Futurebazaar India Ltd. v. Rashid Arashid, Chen Xianshang, Bao Shui Chen
Case No. D2008-0175
1. The Parties
The Complainant is Futurebazaar India Ltd., of Mumbai, India, represented by McKenna Long & Aldridge LLP, United States of America.
The Respondents are Rashid Arashid of Karachi, Pakistan, and Chen Xianshang and Bao Shui Chen of Shanghai, China.
2. The Domain Name and Registrar
The disputed domain name <futurebazar.com> is registered with Moniker Online Services, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 1, 2008. On February 5, 2008, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the domain name at issue. On February 5, 2008, Moniker Online Services, LLC transmitted by email to the Center its verification response stating that Rashid Arashid is listed as the registrant and providing 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 February 8, 2008, adding Rashid Arashid as a Respondent. 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 Respondents of the Complaint, and the proceedings commenced on February 19, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was March 10, 2008. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on March 13, 2008.
The Center appointed John Swinson as the sole panelist in this matter on March 27, 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
The Complainant is a company based in Mumbai, India. It operates an Internet shopping service located at “www.futurebazaar.com” and sells a wide range of products from this website including clothing, jewelry, electrical appliances and furniture. The Complainant is a subsidiary of Pantaloon Retail (India) Limited, one of India’s largest retailers.
A search of “Whois” records reveals that the Respondent Rashid Arashid is the current registrant of the disputed domain name.
The Complainant has listed Chen Xianshang and Bao Shui Chen as Respondents because those individuals were previous registrants of the disputed domain name.
The website operating from the disputed domain name contains links under various subject headings such as mobile phones, laptops, used cars, airline tickets, car insurance and houses for sale. When clicking on these links the user is then redirected to another site which contains sponsored links relevant to that subject matter.
5. Parties’ Contentions
A. Complainant
The Complainant makes the following contentions:
Over the course of two months, the disputed domain name was owned by all three Respondents. Mr. Xianshang held the disputed domain name on the date that the original Complaint was filed (February 1, 2008) and transferred it to Mr. Arashid on February 4, 2008. Mr. Chen held the disputed domain name prior to Mr. Xianshang. Mr. Xianshang and Mr. Chen effectuated the transfers with the primary intent of attempting to avoid the loss of the disputed domain name through this administrative proceeding.
Mr. Chen has been involved in several other administrative proceedings and owns around 3,000 domain names. Mr. Xianshang owns around 1,900 domain names. These two Respondents share the same address, jointly own other domain names and are likely to be business associates.
The Complainant has an application pending with the Trademarks Registry in Mumbai, for the service mark FUTUREBAZAAR (filed on January 18, 2007). The Complainant filed a further application on May 3, 2007 with the Mumbai Trademarks Registry for the mark FUTUREBAZAR. The Complainant has also filed an application for FUTUREBAZAAR in the United States (filed August 30, 2007).
In 2007, the Complainant embarked upon an advertising campaign costing approximately $2 million and which included television, online and print advertising. In the same year the Complainant sold over $4 million worth of products via its website. The website currently offers over 8,000 different products.
The Complainant has common law trademark rights in FUTUREBAZAAR in the United States through its extensive use of the mark.
The disputed domain name is confusingly similar to the Complainant’s mark, because the pronunciation of both terms is identical, and the spelling is almost identical. The disputed domain name is merely a misspelled variation of the Complainant’s distinctive mark and heavily used domain name.
The Complainant’s domain name of <futurebazaar.com> was registered on September 8, 2005, which is over a year before the disputed domain name was first registered. The Respondents’ use of the disputed domain name cannot be legitimate in light of the pre-existing mark, domain name and reputation of the Complainant in FUTUREBAZAAR.
The Respondents’ pattern of conduct of registering domain names that are slight variations of popular pre-existing trademarks or domain names, demonstrates that the Respondents have no legitimate interests in the disputed domain name. The Respondents are in the business of profiting from the fame and goodwill of other entities.
The Respondents have acted to prevent the Complainant from securing adequate protection of its mark and have engaged in a pattern of such conduct. The Respondents’ website is minimally functional as consumers cannot purchase goods or services from it, and its sole purpose is to divert consumers to other websites (including other famous retailers’ sites) where the consumer can purchase goods.
The Respondents have registered a domain name that is confusingly similar to the Complainant’s mark, and because of the similarities it is highly likely that Internet users will be diverted to the Respondents’ website and will be confused as to that website’s origin or believe that it is the Complainant’s website.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 15(a) of the Rules: “A Panel shall decide a Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable”. Paragraph 4(a) of the Policy provides that the complainant must prove each of the following:
(i) that the disputed domain name is identical or confusingly similar to a trademark or a service in which the complainant has rights; and
(ii) that the respondent has no rights or legitimate interests in the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has filed two service mark applications over the term FUTUREBAZAAR - one in Mumbai, India (number 1522473) and one in the United States (serial number 77267970). The former was filed in January 2007, while the latter was filed in August 2007 and neither has registered. The disputed domain name was first registered in November 2006 (prior to these applications). This does not prevent a finding of identity or confusing similarity, as the Policy does not make any specific reference to the date by which the owner of the trade or service mark should have acquired rights. See for example, Digital Vision, Ltd. v. Advanced Chemill Systems,WIPO Case No. D2001-0827.
Moreover, while the Complainant’s “Futurebazaar” business is relatively new, the Complainant has invested a significant amount of money in promoting the business (including sponsoring a popular Indian television show), and from the amount of sales received it has obviously enjoyed some degree of success with this campaign. Also, from the nature of the business (an Internet shopping service) the Panel infers that the Complainant’s mark has enjoyed widespread use on the Internet, not only in India but in other countries too. As such, the Panel finds that the FUTUREBAZAAR mark has become a distinctive identifier associated with the Complainant and its goods and services, at least in its country of origin where the advertising campaign was conducted.
The Panel therefore finds that the Complainant has trademark rights in FUTUREBAZAAR.
The disputed domain name differs from this trademark by omitting an “a” in the word Bazaar. Slight changes in a word may be purposeful misspellings, “designed to take advantage of mistakes that consumers are likely to make when intending to enter Complaint’s website address” (see Infospace.com, Inc v. Registrar Administrator Lew Blank, WIPO Case No. D2000-0069; Nicole Kidman v. John Zuccarini, WIPO Case No. D2000-1415). Omitting an “a” from Bazaar, is a common misspelling people are likely to make, especially because when Bazaar and Bazaar are compared, they sound identical and look almost identical.
Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s mark and the first element has been satisfied.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in the disputed domain name:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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.”
To succeed on this element, the complainant must make out an initial prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. If such a prima facie case is made out, the respondent then has the burden of demonstrating rights or legitimate interests in the domain name.
Neither Respondent appears to be known by the term “futurebazar” or anything similar. The Complainant, who is known by the name “futurebazaar”, has not licensed or permitted any Respondent to use its “futurebazaar” mark.
The Respondents do not appear to be making a bona fide offering of goods or services from their website. The only purpose the website is currently serving is to provide links under a broad subject heading (such as laptop computers), which then redirects to another page with sponsored listings relating to that subject.
When some of these links are followed, an Internet user can be led to goods and services which compete with the Complainant’s goods and services. Accordingly, the Panel infers that the Respondents chose a purposeful misspelling of the Complainant’s mark and domain name, to redirect Internet users to its own website. Such use cannot constitute a bona fide offering of goods of services, or a non-commercial or fair use. It is therefore not a legitimate use under the Policy (see The Coryn Group, Inc., Apply Vacations West, Inc. v. V.S. International,WIPO Case No. D2003-0664).
The Complainant has presented a prima facie case indicating that the Respondents do not have any rights or legitimate interests in the disputed domain name. As the Respondents have not filed any response in this proceeding, they have failed to rebut the Complainant’s prima facie case.
Accordingly, the Panel finds that the second element is satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy enumerates four, non-inclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. In the Complaint, the Complainants refer to subparagraphs (ii) and (iv).
Subparagraph (ii) provides for circumstances where the respondent has engaged in a pattern of conduct of registering domain names in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name. Subparagraph (iv) includes circumstances where the respondent, by using the disputed domain name, has intentionally attempted 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.
Mr. Chen has been involved in numerous administrative proceedings including:
- Deveraux Deloitte v. Bao Shui Chen,WIPO Case No. D2007-1160 - over the domain name <deverauxdeloitte.com> (in circumstances where the Complainant had a DEVERAUX AND DELOITTE mark).
- Weyerhaeuser Company v. Chen Bao Shui,WIPO Case No. D2007-0969 - over the domain name <myweyerhaeuser.com> (in circumstances where the Complainant had a WEYERHAEUSER mark).
- The Ford Foundation v. Chen Bao Shui,WIPO Case No. D2007-0862 - over the domain name <fordfoundation.com> (in circumstances where the Complainant had a FORD FOUNDATION mark).
- Dillard’s Inc. and Dillard’s International, Inc v. Chen Bao Shui,WIPO Case No. D2007-0520 - over the domain name <dillardsoutlet.com> (in circumstances where the Complainant had a DILLARD’S mark).
In all of these cases the domain name in question was transferred to each complainant. The Panel infers from these prior proceedings that Mr. Chen has engaged in a pattern of registering domain names which are identical or confusingly similar to third party trade or service marks, with the purpose of preventing those third parties from using their trademark in a domain name. Accordingly, the Panel finds that bad faith on the part of Mr. Chen has been established under paragraph 4(b)(ii).
Annex 1 to the Complaint shows that Mr. Xianshang was the registrant of the disputed domain name as at January 18, 2008. On February 2, 2008, a day after the Complaint was electronically filed with the Center, Mr. Chen sent an email to Moniker Online Services, LLC, requesting that Moniker allow Mr. Chen to transfer the disputed domain name to a country where he could defend it, because the domain made more than $20,000 a year. In the Panel’s opinion, this email communication also demonstrates bad faith on the part of Mr. Chen. It also demonstrates that although Mr. Xianshang may have been listed as registrant of the disputed domain name at this time, Mr. Chen was acting as owner of the name. It can be inferred that Mr. Xianshang was holding the name under Mr. Chen’s direction, as is Mr. Arashid.
In relation to paragraph 4(b)(iv), the Panel has already found that the Respondents chose a purposeful misspelling of the Complainant’s mark and domain name, in order to create confusion among Internet users and redirect them to the Respondents’ own website. This is because the omission of an “a” in the word Bazaar is a mistake people are very likely to make, particularly because Bazaar and Bazar sound identical and look almost identical. Because the Complainant conducts its primary business via a website, it is likely that the Respondents became aware of this website and the name of the Complainant’s brand, recognised the popularity or potential popularity of the website, and registered a domain name which was likely to be confused with it. The Respondents’ are also clearly making a commercial gain from the website, by providing sponsored links to goods and services. Accordingly, the Panel also finds that bad faith on the part of all Respondents has been established under paragraph 4(b)(iv).
The disputed domain name was first registered in November 2006, prior to the Complainant filing any trademark applications over FUTUREBAZAAR. Sometimes in similar circumstances, it is difficult to prove bad faith, as the Respondent cannot be expected to have known of the Complainant or the Complainant’s trademark rights. See for example PrintForBusiness B.V v. LBS Horticulture,WIPO Case No. D2001-1182. However these comments do not apply to this dispute. The Respondents Mr. Xianshang and Mr. Arashid, became the registrants of the disputed domain name at a time when the Complainant’s service mark applications were in existence. The Panel also infers that the Respondent to first register the disputed domain name (Mr. Chen) was aware of the Complainant in November 2006, and the aim of the registration was to take advantage of the likely confusion between FUTUREBAZAAR and Futurebazar. See for example Kangwon Land, Inc. v. Bong Woo Chun (K.W.L. Inc),WIPO Case No. D2003-0320.
The Panel finds that the third element has been met.
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, <futurebazar.com> be transferred to the Complainant.
John Swinson Sole Panelist
Dated: April 10, 2008
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