WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
TVS Motor Company Limited v. Vistaprint Technologies Limited
Case No. DCO2014-0007
1. The Parties
The Complainant is TVS Motor Company Limited of Chennai, Tamil Nadu, India, internally represented.
The Respondent is Vistaprint Technologies Limited of Hamilton, Bermuda, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland.
2. The Domain Names and Registrar
The disputed domain names <tvsmotor-id.co> and <tvsmotor-in.co> are registered with Tucows Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 12, 2014. On May 12, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On May 12, 2014, the Registrar transmitted by email to the Center its verification response confirming that
(a) it is the Registrar for the disputed domain names;
(b) the disputed domain names are both registered in the name of the Respondent and the contact details are correct;
(c) the registration agreements are in English;
(d) the disputed domain names were registered subject to the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), and the UDRP applies to both disputed domain names.
The Complainant filed an amendment to the Complaint on May 22, 2014.
The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Policy, 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 22, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was June 11, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 12, 2014.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on June 24, 2014. 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 incorporated in India. It is engaged in the manufacture and sale of mopeds, motor cycles, scooters and three wheelers. Its products are sold in India and other countries.
According to the Complaint, the Complainant's parent company has registered a number of trademarks in different parts of the world. The Complaint contains evidence of:
- Indian registration, No. 1162599, for TVS MOTOR COMPANY TVS in respect of "automotive two wheelers";
- United States of America Trademark Registration No. 2,131,607 for TVS in a semi-circular device for a range of automotive parts; and
- UK Trademark No. 2328271 for TVS MOTOR COMPANY TVS in respect of a range of motorized vehicles.
The Indian registration appears to have been registered from 2002, although the Complainant claims the group's first registration dates from 1964. The US registration dates from 1998, claiming a first use in commerce in 1994. The UK registration has been registered since 2003.
The disputed domain names were registered on February 7, 2014. They do not resolve to active websites. However, they have been used to create email addresses in the circumstances which it will be necessary to discuss further below.
5. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:
(i) the disputed domain names are identical or confusingly similar to a trademark 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 names; and
(iii) the disputed domain names have been registered and are being used in bad faith.
No response has been filed. The Complaint has been served, however, on the physical and electronic coordinates specified in the WhoIs record (and confirmed as correct by the Registrar). Accordingly, the Panel finds that the Complaint has been properly served on the Respondent.
When a respondent has defaulted, paragraph 14(a) of the Rules requires the Panel to proceed to a decision on the Complaint in the absence of exceptional circumstances. Accordingly, paragraph 15(a) of the Rules requires the Panel to decide the dispute on the basis of the statements and documents that have been submitted and in accordance with the Policy, the Rules and any rules and principles of law deemed applicable.
A. Identical or Confusingly Similar
The first element that the Complainant must establish is that the disputed domain names are identical with, or confusingly similar to, the Complainant's trademark rights.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain names must be shown to be identical or confusingly similar to the trademark.
The Complainant has proven ownership through its parent company of the three registered trademarks referred to above. According to the Complainant, it has the exclusive rights from its parent to use those trademarks.
On the question of identity or confusing similarity, what is required is simply a comparison and assessment of each disputed domain name itself to the Complainant's proved trademarks: see for example, Disney Enterprises, Inc. v. John Zuccarini, Cupcake City and Cupcake Patrol, WIPO Case No. D2001-0489; IKB Deutsche Industriebank AG v. Bob Larkin, WIPO Case No. D2002-0420. This is different to the question under trademark 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. Such matters, if relevant, may fall for consideration under the other elements of the Policy.
In undertaking that comparison, it is permissible in the present circumstances to disregard the ".co" component of the disputed domain names as a functional aspect of the domain name system: Telstra Corporation Limited v. Ozurls, WIPO Case No. D2001-0046, Ticketmaster Corporation v. DiscoverNet Inc., WIPO Case No. D2001-0252.
Disregarding that component, the prominent and distinctive part of each disputed domain name is the element "tvsmotor". TVS MOTOR is a prominent and crucial part of the Indian and UK trademark registrations identified above. TVS is also the predominant feature of the US trademark registration. The further element in the disputed domain names, "-in" or "-id" does nothing to remove the resemblance to key elements of the trademarks. That is all the more the case if account is given to "in" as being the country code Top Level Domain for India and "id" for Indonesia.
The Panel has no hesitation in finding therefore that each disputed domain name is confusingly similar to the registered trademarks relied on by the Complainant.
Accordingly, the Panel finds that the Complainant has established that the first limb of the Policy is satisfied.
B. 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 names.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in the disputed domain names:
(i) before any notice to [the Respondent] of the dispute, [the Respondent's] use of, or demonstrable preparations to use, the [disputed] domain names or a name corresponding to the [disputed] domain names in connection with a bona fide offering of goods or services; or
(ii) [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] domain names, even if [the Respondent] has acquired no trademark or service mark rights; or
(iii) [the Respondent] is making a legitimate noncommercial or fair use of the [disputed] domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark 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. UDRP 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., paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0").
It is clear from the Complaint, that the Respondent is not authorized by the Complainant or its corporate group. Nor is the Respondent affiliated with it. The disputed domain names are plainly not derived from the Respondent's name. From the available record, the Respondent does not appear to hold any trademarks for the disputed domain names.
According to the Complainant, the Respondent has created five email addresses using one or other of the disputed domain names. The email addresses purport to be the email addresses of four officers of the Complainant currently working at its Indonesian plant. (There are five email addresses because one of the officers has been "accorded" an email address in both domain names.)
The use of these email addresses is particularly insidious as the Complainant's officers in question in fact have very similar email addresses; the Complainant using, amongst other things, domain names including <tvsmotors.co.in> and <tvsmotors.in>.
Further, according to the Complainant, these email addresses have been used to contact at least one of the Complainant's customers and request that it prepay at least one of its orders in full before the order will be supplied by the Complainant. The emails provided details of a bank account for the transfer which is not the Complainant's bank account. Following receipt of a number of these emails, the customer became suspicious and contacted the Complainant's officer by telephone.
If true, this conduct plainly does not qualify as a bona fide offering of goods under the Policy.
The Respondent has not filed any response and has not sought to rebut these allegations.
In these circumstances, the Complainant has established a clear prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names. Accordingly, the Panel finds that the Complainant has established the second requirement under the Policy also.
C. Registered and Used in Bad Faith
Under the third requirement of the Policy, the Complainant must establish that the disputed domain names have been both registered and used in bad faith by the Respondent. Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the domain name to take advantage of its significance as a trademark owned by (usually) the complainant.
While the acronym "TVS" could well stand for a range of organisations or concepts, the same cannot really be said of its combination with the word "motors". The registration of the two elements together suggests that the Respondent very well knew of the Complainant and the Complainant's trademarks when registering the disputed domain names. That is reinforced by the use of the disputed domain names to create emails purporting to be the email addresses of the Complainant's officers at its Indonesian plant. As already discussed, the use made of the disputed domain names is plainly bad faith.
In these circumstances, the Panel finds that both disputed domain names have been registered and are 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 names <tvsmotor-id.co> and <tvsmotor-in.co> be transferred to the Complainant.
Warwick A. Rothnie
Date: July 8, 2014