Indiamart Intermesh Limited v. Portmedia Inc./intermesh.com
Case No. D2009-1804
1. The Parties
Complainant is Indiamart Intermesh Limited of the State of Uttar Pradesh, India, represented by Manu T. Ramachandran, India.
Respondent is Portmedia Inc./intermesh.com of St. Michael, Barbados, represented by ESQwire.com, United States of America.
2. The Domain Name and Registrar
The disputed domain name <intermesh.com> (“Disputed Domain Name”) is registered with Nameview Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 31, 2009. On January 4, 2010, the Center transmitted by email to Nameview Inc. a request for registrar verification in connection with the Disputed Domain Name. On January 8, 2010, Nameview Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on January 8, 2010 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on January 9, 2010. The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 Respondent of the Complaint, and the proceedings commenced on January 14, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was February 3, 2010. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on February 4, 2010.
The Center appointed Richard W. Page as the sole panelist in this matter on February 11, 2010. 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.
On February 9, 2010, Respondent tendered its Response with a request that the Panel accept this late-filed submission due to counsel's inadvertent failure to comply with the filing deadline. The Panel is satisfied that in the interest of justice this submission should be and is hereby accepted.
On February 15, 2010, Complainant tendered an Additional Statement Regarding Complainant's Further Communication to the Panel. On February 23, 2010, Respondent tendered an Additional Statement Regarding Complainant's Further Communication to the Panel. The Panel has decided to accept each of these supplemental submissions as well.
Apparently the parties have been discussing settlement and the voluntary transfer of the Disputed Domain Name to Complainant. While Respondent requested a suspension of this proceeding to allow settlement, the record shows no such suspension. In response to Procedural Order No. 1, Complainant refused to suspend this proceeding and accept a voluntary transfer of the Disputed Domain Name at no cost, because Complainant asserts that Respondent's offer to transfer is “calculated to disregard the rights of the Complainant in relation to the said trademark/tradename INTERMESH.”
Therefore, the Panel will comply with Complainant's request that this decision issue.
Having considered the Complaint, Response and Additional Statements, the Panel now proceeds to make the following decision:
4. Factual Background
Complainant (including its predecessors) is an integrated electronic business to business marketplace and web technology company originated in the year 1996 and incorporated in 1999. Complainant was set up with an aim to effectively tackle issues pertaining to the costs of international marketing and hassles of exporting from India. Complainant enjoys the distinction of having created a new synergetic model of business solution in the business-to-business (B2B) model which enables both domestic as well as international buyers and sellers (users) to interact, negotiate, for buying, selling and conducting other business by way of locating business entities to trade on a common platform under the URL: http://www.intermesh.net. Today, Complainant understands the factors influencing businesses, their markets and diverse needs. With this expertise, Complainant assists its customers by identifying the right solution and implements them in the best possible way. This model of a “high end web solutions provider” has helped Complainant become a pioneer in a heretofore untapped realm of B2B. The business model of Complainant inter alia includes business enhancement solutions through development of corporate websites, product catalogues, other customized solutions, communication networks, B2B market place services and online payment gateways. Complainant is carrying on its business by providing a common platform enabling its customers to interact and trade with each other through its website under the domain name <intermesh.net> and <indiamart.com> along with its trade names Indiamart and Intermesh.
Complainant is driven by its mission to deliver business-enabling solutions and technologies by creating partnerships with its customers and in the very short span of its operations, Complainant has created a niche for itself in the radically changing business-technology landscape. With the dual edge of being able to provide web-enabled services in the two spheres of commerce and telecommunications, Complainant has in its customer list over 14,0000 companies from across the world, including some the world's leading exporters and suppliers.
Complainant, having established a credible presence in its Indian operations to provide world-class B2B solutions, has already started the process of launching its next line of operations aimed at reaching the entire world. Today Complainant and its website under the domain names <intermesh.net> and <indiamart.com> are India's largest online B2B marketplace and has over 900 employees and a network of 25 offices in India and offers its services to over 5 million global users. Due to its high level of service quality, Complainant is popularly known as Indiamart Intermesh and its website under the domain name <indiamart.com> has received accreditation by way of the International Organization for Standardization (ISO) certificate and from various other agencies. In addition, Complainant has established an affiliated business entity under the name Intermesh Shopping Network Private Limited on account of the popularity of the trade name Intermesh.
Within a short span of time, Complainant has posted an annual revenue in excess of India Rupees 50 crores (Rs. 500,000,000)(approximately USD 12 million). These achievements have been chronicled in various newspapers and magazines.
In order to promote its INTERMESH mark and its trade name Indiamart Intermesh, Complainant has expended considerable sums in advertisement and brand building. To date Complainant has spent almost India Rupees 12 crores (Rs. 120,000,000) (approximately USD 3 million) on advertisements and brand building.
Complainant's business in terms of sales revenue has risen from India Rs. 6 lakhs (Rs. 600,000) (approximately USD 14,000) in the very first year of its operation in the year 1996. Thereafter Complainant continued to grow year-after-year to the amount set forth above.
The Disputed Domain Name was registered by Respondent on April 3, 2001, after an earlier registration was allowed to lapse.
Complainant uses the domain name <indiamart.com> for its website, containing valuable information pertaining to Complainant's business, contact details, clients, and its latest new items relating to Complainant's activities and a site map, as these can be used as an effective tool for promoting the services of Complainant. In addition, Complainant has registered numerous domain names including <intermesh.net>, <intermesh.org>, <intermesh.co.in> and <intermesh.in>.
In the month of August 2009, Complainant first became aware that the domain name <intermesh.com> was available for sale and therefore Complainant addressed a letter to DomainBrokers.com offering reasonable out-of-pocket expenses to buy the Disputed Domain Name.
Complainant filed application to register the INTERMESH mark on September 8, 2009. Complainant filed its trademark applications in classes 35 and 42 for the INTERMESH mark, which applications are pending at the moment.
On November 17, 2009, Complainant received a response from DomainBrokers.com ([ ]@domainbrokers.com) stating that “I'm sorry but this domain owner says your $2,500 offer is no where close to what he can accept for this domain. They are looking for offers in the five-figure range for intermesh.com.”
Thereafter on December 31, 2009, Complainant commenced this proceeding by filing its Complaint with the Center.
5. Parties' Contentions
A. Complainant
Complainant alleges that it is the owner of the trademark INTERMESH (“INTERMESH Mark”) which has been adopted and used by Complainant in relation to its services, since 1996. Complainant further alleges that the name “Intermesh” was coined by Complainant's founder Dinesh Agarwal as part of Complainant's trademark INDIAMART with the intention of serving Indian suppliers by way of providing them a digital market (“MART”) where global buyers can come and interact with Indian suppliers.
Complainant contends that the name “Intermesh” when taken as a whole, not being a commonplace dictionary word in the English language, or for that matter in any other language, is a coined word which connotes no other meaning than that as a trademark in relation to the services of Complainant. Complainant further contends that the INTERMESH Mark is so inherently distinctive that the mere reference to it signifies, in the trade and relevant class of the consuming public, Complainant's services as distinguished from all other traders irrespective of the class of goods or business being conducted by them.
Complainant alleges that on account of its inherently distinctive nature coupled with the pioneering activities of Complainant in the field of B2B, the INTERMESH Mark along with the prefix word mark INDIAMART has acquired an excellent and enviable reputation over the years and has attained a secondary meaning in the trademark. The name has consistently been associated with, and has denoted the business of Complainant, and also the high quality of the services rendered under the mark and on the Complainant's website under the domain name <indiamart.com>. With the accumulation of goodwill and reputation arising from usage of the trademark and its extensive advertising and write-ups on Complainant by magazines and newspapers, Complainant has customers identifying, recognizing and associating the INTERMESH Mark exclusively with Complainant. Thus the use of the INTERMESH Mark by any trader upon or in relation to any goods or services would amount to infringement of its trademark as well as passing off their goods or services as those of Complainant.
Complainant asserts statutory rights (from the pending trademark applications) together with common law rights in the INTERMESH Mark. Ever since its inception in 1996, Complainant has adopted and used the INTERMESH Mark in respect of its services. By virtue of priority in adoption, continuous and exclusive use and extensive advertising, immense reputation and goodwill has accrued to the mark in relation to the services of Complainant. Complainant uses INTERMESH not only as its trademark but also as part of its trading style right from its inception.
Complainant further asserts that the Disputed Domain Name <intermesh.com> contains the entire the word “intermesh” which is identical to the Complainant's INTERMESH Mark. The Disputed Domain Name contains Complainant's trade name in which Complainant has proprietary as well as common law trademark rights by virtue of long and continued use in relation to its bona fide business. The only difference between the disputed domain name and Complainant's INTERMESH Mark is the addition of the top-level domain “.com.” The addition of the suffix “.com” is an irrelevant distinction that does not alter the likelihood of confusion.
Complainant alleges that its correspondence with Respondent demonstrates that Respondent has no legitimate interest in the Disputed Domain Name; rather the sole purpose of the registration is to misappropriate the reputation associated with Complainant's famous INTERMESH Mark. Complainant has not authorized Respondent to use its trademark. Further neither is Respondent known commonly by the name INTERMESH nor has he made any demonstrable preparations to use the impugned domain name in connection with a bona fide offering of good or services. Further, a bare perusal of the Google search results for the keyword “intermesh” substantiates Complainant's rights to the Disputed Domain Name. As on the date of filing the present Complaint, Respondent has not used the Disputed Domain Name in relation to any bona fide offering of goods or services.
Complainant alleges bad faith by Respondent in the registration and use of the Disputed Domain Name as evident from the pleadings and the referenced correspondence. Complainant further alleges that the sole purpose of Respondent's registration was to traffic and sell the domain name to Complainant or other party for valuable consideration far in excess of Respondent's out-of-pocket cost directly related to the domain name. This meets the requirement of bad faith under paragraph 4(b)(i) of the Policy.
Complainant claims extensive and exclusive trademark rights. This being the case, the very adoption of the trademark by a third party who registers the same as a domain name is bound to be in bad faith. Respondent in this case clearly knew of the Complainant's trademark rights, since Complainant has substantial business presence over the Internet. Further, Respondent's knowledge of the Complainant's prior rights is also evident from his letter and correspondence and from the demand of excess money. This being the case, Complainant further claims that the adoption and use of the Disputed Domain Name is in bad faith.
There is a great likelihood that actual or potential visitors to Respondent's website, using the Disputed Domain Name will be induced to believe that Complainant has licensed its INTERMESH Mark to Respondent or authorized Respondent to register the Disputed Domain Name or believe that Respondent has some connection with Complainant in terms of a direct nexus or affiliation with Complainant. Complainant, therefore, submits that the Disputed Domain Name has been registered and is being used in bad faith.
B. Respondent
Respondent alleges that the Disputed Domain Name solely incorporates “intermesh” which is an English word in the dictionary, and that there is no evidence that Respondent registered the Disputed Domain Name <intermesh.com> in bad faith. There is no evidence that Respondent even had knowledge (actual or implied) of Complainant or its alleged trademark which Complainant did not apply to register until more than eight years after Respondent registered <intermesh.com>.
Respondent further alleges that Complainant did not coin the word “intermesh.” The word is found in the Meriam-Webster Online Dictionary, “intermesh” is meaning “to mesh together.”
Respondent claims that Complainant does not have enforceable trademark rights under the Policy. Complainant did not file for its trademark for “intermesh” until September 8, 2009 – more than eight years after Respondent registered the Disputed Domain Name. Respondent further claims that it is well-established that trademark rights must pre-exist the registration of a Disputed Domain Name. At most, Complainant has shown that it used the business name Indiamart Intermesh Ltd., but has not demonstrated any trademark use prior to April 2001 when the Disputed Domain Name was registered. There is simply no evidence of record demonstrating that Complainant has any rights to the INTERMESH Mark, or even to Indiamart Intermesh.
Respondent alleges that Complainant must rely on common law rights. Complainant has not shown secondary meaning, but merely uses “Intermesh” as part of its company's name which may be a trade name, but is not a trademark.
Respondent rejected Complainant's offer to purchase the Disputed Domain Name for USD 2,500. Complainant's offer to purchase the Disputed Domain Name was in a commercial business transaction and not to settle a dispute. Respondent asserts that this fact is fatal to Complainant, as it constitutes a tacit acknowledgement of Respondent's legitimate interest. Notwithstanding this acknowledgement, Respondent's legitimate interest in the Disputed Domain Name is established as a result of Respondent having registered the Disputed Domain Name, because it incorporates the descriptive term “intermesh,” without knowledge of Complainant's trademark and without the intent to profit from Complainant's trademark rights. Respondent registered the Disputed Domain Name when it was deleted and became available for registration again. Respondent further claims that there is no evidence of bad faith registration or use.
Respondent explains that he parked the Disputed Domain Name with HitFarm.com and maintained the website on a pay-per-click basis with links to hosted advertisers. The content is related to dating.
Complainant did not identify itself as the purported owner of the INTERMESH Mark when it offered to purchase the Disputed Domain Name for USD 2500.
Respondent contends that there is no evidence of direct or imputed knowledge of Complainant's rights when Respondent registered the Disputed Domain Name.
6. Discussion and Findings
Complainant alleges both statutory trademark rights from its pending applications and common law trademark rights due to its use of the INTERMESH Mark. However, Complainant did not submit its application to register the INTERMESH Mark until after the current dispute arose. Therefore, its statutory rights are not relevant to this proceeding.
Complainant has established that it has common law trademark rights through its use of the INTERMESH Mark for the purposes of this proceeding, at least on the Indian subcontinent. Complainant alleges that it “has already started the process of launching its next line of operations aimed at reaching the entire world.” The historical geographical reach of Complainant's common law trademark rights is unclear from its allegations, especially as the INTERMESH Mark has been used internationally. The rapid growth of Complainant's advertising supports the inference that nine years ago (in 2001) the level of international advertising and scope of secondary association globally was fairly limited.
A. Identical or Confusingly Similar
Respondent has not contested the assertions by Complainant that the Disputed Domain Name is confusingly similar to the trademark.
As numerous courts and prior UDRP panels have recognized, the incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the complainant's registered mark. See Paccar Inc. v. Telescan Technologies, L.L.C., 115 F. Supp. 772 (E.D. Mich. 2000) (finding that <peterbuilttrucks.com>, <kenworthtrucks.com> and similar domain names are not appreciably different from the trademarks PETERBUILT and KENWORTH); Quixar Investments Inc. v. Dennis Hoffman,
WIPO Case No. D2000-0253 (May 29, 2000) (finding that QUIXTAR and <quixtarmortgage.com> are legally identical). The addition of other terms in the domain name does not affect a finding that the domain name is identical or confusingly similar to the complainant's registered trademark.
In this case, the Disputed Domain Name incorporates entirely the INTERMESH Mark. The addition of “.com” does not create distinctiveness. Therefore, the Panel finds that the Disputed Domain Name is confusingly similar to the INTERMESH Mark pursuant to the Policy paragraph 4(a)(i).
B. Rights or Legitimate Interests
Complainant contends that Respondent has no rights or legitimate interests in the Disputed Domain Name pursuant to the Policy paragraph 4(a)(ii).
Paragraph 4(a)(ii) requires Complainant to prove that Respondent has no rights to or legitimate interests in the Disputed Domain Name. Once a complainant establishes a prima facie showing that none of the three circumstances establishing legitimate interests or rights applies, the burden of production on this factor shifts to the respondent to rebut the showing. The burden of proof, however, remains with complainant to prove each of the three elements of paragraph 4(a). See Document Technologies, Inc. v. International Electronic Communications, Inc., WIPO Case No. D2000-0270 (June 6, 2000).
Complainant alleges that Respondent has no relationship with or permission from Complainant for the use of the INTERMESH Mark.
The Policy paragraph 4(c) allows three nonexclusive methods for the Panel to conclude that Respondent has rights or a legitimate interest in the Disputed Domain Name:
(i) before any notice to you [Respondent] 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 [Respondent] (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 [Respondent] are making a legitimate noncommercial 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.
Complainant has sustained its burden of coming forward to allege that Respondent lacks rights to or legitimate interests in the Disputed Domain Name.
Respondent alleges that he parked the Disputed Domain Name with HitFarm.com and maintained the website on a pay-per-click basis with links to hosted advertisers. The content is related to dating.
Providing content related to dating on a pay-per-click basis does not mean that Respondent failed to provide a bona fide offering of good or services. There is no indication that Respondent was competing with Complainant or even knew of Complainant's existence when Respondent purchased and registered the lapsed Disputed Domain Name in 2001. Moreover, Respondent has provided evidence that the term “intermesh” appears in English-language dictionaries. Therefore, it is plausible, especially in light of the fact that Complainant had no registered trademark at the time of the registration of the domain name, and the fact that the content of the website at the Disputed Domain Name does not appear to target Complainant, that Respondent registered the domain name for its generic value. See Cupa Materiales S.A. v. Stonepanel.com c/o Whois Identity Shield/Vertical Axis, Inc.,WIPO Case No. D2009-0216 and Viacom International Inc. v. Future Media Architects, Inc., WIPO Case No. D2008-1833.
Therefore, before any notice to Respondent of the dispute, Respondent's use of the Disputed Domain Name was in connection with a bona fide offering of goods or services. The Panel finds that Respondent has shown that he has rights and a legitimate interest in the Disputed Domain Name, thereby defeating Complainant's claims.
C. Registered and Used in Bad Faith
Complainant contends that Respondent registered and is using the Disputed Domain Name in bad faith in violation of the Policy paragraph 4(a)(iii).
The Policy paragraph 4(b) sets forth four nonexclusive criteria for Complainant to show bad faith registration and use of domain names:
(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product.
Complainant alleges bad faith by Respondent in the registration and use of the Disputed Domain Name because the sole purpose of Respondent's registration was to traffic and sell the domain name to Complainant or other party for valuable consideration far in excess of Respondent's out-of-pocket cost directly related to the domain name. Complainant claims that this meets the requirement of bad faith under paragraph 4(b)(i) of the Policy.
Complainant claims extensive and exclusive trademark rights. This being the case, the very adoption of the trademark by a third party who registers the same as a domain name is bound to be in bad faith. Complainant claims that Respondent in this case clearly knew of Complainant's trademark rights, since Complainant's has substantial business presence over the Internet. Further, Complainant claims Respondent's knowledge of Complainant's prior rights is also evident from his letter and correspondence and from the demand of excess money. This being the case, Complainant further claims that the adoption and use of the Disputed Domain Name is in bad faith.
Complainant further claims that there is a great likelihood that actual or potential visitors to Respondent's website, using the Disputed Domain Name, will be induced to believe that Complainant has licensed its INTERMESH Mark to Respondent or authorized Respondent to register the Disputed Domain Name, or believe that Respondent has some connection with Complainant in terms of a direct nexus or affiliation with Complainant. Complainant, therefore, submits that the Disputed Domain Name has been registered and is being used in bad faith.
Respondent contends that Complainant did not identify itself as the purported owner of the INTERMESH Mark when it offered to purchase the Disputed Domain Name for USD 2,500. Therefore, the offer by Respondent to sell to Complainant does not demonstrate knowledge of Complainant.
The record contains no indication that Respondent entered into competition with Complainant or even was aware of Complainant's existence, let alone its line of commerce.
The Panel agrees with Respondent's contention that there is no evidence of direct or imputed knowledge of Complainant's rights when Respondent registered the Disputed Domain Name.
The Panel finds that Complainant has failed to show any of the four grounds deemed by the Policy to be bad faith. These four grounds are not exclusive, but the Panel fails to see any other precedent establishing grounds for a finding of bad faith.
Therefore, the Panel finds that Complainant has failed to demonstrate bad faith registration and use of the Disputed Domain Name under the Policy paragraph 4(a)(iii).
7. Decision
For all the foregoing reasons the Panel finds that Complainant has failed to prove elements 4(a)(ii) and 4(a)(iii) of the Policy and that Complainant's request to transfer the Disputed Domain Name <intermesh.com> is denied.
Richard W. Page Sole Panelist
Dated: March 15, 2010
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