WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Etechaces Marketing and Consulting Private Limited v. Soham Krishna
Case No. DAE2018-0007
1. The Parties
The Complainant is Etechaces Marketing and Consulting Private Limited, of Haryana, India, represented by Wadhwa Law Chambers, India.
The Respondent is Soham Krishna of Dubai, United Arab Emirates.
2. The Domain Name and Registrar
The disputed domain name <paisabazaar.ae> is registered with AE Domain Administration (.aeDA).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 30, 2018. On October 30, 2018, the Center transmitted by email to AE Domain Administration (.aeDA) a request for registrar verification in connection with the disputed domain name. On October 31, 2018, AE Domain Administration (.aeDA) transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On November 9, 2018, the Complainant filed an amended Complaint to address an administrative formality.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the UAE Domain Name Dispute Resolution Policy for – UAE DRP approved by .aeDA (the “Policy”), the Rules for UAE Domain Name Dispute Resolution Policy – UAE DRP (the “Rules”), and the Supplemental Rules for UAE Domain Name Dispute Resolution Policy – UAE DRP (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 13, 2018. In accordance with the Rules, paragraph 5(a), the due date for Response was December 3, 2018. The Response was filed with the Center on December 3, 2018.
The Center appointed Adam Taylor as the sole panelist in this matter on December 11, 2018. The Panel finds that it was properly constituted. Each member of 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
Since at least 2014, the Complainant and its wholly owned subsidiary, Paisabazaar Marketing and Consulting Private Limited, have operated a comparison website for financial products at the website “www.paisabazaar.com”, under the brand “Paisabazaar”.
There were some 13.7 million visits to the Complainant’s website between April and September 2018.
The Complainant owns a number of Indian registered trade marks for PAISABAZAAR including five registrations numbered 2183640 to 2183644, filed on August 1, 2011, in classes 16, 35, 36, 38, and 41 respectively.
The disputed domain name was registered on August 5, 2018.
As of an unspecified date, the Respondent used the disputed domain name for a webpage headed “PaisaBazaarAE * Coming Soon”. The proposed site was described as “UAE’s First Numismatics Platform, A Unique marketplace to Buy, Sell & Auction your precious coins, currency notes collection and much more…”, said to be “[c]oming to serve all UAE residents soon…”.
The Respondent’s webpage included some explanatory notes regarding the name “PAISAbazaarAE”. “Paisa” was said to refer to a monetary unit used in multiple South Asian and Middle Eastern countries including Oman, India, Pakistan, Bangladesh, and Nepal. “Bazaar” was defined as “a permanently enclosed marketplace or street where goods and services are exchanged or sold”. “AE” was said to stand for the United Arab Emirates.
5. Parties’ Contentions
A summary of the Complainant’s contentions is as follows.
The Complainant’s Paisabazaar service is India’s “No. 1” financial comparison marketplace. It works with over 70 partners including India’s leading financial institutions and offers more than the 300 financial products. In 2017 to 2018, the Complainant spent more than INR 430,000,000 promoting its Paisabazaar brand. It won various awards in 2016 to 2018.
The disputed domain name does not resolve to an active web page and is being passively held by the Respondent.
The Complainant owns registered and common law rights in the term “Paisabazaar”.
The disputed domain name is identical to the Complainant’s trade mark.
The Respondent lacks rights and legitimate interests in the disputed domain name.
The Complainant has not authorised the Respondent to register or use the disputed domain name, which includes the Complainant’s trade mark.
The Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services.
The Respondent is not commonly known by the disputed domain name.
The Respondent is not making a noncommercial or fair use of the disputed domain name.
The disputed domain name has been registered or used in bad faith.
The Respondent’s email address (using the domain name <askus.in>) shows that he is associated with a company called Askus Incorporated (“Askus”) which provides loans and other financial services, similar to the Complainant’s business activities. Askus owns other inactive domain names such as <moneystore.in>, <commoditycall.in>, and <stock20.in>, which are indicative of the Respondent’s intentions towards the disputed domain name.
The Complainant has found no search result relating the Respondent to Askus. This indicates that the Respondent’s name is a front to hide the real identity of the owner of the disputed domain name. Aksus’s Facebook page is branded “AskUs India”.
Askus’s founder, who is located in India, owns another domain name, <moneymall.ae>, which is being used for a website which offers financial products and this shows that Askus provides services which are identical to those of the Complainant.
The Respondent, being in the same field of business as the Complainant and also based in India, ought to have been aware of the Complainant, given the Complainant’s substantial reputation and prominent presence on the Internet. The Respondent registered the disputed domain name to block the Complainant from reflecting its trade mark in the corresponding domain name.
The Respondent registered the disputed domain name to create a likelihood of confusion with the Complainant’s mark. The Respondent intends to disrupt the Complainant’s business and to divert the Complainant’s customers in the context of expansion of the Complainant’s business to the United Arab Emirates (“UAE”). The Respondent may misleadingly divert customers to its website at “www.moneymall.ae”, or otherwise use the disputed domain name for commercial gain.
The Respondent is passively holding the disputed domain name in bad faith, indicated by the incorporation of the Complainant’s entire trade mark in the disputed domain name, the lack of an active website, and the Respondent’s concealment of its identity.
The Respondent has provided incomplete WhoIs information.
According to a search on the Registrar’s website as of September 24, 2018, the disputed domain name was available for sale at a price of USD 11,998.80.
This shows that the Respondent has registered the disputed domain name for sale to the Complainant at an exorbitant price.
A summary of the Respondent’s contentions is as follows.
The Respondent only became aware of the Complainant and its alleged reputation when carrying out searches following receipt of the Complaint. In any case, the Complainant’s own website states that the Complainant’s business presence is limited to India. The Complainant makes no claim to any business presence or registered trade mark in the UAE. Whereas the Respondent has no business in India, its operations being limited to the UAE.
The word “paisa”, and variants thereof, are used refer to units of currency in eight countries including India. Therefore, the term is not susceptible to a claim of a “brand name right”.
The Respondent did provide sufficient details for the WhoIs and these were successfully used to send the hard copy Complaint to the Respondent.
As at the date of the Complaint, there was an active “coming soon” page at the disputed domain name clearly explaining the nature of the Respondent’s proposed business. The Complainant conveniently omitted this as it clearly showed that the Respondent’s business was completely unrelated to that of the Complainant.
The Respondent has not offered the disputed domain name for sale via the Registrar. A search on the Registrar’s website simply shows the disputed domain name as “unavailable”.
The disputed domain name was not a “fraudulent” registration.
The Complainant endeavoured to bring the Respondent’s ex-employer into the case in order to pressure the Respondent and to try to associate the disputed domain name with a competitor. Communication of the Complaint to the Respondent’s ex-employer caused unnecessary conflict and loss of an important business relationship.
It is contradictory for the Complainant to claim both that the disputed domain name was registered for sale to the Complainant for USD 12,000 and also to divert the Complainant’s customers for commercial gain. In any case, both are denied.
The Respondent is in no way connected with “www.moneymall.ae”. The Respondent’s business involves “old art effects”, especially currency collectibles of South Asian and Middle Eastern countries including the UAE. The Respondent has had a physical shop since 2012, for which the website is intended to be a catalogue.
The words “paisa” and “bazaar” are both generic terms which are widely used in all South Asian countries. The Respondent selected them because they reflect its business model. Its shop is located in “Meena Bazaar” in the UAE, which is a popular area. There are many other popular websites and places in the UAE which incorporate the word “bazaar” such as <bankbazaar.ae> and <invoicebazaar.ae>. The Respondent selected the “.ae” country code Top-Level Domain (“ccTLD”) because its business is focussed on the UAE, a fact which the Respondent mentioned on its website but which the Complainant chose to ignore because it weakened the Complainant’s case.
The disputed domain name doesn’t infringe any trade mark in the UAE or other Middle East countries as there are no such trade marks. And the Respondent operates a different kind of business to that of the Complainant.
While the Complainant managed to get its trade mark registered in a few categories in one country, it doesn’t have registrations in any other countries, many of which do not allow this term to be registered.
After filing its Complaint, the Complainant registered various misspellings of the name “Paisabazaar” under the “.ae” ccTLD, in order to stop the Respondent doing business and to mislead the Respondent’s customers.
Despite claiming to be a large “corporate” with business expansion plans, the Complainant has not registered its name within ccTLDs in a number of Middle East countries such as Qatar, Oman and Saudi Arabia. The Complainant only seems interested in domain names if someone else takes them first.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has established rights in the mark “Paisabazaar” by virtue of its registered trade marks .
The Respondent argues that the term “Paisa” is not susceptible to a claim of “brand name right” because it is a generic term referring to a unit of currency in a number of different countries.
The fact that the Complainant’s registered trade mark includes such term does not affect the Panel’s assessment of registered trade mark rights under the first element. Here, the Panel’s only concern is whether or not the Complainant possesses a relevant registered trade mark – and it does.
In any case, the Panel considers that the Complainant has established common law rights by virtue of its extensive use of the name. As explained in section 6C below, the Panel is of the view that the combination of the terms “paisa” and “bazaar” is not an obvious one.
Disregarding the domain name suffix, the disputed domain name is identical to the Complainant’s trade mark.
The Panel therefore finds that the Complainant has established the first element of paragraph 6(a) of the Policy.
B. Rights or Legitimate Interests
Given that the Policy is based on the Uniform Domain Name Dispute Resolution Policy (“UDRP”), the Panel considers it appropriate to have regard to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) – except of course to the extent that the Policy diverges from the UDRP.
As explained in section 2.1 of WIPO Overview 3.0 , the consensus view is that, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If not, the complainant is deemed to have satisfied the second element.
Here, the Complainant has not licensed or otherwise authorised the Respondent to use its trade mark.
As to paragraph 6(c)(i) of the Policy, there is no evidence of any use of the disputed domain name for a bona fide offering of goods or services, nor of any demonstrable preparations for such an offering. While the Respondent has produced a “coming soon” webpage with details of an alleged forthcoming service offering at a website at the disputed domain name (see section 4 above), as explained in section 2.2 of the WIPO Overview 3.0 , future intent on its own does not suffice. There must be at least credible evidence of demonstrable preparations to make an offering. Here, there is no such evidence. This issue is discussed further below under the third element.
Nor is there any evidence that paragraphs 6(c)(ii) or (iii) of the Policy apply in the circumstances of this case.
The Panel concludes that the Complainant has established the second element of paragraph 6(a) of the Policy.
C. Registered or is Being Used in Bad Faith
In order to assess bad faith, the Panel must first consider the evidence regarding the identity of the underlying controller of the disputed domain name.
On the basis of the <askus.in> registrant email address shown in the WhoIs when the Complaint was filed, the Complainant asserts that that the disputed domain name was registered on behalf of Askus, an Indian company which supplies broadly similar services to those of the Complainant. The Complainant further asserts that the registrant name was a “front” to hide the identity of the “real” owner of the disputed domain name, having been unable to find any evidence on the Internet linking the name of the individual shown as registrant of the disputed domain name with Askus.
On November 5, 2018, having received an emailed version of the Complaint, Askus emailed the Center stating that the Respondent was a temporary worker whose contract with Askus had terminated earlier in the year and that the Center’s email had been received into its master inbox because the Respondent’s email address had been suspended upon his departure. Askus said that, on receipt of the Center’s email, it had immediately warned the Respondent to stop using its company contact details. Askus added that neither it nor its founder was in any way connected with the disputed domain name, that the Complaint had made baseless assumptions in seeking to wrongly associate Askus with the disputed domain name and that, while Aksus was an 18-year old group providing financial services in multiple countries, it did not operate any finance portal in India which might compete with the Complainant.
In the Response, the Respondent complained about his “ex-employer” being brought into the case by the Complainant, allegedly to pressure the Respondent and to try to associate the disputed domain name with a competitor of the Complainant.
While the Respondent has not produced any passport or other identity evidence to counter the Complainant’s assertion that the person shown as the registrant of the disputed domain name does not actually exist, it nonetheless seems unlikely that, if Askus were the underlying controller of the disputed domain name seeking to conceal its involvement, it would have used an Askus domain name for the registrant email address. And the Panel has been given no reason to doubt the Respondent’s assertion that the other WhoIs contact information is accurate.
For the moment, the Panel will proceed on the basis that the disputed domain name was indeed registered by an ex-employee of Askus, whether before or after the end of his employment – it is not clear which – and without the authority of Askus.
Next, it is necessary to the consider the Respondent’s denial of knowledge of the Complainant and his explanation of his purpose in registering the disputed domain name, namely as a UAE-focussed platform for trading of “old art effects”, particularly currency and collectibles of South Asian and Middle Eastern countries.
The Panel does not consider that the Respondent’s position is credible.
First, the Respondent has produced no convincing evidence of demonstrable preparations to use the disputed domain name in this manner.
The only evidence provided by the Respondent consists of the “coming soon” page1 referred to in section 4 above. Whether or not this page was uploaded before the Complaint was filed, it in any case conveys the impression of a defensive manoeuvre designed to justify the holding of the disputed domain name rather than an announcement of a genuine forthcoming business. In particular, the webpage is dominated by definitions of the dictionary terms comprised in the disputed domain name, similar to those cited in the Response.
Nor has the Respondent produced any evidence which links him to the “old art effects” industry. For example, he claims to have operated a physical shop (for which the disputed domain name is allegedly an intended “catalogue”) in the “Meena Bazaar” area of the UAE since 2012 but has provided no address, photo or other information indicating that such a shop actually exists.
Furthermore, despite the Respondent claiming to have no business connection with India, it is not in dispute that the Respondent was at least formerly associated with Askus, an Indian company which provides services which are broadly similar to those of the Complainant. While Askus says that it does not operate a “finance portal” in India, nonetheless it is an Indian company apparently operating in India within the financial services sector generally and it seems unlikely that someone working for that company would have been unaware of the existence of the Complainant, which has established that it is a major player in financial products comparison industry in India with a vast amount of traffic to its website.
Notably, the Respondent has not sought to explain how the Complainant could have escaped his attention while he was working for Askus, for example due to the nature of his role at Askus.
In these circumstances, the Panel does not consider it significant that, as observed by the Respondent, the Complainant does not lay claim to a business presence, or ownership of trade marks, in the UAE, where the Respondent is apparently located.
Furthermore, while the Panel accepts the Respondent’s assertion that the two terms comprised in the domain name are dictionary words, the Respondent has not provided evidence which convinces the Panel that their combination is a common one.
Drawing the above strands together, the Panel considers on balance that the Respondent registered the disputed domain name with the Complainant firmly in mind, especially in circumstances where: the Respondent is a former employee of a company incorporated and trading in the same country as the Complainant and which operates in broadly the same industry in which the Complainant is a major player; the disputed domain name is identical to the Complainant’s trade mark comprising a relatively unusual combination of two dictionary terms; and the Respondent has provided no evidence in support of his alleged purpose in selecting the disputed domain name other than a webpage which appears to be principally designed to justify his holding of the disputed domain name.
The Panel is not a position to discern the Respondent’s exact motive. However, in the Panel’s view it is unnecessary to reach any conclusion on this point, for example, as to whether the Respondent registered the disputed domain name for sale to the Complainant at an “exorbitant” price as the Complainant claims. (The Respondent strongly denies responsibility for the fact that the Registrar’s site offers the disputed domain name for sale for some USD 12,000.) Or whether, as the Complainant also asserts, the disputed domain name was registered to disrupt the Complainant’s expansion into the UAE and/or for use in conjunction with an Askus finance portal targeting the UAE and/or constitutes passive holding.
For reasons explained above the Panel is nonetheless satisfied that the Respondent registered the disputed domain name to take unfair advantage of or cause unfair detriment to the Complainant’s mark in some unspecified way and that this constitutes registration in bad faith for the purpose of the Policy. Note that under the Policy, unlike the UDRP, the Complainant need only prove registration or use in bad faith.
For the foregoing reasons, in accordance with paragraphs 6(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <paisabazaar.ae> be transferred to the Complainant.
Date: January 8, 2019
1 The Respondent says that his “coming soon” page was available when the Complaint was filed and criticizes the Complainant for not mentioning it. The Panel has not been provided with evidence showing exactly when the page was first uploaded. Certainly, if it was in place at the time of the Complaint, the Complainant ought to have addressed it. That said, given the Panel’s conclusions regarding the purpose of this page, it is unlikely that this aspect would have materially assisted the Respondent.