WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Aircel Limited v. Terry Dong
Case No. DCO2015-0008
1. The Parties
The Complainant is Aircel Limited of Channai, India, represented by Mohan Associates, India.
The Respondent is Terry Dong, of Singapore.
2. The Domain Name and Registrar
The disputed domain name <aircel.co> (the "Domain Name") is registered with eNom (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 12, 2015. On February 12, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 12, 2015, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Complainant submitted an email clarifying the mutual jurisdiction applicable on February 25, 2015.
The Center verified that the 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 25, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was March 17, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 18, 2015.
The Center appointed John McElwaine as the sole panelist in this matter on March 30, 2015. 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
Complainant, Aircel Limited, is a company that was incorporated and formed on December 20, 1994, under the Companies Act of India. Complainant is a mobile network and telecommunication company which offers voice, data and Internet services. Complainant currently operates websites located at "www.aircel.com" and "www.aircel.co.in".
Complainant is the owner of over 100 trademark registrations for the mark AIRCEL all registered in India.
Respondent, Terry Dong, registered the Domain Name <aircel.co> through the Registrar on October 10, 2011.
5. Parties' Contentions
Complainant is an Indian company with its principal place of business in Anna Salai Chennai, India. Complainant commenced commercial operations in 1998 and has grown to become one of the leading Indian communications companies providing mobile telecommunications, data and text messaging service, satellite communications services, wireless broadband services and Internet access services.
Complainant alleges that its AIRCEL mark has been extensively used throughout India since 1994 and enjoys great reputation and goodwill. 'Complainant's sales and marketing are alleged to be in the millions of rupees. Complainant also claims to have won numerous international awards. In sum, Complainant asserts that its AIRCEL mark is well-known to Indian consumers and to those visiting India from other foreign countries, including Singapore.
Complainant contends that the Domain Name should be transferred to Complainant because each of the three elements required in paragraph 4(a) of the Policy has been established.
Complainant alleges that the Domain Name registered by Respondent is identical to its well-known AIRCEL mark in its entirety and was clearly registered to cause confusion or deception as to the source of such Domain Name.
Complainant contends that Respondent has no rights to or legitimate interest in the Domain Name based on the fact that the term AIRCEL is a coined word and that it has obtained fame and recognition not only in India but in several other countries. Complainant further contends that it has not permitted or licensed Respondent to use the word "aircel".
Complainant alleges that, presently, Respondent's website displays advertisements which are misleading. Therefore, Respondent's website uses the Domain Name to divert customers to competing websites. Complainant also alleges that Respondent's website attempts to induce customers to believe that the Respondent's website is that of the Complainant or associated in some manner with the Complainant's well- known website.
Complainant asserts that Respondent clearly intend to benefit itself by providing links relating to telecommunication services on Respondent's website, thereby creating the impression that Respondent was related to the Complainant. Complainant also alleges that the Respondent is seeking to take undue advantage of the fame and goodwill of Complainant by diverting potential customers of the Complainant to the Respondent's website. Such diversion of traffic is asserted to result in the financial gain of Respondent and to harm Complainant in the form of lost revenues and dilution of Complainant's internationally reputed brand.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Even though Respondent has defaulted, paragraph 4 of the UDRP requires that, in order to succeed in this UDRP proceeding, Complainant must still prove its assertions with evidence demonstrating:
(i) The Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith.
Because of Respondent's default, the Panel may accept as true the factual allegations stated within the Complaint, and may draw appropriate inferences therefrom. See St. Tropez Acquisition Co. Ltd. v. AnonymousSpeech LLC and Global House Inc., WIPO Case No. D2009-1779; Bjorn Kassoe Andersen v. Direction International, WIPO Case No. D2007-0605; see also paragraph 5(e) of the Rules ("If a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint.") Having considered the Complaint, the Policy, the Rules, the Supplemental Rules and applicable principles of law, the Panel's findings on each of the above cited elements are as follows.
A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires Complainant show that the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights. The Panel finds that Complainant owns trademark rights in the AIRCEL mark (which predate the registration of the Domain Name).
Complainant has established that AIRCEL is a well-known trademark in India. The mark has been in use for more than 15 years. As shown by Annex C and Annex D to the Complaint, the AIRCEL mark is registered in India for numerous goods and services.
The Domain Name contains Complainant's well-known AIRCEL mark in its entirety adding only the country-code top-level domain, ".co", to Complainant's AIRCEL mark. Country-code top level domains are generally ignored for purposes of determining confusing similarity because they are necessary to any domain name, they are generally generic in nature and they fail to distinguish the domain name from the trademark. Anadarko Petroleum Corporation v. John Smith, CGU, WIPO Case No. DCO2013-0033.
The Panel finds that Complainant has met its burden of showing that the Domain Name is confusingly similar to the AIRCEL mark in which Complainant has valid trademark rights.
B. Rights or Legitimate Interests
Under the Policy paragraph 4(a)(ii), Complainant has the burden of establishing that Respondent holds no rights or legitimate interests in a domain name. However, the registrant's rights or interests, if any, in a domain name lies most directly within the registrant's own knowledge. See Education Testing Service v. TOEFL, WIPO Case No. D2000-0044; Grove Broadcasting Co. Ltd v. Telesystems Communications Limited, WIPO Case No. D2000-0703. As such a complainant need only make a prima facie showing on this element, at which point the burden shifts to the respondent to present evidence that it has some rights or legitimate interests in the domain name at issue. See Vicar Operating, Inc. v. Domains by Proxy, Inc. / Eklin Bot Systems, Inc., WIPO Case No. D2010-1141(discussing and citing the WIPO Overview of WIPO Panel Views on Selected UDRP Questions ("WIPO Overview 2.0"), paragraph 2.1); seealso Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party, WIPO Case No. D2000-1415; Inter-Continental Hotels Corporation v. Khaled Ali Soussi, WIPO Case No. D2000-0252.
Complainant has made a prima facie showing that Respondent lacks any rights or legitimate interest in the Domain Name. In particular, Complainant has demonstrated that the AIRCEL mark is a coined word and there is no evidence in the WHOIS data for the Domain Name that Respondent has been commonly known by the term "aircel". Respondent did not use the Domain Name in connection with either a bona fide offering of goods and services or use in a legitimate noncommercial or fair manner. Complainant denies having permitted or granted any license to Respondent to use the Domain Name.
Complainant has made a prima facie showing of Respondent's lack of any right or legitimate interest and Respondent has failed to come forward to rebut that showing. Therefore, the Panel is entitled to accept that Complainant has established the second element in paragraph 4(a)(ii) of the Policy. As provided for by paragraph 14 of the Rules, the Panel may draw such inference from Respondent's default as it considers appropriate. The Panel finds that Respondent does not have rights or legitimate interests in the Domain Name and that Complainant has met its burden under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Complainant must show that Respondent registered and is using the Domain Name in bad faith. Paragraph 4(a)(iii) of the Policy. A non-exhaustive list of factors constituting bad faith registration and use is set out in paragraph 4(b) of the Policy.
Complainant contends that Respondent's registration of the Domain Name prevents Complainant who is the rightful owner of the AIRCEL mark from reflecting this trademark in corresponding domain names and that Respondent demonstrated a pattern of conduct calculated to ensure that Complainant is unable to use certain domain names best suited to its interests and rights. SeeParagraph 4(b)(ii) of the Policy. There is, however, no evidence to support a pattern of such conduct on the part of Respondent. The Panel cannot find bad faith use on this basis.
Paragraph 4(b)(iv) of the Policy specifies that bad faith exists where Respondent, by using the disputed domain name, has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with complainant's mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location. See Ebay Inc. v. Wangming, WIPO Case No. D2006-1107. Based on Complainant's submissions, which were not rebutted by Respondent, it is alleged that Respondent must have known of Complainant's AIRCEL mark when it registered the Domain Name because the website displayed at the Domain Name contained links to related telecommunications services. To confirm this, the Panel undertook limited factual research of publicly available sources by visiting the Website located at the Domain Name. See WIPO Overview 2.0, paragraph 4.5. In so doing, the Panel found that Respondent's website contained several prominent uses of the AIRCEL mark and links to services related to those offered by Complainant including "Mobile Telephone Service" and "Mobile Internet Deals".
Since the website displayed at the Domain Name uses the AIRCEL mark and provides links to related services, without a response by Respondent, there is no credible explanation for Respondent to have chosen to use the name "aircel" in the Domain Name other than to trade-off the goodwill and reputation of Complainant's trademark or otherwise create a false association with Complainant. Of importance to the Panel is the fact that the Domain Name was registered within ".co", which is generally considered a quasi-generic top-level domain. As discussed by the panel in Anadarko Petroleum Corporation v. John Smith, CGU, WIPO Case No. DCO2013-0033, ".co" is not only the country code for Colombia, but is a top-level domain name that anyone can register and which is primarily marketed and sold by registrars, as a shortened form of ".com" or to suggest "company" or "corporation" rather than necessarily the country code representing Colombia. As the purpose of this particular country-code top-level domain name is not necessarily intended to be related to a particular geographic area or country, the Panel finds persuasive Complainant's assertions that Respondent, an alleged Singapore resident, could have intended to trade-off the goodwill and reputation of a well-known Indian telecommunications company. There is no Policy requirement that Complainant have trademark rights in Colombia, in any event, or that its trademark be well-known or even used there.
There is substantial authority that registration of a domain name that is confusingly similar to a well-known trademark by any entity that has no relationship to that mark is itself sufficient evidence of bad faith registration and use. See Allianz, Compañía de Seguros y Reaseguros S.A. v. John Michael, WIPO Case No. D2009-0942 ("the Panel concurs with previous WIPO UDRP decisions holding that registration of a well-known trademark as a domain name is a clear indication of bad faith in itself, even without considering other elements"), citing, Veuve Cliquot Ponsardin, Maison Fondee en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; Pepsico, Inc. v. "null", aka Alexander Zhavoronkov, WIPO Case No. D2002-0562; Pepsico, Inc. v. Domain Admin, WIPO Case No. D2006-0435.
Here, the Panel finds that the Domain Name and the website its displays are intended to draw a connection to Complainant. Respondent must have known of Complainant's well-known AIRCEL mark when it registered and used the Domain Name. Such facts support a finding of bad faith registration. See Stuart Weitzman IP, LLC v. Ye Li, WIPO Case No. DCO2014-0026.
For this reason, the Panel holds that Complainant has met its burden of showing that Respondent registered and is using the Domain Name 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, <aircel.co>, be transferred to the Complainant.
John C. McElwaine
Date: April 13, 2015