WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Indiamart Intermesh Ltd. v. Yi Zhi Ge, Ge Yi Zhi
Case No. D2019-0930
1. The Parties
The Complainant is Indiamart Intermesh Ltd. of India, represented by Saikrishna & Associates, India.
The Respondent is Yi Zhi Ge, Ge Yi Zhi of China, self-represented.
2. The Domain Name and Registrar
The disputed domain name <indiamartpay.com> is registered with Chengdu West Dimension Digital Technology Co., Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on April 24, 2019. On April 24, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 26, 2019, 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 April 29, 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 May 2, 2019.
On April 29, 2019, the Center sent a communication to the Parties, in English and Chinese, regarding the language of the proceeding. On April 29, 2019, the Respondent sent an email in English requesting explanations regarding the procedure and documents. On April 30, 2019 and May 2, 2019, the Respondent requested Chinese be the language of the proceeding. On May 2, 2019, the Complainant confirmed its request that English be the language of the proceeding.
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, in English and Chinese, of the Complaint, and the proceedings commenced on May 6, 2019. In accordance with the Rules, paragraph 5, the due date for Response was May 26, 2019. The Response was filed in Chinese with the Center on May 22, 2019.
The Center appointed Deanna Wong Wai Man as the sole panelist in this matter on May 29, 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 company headquartered in India, and is active in the business-to-business e-commerce sector, offering a marketplace platform facilitating interactions between buyers and sellers. The Complainant claims it is a large and famous company, providing evidence that it has over 3,500 employees and offices in over 80 cities in India and that it has received various awards, for instance the award for “Best Online Classified Website” from Drivers of Digital Awards in 2016. The Complainant also submits audit reports from which it appears that it has realized annual revenues of around INR 4.03 billion.
The Complainant provides evidence of ownership of a number of Indian trademark registrations (word and device marks) for INDIAMART, see for instance Indian trademark number 1693961, registered on June 2, 2008 and Indian trademark number 1693965, registered on June 2, 2008. The Complainant has also registered a large amount of domain names incorporating this trademark, for example, <indiamart.com> and <paywithindiamart.com>. Incidentally, the relevant registered trademarks adduced by the Complainant were successfully registered prior to the registration date of the disputed domain name, which was registered on March 9, 2017. The disputed domain name is linked to an inactive page. The Respondent appears to be a natural person from China, and is self-represented in this procedure.
5. Parties’ Contentions
The Complainant essentially contends that the disputed domain name is confusingly similar to its trademarks INDIAMART, that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and that the disputed domain name was registered, and is being used in bad faith.
In particular, the Complainant argues that its trademarks are famous and highly distinctive, that the incorporation of the generic term “pay” into the disputed domain name even increases the likelihood of confusion with its trademarks, that the Respondent is not known by the name Indiamart and that the Respondent is not a licensee and has no right to use the Complainant’s trademarks in the disputed domain name. In relation to bad faith, the Complainant contends that the Respondent has parked the disputed domain name in bad faith, seeking a profitable assignment, and particularly produces email communications from a third party domain name resales intermediary operating under the domain name <undeveloped.com>, requesting the sum of USD 50,000 for the assignment of the disputed domain name. The Complainant contends that the Respondent is a domain name squatter and that the disputed domain name was registered, and is being used in bad faith.
The Respondent essentially contends that the Complainant owns no Chinese trademarks or trade name for either INDIAMART or INDIAMARTPAY, submitting a number of screenshots of its searches in the Chinese trademark register. The Respondent contends that since the disputed domain name was registered in China, the relevant rights of the Complainant should be registered in China as well, which, it claims, is not the case. The Respondent moreover contends that the trademark INDIAMART is descriptive, merely meaning “market of India”. Moreover, the Respondent contends that on the date of registration of the disputed domain name, it intended to use it in good faith to develop the Indian market, but that this project was suspended. Nevertheless, the Respondent reserved the disputed domain name for potential future use. Finally, the Respondent also contends that it has no connection or relationship with the domain name resales intermediary operating under the domain name <undeveloped.com>, and that it reserves the right to file a complaint against domain name intermediary.
6. Discussion and Findings
6.1. Preliminary Issue: Language of proceedings
Pursuant to paragraph 11(a) of the Rules, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.
The Complainant did not state the language of the Registration Agreement in its Complaint and requested the language of proceedings to be English. According to a notification sent by the Center to the Complainant on April 29, 2019, the Registrar stated that the Registration Agreement was drafted in Chinese. Nevertheless, on May 2, 2019, the Complainant confirmed its motivated request that the language of proceedings be English. On April 30, 2019 and May 2, 2019, the Respondent requested that the language of proceedings be Chinese, claiming that it does not understand other languages than Chinese.
The Panel has carefully considered all elements of this case, in particular, the Complainant’s request that the language of proceedings be English; the Respondent’s request that the language of the proceedings be Chinese; the fact that the Respondent sent an email in English requesting explanations regarding the procedure and documents to be provided on April 29, 2019 as well as the fact that in its Response, the Respondent replies to the specific arguments presented in the Complaint (which was written exclusively in English), from which the Panel considers that the Respondent is clearly able to understand and communicate in English; and the fact that Chinese as the language of proceedings could lead to unwarranted delay and costs for the Complainant. In view of all these elements, the Panel rules that the language of proceedings shall be English. Nevertheless, in accordance with WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.5.1, the Panel accepts the Response drafted in Chinese and does not require a translation of the Response into the language of the proceedings.
6.2. Discussion and Findings on the merits
The Policy requires the Complainant to prove three elements:
(i) the disputed 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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Based on the evidence and arguments submitted, the Panel’s findings are as follows:
A. Identical or Confusingly Similar
The Panel finds that the Complainant has provided sufficient evidence that it owns valid rights in the sign INDIAMART, based on its use and registration of the same as trademarks in India. As to the Respondent’s contentions that the Complainant’s trademarks are irrelevant in this procedure since they are not Chinese trademarks, the Panel refers to WIPO Overview 3.0, section 1.1.2: “Noting in particular the global nature of the Internet and Domain Name System, the jurisdiction(s) where the trademark is valid is not considered relevant to panel assessment under the first element.” The Panel also refers to earlier UDRP decisions on this issue, e.g. Hoffmann-La Roche AG v. Relish Enterprises, WIPO Case No. D2007-1629.
Moreover, as to identity or confusing similarity with the Complainant’s trademarks, the disputed domain name consists of two elements, namely the Complainant’s INDIAMART trademark and the word “pay”. According to the WIPO Overview 3.0, section 1.7, “in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing”. The Panel concludes that the disputed domain name contains the entirety of the Complainant’s trademark, as its dominant feature. The addition of the descriptive component “pay” does not prevent a finding of confusing similarity.
Moreover, as to the Respondent’s contention that the Complainant’s trademarks for INDIAMART are descriptive, the Panel rules that registered trademarks are considered prima facie valid, see WIPO Overview 3.0, section 1.2.1 and previous UDRP decisions such as Horten Advokatpartnerselskab v. Domain ID Shield Service CO., Limited / Krutikov Valeriy Nikolaevich, WIPO Case No. D2016-0205. The Panel notes that the Respondent has not further substantiated its contentions and has not provided any concrete evidence of elements that would rebut the prima facie validity of the Complainant’s registered trademarks.
Accordingly, the Panel rules that the disputed domain name is confusingly similar to the Complainant’s registered trademarks, and the Panel concludes that the Complainant has satisfied the requirements of the first element under the Policy.
B. Rights or Legitimate Interests
The Complainant has demonstrated that the Respondent is not an authorized reseller, service provider, licensee or distributor, and is not making legitimate noncommercial use or fair use of the Complainant's trademarks. The Respondent stated in its Response that it has not yet used, and suspended its original plans to use the disputed domain name. The Panel concludes that such absence of use does not confer any rights or legitimate interests on the Respondent. On the basis of the foregoing, the Panel considers that none of the circumstances of legitimate interests envisaged by paragraph 4(c) of the Policy apply (see also Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903).
The Panel therefore rules that the Complainant has satisfied the requirements of the second element under the Policy.
C. Registered and Used in Bad Faith
The Complainant has provided sufficient evidence that its trademarks are well-known and enjoy a strong reputation. Therefore, the registration of the disputed domain name, which incorporates such trademarks in their entirety, is clearly intended to mislead and attract consumers to the disputed domain name. Even a cursory Internet search at the time of registration of the disputed domain name would have made it clear to the Respondent that the Complainant owned, and owns trademarks in INDIAMART and uses them extensively. Moreover, the addition of the generic term “pay” in the disputed domain name reinforces this finding, as it is intended to mislead Internet users and induces them to believe that the website linked to the disputed domain name provides payment services for products and services offered under the INDIAMART trademarks. Finally, the Panel also considers that the fact that the Respondent registered the disputed domain name less than two months after the registration by the Complainant of the very similar domain names <paywithindiamart.co.in>, <paywithindiamart.net>, <paywithindiamart.com> and <paywithindiamart.in> is another clear indication of the Respondent’s bad faith in registering the disputed domain name. In the Panel’s view, all above elements taken as a whole are clear evidence of the bad faith of the Respondent, and the Panel therefore rules that it has been demonstrated that the Respondent registered the disputed domain name in bad faith.
As to use of the disputed domain name in bad faith, the disputed domain name links to an inactive website. In this regard, the WIPO Overview 3.0 provides: “From the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding”. Having regard to all elements of the case at hand, and in particular to the fact that the only distinctive element in the disputed domain name is the Complainant’s trademark, the fame of the Complainant’s trademark, and the fact that the disputed domain name was offered for sale at the price of USD 50,000 on March 7, 2019 through the intermediary <undeveloped.com> (see in this regard paragraph 4(b)(i) of the Policy), the Panel rules that it has been demonstrated that the Respondent has used, and is using the disputed domain name in bad faith. As to the contention of the Respondent that it has no connection with or relationship to the resales intermediary operating under the domain name <undeveloped.com>, such statement seems untrustworthy. Upon limited factual review by the Panel (in accordance with the WIPO Overview 3.0, section 4.8) of the website hosted at the domain name <undeveloped.com>, the intermediary in question only resells domain names that have been entrusted to it by the relevant registrant, and it also appears that the amounts of the offers for resale must also be proposed by the relevant registrant.
On the basis of the elements set out above, the Panel rules that the Complainant has satisfied the requirements of the third element under the Policy.
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 <indiamartpay.com> be transferred to the Complainant.
Deanna Wong Wai Man
Date: June 5, 2019