UDRP decision highlights importance of providing sufficient evidence for panel to examine

International

IndiaMART InterMESH Limited, based in Noida, India, has filed a successful complaint under the Uniform Domain Name Dispute Resolution Policy (UDRP) with the World Intellectual Property Organisation (WIPO) concerning the domain name ‘infoindiamart.com’.

The complainant operated an online business-to-business portal assisting small and medium suppliers to market their products. It was the owner of the trademark INDIAMART in Classes 9, 35 and 42 of the Nice Classification, as well as several domain names using its INDIAMART trademark, such as ‘indiamart.com’.

The domain name ‘infoindiamart.com’ was registered on January 15 2011 by the respondent, listed in the decision as being Net 4 India Limited, also of Noida, in addition to various other names. The respondent claimed to operate an Indian company in Mumbai, and argued that it used the term ‘Info Mart’ as its trade designator with a logo that was different from the complainant’s trademark. However, the respondent did not provide any proof of the registration or commercial use of its supposed trademark.

The respondent argued that the complainant had intentionally misrepresented the name of the respondent as ATB Infoindia Mart Pvt Ltd and that the complaint should therefore be dismissed. However, the panel found from the documents filed by the respondent that the Whois record did indeed show the name of the registrant organisation as ATB Infoindia Mart Pvt. Ltd. Accordingly, the panel considered that the complainant had just reflected the same name indicated by the respondent in its domain name registration details. The panel explained that, if the respondent had provided incorrect details for the registration, it could not "hold the complainant responsible for this mistake".

In order to succeed under the UDRP, a complainant must satisfy all of the following three requirements of Paragraph 4(a):

  1. The domain name is identical, or confusingly similar, to a trademark or service mark in which the complainant has rights;
  2. The respondent has no rights or legitimate interests in respect of the domain name; and
  3. The domain name has been registered and is being used in bad faith.

The first condition is generally satisfied by providing evidence of trademark rights, regardless of when or where the trademark was registered, although these factors may be relevant for the purpose of the third limb of the test.

The complainant asserted that the disputed domain name was identical to its registered trademark. The panel found that the complainant had provided evidence of its rights in the INDIAMART mark and that the mark had become a "distinct identifier" of the complainant’s business. Moreover, the respondent had acknowledged the complainant’s rights in the INDIAMART mark. 

The respondent argued that the disputed domain name was composed of three common generic words, ‘info’, ‘India’ and ‘mart’, but the panel considered that "the words in the complainant’s mark have acquired secondary meaning for the purposes of the Policy".

Moreover, the respondent argued that the domain name was "unique and distinct" from the complainant’s trademark and filed an affidavit by one of its clients stating under oath that there was no confusing similarity between the website at the disputed domain name and the complainant’s website at ‘www.indiamart.com’. In this regard, the panel underlined that the analysis of confusing similarity under the first limb was generally simply made between the disputed domain name and the trademark per se, without reference to the website content. This was based on the principle of ‘initial interest confusion’, as "user confusion would arise when the user encounters the domain name and clicks on the domain name, which is before the user arrives at the respondent’s website".

The panel noted that the disputed domain name incorporated the complainant’s INDIAMART mark with the term ‘info’, and considered that "the addition of generic terms to a trademark does not lessen confusing similarity, particularly if the mark in question is a distinctive trademark" (Swarovski Aktiengesellschaft v WhoisGuard Inc (WIPO Case No D2013-1450)).

In conclusion, the panel found that the domain name was confusingly similar to the complainant’s trademark.

Concerning the second requirement of the UDRP, a complainant must establish that a respondent does not have any rights or legitimate interests in the disputed domain name. In this regard, Paragraph 4(c) sets out a non-exhaustive list of circumstances which may suggest that a respondent has rights or legitimate interests in a domain name, as follows:

  1. before any notice to it of the dispute, the respondent's use of, or demonstrable preparations to use, the domain name in connection with a good-faith offering of goods or services;
  2. the respondent has been commonly known by the domain name, even if it has acquired no trademark rights; or
  3. the respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain, to misleadingly divert consumers or to tarnish the trademark at issue.

The respondent argued that it was making legitimate non-commercial fair use of the disputed domain name, without intent for commercial gain, as specified under Paragraph 4(c)(iii), but the panel noted that the respondent never provided any supporting evidence.

The respondent also claimed that it was an "honest concurrent user" of the disputed domain name under Section 12 of the Indian Trademarks Act 1999. However, the panel explained that such status could arise only if the respondent could prove that it was a concurrent user of the INDIAMART mark in commerce. In this regard, the panel noted that the respondent had claimed that it used the trade designator ‘Info Mart’, but did not provide any proof of common law usage of this trademark. Consequently, the question of whether the respondent was an "honest concurrent user" of the INDIAMART mark did not arise. Even if the respondent had adopted the INDIAMART mark in commerce, this was incompatible with its claim of using the trademark or the disputed domain name for legitimate non-commercial fair use as considered under Paragraph 4(c)(iii).

Accordingly, in the present case, the panel found that the complainant had satisfied the second requirement of Paragraph 4(a).

Concerning the third requirement of the UDRP, a complainant must demonstrate that the respondent registered and used the disputed domain name in bad faith. In this regard, Paragraph 4(b) of the UDRP sets out a list of non-exhaustive circumstances that may suggest registration and use of a domain name in bad faith, as follows:

  1. the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring it to the complainant or to a competitor, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name;
  2. the respondent registered the domain name in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct;
  3. the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
  4. the respondent is intentionally using the domain name in an attempt to attract, for commercial gain, internet users to its website by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website.

The respondent argued that the disputed domain name consisted of only generic words, that it had "merely added" the word ‘India’ between the two words in its own name ‘Info Mart’, and that its usage of the trademark in the domain name was to be considered as honest concurrent use of the trademark. Moreover, the respondent indicated that it was using the domain name for legitimate non-commercial fair use purposes. As seen previously, the panel considered that the respondent's allegations were incompatible with the evidence presented.

The panel noted that the complainant’s trademark had acquired secondary meaning and was distinctive of the complainant’s business. Furthermore, the panel explained that UDRP disputes are decided on the principle of "balance of probabilities". Accordingly, the panel found that, the INDIAMART mark being well-known ("even a simple Google search would have revealed the complainant’s rights in the mark"), the respondent most likely had registered the domain name for its confusing similarity with the complainant’s mark.

The panel reminded readers that the registration of a domain name that incorporates a well-known mark by a party that has no legitimate connection or relationship with the owner of such trademark is itself considered evidence of bad faith (Swarovski Aktiengesellschaft v Whois Privacy Protection Services Inc (WIPO Case No D2012-0979)). In the present matter, the panel considered that the disputed domain name had been registered and was being used by the respondent with the intention of deriving commercial benefit by attracting web traffic to the respondent's website based on the complainant’s reputation associated with the INDIAMART mark.

Accordingly, the panel considered that the respondent had registered and was using the disputed domain name in bad faith. As a result, the panel decided that the disputed domain name be transferred to the complainant.

Overall the decision is interesting as it highlights several essential UDRP principles and rules, such as the principle of ‘initial interest confusion’ and ‘balance of probabilities’. Moreover, the decision underlines the importance of providing sufficient evidence for the panel to examine. In this case, the respondent made various allegations and statements, but never provided any supporting evidence.

David Taylor and Jane Seager, Hogan Lovells LLP, Paris  

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