Prestige Estates Projects Private Ltd. v. Prestige Avenues Limited, Raja Jupudi
Case No. D2007-1754
1. The Parties
The Complainant is Prestige Estates Projects Private Ltd., of Bangalore, India, represented by Holla Associates, India.
The Respondent is Prestige Avenues Limited, Raja Jupudi, of Andhra Pradesh, India.
2. The Domain Name and Registrar
The disputed domain name <prestigeavenues.com> is registered with eNom Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 28, 2007. On November 29, 2007, the Center transmitted by email to eNom Inc a request for registrar verification in connection with the domain name at issue. On November 29, 2007 the Registrar transmitted by email to the Center its verification response giving the details of the registrant and of the billing and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on December 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 December 19, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was January 8, 2008. The Respondent was informed that if its response was not received by that date, it would be considered in default. The Center would still appoint a Panel to review the facts of the dispute and to decide the case. Only a request dated January 7, 2008 has been received from the Respondent to grant 90 days time to file the response, to which the Center informed the Respondent that the process to appoint the Administrative Panel had commenced, but if it wished to file a late Response to the Complaint, the Center would bring it to the Panel’s attention (when appointed), and it would be at the sole discretion of the Panel to consider it. The Respondent did not submit any response within the prescribed time. Accordingly, the Center notified the Respondent’s default on January 9, 2008.
The Center appointed Vinod K. Agarwal, Advocate and former Law Secretary to the Government of India as the sole panelist in this matter on January 17, 2008. 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
A. Complainant
The Complainant commenced business of construction and building shopping complexes, residential apartments, layouts, etc. as a partnership firm by the name of Prestige Estates and Properties, on April 1, 1986. On June 4, 1997, the said partnership firm was converted in to a private limited company by the name of Prestige Estates Projects Private Limited. (In India, according to the Companies Act, 1956 a “private limited company” is a company in which there cannot be more than 50 shareholders and generally the public is not interested). The Complainant has contended that, “the complainant has over the years identified its building construction business with the name and mark Prestige and all of the complainant’s projects including names of residential or commercial projects undertakes and built by them … have been identified with the name Prestige, followed by some suffix”. Some such projects are “Prestige Ozone”, “Prestige Copper Arch”, “Prestige Meridian”, “Prestige Green Fields”, etc.
B. Respondent
The Respondent has not submitted any response within the permitted time. Hence, the activities of the Respondent are not known, except the annexures to the Complaint indicate that the Respondent is also in the real estate business and has completed projects by different names including “Prestige Rai Towers”, “Prestige Golf City”, “Prestige Global City”, etc. The name of the Respondent is “Prestige Avenues Limited”. Thus, it is a limited company in which there is no limit on the number of shareholders. It may be added that the disputed domain name is <prestigeavenues.com>.
According to the information furnished by the Registrar, the disputed domain name was created on October 8, 2004, for a period of five years. Its expiry date, unless renewed, is October 8, 2009.
5. Parties’ Contentions
A. Complainant
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are applicable to this dispute.
In relation to element (i), that is, the domain name is identical or confusingly similar to a mark in which the Complainant has rights and interests, the Complainant contends that its construction projects are known by the name of Prestige, Prestige Group and Prestige Estate. The Complainant further contends that Prestige Group is its registered mark. Further that, the Complainant has obtained registration under the provisions of the Copyright Act 1957 in respect of original artistic work, design and get up of their Prestige Group label.
The Complainant and its group companies use the word “Prestige” as a prominent and integral part of their corporate names viz. Prestige Estates Projects private Limited, Prestige Construction, Prestige Leisure Resorts Private Limited and Prestige Garden Constructions Private Limited.
In relation to element (ii), that is, the Respondent has no rights or legitimate interests in respect of the disputed domain name, the Complainant contends that the Respondent is not making a legitimate or fair use of the said domain name for offering goods and services.
The Complainant contends that the Respondent registered the domain name for the sole purpose of creating confusion and misleading the general public and the customers of the Complainant. Further that, the addition of one word “avenues” does not change the meaning or does not avoid confusion in the minds of prospective customers of the Complainant.
Regarding the element at (iii), that is, the domain name has been registered and is being used in bad faith, the Complainant contends that the main object of registering the domain name <prestigeavenues.com> by the Respondent is to earn profit and to mislead the general public and the customers of the Complainant. The Complainant has stated that the use of a domain name that appropriates a trademark to promote competing or infringing products cannot be considered a “bona fide offering of goods and services”.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel as to the principles the Panel is to use in rendering its decision. It says that, “A panelist shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
According to paragraph 4(a) of the Policy, the Complainant must prove that:
(i) The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(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 present dispute pertains to the domain name <prestigeavenues.com>.
The name of the Complainant is Prestige Estates Projects Private Limited. It is a private limited company. The Complainant is engaged in the real estate business. The documents available at Annexure G of the Complaint are only copies of the applications submitted by the Complainant for the registration of trademark. The trademark proposed to be registered by the Complainant through these applications is PRESTIGE GROUP. Only one registration certificate has been produced by the Complainant. Through this certificate the name of “Prestige Group” has been registered.
There is no identity in the disputed domain name <prestigeavenues.com> and the mark PRESTIGE GROUP of the Complainant. As to confusing similarity, the Complainant’s trademark is comprised of the words “prestige” and “group”. The disputed domain name is <prestigeavenues.com>. The Complainant’s trademark is not incorporated in its entirety. While the Panel notes that the disputed domain name and the trademark are arguably similar in that both contain the dictionary word “prestige”, the Panel doubts whether they would be confusingly similar; however, in light of the findings under the second and third elements, it is not necessary for the Panel to resolve the matter here. Thus the Panel does not find that the disputed domain name is confusingly similar to the mark of the Complainant.
B. Rights or Legitimate Interests
According to Paragraph 4(c) of the Policy, the Respondent may demonstrate its rights to or legitimate interest in the domain name by proving any of the following circumstances:
(i) before any notice to the Respondent of the dispute, the Respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the Respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights; or
(iii) 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 or service mark at issue.
The Respondent has not filed any response in this case. However, according to the evidence the name of the Respondent is “Prestige Avenues Limited”. The Respondent registered the disputed domain name <prestigeavenues.com> on October 8, 2004. Further, for the last three years the Complainant has not raised any objection to the use of the disputed domain name by the Respondent.
Further, according to the documents submitted by the Complainant, these reveal that the Respondent also appears to be in the real estate business. It has constructed and offered for sale residential and commercial complexes. Therefore, the Respondent has been using the domain name in connection with a bona fide offering of goods.
The Respondent “Prestige Avenues Limited”, as a business organization, appears to be known by the domain name <prestigeavenues.com>. Though it is not know whether the Respondent has acquired any trademark, the Policy provides that even if the Respondent has acquired no trademark or service mark rights, it can still have rights and legitimate interests in the disputed domain name.
The Respondent is apparently making a legitimate commercial and fair use of the domain name. There is no evidence to establish the fact that the Respondent is using the domain name to tarnish the trademark or service mark of the Complainant.
The Panel finds that the Complainant has failed to establish that the Respondent lacks rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration or use of the domain name in bad faith:
(i) Circumstances indicating that the Respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or
(ii) The Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that it has engaged in a pattern of such conduct; or
(iii) The Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) By using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on its website or location.
The Complainant has failed to demonstrate that any one of the above circumstances exists in this case.
There is no evidence indicating that the Respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant or to a competitor of that Complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name. The Complainant has not made any allegation of this nature in the Complaint.
So far as the second circumstance is concerned, the name of the Respondent is Prestige Avenues Limited. The disputed domain name is <prestigeavenues.com>. Thus, it would appear that the domain name is only the reproduction of the name of the Respondent. Therefore, it cannot be said that the Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name.
By using its own name in the domain name, it is difficult to hold that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on its website or location1.
7. Decision
For all the foregoing reasons, the Complaint is denied.
Vinod K. Agarwal Sole Panelist
Dated: January 31, 2008
1 The Panel notes that the remedy of the Complainant may lie elsewhere. For example, the Complainant could have approached the Registrar of Companies, Government of India for registering a public limited company with a name similar to that of the Complainant.
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