Bharat Sanchar Nigam Limited (BSNL) v. Domain Hostmaster
Case No. D2007-1800
1. The Parties
The Complainant is Bharat Sanchar Nigam Limited (BSNL), Harish Chandra Mathur Lane, Janpath, New Delhi, India.
The Respondent is Domain Hostmaster, Domain Active Europe Ltd., Clayfield, Queensland, Australia.
2. The Domain Name and Registrar
The disputed domain name, <bsnl.org>, is registered with Fabulous.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 5, 2007. On December 6, 2007, the Center transmitted by email to Fabulous.com a request for registrar verification in connection with the domain name at issue. On December 7, 2007, Fabulous.com 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”), 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”).
On December 6, 2007, Respondent sent Complainant’s representative an email stating that Respondent registered a number of domain names using a semi-automated process and acknowledged that some of the domain names may have inadvertently contained the trademarks of others. Respondent offered to transfer the domain name to Complainant, stated that Respondent would not be filing a response, and stated that Respondent had taken down the website to which the domain name at issue resolved. On December 17, 2007, Complainant forwarded this email to the center and requested prompt action in the appointment of a panel.
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 did not submit any response. Accordingly, the Center notified the Respondent’s default on January 10, 2008.
The Center appointed M. Scott Donahey as the sole panelist in this matter on January 23, 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
Complainant is a public limited company formed under the laws of India on September 15, 2000. Complaint, Annex E. Complainant is a government operated telecommunications provider and is the seventh largest telecommunications company in the world. Complainant has installed in India approximately 47.3 million line basic telephone capacity, more than 37,382 fixed exchanges, and a microwave network that connects 602 districts and 7330 cities and towns. Complainant has more than 20 million cellular customers and more than 36 million basic phone subscribers. Gross revenues for the last fiscal year were in excess of US$ 8 billion with net profit of US$ 2.26 billion.
Complainant has extensively used the BSNL mark, and Complainant’s BSNL mark is understood and associated by consumers, media, and the telecommunications industry worldwide as identifying Complainant and the goods and services offered by Complainant. Complainant has extensively advertised its goods and services using Complainant’s mark. Complaint, Annex F. Complainant operates websites at “www.bsnl.in” and “www.bsnl.co.in”, and related websites all of which include Complainant’s BSNL mark in the URL. Complaint, Annex H.
Respondent registered the domain name at issue on September 16, 2002. Complaint, Annex A. Respondent has been using the domain name at issue to resolve to a website which prominently featured the full corporate name of Complainant, Bharat Sanchar Nigam Limited. The website to which the domain name at issue resolved contained links to various telecommunications services and providers, including direct competitors of Complainant.
Complainant has at no time authorized Respondent to use its BSNL mark.
Respondent has registered many domain names that have been the subject of UDRP proceedings and all of which have been ordered transferred. Complaint, Annexes L and M.
5. Parties’ Contentions
A. Complainant
Complainant contends that the domain name is identical to its famous BSNL mark, that Respondent has no rights or interests in respect of the domain name at issue, and that Respondent has registered and is using the domain name at issue in bad faith.
B. Respondent
The Respondent did not file a reply to the Complainant’s contentions, but in response to the receipt of the complaint, Respondent unilaterally offered to transfer the domain name at issue to Complainant without charge.
6. Discussion and Findings
As analyzed by the Panel in The Cartoon Network LP, LLLP v. Mike Morgan,
WIPO Case No. D2005-1132, panels, when faced with a “unilateral consent to transfer,” have taken three different approaches. Some panels have granted the relief requested on the basis of Respondent’s consent without a review and analysis of the facts supporting the claim. Williams Sonoma, Inc. v. EZ Port,
WIPO Case No. D2000-0207; Slumberland France v. Chadia Acohuri, WIPO Case No. D2000-0195. Others have held that the consent to transfer is effectively a concession that the three elements of the Policy have been satisfied, and ordered transfer on this basis. Qosina Corporation v. Qosmedix Group, WIPO Case No. D2003-0620; Desotec N.V. v. Jacobi Carbons AB,
WIPO Case No. D2000-1398. Still other panels have proceeded to analyze whether the evidence submitted satisfies the three elements of the Policy. Société Française du Radiotéléphone-SFR v. Karen,
WIPO Case No. D2004-0386; Eurobet UK Limited v. Grand Slam Co.,
WIPO Case No. D2003-0745.
In the present case, where Respondent, who stated that his registration of Complainant’s trademark was “inadvertent” and resulted from a “semi-automatic process,” has used the domain name at issue that incorporates Complainant’s famous mark for more than five years to resolve to a website with links to Complainant’s competitors and which displays prominently at the top of the home page Complainant’s full corporate name, the Panel elects to follow the reasoning of those panels which found that the consent to transfer is a concession that the three elements of the Policy have been satisfied.
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, <bsnl.org>, be transferred to the Complainant.
M. Scott Donahey Sole Panelist
Date: February 1, 2008
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