WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
M/s Info Edge (India) Limited v. Harjeet Singh / Harry Singh
Case No. DAU2013-0022
1. The Parties
The Complainant is M/s Info Edge (India) Limited of New Delhi, India, represented by Lall Lahiri & Salhotra, Advocates Patent and Trademark Attorneys, India.
The Respondent is Harjeet Singh / Harry Singh of New South Wales, Australia.
2. The Domain Name and Registrar
The disputed domain name <99acres.com.au> is registered with Web Address Registration Pty Ltd (the Registrar).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 2, 2013. On August 5, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 9, 2013, the Registrar transmitted by email to the Center its verification response confirming among others that:
(a) it is the concerned registrar for the disputed domain name;
(b) the Respondent is listed as the registrant for the disputed domain name and providing the contact details;
(c) the disputed domain name was registered in the Respondent’s name on April 23, 2012;
(d) the language of the registration agreement is English.
The Center verified that the Complaint satisfied the formal requirements of the .au Dispute Resolution Policy (the “Policy” or “.auDRP”), the Rules for .au Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .au Domain Name Dispute Resolution Policy (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 August 12, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was September 1, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 2, 2013.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on September 17, 2013. 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.
The Respondent having requested an extension of time in which to file his Response, the Respondent was granted by the Administrative Panel Procedural Order dated September 23, 2013 an extension of time to file his response to September 27, 2013. The Respondent filed his Response on September 26, 2013.
On October 3, 2013, the parties requested suspension of the proceeding to permit negotiations for settlement. On October 4, 2013, a subsequent Administrative Panel Procedural Order was issued to suspend the proceedings until October 18, 2013. The parties having failed to negotiate a settlement, the suspension of the proceeding was terminated on October 22, 2013.
On October 8, 2013, the Complainant submitted a Supplemental Filing in rebuttal of the Response (the “Rebuttal”). Following the Panel’s decision to admit the Rebuttal (as discussed below), the Respondent was also given an opportunity to reply to the Complainant’s Supplemental Filing. The Respondent submitted a Reply (the “Reply”) on November 25, 2013 within the time stipulated.
4. Factual Background
According to the Complaint, the Complainant is amongst the leading Internet companies in India. Amongst other things, it runs “www.naukri.com”, which is India’s No. 1 job site; “www.jeevansathi.com”, one of the leading matrimonial portals; “www.99acres.com”, which it says is India’s No. 1 real estate portal and “www.shiksha.com”, India’s leading education portal. It also owns other businesses including an offline executive search business and Naukri Gulf a jobsite in the Middle East market. The Complainant has also made significant investments in other emerging Internet companies.
In pursuit of its 99acres.com business, the Complainant has obtained registrations for both 99ACRES and 99ACRES.COM as trade marks in India in International Classes 9, 16 and 42. These registrations date from July 26, 2005.
Since it launched the 99acres.com business in 2005, the Complainant’s revenues have risen from INR 860,000 in 2005 – 2006 to INR 31 million in 2006 – 2007 and almost INR 350 million in 2011 – 2012. The Complainant has spent in total approximately INR 400 million in advertising and promotional expenditures.
According to the Complaint, the Complainant’s website “www.99acres.com” attracts users from many parts of the world, particularly Indian expatriates in addition to many Indian residents. Annex 3 to the Complaint provides some support for this claim in a report of a market survey by a firm called Juxtconsult relating to 2010. The Complainant’s website also attracts listings for properties outside India including some in Australia. In support of this claim, Annex 5 to the Complainant included printouts for two listings in Far North Queensland.
According to the Registrar, the registration of the disputed domain name occurred on April 23, 2012. The Respondent, however, says he became the registrant in September 2012.
According to the Respondent, the disputed domain name was first registered by a company, 99 Acres Group Pty Ltd, in 2010. He was one of the two directors and shareholders in that company. The Respondent says that company engaged in real estate development or promotion. Annex C to the Response is a promotional advertisement published by the company in May 2010 for a real estate development featuring the world famous golfer, Greg Norman. The company’s name and the URL involving the disputed domain name are featured on the advertisement. According to the Response, that company spent “tens of thousands of dollars” establishing its business.
Due to unspecified problems, however, the company ceased trading later in 2010. The registration of the disputed domain name lapsed when it fell due for renewal in February 2012.
The Respondent incorporated a new company, 99acres.com.au Pty Ltd, in September 2012. Annex D to the Response includes a printout from the Wayback Machine of the site archived in April 2013. It appears to be a real estate listings page.
At the time of this Decision the disputed domain name does not resolve to an active website.
5. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to obtain the transfer of the disputed domain name, the Complainant must demonstrate each of the following:
(i) the disputed domain name is identical or confusingly similar to a name, trade mark or service mark in which the Complainant has rights; and
(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 or subsequently used in bad faith.
Paragraph 15(a) of the Rules directs the Panel to decide the complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.
A. Supplemental Filing
The Complainant has sought to file the Rebuttal in reply to the Response. The Respondent objected to the admissibility of this document.
Paragraph 12 of the Rules empowers the Panel of its own motion to request further statements or documents from the parties. The Policy does not otherwise contemplate further documents in the proceeding apart from the Complaint and the Response. Paragraph 10 of the Rules, however, gives the Panel a wide discretion relating to procedural matters subject to an overriding requirement to ensure that parties are treated equally and given a fair opportunity to present their respective cases. Consistently with the objective of providing an efficient and effective online dispute resolution mechanism, paragraph 10(c) directs the Panel to ensure that the proceeding takes place with due expedition. Subject to the overriding obligations mentioned, paragraph 10(d) empowers the Panel to determine the admissibility, relevance materiality and weight of the evidence.
The material relating to the second and third limbs largely responds to the Respondent’s claimed rights or legitimate interests in the disputed domain name: prior user. That could not on its face have been reasonably anticipated. Accordingly, the Panel will admit those parts of the Rebuttal into the record. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 4.2. Strictly speaking, the material relating to the first limb could have been included in the Complaint and probably should have been. The Panel, however, considers that it is relevant and potentially material particularly with regard to the second and third limbs. In these circumstances, the Panel admits it.
In the interest of fairness the Respondent was given an opportunity to reply. The Respondent’s Reply being timely submitted by November 25, 2013, the Panel also admits it into the record.
The central thrust of both the Response and the Reply goes to whether or not the Complainant’s trade mark rights arose in Australia before the Respondent’s use of the disputed domain name commenced. This is not an issue relevant under the first limb of the Policy for the reasons discussed in section 5B below, but is relevant to the issues under the second and third limbs of the Policy.
B. Identical or Confusingly Similar
The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant’s name, trade mark or service mark.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a name, a trade mark or a service mark and, if so, the disputed domain name must be identical or confusingly similar to it.
The Complainant has proven that it owns the registered trade marks for 99ACRES and 99ACRES.COM in India referred to in Section 4 above.
The Complainant also claims common law rights in Australia in relation to 99ACRES.COM and 99ACRES. In support of this claim a Google Analytics report was submitted in Annex D to the Rebuttal, which apparently shows between 500 and 1200 visitors each day to the Complainant’s website from Australia throughout 2012.
On the question of identity or confusing similarity, what is required is simply a comparison and assessment of the disputed domain name itself to the Complainant’s trade marks: see for example, GlobalCenter Pty Ltd v. Global Domain Hosting Pty Ltd, WIPO Case No. DAU2002-0001. This is different to the question under trade mark law which can require an assessment of the nature of the goods or services protected and those for which any impugned use is involved, geographical location or timing. Similarly, it is not relevant at this stage of the inquiry that the Complainant’s trade marks are registered in India rather than Australia for which .au is the ccTLD. Such matters, if relevant, may fall for consideration under the other elements of the Policy.
Disregarding the second-level domain (2LD), “.com.au”,1 the disputed domain name is identical to the Complainant’s registered trade marks for 99ACRES. If one disregards only the country code top-level domain (ccTLD), “.au”, the disputed domain name is also identical to the Complainant’s registered trade marks for 99ACRES.COM.
Accordingly, the Panel finds that the Complainant has established the first requirement under the Policy.
C. Rights or Legitimate Interests
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides that the following circumstances may be situations in which a respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trade mark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant. Previous auDRP panels have recognized the difficulties inherent in disproving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. See e.g., GlobalCenter Pty Ltd v. Global Domain Hosting Pty Ltd, WIPO Case No. DAU2002-0001.
The Complainant states that the Respondent is not licensed by it and there is no other business relationship between the Complainant and the Respondent. The Complainant has not authorized the Respondent to use the 99ACRES trade mark in a domain name or otherwise. The disputed domain name is plainly not derived from the Respondent’s own name.
The Respondent does not dispute these matters. Rather, he points out that the Complainant does not have a registered trade mark in Australia and disputes that the Complainant has any common law reputation in 99ACRES in Australia. Further, he contends that he simply registered the disputed domain name to continue the business originally operated through 99 Acres Group Pty Ltd. He specifically denies any knowledge or awareness of the Complainant or its “99acres.com” business prior to this dispute. In the Reply, the Respondent reiterates the point that 99 Acres Group Pty Ltd used the disputed domain name before the date any evidence filed by the Complainant shows use of the Complainant’s trade mark in Australia.
It appears from the record in this proceeding that the Respondent did not simply step into the shoes of 99 Acres Group Pty Ltd. That company, according to the Response ceased trading in 2010. The Respondent by his own admission subsequently took an opportunity to re-register the disputed domain name almost two years later. In his Reply, the Respondent seeks to characterize his new company as the successor in title to 99 Acres Group Pty Ltd and the lapsing of the original registration of the disputed domain name as inadvertent.
In this Panel’s view, however, 99 Acres Group Pty Ltd and 99acres.com.au Pty Ltd are different companies, the first having been deregistered. They also have different directors and shareholders, albeit the Respondent is common to both. The Respondent does not rely on any transfer or assignment of the assets of the first company to the new company. Arguably, the business indicated in the advertisement in Annex C to the Response is of a rather different nature to the business as indicated by the screenshot included in Annex D to the Response of the website to which the disputed domain name resolved shortly before the Complaint was filed. In any event, as already noted, the first company ceased trading in 2010 and the Respondent’s new activities did not commence until about 2 years later. Accordingly, the Panel considers that it is appropriate to apply the usual rule that the time to assess a claim to rights or legitimate interests is when the Respondent became the registrant.
At that time, any reputation that the company 99 Acres Group Pty Ltd might have developed in “99 acres” would almost certainly have dissipated, particularly bearing in mind the very short period of operation: Thai World Import & Export Co Ltd v Shuey Shing Pty Ltd (1989) 17 IPR 289 (Fed Ct – Gummow J). While the Respondent does claim that the company spent “tens of thousands of dollars”, there is as the Complainant points out no break down or objective verification of that claimed expenditure in the case record.
On the other hand, the Panel notes that there is evidence through the Google Analytics report that the Complainant did have a reputation in Australia in its trade mark by 2012. Further, in the context of registered trade marks, the Australian courts have traditionally accepted that it is “sharp practice” to register an overseas trader’s trade mark who does not trade in Australia but acceptable. However, the Australian courts have accepted very slight evidence of use in Australia to displace such acceptability.
The Complainant also points out that the webpage included in Annex D to the Response includes advertising for property developments in India and an invitation to “Advertise with us” listing a Delhi telephone number. It does also include what purports to be a real estate listing for a property in the Australian Capital Territory. The address “1111111, Australian Capital Territory” does not appear to be legitimate and the testimonial “Dolore magnaorem ipsum dolor Dolore magnaorem ipsum dolor ….” is plainly at best a “placeholder”. Similarly, the printout of the “www.99acres.com.au” Facebook page, emblazoned “Coming Soon” appears to include a real estate listing or other advertisement for a business with an address in India. The advertisements relating to India do not sit well with the Respondent’s denial of any knowledge of the Complainant.
In any event, the use of the disputed domain name based on the Complainant’s trade mark to promote real estate services, or advertise real estate in competition with the Complainant does not qualify as a bona fide offering of goods or services under this limb of the Policy. Accordingly, the Panel finds that the Complainant has established that the Respondent has no rights or legitimate interests in the disputed domain name under this limb of the Policy.
D. Registered or Subsequently Used in Bad Faith
In contrast to the Uniform Domain Name Dispute Resolution Policy, the Complainant must establish that the disputed domain name has been either registered or subsequently used in bad faith by the Respondent under the third requirement of the Policy.
The use of the disputed domain name to promote real estate developments in India in competition with the Complainant as referred to above is use in bad faith for the purposes of the Policy. Accordingly, this requirement is also established.
For all 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 <99acres.com.au> be transferred to the Complainant.
Warwick A. Rothnie
Date: November 29, 2013