WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Piyush Kumar Parekh and Purvi Piyush Parekh v. Avanish Prasad

Case No. D2017-1252

1. The Parties

The Complainants are Piyush Kumar Parekh and Purvi Piyush Parekh of Mumbai, India, internally represented.

The Respondent is Avanish Prasad of Mumbai, India.

2. The Domain Names and Registrar

The disputed domain names <bontonholiday.com>, <bontonholiday.net>, <bontonholidays.com>, and <mybontontholiday.com> are registered with 1&1 Internet AG (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 30, 2017. On June 30, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On July 4, 2017, 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 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 6, 2017. In accordance with the Rules, paragraph 5, the due date for Response was July 26, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 27, 2017.

The Center appointed Harini Narayanswamy as the sole panelist in this matter on August 1, 2017. 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 Complainants are directors of the company Bonton Holidays Private Limited. The company owns registered trademark rights for the BONTON mark, as per details listed:

The Respondent registered the disputed domain names <bontonholiday.com>, <bontonholiday.net>, <bontonholidays.com>, and <mybontontholiday.com> on March 21, 2008. The Respondent has redirected some of the disputed domain names to its website at “www.bontontours.com”, which offers travel-related services such as hotel booking.

5. Parties’ Contentions

A. Complainants

The Complainants state that the disputed domain names are identical to the BONTON trademark, which is a registered trademark of Bonton Holidays Private Limited. The Complainants state that the Respondent Mr. Avinash was a director of Bonton Holidays Private Limited and had registered the disputed domain names in his personal name in the year 2008. The Respondent resigned from the company on February 8, 2017 and the Complainants state that he has no rights in the disputed domain names. The Complainant has filed as evidence the Respondent’s resignation letter from the company. The Complainants have also submitted a copy of the document showing the company’s authorized signatories, copies of the Complainants’ passports, and share certificates in the name of the Complainants showing their shareholding in the company. The Complainants contend that they have not licensed or consented to the Respondent’s use of the disputed domain names after his resignation from the company. The Complainants believe that no circumstances listed in paragraph 4(c) are present to justify the Respondent’s use of the disputed domain names.

The Complainants submit that the disputed domain names are being used in bad faith as the Respondent has re-directed the disputed domain names to “www.bontontours.com”. The Complainants allege that after the Respondent’s resignation from the company, he intentionally redirected the disputed domain names to “www.bontontours.com” and is attempting to attract for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainants’ mark as to the source. The Complainants request for the remedy of transfer of the disputed domain names.

B. Respondent

The Respondent did not reply to the Complainants’ contentions. The Panel is satisfied that the Center has sent notice of the Complaint to the Respondent. Material on record shows a written notice dated July 6, 2017 was sent by the Center to the Respondent by facsimile and by courier to two addresses, one in India and another in the United Arab Emirates. The Indian address at Mumbai, mentioned in the registration records, to which a courier was sent, was returned due to having an incomplete address. Another courier sent to Bonton Tours and Travels LLC located at Deira, Dubai, United Arab Emirates was received at that address.

6. Discussion and Findings

6.1. Multiple Complainants

The Complainants have jointly filed the present complaint and have requested for the remedy of transfer of the disputed domain names. Under the Policy, if multiple complainants have a common cause of action against a single respondent, they can file a single complaint under the Policy. In N.M Rothschild & Sons Limited and Banque Martin Maurel v. Xiamen PrivacyProtection Service Co. Ltd. / Yang hongjuan, WIPO Case No. D2016-2508 it was held that multiple complainants can bring a single consolidated complaint against a single respondent. Also see Jacqueline Riu and Société Riu Aublet et Compagnie v. Olivia Marimelado, WIPO Case No. D2010-0170, and Halle Berry and Bellah Brands Incorporated v. Alberta Hot Rods, WIPO Case No. D2016-0256 (where complainants had proven a corporate connection to file a single complaint under the Policy).

Under paragraph 4(a) of the Policy, the Complainants are required to establish the following to obtain the remedy of transfer of the disputed domain names:

(i) The disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant have rights; and

(ii) The Respondent lacks rights or legitimate interests in the disputed domain names; and

(iii) The disputed domain names were registered and are being used in bad faith by the Respondent.

A. Identical or Confusingly Similar

The Complainants have to establish under the first requirement of paragraph 4(a) of the Policy, that the disputed domain names are identical or confusingly similar to a trademark or a service mark in which they have rights.

The Complainants have filed as evidence copies of the trademark registration certificates for the BONTON mark in the name of the company Bonton Holidays Private Limited. The registered trademarks pertain to a device mark and for BONTON represented in a stylized manner. The Complainants have also filed share certificates showing their ownership in the company Bonton Holidays Private Limited. In addition, they have filed documents showing they are the authorized signatories for the said company. Based on these documents, the Complainants are found to have satisfied the threshold requirement of showing rights in the BONTON trademark, due to their ownership rights in company Bonton Holidays Private Limited. Evidence showing rights in a registered trademark by a complainant is considered sufficient to satisfy the threshold requirement of having trademark rights. See section 1.1 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

The Panel finds that the disputed domain names contain the BONTON mark and the word “holiday”. It is a well-established norm that for domain names consisting of a trademark, additional words do not necessarily interfere with the finding of confusing similarity between the mark and the disputed domain name. Accordingly, in the present case, the addition of the word “holiday” or its plural form “holidays” or the prefixing of the word “my” does not deter a finding of confusing similarity between the disputed domain names and the mark. The “.com” or “.net” suffixes to the disputed domain names also do not interfere with the finding of confusing similarity. It is therefore found that the disputed domain names are confusingly similar to the BONTON trademark.

The Complainants have established the first requirement under paragraph 4(a) of the Policy, that the disputed domain names are identical or confusingly similar to a trademark or a service mark in which they have rights.

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 names. Where the complainant has made a prima facie case that the respondent lacks rights or legitimate interests, the burden shifts to the respondent to come forward with relevant evidence in support of its rights or legitimate interests in the disputed domain name. If the respondent does not come forward with relevant evidence establishing rights in the disputed domain names, the complainant is deemed to have satisfied the second element. (See section 2.1 of WIPO Overview 3.0).

The Panel finds from the submissions and the evidence provided by the Complainants, that the Respondent was a director of the company Bonton Holidays Private Limited. The Respondent resigned from the company in February 2017. The Complainants have asserted that they have not licensed or consented to the Respondent’s use of the disputed domain names after his resignation from the company. The Complainants have additionally argued that there are no circumstances under paragraph 4(c) that would justify the Respondent’s legitimate use of the disputed domain names. The Respondent did not respond to the Complainant’s allegations or refute any submissions made by the Complainants in these proceedings. The Panel therefore proceeds on the basis of the unrebutted evidence filed by the Complainants and finds the Respondent lacks rights and legitimate interests in the disputed domain names in light of the following discussions.

In previous UDRP cases where a former director of an organization had registered domain names in his personal name that incorporates a trademark of the complainant, it has been held that no legitimate rights or interests devolve on such former company official. See Simple Abilities Inc. v. Jeff Hoogveld and Adaptivies Abilities Inc., WIPO Case No. D2006-0143 (where the respondent in that case, a former director of the complainant organization, was found to lack rights or legitimate interests in domain names that he had registered in his personal name). Also see The Glorya Kaufman Dance Foundation and Glorya Kaufman v. Carolyn B. Baker & Associates and “Glorya Kaufman Dance Foundation”, formerly Domains By Proxy, Inc., WIPO Case No. D2010-0034 and the reference to some earlier UDRP decisions: Ruby’s Diner, Inc. v. Josph W. Popow, WIPO Case No. D2001-0868 (an employee or former employee is not a licensee, and thus has no authorization to use a company’s trademark or a confusingly similar variation thereof without permission). Savino Del Bene Inc. v. Graziano Innocenti Gennari, WIPO Case No. D2000-1133 (finding that as a rule, former employees do not have a legitimate right or interest in registering in their own name their former employer’s trademark as a domain name). For a more comprehensive discussion on this line of cases, refer to The Glorya Kaufman Dance Foundation, supra.

This line of UDRP cases hold that, when a respondent, who is a former partner, director, or employee of a business or organization, continues to retain domain names in his personal name after leaving the organization, even if the respondent did not try to sell or rent the domain names, he ceases to have legitimate rights or legitimate interests in the disputed domain name. The basic reasoning in such cases is consistent with the view that, when the domain names are registered under the respondent’s own name, he has done so in contemplation of the fact that, when he leaves or resigns from the company or organization, such trademark related rights could be asserted by the owner of the mark. Similarly, in the present case, consistent with the ruling in previous such cases, it is found that the Complainants have successfully established a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain names.

Accordingly, based on the findings, it is held that the Complainants have satisfied the second requirement under paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

The third element requires the Complainants to establish the disputed domain names have been registered and are being used in bad faith by the Respondent.

The Complainants, relying on the BONTON trademark rights and the Respondent’s lack of rights in the disputed domain names, have highlighted that the Respondent has redirected the disputed domain names to another online location, which is evidence of bad faith. The Complainants have further argued that such use of the disputed domain names by the Respondent has the potential risk of causing consumer confusion. Redirecting the disputed domain name to a competitor site is recognized as bad faith use under the Policy. See Simple Abilities Inc. v. Jeff Hoogveld and Adaptivies Abilities Inc. and The Glorya Kaufman Dance Foundation, supra, where the respondent was employed as an executive director with the complainant’s organization and registered domain names with knowledge of complainant’s rights in the mark and had used the domain names for purposes of redirecting to another online location and it was held to be registration and use of disputed domain names in bad faith.

It was further discussed in The Glorya Kaufman Dance Foundation, supra, thatwhen ex-employees or former directors holding on to domain names registered in their individual names, despite the breach in relationship, it constitutes bad faith registration and use of the disputed domain names by the respondent. This is in line with the views expressed in earlier cases where UDRP panels have repeatedly held that registration of a trade mark-related domain name by an employee with knowledge of the trademark owner’s rights in the mark constitutes bad faith registration and use. See Savino Del Bene Inc. v. Graziano Innocenti Gennari, WIPO Case No. D2000-1133 (“[r]espondent’s registration of the company name of the former employer as a domain name is an act of bad faith”).

The Respondent did not avail the opportunity to respond in these proceedings and did not make any submissions. The Panel after having considered the facts and circumstances discussed here, finds it reasonable to infer that the Respondent has redirected the disputed domain names to attract Internet users or viewers for the opportunity of creating a false association with the Complainant’s business, which is bad faith registration and use under the provisions of paragraph 4(b)(iv) of the Policy.

The Panel concludes based on the points discussed, that the Complainants have successfully established the third element under paragraph 4(a) of the Policy, that the disputed domain name was registered and is being used in bad faith by the Respondent.

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 names, <bontonholiday.com>, <bontonholiday.net>, <bontonholidays.com>, and <mybontontholiday.com> be transferred to the first Complainant, Piyush Kumar Parekh.

Harini Narayanswamy
Sole Panelist
Date: August 14, 2017