopted and used its NEWSHUNT trademark since 2009 and the mark is a unique coined combination of two unrelated words “News” and “Hunt”. The Complainant claims that it is among the first to broadcast content in different regional languages and is presently a dominant player that is followed and reported by big media entities like Forbes, The New York Times, and The Times of India.
The Complainant states that it had rebranded its business in August 2015 and adopted the trademark DAILYHUNT but continues to use the NEWSHUNT mark. The Complainant adds that its trademark DAILYHUNT is also a coined mark using two unrelated words “Daily” and “Hunt”. The DAILYHUNT mark is registered under classes 35, 38, 41, and 42, with a pending application under class 9 which has been accepted. The Complainant alleges that after the rebranding, its popularity increased and its activities are frequently reported in the media under different languages.
The Complainant argues that it has common law rights in the marks and has provided evidence of several news articles to show third party recognition of its marks, advertisements and marketing promotion of its marks and various awards that it has received. Referring to its large social media following, the Complainant states that its YOUTUBE, FACEBOOK, LINKEDIN, and TWITTER pages distribute news under its two trademarks. Its mobile application is very popular with about one hundred million downloads and its users allegedly spend 8 billion minutes every month on its mobile application. More than 1,400 publishers including leading news houses like Bloomberg, DNA, Outlook and others publish content in 14 different languages on its platform, states the Complainant, which consequently attracts well-known advertisement agencies.
The Complainant states it had sent cease and desist notices to the Respondent and has not received any reply from the Respondent. The Complainant has filed the present Complaint requesting for transfer of the disputed domain name on the grounds that: (i) The disputed domain name is confusingly similar to its trademarks NEWSHUNT and DAILYHUNT in which the Complainant has statutory and common law rights. (ii) The Respondent lacks rights or legitimate interests in the disputed domain name, which according to the Complainant was registered to benefit from the name and fame associated with its marks. (iii) The disputed domain name has been registered and is being used in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Policy under paragraph 4(a) states the Complainant is required to establish three elements to obtain the remedy of transfer of the disputed domain name, these are:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent lacks rights or legitimate interests in the disputed domain name; and
(ii) The disputed domain name was registered and is being used in bad faith by the Respondent
A. Identical or Confusingly Similar
The first element requires the Complainant to establish the disputed domain name is identical or confusingly similar to a trademark or a service mark in which it has rights.
The Complainant has provided evidence of use of its marks in commerce, such as third-party recognition of its marks, news reports, articles and write-ups referring to the Complainant’s trademarks, advertisements and evidence of marketing promotions of its marks and also awards and recognitions that the Complainant has received. The Panel notes that the Complainant has a considerable social media following and the popularity of its mobile phone application is significant. The Complainant has also provided evidence of its registered trademarks which is considered sufficient proof of trademark rights for purposes of paragraph 4(a)(i) of the Policy. See Section 1.2.1 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Overview 3.0). Based on all the evidence submitted, the Complainant is found to have successfully established its rights in the NEWSHUNT and DAILYHUNT trademarks.
The disputed domain name contains the trademark NEWSHUNT and is prefixed with the word “daily”. It is well established that the addition of other words or terms does not prevent a finding of confusing similarity, when the entire trademark is identifiable in the disputed domain name (see section 1.8 WIPO Overview 3.0). The word “daily” is moreover associated with the Complainant’s news business and it has proven rights in the mark DAILYHUNT. The word “daily” prefixed with the Complainant’s mark NEWSHUNT in the disputed domain name is found to be confusingly similar to the mark.
The Complainant has satisfied the first requirement under paragraph 4 (a) of the Policy, that the disputed domain name is confusingly similar to a trademark in which it has rights.
B. Rights or Legitimate Interests
The second element under paragraph 4(a) of the Policy requires the Complainant to make a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has the opportunity to rebut the Complainant’s contentions and demonstrate rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides a non-exhaustive list that a respondent may rely on to demonstrate rights or legitimate interests in the disputed domain name. These are:
(i) Before any notice of the dispute, 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) Respondent (as an individual, business or other organization) has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial 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 tried to demonstrate any rights or legitimate interests in the disputed domain name. Furthermore, the Respondent’s silence and not replying to the Complainant’s cease and desist notices or to rebut the allegations in the present Complaint, does not help the Respondent’s case. Under such circumstances, the Panel can draw such inferences as it considers appropriate from the material on record.
The Complainant has argued that the Respondent is not known by the disputed domain name and has relied on Google search results that show little or no references to the Respondent. The search results for the term “Daily News Hunt” mostly refer to the Complainant and therefore the Complainant has argued that the term “Daily News Hunt” is closely related to the Complainant and not to the Respondent.
The Complainant has argued that the Respondent does not use the disputed domain name for any bona fide purposes or for any legitimate fair-use purposes but has used it to mislead and divert people based on the reputation associated with its marks and has used the marks without its authorization. In this regard, the Respondent has submitted screen shots of the Respondent’s website that confirm the website was being used to publish Hindi news. The evidence indicates the Respondent has been trying to ride on the fame associated with the Complainant’s mark by using a deceptively similar variant of the marks for a similar business, which the Panel finds is not a basis to indicate bona fide or legitimate use of the disputed domain name.
The evidence therefore predominantly indicates that the Complainant has made a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, which remains unrebutted by the Respondent. The Respondent is not evidently known by the disputed domain name. No authorization has been given to the Respondent to use any variant of the Complainant’s marks. The Respondent has not used the disputed domain name in connection with a bona fide offering of goods and services nor for any legitimate fair use, for the reasons discussed in the preceding paragraph.
The Panel finds that the Complainant has satisfied the requirement under the second element and has made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The third element requires the Complainant to establish the disputed domain name has been registered and is being used in bad faith by the Respondent.
The Complainant has argued that the Respondent has opportunistically registered the disputed domain name in bad faith, as there is no obvious reason to use its marks except to derive unfair advantage from the Complainant’s reputation. Given the Complainant’s prior adoption and use of the NEWSHUNT and DAILYHUNT trademarks and evidence of its continuous and extensive use, having popularized the trademarks and established itself as a leading news and content provider in regional Indian languages, it is fair to infer that the Respondent ought to have been aware of the Complainant’s distinctive trademarks and made a deliberate choice of the words “daily”, “news”, and “hunt” while registering the disputed domain name, which is found to be registration of the disputed domain name in bad faith.
The Complainant has described the Respondent’s use of the disputed domain name as: “Hindi language news publication website” and the Complainant has argued that the manner of use of the domain name was to “free-ride on the well-built reputation of the Complainant’s marks”. The evidence provided by the Complainant to establish use of the disputed domain name in bad faith, among others, are the screen shots of the Respondent’s website which display content of mainly news in Hindi. It cannot be denied that the manner in which the Respondent has used the disputed domain name and corresponding website gives rise to the inference of trying to attract users based on the trademark of the Complainant.
The evidence therefore suggests that the Respondent’s use of a confusingly similar disputed domain name for providing similar products or services as those offered by the Complainant under the marks is a deliberate attempt by the Respondent to mislead online users as to the source, affiliation or endorsement of its website. The disputed domain name therefore was likely registered with a view to target the Complainant’s mark and has been used to attract people to visit its website for Hindi news. These circumstances also indicate the Respondent’s awareness of the Complainant’s marks and the business with which the said marks are associated.
In light of the facts and circumstances discussed, the Panel finds the registration and use of the disputed domain name is in bad faith, a classic case of diverting Internet traffic based on another’s trademark. The Panel finds the Respondent has used the trademark in a manner in which it is likely to be widely assumed by the public and Internet users that the disputed domain name is associated with the Complainant, which is considered bad faith registration and use of the disputed domain name under paragraph 4(b)(iv) of the Policy.
The Panel finds that the Complainant has satisfied the third element and that the disputed domain name has been registered and is being used 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 <dailynewshunt.com> be transferred to the Complainant.
Date: June 9, 2019