essarcellular.com

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Essar Investments Limited v. Mayank Chowdhary

Case No. D2007-0510

1. The Parties

The Complainant is Essar Investments Limited, Mumbai, India, represented by an internal representative.

The Respondent is Mayank Chowdhary, Noida, India, represented by Danish Ali Khan, India.

2. The Domain Name and Registrar

The disputed domain name <essarcellular.com> is registered with Enom, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 3, 2007. On April 5, 2007, the Center transmitted by email to the registrar a request for registrar verification in connection with the domain name at issue. On April 5, 2007, Register.com transmitted by email to the Center its verification response stating that the Registrar is Enom Inc and provided the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on May 19, 2007. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 June 12 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was July 2, 2007. The Response was filed with the Center on July 2, 2007.

The Center appointed Harini Narayanswamy as the sole panelist in this matter on July 23, 2007. 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 Essar Investments Limited, an Indian company of the Essar Corporate Group. The group was founded three decades ago, and has interests in various areas including shipping, power, oil and gas, construction and telecommunications. The Complainant has used the ESSAR mark extensively in commerce for various goods and services and has acquired rights in the mark. A list of the Complainant’s Indian trademark registrations in various classes for the ESSAR word mark is provided.

The Complainant additionally states that the ESSAR logo is registered with the Registrar of Copyright, New Delhi , India, bearing Registration No A 53222//96, dated April 18, 1996.

The domain name was first registered on November 16, 2000.

As per the database records, the current registrant of the domain name <essarcellular.com> is Mayank Chowdhary, the Respondent in these proceedings.

5. Parties’ Contentions

A. Complainant

The Complainant claims its group has an asset base of Rs.230 billion, and that the ESSAR mark has acquired considerable fame due to the goodwill associated with the mark. The mark therefore, has become distinctive of the Complainant’s group and any reference to ESSAR signifies the well known “Essar Group”.

The Complainant asserts that the domain name is identical or confusingly similar to the trademark in which it has rights. The Complainant states that a Google search for the term “Essar” displays the Respondent website SR Cellular along with other companies of the Essar group. This, according to the Complainant, would create a false impression that the Respondent’s SR Cellular is associated or linked to the Complainant’s Essar Group. The use of the domain name <essarcellular.com > by the Respondent is therefore likely to create confusion in the mind of the public.

The Complainant further claims that the Respondent has no rights or legitimate interests in respect of the domain name. By a letter dated July 14, 2006, allegedly sent to the Respondent by the Complainant, the Complainant had informed the Respondent that it had temporarily discontinued use of the disputed domain name. In that letter, the Complainant argued that the registration of the disputed domain name by the Respondent, previously registered by the Complainant constituted an infringement of the ESSAR mark. It is further alleged that the Respondent had sent a reply letter dated August 3, 2006, stating that it is knowingly using the domain name. Copies of these letters have not been filed, nor has the Complainant submitted evidence that the domain name was initially registered and used by the Complainant’s group. The Complainant finally contends that the registration and use of the domain name by the Respondent is in bad faith as the domain name was acquired by the Respondent who had knowledge of the ESSAR mark and Complainant’s prior use of the domain name. The Complainant requests for the transfer of the domain name.

B. Respondent

The Respondent in these proceedings, Mayank Chowdhary, has filed a timely Response, where he argues that the Complainant’s failure to renew the domain name is a valid reason for registering and using the domain name. The domain name presently resolves to a website called “S.R. CellFun Zone” which claims to provide ring-tones, jokes, wall paper and games for cell phones. The website also displays a disclaimer which inter alia states:

“This site is designed, developed and maintained by the SR CellFun Zone. This site is sole property of the S.R. CellFun Zone and has nothing to do, or linked or affiliate with Essar Cellular.”

The Respondent states that he understands the ESSAR mark and logo belong to the Complainant. The Respondent further admits to knowing that the disputed domain name was “primarily” under the control of Essar Group, but that the Complainant’s group had not renewed the domain name. The Respondent further argues that the domain name was of no use to the Complainant as Essar Cellular was taken over by another company called Hutchinson Telecom. Based on the assumption that the Complainant was not interested in renewing or using the domain name the Respondent registered the domain name.

The Respondent then goes on to provide the ownership history of the domain name <essarcellular.com>. The domain name was initially registered by Aircel Digilink India Limited, a company of the Essar group, on November 16, 2000, and used by the Complainant to host a website to promote Essar’s Cell Phone Services. The registration of the domain name, design and hosting of the website was purportedly done by a design company called India mart Intermesh Limited. When Aircel Digilink India Limited was taken over by Hutchinson Telecom (Hutch India) in November 2004, Hutch India discontinued the use of the domain name. The Respondent then registered the domain name <essarcellular.com> when he noticed that the domain name was available for registration.

The Respondent therefore claims rights and legitimate interests in the domain name for the reason that it was registered by the Respondent only after Essar Group had failed to renew the registration. The Respondent claims that acquiring the domain name in this manner is a “fair and/or genuine process”.

The Respondent denies that the domain name was registered or used in bad faith, as the Respondent has not tried to sell, rent or transfer the domain name to the Complainant or any other entity. The Respondent argues that SR CellFun Zone is not a competitor to the Essar Group and that it has nothing to do with Essar Cellular. The Respondent further contends that the registration was not made with an intention of trading upon the reputation of Essar or to attract people to its website for commercial gain. The Respondent then goes on to state that there are no representations made on its website that would associate it with Essar, as it does not display the Complainant’s logo or give any false impression that the page is related to Essar. The Respondent therefore requests that the remedies requested by the Complainant be denied.

6. Discussion and Findings

Paragraph 4(a) of the Policy requires the Complainant to prove the following three elements to obtain an order for a domain name to be transferred:

(i) The domain name registered by the Respondent 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 domain name, and

(iii) The domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant must establish its trademark rights, under paragraph 4(a)(i) of the Policy and prove that the domain name is identical or confusingly similar to a trademark in which it has rights. The Complainant has clearly demonstrated its rights in the ESSAR mark, and this fact is acknowledged by the Respondent.

The disputed domain name incorporates the ESSAR mark entirely along with the word ‘cellular’. There are numerous decisions that have held that a domain name that comprises a Complainant’s trademark in its entirety along with a generic word establishes confusing similarity. For instance the domain name <nokiagirls.com> was found confusingly similar to the trademark NOKIA. See Nokia Corporation v. Nokiagirls.com a.k.a IBCC, WIPO Case No. D2000-0102. In the same way the domain name <attelephone.com> was held confusingly similar to the AT&T trademark, where adding the generic word ‘telephone’ was held to enhance the confusion. See AT&T Corp. v. William Gormally, WIPO Case No. D2005-0758.

The PORSCHE trademark in the domain names <porcheautoparts.com> and <porcheexchange.com> was found to be the dominant part of the domain name in the cases Dr. Ing.h.c.F Porche AG v. Vasiliy Terkin, WIPO Case No. D2003-0888 and Dr. Ing.h.c.F Porche AG v. “Porche AG”, WIPO Case No. D2002-0103. In all these cases it was found that the addition of a generic word to a well-known trademark is likely to create confusion as to the source or sponsorship and hence confusingly similar to the trademark. The Panel finds that addition of the word “cellular” to the Complainant’s ESSAR trademark would render the domain name confusingly similar to the mark in the present case.

The Respondent has contended that the content of its website would dispel Internet user confusion. It is well established that content of a website is not relevant in determining confusing similarity, see AT&T Corp. v. Amjad Kausar,WIPO Case No. D2003-0327. Also see 1.2WIPO Overview of WIPO Panel Views on selected UDRP Questions, which states the content of the website (whether it is similar or different to the business of the trademark owner) is irrelevant for finding confusing similarity. This is because trademark owners often suffer damage from “initial interest confusion”. Accordingly the Panel finds the domain name <essarcellular.com> is confusingly similar to a trademark in which the Complainant has rights.

The Panel finds that the Complainant has established the requirements under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant has asserted that the Respondent has no rights and legitimate interests in the domain name. The parties agree that the Respondent has no relationship with the Complainant.

The Respondent has argued that the Complainant’s failure to renew the domain name would give the Respondent a legitimate right to use the domain name. The fact that the Complainant did not renew the registration of the domain name does not imply that the Complainant has relinquished its rights affiliated to the domain name in future. Nor entitle the Respondent or any other entity to register a domain name which uses the trademark of the Complainant without the express permission from the Complainant.

This Panel has observed in Tata Sons Limited v. Net Prosol / Renjith R, WIPO Case No. D2004-0083, pertaining to the domain name <tatainfocom.com>, that it is a well-established principle, upheld in numerous decisions, that reaping unfair rewards from the reputation and goodwill of another is not a legitimate right.

The Panel finds that the Respondent has not been able to establish any rights or legitimate interests in the domain name <essarcellular.com>. There is no evidence before the Panel that establishes that the safe harbor provisions of paragraph 4(c) apply to the given facts. The Respondent is not the owner of any trademark that includes the term “Essar”. The Respondent is not known by the name “Essar”, nor has it submitted evidence of a bona fide offering of goods or services under that name. The ESSAR trademark is an Intellectual Property asset which was assiduously built by the Complainant over a period of three decades. The Respondent has registered the domain name with full knowledge of the Complainant’s mark to profit from the goodwill and reputation of the Complainant’s mark. Such use of the domain name is not found to be bona fide or legitimate use and does not confer any rights or interests in favor of the Respondent. There is no compelling evidence to show that the Respondent has rights or legitimate interests in the domain name.

The Complainant has established the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Complainant must establish that the Respondent has registered and used the domain name in bad faith.

The Complainant contends that the Respondent has registered the domain name with full knowledge of the Complainant’s ESSAR mark. The Respondent has offered no plausible explanation as to why the Respondent has chosen the widely known ESSAR mark rather than “SR”, which related to the “S.R. CellFun Zone” title used in the website to which the domain name resolves, while registering the domain name. Prior knowledge of the mark is an indication of bad faith registration The Cyberbingo Corporation v. 207 Media Inc.,WIPO Case No. D2005-0714. In the Panel’s opinion it is sufficient that the Respondent has displayed opportunistic bad faith registration by registering the domain name. Veuve ClicquotPonsadin, Maison Fondee en 1772 v. Polygenix Group Co. WIPO Case No. D2000-0163 (use of a well known trademark by someone who has no connection with the mark suggests opportunistic bad faith).

The Respondent has asserted that he is making a bona fide use of the domain name and that he has no intention of misleading or diverting Internet users. Given the inherent distinctiveness of the Complainant’s ESSAR mark, it is reasonable to infer that the use of a well established trademark in the domain name is intended to intentionally capitalize on the Complainant’s trademark. It would thereby create a likelihood of confusion with the Complainant’s mark as to source, affiliation and endorsement of the Respondent’s website.

The Respondent in all likelihood was trying generate increased traffic by using the widely known mark to divert Internet traffic to his website. The use and exploitation of another’s trademark for diversion of Internet users has been found to be bad faith registration and use under paragraph 4(b)(iv) of the Policy. See Hoffman-La Roche Inc. v. US Online Pharmacies, WIPO Case No. D2006-0348.

The Complainant has established that the domain name has been registered and used in bad faith as set out in paragraph 4(a)(iii) and paragraph 4(b)(iv) of the Policy.

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 <essarcellular.com> be transferred to the Complainant.

Harini Narayanswamy
Sole Panelist

Dated: August 6, 2007