WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Lehren Networks Private Limited v. Marchex Sales LLC

Case No. D2015-0618

1. The Parties

The Complainant is Lehren Networks Private Limited of Mumbai, India, represented by Kirti Singhal & Co., India.

The Respondent is Marchex Sales LLC, of Las Vegas, Nevada, United States of America.

2. The Domain Name and Registrar

The disputed domain name <lehren.com> is registered with eNom (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 8, 2015. On April 8, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date 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 April 14, 2015 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 April 18, 2015.

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 April 21, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was May 11, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 14, 2015.

The Center appointed Alfred Meijboom as the sole panelist in this matter on May 20, 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

The Complaint and its affiliated companies own the following Indian trademark registrations:

- Registration No. 476440B for the trademark logo of August 7, 1987 in the name of Mritunjay Pandey trading as Multichannel in class 9 covering blank and pre-recorded audio and video cassettes, electronic, electrical, magnetic and mechanical sound and/or image reproducing recording and storage media, cinematographic films, data communication and processing, apparatus and instruments, discs, computer hardware and software.

- Registration No. 740913 for the trademark LEHREN of May 20, 1997 in the name of Multichannel (India) Ltd. for goods in class 9 for, inter alia, audio and video cassettes, cinematographic films, data communication and processing, apparatus and instruments, discs, computer hardware and software;

- logo Registration No. 740918 of May 20, 1997 in the name of Multichannel (India) Ltd. for goods in class 9 for, inter alia, audio and video cassettes, cinematographic films, data communication and processing, apparatus and instruments, discs, computer hardware and software;

- Registration No. 740920 LEHREN of May 20, 1997 in the name of Multichannel (India) Ltd. for goods in class 16 for, inter alia, magazines, books and publications, advertisements, art works, matrices, photographs, diaries, calendars and photo print;

- Registration No. 740925 logo of May 20, 1997 in the name of Multichannel (India) Ltd. for goods in class 16 for, inter alia, magazines, books and publications, advertisements, art works, matrices, photographs, diaries, calendars and photo print;

- Registration No. 1460180 of logo June 15, 2006 in the name of Lehren Media Services Pvt. Ltd. for entertainment services in class 41;

- Registration No. 1645715 logo of January, 24, 2008 in the name of Lehren Entertainment Pvt. Ltd. for services in class 41 for entertainment services, news syndication for broadcasting and entertainment

-Registration No. 165709 logo of February 22, 2008 in the name of Lehren Entertainment Pvt. Ltd. for services in class 38 for broadcasting of audio and video services over the internet.

The Complainant also holds the Indian Trademark Application logo No. 2661424, 2661514 of January 17, 2014 for services in classes 38 and 41 in the name of the Complainant.

The disputed domain name was registered by the Respondent on December 10, 2001.

5. Parties’ Contentions

A. Complainant

The Complainant is a company with the Lehren group of companies, which has been operating India’s most popular show business news and entertainment media platform for 27 years, and is exclusively devoted to India’s film industry. The Complainant claims that its affiliated company Multichannel (India) Ltd. used the disputed domain name in the period of December 1996 until 2000, after which the disputed domain name could not get renewed on time due to some inadvertencies in the year 2000, and hence as a result expired or lapsed. Thereafter, the Respondent registered the disputed domain name on December 10, 2001. The disputed domain name resolves to a website which provides sponsored pay-per-click links to websites that offer free movies and which contain, at the top of each website, the wording “This domain may be for sale. Click here for more info”, while the auction website this resolves to offered the disputed domain name for sale at a starting price of USD 10,000. The Complainant alleged that the disputed domain name is identical and similar to the LEHREN trademarks in which the Complainant has rights. Moreover, the disputed domain name incorporates the LEHREN trademark in its entirety, adding only the generic Top-Level Domain (“gTLD”) “.com”. The Respondent registered the disputed domain name after the Complainant acquired registered trademark rights in the trademark LEHREN in August 1987.

The Complainant further claims that the Respondent has no rights or legitimate interests in the disputed domain name because the disputed domain name is not used, and the Respondent is not making a bona fide offering of goods or services when the disputed domain name resolves to a website with pay-per-click links, which means that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website and other online locations. The Complainant further alleged that the Respondent is not commonly known by the disputed domain name nor has acquired trademark or service marks rights in the disputed domain name, while the Respondent is neither associated nor affiliated with the Complainant in any way and has not been licensed or otherwise authorized to use the LEHREN trademarks as part of the disputed domain name.

The Complainant also contends that the disputed domain name was registered and is being used in bad faith as it resolves to a website which provides sponsored pay-per-click links and offers the disputed domain name for sale. The Respondent is, according to the Complainant, in the business of selling premium domain names through an auction website which offered the disputed domain name for sale at a starting price of USD 10,000, which is in excess of the acquisition cost, or used it to generate revenue in an illegitimate manner. The Complainant further claims that the Respondent is not using the disputed domain name in a legitimate manner as it just parked the disputed domain name, and, when the Respondent registered the disputed domain name in 2001 after the Complainant’s affiliated company Multichannel (India) Ltd. lost its registration of the disputed domain name, it incorrectly represented and warranted when it registered the disputed domain name that the registration did not infringe the rights of any third party. According to the Complainant the disputed domain name is not an obvious choice unless one is familiar with the Complainant’s LEHREN trademarks.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

The Respondent did not reply to the Complainant’s contentions. However, as set out in paragraph 4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, (“WIPO Overview 2.0”), the consensus view of UDRP panelists is that the respondent’s default does not automatically result in a decision in favor of the complainant. The complainant must still establish each of the three elements required by paragraph 4(a) of the Policy. Although the Panel may draw appropriate inferences from a respondent’s default, paragraph 4 of the Policy requires the complainant to support its assertions with actual evidence in order to succeed in these proceedings. Paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, the Panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules. The Panel finds that in this case there are no such exceptional circumstances.

Under the Policy, the Complainant must prove that:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(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 and is being used in bad faith.

A. Identical or Confusingly Similar

It is well established that the gTLDs may typically be disregarded in the assessment under paragraph 4(a)(i) of the Policy (e.g., Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003), and, in the present case at least, this is not different for the gTLD “.com”.

In this case, the Complainant did not show any registered trademarks in its own name it can rely on. All registered trademarks identified in paragraph 4 above are owned by companies which are part of the LEHREN group, just as the Complainant is. Although the Complainant did not address this issue and has not explained why the Complainant can rely on the LEHREN trademarks, and explicitly in absence of a Response challenging the Complainant’s rights in the registered trademarks it relies on, the Panel understands and accepts that the Complainant is a company related to the trademark owners and should be considered to have rights in the trademarks listed in paragraph 4 for the purpose of applying the UDRP.

The Panel observes that the element “LEHREN” in the stylized trademarks is sufficiently dominant for the public to consider the word alone as the trademark for the purpose of assessing confusing similarity. However, as the Complainant can also rely on a word mark LEHREN of 1997, the Panel finds that the disputed domain name is identical to the LEHREN trademarks identified in paragraph 4 above as the disputed domain name consists of the entire trademark LEHREN.

Consequently, the first element of paragraph 4(a) of the Policy is met.

B. Rights or Legitimate Interests

The Complainant must make a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, which the Respondent may rebut (e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).

The Complainant has shown that it has not authorized the Respondent to use the LEHREN trademarks, and that the Respondent is not commonly known by the disputed domain name. Further, the Complainant has shown that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name in light of the fact that the website at the disputed domain name offers commercial pay-per-click links that seem to compete with the goods and services offered by the Complainant under the LEHREN trademarks, while it also resolves to an auction website which offers the disputed domain name for an amount exceeding the registration related costs.

The Panel is therefore satisfied that the Complainant has made a prima facie case, which the Respondent has not rebutted. As a result, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name and the second element of paragraph 4(a) of the Policy is also met.

C. Registered and Used in Bad Faith

Pursuant to paragraph 4(b)(iv) of the Policy, there is evidence of registration and use of the disputed domain name in bad faith where the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the LEHREN trademarks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service offered on the Respondent’s website or location.

In the Panel’s view, it is obvious that at the time the Respondent registered the disputed domain name it must have had the LEHREN trademarks in mind as such trademarks had already been registered for a number of years, while they are not generic for the type of services displayed in the pay-per-click links on the Respondent’s associated website, and the Respondent uses the website under the disputed domain name to link to its auction website which offers the disputed domain name for an amount exceeding the registration related costs.

Consequently, the third and last element of paragraph 4(a) of the Policy is also met.

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 <lehren.com> be transferred to the Complainant.

Alfred Meijboom
Sole Panelist
Date: June 1, 2015