WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bharti Airtel Limited v. Registration Private, Domains By Proxy, LLC / Varun Deewan
Case No. D2021-4279
1. The Parties
The Complainant is Bharti Airtel Limited, India, represented by Inttl Advocare, India.
The Respondent is Registration Private, Domains By Proxy, LLC, United States of America / Varun Deewan, India.
2. The Domain Name and Registrar
The disputed domain name <121airtel.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 17, 2021. On December 20, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 21, 2021, 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 December 22, 2021 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 December 22, 2021. On December 28, 2021, the Center requested the Complainant to clarify the Mutual Jurisdiction of the Complaint, which was then clarified by the Complainant on December 29, 2021.
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 December 30, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 19, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 21, 2022.
The Center appointed Ashwinie Kumar Bansal as the sole panelist in this matter on February 9, 2022. 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 telecommunication company having its Headquarters at Gurugram, India. Initially the Complainant company was incorporated as Bharti Tele Ventures Limited. However, in the year 2006, the name of the company was changed to Bharti Airtel Limited. It offers in India products like 2G, 3G and 4G wireless services, mobile commerce, fixed line services, high speed DSL broadband, DTH, enterprise services including national & international long-distance services to carriers. It also offers products like 2G, 3G and 4G wireless services and mobile commerce in few other countries. The Complainant is the owner of Trademark AIRTEL in India (Reg. No. 648684), and few other jurisdictions. In the year 1994, the Complainant adopted the Trademark AIRTEL as its trademark for its goods as well as services. The word AIRTEL is not used in common language and does not find any place in any dictionary. The Complainant has several registrations in different jurisdictions for the Trademark AIRTEL, including International Registrations and Indian Registrations.
The Respondent has registered the disputed domain name <121airtel.com> incorporating Trademark AIRTEL on February 2, 2020, without any authority from the Complainant. Hence, this Complaint has been filed by the Complainant seeking transfer of the disputed domain name.
5. Parties’ Contentions
The Complainant in its Complaint has, inter alia, raised the following contentions:
The Complainant is the registered owner, user and proprietor of Trademark AIRTEL. Trademark AIRTEL and/or its derivatives are registered in favour of the Complainant in India as well as in a few other countries like United States, United Kingdom, Singapore, Kuwait, etc. The Complainant has exclusive right to use its trademark inter-alia in respect of the goods and or services for which they are registered. By virtue of the registrations and by virtue of provision of Section 31 of the Trademarks Act, 1999, the registration(s) are prima facie evidence of their validity. Further, owing to the prior, continuous and uninterrupted use of the AIRTEL mark, the Complainant also has Common Law Rights in the said Trademarks. The Trademark AIRTEL, apart from being the Complainant’s Trademark, features prominently as the trade name/ corporate name. The Complainant, to its credit, also has domain name registrations for various domains, which include its Trademark AIRTEL.
The Complainant has further contended that owing to the extensive use and registrations of AIRTEL Trademarks and domain names throughout the world, including India, public at large associates the Trademark AIRTEL with the Complainant alone. In order to market, advertise and promote the Trademark AIRTEL, the Complainant has incurred large expenses. The marketing, advertisements and promotion of the well-known and registered Trademark AIRTEL of the Complainant and other such related trademarks have ensured that the presence and knowledge about Trademark AIRTEL is spread throughout the world. A direct result of extensive marketing is that the Complainant has garnered large sales for goods and services under its Trademark AIRTEL.
By virtue of regular and extensive use of the Trademark AIRTEL by the Complainant, the efforts made by the Complainant in popularizing its brand/ mark and services, and by reason of superior quality and efficacy of the services provided by the Complainant, the Trademark AIRTEL enjoys an extremely high level of goodwill and reputation across the globe, including in India. Consequently, the said Trademark has become distinctive of the Complainant and the services offered by it and no one else.
The Complainant further contends that its Trademark AIRTEL is a well-known mark and enjoys tremendous trans-border reputation and goodwill in India. Further, it is well - known to a substantial segment of society in India. Therefore, any unauthorized use of the Trademark AIRTEL by a third party as a mark, name, domain name, or in any other form constitutes infringement and passing off and is a violation of the Complainant’s rights in the said mark. The Complainant has zealously guarded its Intellectual Property Rights in the Trademark AIRTEL and has obtained protection from Courts, Tribunals and other authorities around the world.
The Complainant has a well reputed customer helpline number, 121 which provides its services to a humongous customer base in India, for instance, comprehensive assistive services and customer care services through its distinctive helpline number 121. The said helpline number 121 has instantaneous recall, not only in the minds of AIRTEL consumers but also in the minds of the general public at large. Further, the Complainant has been providing SMS based assistance through the code *121#, for the past many years.
The Complainant contends that the Respondent has registered the disputed domain name solely to obstruct the Complainant from asserting its lawful rights and to extort money from the Complainant. The Respondent’s registration of the disputed domain name is contrary to the conditions outlined under paragraph 4(c) of the Policy. The Respondent has no legitimate interests in the disputed domain name but has registered the disputed domain name only with a mala fide intention to tarnish the image of the Complainant. The Respondent’s activities also prejudicially affect the Complainant’s credibility and its enviable goodwill. A perusal of the disputed domain name will show that the Respondent has registered the disputed domain name in the absence of any business connection, approval or consent from the Complainant, which may mislead the Complainant’s present as well as future subscribers and customers into visiting the website.
The Respondent has no business connection, approval or consent from the Complainant in any manner to use the Trademark AIRTEL as part of its disputed domain name. The Complainant submits that the present case is a classic example of cyber-squatting while riding upon the goodwill and reputation of the Complainant’s well-known Trademark AIRTEL. Therefore, it is clear that the Respondent has no legitimate interests in the disputed domain name, but has registered it with the intent for wrongful commercial gain and to misleadingly divert consumers who are looking to visit the Complainant’s website “www.airtel.com”.
The Respondent has no legitimate right and interest in the disputed domain name because the Trademark AIRTEL is distinctive, unique and an invented mark. It has been used by the Complainant since the year 1994. A mere mention of the Trademark AIRTEL establishes an identity and connection with the Complainant. Additionally, consumers actively associate number 121 in respect of the Complainant’s customer care service. A search on popular engine, such as Google, evidences that the Trademark AIRTEL and AIRTEL 121 are associated with the Complainant and no one else.
The well-known nature of the Complainant’s Trademark AIRTEL, has prior statutory registrations and also the well-established reputation and goodwill associated to it. Therefore, the Respondent cannot claim to have been unaware of the mark.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
As per paragraph 5(e) of the Rules, where a respondent does not submit a substantive response, in the absence of exceptional circumstances, the Panel may decide the dispute based upon the Complaint. The Panel does not find any exceptional circumstances in this case preventing it from determining the dispute based upon the Complaint, notwithstanding the failure of the Respondent to file a substantive response. As per paragraph 14(b) of the Rules, where a party does not comply with any provision of the Rules, the Panel is to draw such inferences there from as it considers appropriate.
It remains incumbent on the Complainant to make out its case in all respects under paragraph 4(a) of the Policy, which 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:
“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 all the three aspects of the Policy listed above hereunder:
A. Identical or Confusingly Similar
The Panel has considered and examined all the documents submitted by the Complainant in support of its Complaint. The Complainant has produced registration certificates granted by the Trade Marks Registry, in its favor in respect of the Trademark AIRTEL and its derivatives. The Complainant has been using the Trademark AIRTEL since 1994.
The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7 provides the view of panelists: “The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name (…) 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 mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.” Mere addition of prefix “121” does not make the Trademark AIRTEL non-recognizable in the disputed domain name <121airtel.com>.
The disputed domain name <121airtel.com> incorporates the Complainant’s Trademark AIRTEL in its entirety besides usage of the prefix “121”, which addition does not prevent a finding of confusing similarity. See, section 1.8 of the WIPO Overview 3.0.The Panel finds that the Trademark AIRTEL of the Complainant is recognizable in the disputed domain name. The generic Top-Level Domain “.com” may be disregarded for the purposes of comparison under this element. Hence, the Complainant has successfully established the first element of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
The onus lies on the Complainant for establishing that the Respondent has no rights or legitimate interests in the disputed domain name <121airtel.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 to rebut such prima facie case by demonstrating rights or legitimate interests in the disputed domain name.
The Respondent has registered the disputed domain name consisting of the entire Trademark AIRTEL. Further, the prefix “121” in the disputed domain name is the customer helpline number of the Complainant. The Complainant has been using the Trademark AIRTEL for a long time since 1994 and it has trademark registrations in its favor. The Complainant has not authorized or permitted the Respondent to use its Trademark AIRTEL.
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. WIPO Overview 3.0, section 2.1 provides the view of panelists: “While the overall burden of proof in UDRP proceedings is on the complainant, the 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 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 domain name. If the Respondent fails to come forward with such relevant evidence, the Complainant is deemed to have satisfied the second element.” The Complainant has not authorized the Respondent to use its Trademark AIRTEL which means in the circumstances of this case that the Respondent has no rights or legitimate interests in the said Trademark.
The Respondent has failed to file a substantive response to rebut the Complainant’s prima facie case or to explain its 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.
In light of the evidence submitted by the Complainant, the Panel finds that the Complainant has satisfied its burden to make out a prima facie case that the Respondent lacks rights or legitimate interest in the disputed domain name <121airtel.com>. The Panel is satisfied that the second element of the Policy has been met.
C. Registered and Used in Bad Faith
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 a 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.
The Complainant has produced evidence of registration of the Trademark AIRTEL in its favour given by the Trademark Registry. The Complainant’s Trademark is a well-known and a distinctive mark, hence, the Respondent was likely to have prior knowledge of the Complainant’s rights in the Trademark. The Complainant has not granted the Respondent permission or a license of any kind to use its Trademark AIRTEL and register the disputed domain name <121airtel.com>. The Respondent is neither making a bona fide offering of goods or services nor a legitimate, noncommercial or fair use of the disputed domain name. Further, the Respondent has not given any response to the Complaint and has also failed to present credible evidence backed by rationale for registering the disputed domain name. In view of these facts, the disputed domain name is likely to cause confusion as to source, sponsorship, or affiliation, which constitutes bad faith registration and use under paragraph 4(b)(iv) of the Policy.
A mere glance at the disputed domain name <121airtel.com> gives rise to enormous confusion as to its origin since it uses the Trademark AIRTEL in its entirety and additionally, the disputed domain name also contains Customer helpline number, 121 as a prefix. A domain name acts as the address of a company on the Internet and can be termed as a web address or a web mark just like a trademark or service mark. The illegality in the registration of the disputed domain name also arises from the fact that domain names today are a part and parcel of the corporate identity. The use of the disputed domain name is bound to lead to confusion amongst the public.
The act of registration of the disputed domain name by the Respondent containing the Complainant’s Trademark AIRTEL without any authorization from the Complainant constitutes evidence of registration of the disputed domain name in bad faith. The unauthorized registration by the Respondent suggests opportunistic bad faith. The Respondent’s true purpose in registering and using the disputed domain name <121airtel.com>, , which incorporates the entire trademark of the Complainant is in the Panel’s view, to capitalize on the reputation of the AIRTELTrademark.
The Panel therefore finds that the disputed domain name <121airtel.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, <121airtel.com> be transferred to the Complainant.
Ashwinie Kumar Bansal
Date: February 14, 2022