3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 21, 2010. On October 21, 2010, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On October 21, 2010, eNom 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 26, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was November 15, 2010. The Response was filed with the Center on November 14, 2010.
The Center appointed Harini Narayanswamy as the sole panelist in this matter on December 6, 2010. 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 an Indian telecommunication company. The Complainant uses the trademark AIRTEL and has registered the trademark in India and in several other countries. The Complainant’s trademark registrations in India are:
5. Parties’ Contentions A. Complainant The Complainant states it is one of the world’s leading telecommunications companies with its presence in nineteen countries in Asia and Africa, it has 183 million customers. The Complainant’s services include cellular phone services, broadband and Internet services, international services, calling cards, e-business services, DTH and IPTV services among others. The Complainant claims it is the third largest in-country mobile operator in the world and the sixth largest integrated telecom operator in the world. Its revenues for financial year 2009-10 were about USD 9.3 billion. The Complainant states that it is the largest wireless provider in India based on the number of customers as of June 30, 2010 and operates in all the twenty-two telecom circles in India.
The Complainant states it is the owner of the AIRTEL mark, and that ownership of the mark vests with two of its group companies, Bharati Airtel Ltd. and Bharti Telecom Ltd. The Complainant states that it conceived, coined and adopted the distinctive AIRTEL trademark in the year 1994. The Complainant further contends that AIRTEL is a coined word and not a dictionary word and is therefore entitled to greater protection. The Complainant also owns several domain names with the AIRTEL mark.
The Complainant contends that it spends vast amounts as promotional expenditure to promote the AIRTEL mark and has provided evidence of its extensive publicity and advertisements. The Complainant asserts that due to the widespread use and publicity of the mark, the public associates the AIRTEL trademark with the Complainant. The Complainant has become a household word and has acquired the status of a well-known mark that is protected by the courts, citing several cases decided in its favor in different jurisdictions.
The Complainant mentions it has received awards and recognitions, some of these are: The “Most Preferred Cellular Services Provider Brand” at CNBC Awaaz Consumer Awards in Mumbai, for the year 2010-11, which AIRTEL has received for the sixth year in a row in this category. The trademark AIRTEL was rated as the “Strongest Brand” in the Economic Times Brand Power rating 2009 and the only Corporate Brand to be awarded the AAA rating. AIRTEL is ranked second in the Economics Times Brand Equity Survey as the most trusted brand for 2009. The Complainant is listed in Forbes Asia’s “Fabulous 50 Companies”, in 2009 at the sixth position. The Company was ranked sixth among” The Top 100 Best Performing Technology Companies of the World”, compiled by Business Week for the year 2009.
The Complainant argues that the disputed domain name is identical or deceptively similar to its trademark and that the Respondent has no rights and legitimate interests in the disputed domain name. The Respondent’s registration of the disputed domain name violates the Complainant’s rights in its marks. As the Respondent is not connected to the mark, the Respondent’s registration of disputed domain name constitutes infringement and dilution of the AIRTEL and AIRTEL MONEY trademarks. The Complainant states it filed for trademark registration of the AIRTEL MONEY trademark on July 8, 2010, which is prior to the registration of the disputed domain name.
The Complainant argues the disputed domain name was registered in bad faith for the reasons that the Respondent registered it on July 25, 2010; just a few days after Complainant filed the trademark application for AIRTEL MONEY. In response to a legal notice sent by the Complainant, the Respondent had agreed not to host anything on its site but did not reply to the further communications from the Complainant and continues to use the domain name in bad faith without rights. Such registration and use that exploit the Complainant’s trademark by attracting Internet users the Complainant apprehends could cause harm to the goodwill and reputation of the Complainant’s business and therefore requests for the transfer of the disputed domain name.
B. Respondent The Respondent states in his response that the Complainant does not hold a trademark for the phrase “AIRTEL MONEY”. The Respondent further states that he has registered the disputed domain name for the purposes of starting a new blog. The Respondent argues that, as he has made no attempts to sell or transfer the domain name or use it for any commercial purpose, and a claim of bad faith use of the disputed domain name against the Respondent would not be justified.
The Respondent further argues that he is not involved in any venture in the telecommunications sector, and hence he does not stand to gain from withholding the disputed domain name from the Complainant. The Respondent goes on to state that he is not using any of the Complainant’s copyright materials or trademarks, which may cause visitors to believe that the Complainant owns the portal or website connected to the disputed domain name.
6. Discussion and Findings To obtain the remedy of transfer of the disputed domain name, the Policy states that the Complainant has to establish three elements under paragraph 4(a).
(i) The disputed domain name is identical or confusingly similar to a 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 element under paragraph 4(a) requires the Complainant to prove that the disputed domain name is identical or confusingly similar to a mark in which it has rights.
The Complainant has filed numerous documents that establish its rights in the AIRTEL trademark. It has filed copies of its trademark registrations under different classes, in different jurisdiction and also the details of its pending trademark applications. The Complainant has filed materials that show extensive publicity and media coverage for its products and services under the AIRTEL mark. It has highlighted the various awards and recognitions it has received over the years, which establishes the national and international fame of the AIRTEL mark. The Complainant has thereby successfully established that it has exclusive rights in the AIRTEL mark.
The Respondent has argued that the Complainant has no trademark rights in the phrase “airtel money”, but has not rebutted the Complainant’s averments of the AIRTEL trademark being a well-known mark that denotes the Complainant, its products and services. Under paragraph 4 (a)(i) it is sufficient for the Complainant to establish that a trademark or a name in which it has rights is incorporated in a domain name that renders the domain name confusingly similar to the mark. In the present case the Complainant has established its ownership rights in the AIRTEL trademark and the Respondent does not dispute the validity of the Complainant’s AIRTEL trademark or that AIRTEL MONEY is a derivative of the Complainant’s AIRTEL mark.
The disputed domain name incorporates the AIRTEL mark and the generic term “money”. Appending non-distinctive text to a trademark does not distinguish the domain name from a complainant’s registered trademark. See President and Fellows of Harvard College v. Domains By Proxy Inc. Online Property LLC, WIPO Case No. D2010-0263, where appending the word “online” to the trademark HARVARD in the domain name was found as not distinguishing the domain name from the mark or in TRS Quality, Inc. v. Chirs Robert, WIPO Case No. D2010-1663 () addition of the term “coupons” with the RADIO SHACK trademark was found confusingly similar to the mark. Several UDRP decisions have recognized that a domain name that incorporates a trademark in it entirety along with a non-distinctive term is sufficient to establish confusing similarity to the trademark. See for instance, Quixtar Investments Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253, where the domain name was found confusingly similar to the QUIXTAR trademark. Similarly, in the present case, the AIRTEL mark along with the generic term “money” in the disputed domain name does not lessen confusing similarity with the mark.
For the reasons discussed the Panel finds the disputed domain name is confusingly similar to the Complainant’s AIRTEL mark.
B. Rights or Legitimate Interests The second element under paragraph 4(a) of the Policy requires the Complainant to make a prima facie showing that the Respondent lacks rights and legitimate interests in the disputed domain name.
The Complainant has asserted that the Respondent has no rights or legitimate interests in the disputed domain name, as the Respondent has no authorization to use its trademark. The Respondent in his response, has not denied or refuted these submission made by the Complainant.
Paragraph 4(c) of the Policy provides a non-exhaustive list whereby the Respondent can demonstrate his rights or legitimate interests in the disputed domain name. These are:
(i) The Respondent has used or made demonstrable preparations to use the disputed domain name in connection with a bona fideoffering of goods or services;
(ii) The Respondent has been commonly known by the disputed domain name;
(iii) The Respondent is making legitimate noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or tarnish the trademark of the Complainant.
The Respondent has argued that he proposes to use the disputed domain name as a blog in the future and that the disputed domain name is a passive holding for his proposed blog. The Respondent has however not substantiated his submissions with any supporting material. To establish any legitimate interest in the proposed blog, that uses the Complainant’s trademark, the Respondent would need to provide material that shows actual use or concrete evidence of preparations to use the domain name for a permitted purpose to establish any legitimate interests. See L’Oreal v. Tracy Johnson WIPO Case No. D2008-1721 (). Further, it is well established that mere passive holding of a domain name that incorporates the trademark of another, does not create any legitimate rights in favor of the respondent, see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, even though the respondent may intend to use the website linked to the domain name as a blog in future. See L’Oreal v. Tracy Johnson(Supra).
The Panel finds that there is no evidence on record to show that the Respondent has made preparations to use the disputed domain name for a bona fide offering of goods or services or that the Respondent has been commonly known by the disputed domain name or makes any legitimate noncommercial fair use of the website linked to the disputed domain name. In the absence of any material from the Respondent, the Respondent can claim no contemplated bona fide or legitimate use of the disputed domain name. The Respondent has therefore been unable to established that he has any rights or legitimate interests under paragraph 4(c) or otherwise.
The Respondent, who is not connected with the Complainant or its business, nonetheless uses the Complainant’s trademark in the disputed domain name. In the Panel’s view, the use of the Complainant’s mark in the disputed domain name is likely to mislead the public and Internet users that the disputed domain name refers to the Complainant. A domain name that gives a false impression to users and misleads Internet users does not confer legitimate rights. This view has been upheld in several prior UDRP decisions, see for instance, Pfizer Inc. v. Schreiner / Schreiner & Co., WIPO Case No. D2004-0731.
The Complainant has made a prima facie case that the Respondent has no rights and legitimate interests in the disputed domain name which the Respondent has not rebutted and thus the Complainant has satisfied the second element under paragraph 4 of the Policy.
C. Registered and Used in Bad Faith The third element under paragraph 4(a) of he Policy requires the Complainant to prove that the disputed domain name has been registered and is being used in bad faith.
The Complainant has established in these proceedings that it is a leading telecommunications company in India. It is unlikely that the Respondent, who resides in India, did not know of the Complainant’s mark or did not have the Complainant’s mark in mind when he registered the disputed domain name. The timing of the disputed domain name registration just a few days after the Complainant applied for the AIRTEL MONEY mark also gives rise to the inference that the Respondent perhaps made a preemptive registration.
The Respondent in his response has stated that he is not involved in any venture in the telecommunications sector, and hence he does not stand to gain from withholding the disputed domain name from the Complainant. This statement by the Respondent, gives rise to the question as to why the Respondent chose to register the disputed domain name at all. The overwhelming circumstantial evidence here suggests that the most plausible inference that can be drawn from the Respondent’s registration of the disputed domain name is that he had the Complainant’s trademark in mind. The registration of a domain name with the Complainant’s trademark in mind, under certain circumstances, is recognized as bad faith registration under the Policy. See Baccarat SA v. MSL International, Inc., WIPO Case No. D2005-0048. ().
Given the fame of the Complainant’s mark and the fact that the term AIRTEL has no dictionary meaning, but rather refers to the Complainant’s mark, see Bharti Airtel Limited, Body Corporate v. Ramandeep Singh, USA Webhost, Inc., WIPO Case No. D2010-0524 (where the Complainant’s trademark is recognized as a coined word for the exclusive use of the Complainant), it is the Panel’s view, that the use of the Complainant’s trademark in the disputed domain name gives rise to the inference that the Respondent registered the disputed domain name for its trademark value, for generating Internet traffic and for deriving some form of commercial gain by using the Complainant’s trademark.
Furthermore, the use of the AIRTEL trademark in the disputed domain name is likely to cause confusion to users, who may falsely believe that the Respondent’s domain name is being operated or endorsed by the Complainant. The registration of a domain name that incorporates a well-known mark maybe itself be evidence of bad faith registration. See for instance PepsiCo, Inc. v. Domain Admin WIPO Case No. D2006-0435. (
The Panel finds the Respondent has registered the disputed domain name with the intention of attracting Internet users to its website by creating a likely hood of confusion with the Complainant’s trademark as to the source and, sponsorship, which is recognized as bad faith registration and use under paragraph 4(b)(iv) of the Policy. See AXA S.A v. Privacy Protected.org/ Kuddos Ronald Linco, WIPO Case No. D2010-0270.
The Complainant has successfully established that the disputed domain name was registered and is being used in bad faith.
7. Decision For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant.