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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Jatinder Singh Bimbrah v. Privacyprotect.org Domain Admin / imagineRay, Manpreet Singh

Case No. D2013-1397

1. The Parties

The Complainant is Jatinder Singh Bimbrah of Punjab, India, represented by A.K. Bansal & Associates, India.

The Respondent is Privacyprotect.org Domain Admin of Queensland, Australia / imagineRay, Manpreet Singh of Punjab, India.

2. The Domain Name and Registrar

The disputed domain name <inderexport.com> is registered with BigRock Solutions Pvt Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 7, 2013. On August 7, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 8, 2013, 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 August 9, 2013 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 August 12, 2013.

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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 15, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was September 4, 2013. On August 20, 2013, the Respondent sent an email to the Center indicating that it had no objection in transferring the disputed domain name to the Complainant. On the same date, the Center invited the Complainant to consider requesting a suspension to explore a possible settlement between the parties. On August 22, 2013, the Complainant confirmed that it wished to continue the administrative proceedings in this matter and the Center notified the parties that the proceedings would continue without suspension, and the Response due date remained on September 4, 2013. The Respondent did not submit any response. Accordingly, on September 6, 2013, the Center notified the parties that it would proceed to Panel Appointment.

The Center appointed Harini Narayanswamy as the sole panelist in this matter on September 12, 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.

4. Factual Background

The Complainant Mr. Jatinder Singh Bimbrah is the proprietor of M/s Inder Exports and is in the business of manufacturing auto accessories such as sidecars and luggage trailers. The Complainant uses the trademark INDER in connection with his business and applied for a trademark registration on October 22, 2008. The certificate of registration for the device mark INDER was granted on March 4, 2011 bearing registration number 1746607, under class 12 for sidecars and trailers. The Complainant is the owner of the domain name <inderexports.com> that was registered on August 11, 2008 from which he operates a website in connection with his business. The Respondent registered the disputed domain name <inderexport.com> on May 20, 2013.

5. Parties’ Contentions

A. Complainant

The Complainant contends M/s Inder Exports was established in 2007 – 2008 and that he applied for Importer Exporter Code from Government of India, which was granted on July 11, 2008. The Complainant states that he came to know the Respondent had registered the disputed domain name <inderexport.com> and the domain name <indersidecar.in>. The Complainant claims that by registering the disputed domain name, the Respondent has connived with the Complainant’s competitor M/s Inder Auto Industries for illegal commercial gains at the cost of the Complainant’s reputation. According to the Complainant, Mr. S.J. Singh is a cousin of the Complainant and is his competitor who owns M/s Inder Auto Industries. His factory is located at the same address as that of the Complainant, at Naya Nangal District Ropar Punjab and is on the same plot where the Complainant owns one part of the plot.

The Complainant contends the Respondent along with his competitor are using the disputed domain name for redirecting Internet users looking for the Complainant to his competitor’s site. When a customer visits the website “www.inderexport.com” it leads to the website “www.indersidecar.in” and to M/s Inder Auto Industries. As evidence he has filed a real time video and a print out from “Domain look up”. He has also filed emails exchanged between consumers of the Complainant and his competitor as evidence of user confusion resulting from the use of the disputed domain name. The Complainant contends that the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of the Complainant in connivance with his competitor Mr. S.J. Singh.

The Complainant states that the website “www.imagineray.com” is the server for the disputed domain name and that it shows links between the Respondent and competitors of the Complainant. The Complainant states he exports to eighteen countries including Australia, South Africa, United States of America, Canada, New Zealand, Bahrain, United Arab Emirates (Dubai), Viet Nam, Spain, Netherlands, Columbia, and Madagascar. The Complainant states his trademark is specifically registered for sidecars and that he has spent huge amounts to promote his trademark and the website. He claims the turnover of his business in year 2012 – 2013 is about INR “1,20,00,000.00” [sic] and he has additionally filed copies of invoices and photographs of sidecars that he manufactures as evidence.

The Complainant states that the disputed domain name is confusingly similar to the mark in which he has registered rights. The Complainant states the website “www.inderexports.com” has been being used by him since 2008 and that he is widely associated with the business name Inder Exports by the public, government authorities and banks. The Complainant further states the Respondent had registered the disputed domain name that wholly incorporates his trademark and it is confusingly similar to his domain name and the website and that he has filed evidence of the disputed domain name misleading his customers. Citing several previous decisions under the Policy, the Complainant asserts that the word “export” with the trademark INDER in the disputed domain name does not lessen the confusing similarity with his trademark.

The Complainant further urges that the Respondent has no rights or legitimate interests in the disputed domain name as the Complainant has not authorized or permitted the Respondent to use the trademark in any manner. The Respondent is using the disputed domain name to disrupt the business of the Complainant and divert customers to his competitor. The disputed domain name was registered in bad faith and is being used in bad faith, asserts the Complainant as no permission or a license has been granted to the Respondent to use his trademark INDER or his business name Inder Exports. Such unauthorized commercial use of his mark by the Respondent to divert traffic meant for the Complainant to his competitor is opportunistic bad faith under paragraph 4(b)(iv) of the Policy. The disputed domain name not only incorporates trademark of the Complainant but is confusingly similar to his domain name and business name, which shows the Respondent’s bad faith. The Complainant therefore requests for the transfer of the disputed domain name.

B. Respondent

The Respondent did not reply to the Complainant’s contentions. However as mentioned earlier, the Respondent sent an email dated August 20, 2013 to the Center stating “… It was not in our knowledge that Complainant has a registered trademark with that name. So we have no objection if WIPO transfer (sic) the domain name to complainant […]”

6. Discussion and Findings

When the Complainant submitted the amended Complaint to the Center on August 12, 2013, he attempted to add a domain name <indersidecar.in> in the present Complaint. The Center declined its request as it does not administer disputes involving “.in” country code Top-Level Domain (ccTLD). The Panel agrees that the administration of “.in” case is under the purview of another forum under the different policy, .IN Domain Name Dispute Resolution Policy (INDRP). The Complainant must file a dispute regarding the domain name <indersidecar.in> before the appropriate forum for the requested relief

The UDRP under paragraph 4(a) stipulates that the Complainant must establish three elements in these proceedings in order to obtain the transfer of the disputed domain name <inderexport.com>:

(i) The disputed domain name is 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 name; and

(iii) The disputed domain name was registered and is being used in bad faith by the Respondent.

A. Identical or Confusingly Similar

The first requirement of paragraph 4(a) of the Policy requires the Complainant to establish that the disputed domain name is identical or confusingly similar to a trademark in which he has rights.

The Complainant has established that he has rights in the trademark INDER by filing a copy of the trademark registration for the said mark. The Complainant has argued that the word “export” with the trademark INDER renders the disputed domain name confusingly similar to the mark. The Panel finds the use of the generic word “export” with the mark is an instance of targeting the Complainant’s mark as the disputed domain name is virtually identical to the Complainant’s business name and the domain name linked to the Complainant’s website. Targeted use of generic words with a trademark has been held in several previous UDRP cases to add to the confusing similarity of the domain name with a complainant’s mark. See for instance Viacom International Inc. v. Frank.F.Jackson and Nancy Miller, WIPO Case No. D2003-0755. (Where it was found that use of a generic term that has specific relevance to the trademark in question, does not serve to distinguish the domain name from the trademark, but may reinforce the association of the domain name with the complainant’s trademark). Similarly in the present case, the use of the word “export” with the trademark INDER is found to reinforce the association with the Complainant’s mark in as much as the Complainant’s business name is “Inder Exports” and the Complainant has clearly established that he has been using his mark in connection with his business and is known by this name, by the authorities and the general pubic.

Further, a domain name that entirely incorporates a mark along with another term is generally found to be confusingly similar to the mark. See for instance F.Hoffmann-LaRoche AG v. Direct Privacy ID 9CC6, WIPO Case No. D2010-0139, where the domain name <tamiflu-online-store.com> was found confusingly similar to the trademark TAMIFLU. The Panel also notes that there is no dispute regarding the Complainant’s rights in the mark, as the Panel finds the Respondent in his email dated August 20, 2013 to the Center has acknowledged the Complainant’s rights in the INDER mark and has accepted to transfer the disputed domain name to the Complainant based on the Complainant’s rights in the mark.

For the reasons discussed the disputed domain name <inderexport.com> is found confusingly similar to the trademark INDER in which the Complainant has rights. The Complainant has successfully established the first element under paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

The second element under paragraph 4(a) of the Policy requires the Complainant to make a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Complainant has asserted that no permission or authorization has been granted to the Respondent to use his trademark and therefore the Respondent lacks rights and legitimate interests in the disputed domain name.

The Respondent has not participated in these proceedings or filed any formal response to the Complaint claiming rights or legitimate interests in the disputed domain name. Neither has the Respondent rebutted the Complainant contentions. The evidence on record shows that the disputed domain name is being used to redirect unsuspecting customers looking for the Complainant to the Complainant’s competitor. The Respondent on the record is clearly not connected with the Complainant’s business, but has nonetheless has made unauthorized use the Complainant’s trademark and the Complainant’s business name in the disputed domain name.

It has been established in these proceedings that the Complainant has used, advertised and promoted the mark and that he has registered rights in the mark. Given these circumstances, it is the Panel’s view, that the use of the Complainant’s trademark in the disputed domain name is likely to mislead the public and Internet users that the disputed domain name is somehow connected to the Complainant. A domain name that gives a false impression to users does not confer rights or legitimate interests to the Respondent. This view has been upheld in several UDRP decisions. See for instance LEGO Juris A/S v. Leo Wang, WIPO Case No. D2013-1084, concerning the domain name <legopic.com>, where it was found that a domain name that gives a false impression of being that of the complainant’s does not vest any rights or legitimate interests in the respondent.

Again, the Respondent has sent an email stating that he accepts to transfer the disputed domain name to the Complainant. In the Panel’s view, this indicates its tacit acceptance of its lack of rights or legitimate interests in the disputed domain name.

The Panel finds the Complainant has put forward a prima facie case that the Respondent lacks rights of legitimate interests in the disputed domain name, not rebutted by the Respondent. The Complainant has accordingly satisfied the second requirement of paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

The third element under paragraph 4(a) of the Policy requires the Complainant to establish that the disputed domain name was registered in bad faith and is being used in bad faith.

The Complainant has argued that the disputed domain name was registered in bad faith and is being used in bad faith as the Respondent is conniving with his competitor and redirects Internet users and customers looking for the Complainant to his competitor’s website and has provided evidence to establish this. The Complainant has further argued that the Respondent has intentionally registered the disputed domain based on the confusingly similarity with the mark. The screen shots of the Respondent’s websites filed as evidence, show the disputed domain name seems to have attracted Internet users to the Respondent’s website by creating a likelihood of affiliation with the Complainant’s business name and mark. Use of the disputed domain name to exploit the fame and goodwill associated with the Complainant and imitation of the Complainant’s business name and trademark is considered bad faith use under the Policy.

The Panel accepts the Complainant’s contentions of bad faith registration and use of the disputed domain name for the reasons that it has been clearly established in these proceedings that the Complainant is known by the name “Inder Exports”, and the Respondent ought to have registered the disputed domain name knowing it signifies the Complainant’s business, particularly as the Respondent seems to be connected with the Complainant’s competitor, who is doing business on the same plot as the Complainant.

As far as bad faith use of the disputed domain name is concerned, the Panel notes that even though the disputed domain name is registered in the name of the Respondent, it is however being used for promoting competitor’s business in a similar area of business as that of the Complainant. This gives rise to the inference that the Respondent, who is in the similar area of business ought to have been aware that it is likely to obtain some benefit from use of the disputed domain name and use of the Complainant’s mark and has probably registered it with an intention of exploiting the Complainant’s name and goodwill associated with the Complainant’s business. Under the Policy this is considered bad faith use of the disputed domain name.

The Policy under paragraph 4(b)(iv) refers to one of circumstances indicating bad faith registration and use of the domain name where such registration and use is made with an intention to attract, for commercial gain, Internet users to the website or other online location by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location. The Panel finds the Respondent’s website is promoting competitors of the Complainant, and is using the Complainant’s mark and business name for this. The Panel therefore finds the Complainant has put forward sufficient evidence of bad faith use of the disputed domain name. For the reasons discussed, the Panel finds that the disputed domain name has been registered in bad faith and is being used in bad faith as envisaged under paragraph 4(b)(iv) of the Policy.

Accordingly, the Panel finds that the Complainant has satisfied the third requirement of paragraph 4(a) of the Policy that the Respondent has registered the disputed domain name in bad faith and is using the disputed domain name in bad faith.

7. Decision

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 <inderexport.com> be transferred to the Complainant.

Harini Narayanswamy
Sole Panelist
Date: September 24, 2013

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