WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Cox & Kings Ltd. v. sonam, sonam
Case No. D2013-1539
1. The Parties
The Complainant is Cox & Kings Ltd. of Mumbai, India, internally represented.
The Respondent is sonam, sonam of Mumbai, India.
2. The Domain Name and Registrar
The disputed domain name <coxandkingslimited.com> is registered with Network Solutions, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 3, 2013. On September 3, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, the Registrar transmitted by email to the Center its verification response disclosing registrant information for the disputed domain name which differed from the named Respondent in the Complaint. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on September 13, 2013.
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 the Respondent of the Complaint, and the proceedings commenced on September 16, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was October 6, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 7, 2013.
The Center appointed Maninder Singh as the sole panelist in this matter on October 23, 2013. 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 stated to have been established as a travel company in 1758 when it was appointed as general agents to the regiment of Foot Guards in India under the command of Lord Ligonier. By 1878, the Complainant was agent for most British regiments posted overseas, including the Royal Cavalry, Artillery and Infantry, as well as the Royal Wagon Train and the Household Brigade. Subsequently, The Royal Navy (in 1912) and The Royal Air Force came under the Complainant’s wings. Presently, the Complainant is claimed to be a premium brand in all travel related services in the Indian subcontinent, employing over 800 trained professionals.
The Complainant claims to have operations in India headquartered in Mumbai and have the status of a limited company. The Complainant has over 12 fully owned offices in India across key cities. The worldwide offices are located in United Kingdom of Great Britain and Northern Ireland (UK), United States of America (USA), Japan, Russia, Singapore and Dubai. The Complainant is stated to have associate offices in Germany, Italy, Spain, South Africa, Sweden and Australia.
The principal services offered by the Complainant company are stated to be - Destination Management, Outbound Tourism, Business Travel, Incentive & Conference Solutions, Domestic Holidays, NRI, Trade Fairs, Foreign Exchange and Insurance, etc. The Complainant by virtue of its aforesaid presence in the USA is also the proprietor of and using the domain name <coxandkingsusa.com>.
The Complainant is claimed to be initially incorporated under the name “The Eastern Carrying Company Limited” on June 7, 1939. Its name was changed to Cox & Kings (India) Pvt. Ltd. as on February 23, 1950. Presently, the Complainant is a public listed company on the BSE and NSE. The Complainant is an old, reputed and established organization dealing in travel related services in India and abroad.
The Complainant is claimed to have won numerous awards from government of India in the field of tourism.
The Complainant is stated to have following trademark registrations in India for the trademark/label COX & KINGS in various classes which have been renewed from time to time and are still valid and subsisting:
(i) Reg. No. 662224 dated April 17, 1995 in Class 16 for the mark COX & KINGS;
(ii) Reg. No. 1242455 dated October 10, 2003 in Class 39 for the mark COX & KINGS;
(iii) Reg. No. 866093 dated July 15, 1999 in Class 16 for the mark COX & KINGS;
(iv) Reg. No. 1649447 dated February 4, 2008 in Classes 16, 18, 25, 28 & 39, for COX & KINGS(label)
(v) Reg. No. 1907527 dated January 11, 2010 in Classes 16, 18, 25, 28 & 39, for COX & KINGS(label);
(vi) Reg. No. 1907528 dated January 11, 2010 in Classes 16, 18, 25, 28 & 39, for COX & KINGS(label);
(vii) Reg. No. 1907529 dated January 11, 2010 in Classes 16, 18, 25, 28 & 39, for COX & KINGS(label); and
(viii) Reg. No. 1907530 dated January 11, 2010 in Classes-16, 18, 25, 28 & 39, for COX & KINGS (label).
The Complainant is also stated to have applied for and secured registration of its trade mark COX & KINGS in the European Union, USA, New Zealand, UK and Australia, in Classes 36, 39 and 42 as per the following details:
(i) Reg. No 25239 dated April 1, 1996 in Classes 36, 39 & 42 in Community Trade Mark for COX & KINGS mark;
(ii) Reg. No. 2150337 dated April 14, 1998 in Classes 36, 39 & 42 in USA for COX & KINGS mark;
(iii) Reg. No. 643932 dated August 21, 2001 in Class 36 in New Zealand for COX & KINGS mark;
(iv) Reg. No. 643933 dated August 21, 2001 in Classes 39 in New Zealand for COX & KINGS mark;
(v) Reg. No. 643934 dated August 21, 2001 in Classes 42 in New Zealand for COX & KINGS mark;
(vi) Reg. No. 1554683 dated November 24, 1993 in Classes 39 in UK for COX & KINGS mark;
(vii) Reg. No. 1574363 dated June 7, 1994 in Class 42 in UK for COX & KINGS mark;
(viii) Reg. No. 1580573 dated June 29, 1994 in Class 36 in UK for COX & KINGS mark; and
(ix) Reg. No. 885358 dated August 9, 2001 in Classes 36, 39 & 42 in Australia for COX & KINGS mark.
The disputed domain name was created on July 16, 2013.
5. Parties’ Contentions
A. Complainant
The Complainant claims that it is the longest established travel company in the world. Its distinguished history is stated to have begun in 1758 when it was appointed as general agents to the regiment of Foot Guards in India under the command of Lord Ligonier. By 1878, the Complainant was stated to be an agent for most British regiments posted overseas, including the Royal Cavalry, Artillery and Infantry, as well as the Royal Wagon Train and the Household Brigade. Thereafter, the Royal Navy was next and in 1912 The Royal Air Force stated to have come under the Complainant’s wings.
The Complainant claims that it is a premium brand in all travel related services in the Indian sub-continent, employing over 800 trained professionals. The Complainant is a limited company with its headquarters at Mumbai for its operations in India and having over 12 fully owned offices in India across key cities. The worldwide offices of the Complainant-company are located in UK, USA, Japan, Russia, Singapore and Dubai and associate offices in Germany, Italy, Spain, South Africa, Sweden and Australia. The principal services offered by the Complainant-company are - Destination Management, Outbound Tourism, Business Travel, Incentive & Conference Solutions, Domestic Holidays, NRI, Trade Fairs, Foreign Exchange and Insurance, etc. The Complainant claims to use the domain name <coxandkingsusa.com>.
The Complainant contends that Cox & Kings (Agents) Ltd., a company incorporated in UK, having its registered office in London and a branch office, among other places, in India, are the predecessors in business of the Complainant. The said Cox & Kings (Agents) Ltd. which is stated to have been founded in 1758, as mentioned hereinabove and was doing the aforesaid business since then under various trademarks. The Indian Branch of the said business was later wholly taken over by the Complainant. Thus the Complainant is stated to be a 252-year-old travel company, the oldest established travel agency in the world. It offers a one-stop shop for the travel needs of all segments of travelers. It specializes in Destination Management, Leisure Travel, MICE, NRI Holidays and Trade Fairs. In Currency Exchange the company has been granted Category II license by the Reserve Bank of India enabling it to enjoy Authorized Dealer Status. The Complainant also claims to represent and retail many international third party products including Cosmos, Rail Europe, Star Cruise, and Escorted Tours to USA etc. Similarly, the offices of the Complainant in UK and USA are stated to have also been marketing travel products in the domestic markets of those countries.
The Complainant claims that it is India’s market leader in destination management, with substantial competitive advantage in this business segment. It operates a range of group and individual tours to destinations throughout the Indian subcontinent for clients from all over the world. Overseas, the Complainant is a renowned travel brand and an Indian subcontinent tour specialist and is being quoted as one of the top 5 premium tour operators by “Conde’ Nast Traveller”. This division also provides specialist services to foreign participants visiting India for international meetings, conferences, adhoc incentives and exhibitions and also caters for domestic conferences and corporate incentives. Ground related services to international cruise companies touching Indian shore with a provision of shore excursions are other leading activities of the Complainant.
The Complainant claims that it is one of the market leaders in business travel services in India, offering a full range of business travel services to over 200 corporate clients, including major multinational companies. The Complainant’s strength in this business area is evident when one of the world's largest conglomerate in business travel - Radius the First truly global travel management partnership/consortium with merger of Travel Trust International and Woodside Travel Management Corporation in 1992 selected the Complainant as their Indian partner. The Incentive Solutions Division of the Complainant provides cost effective travel incentive schemes for clients that recognize and reward exceptional effort of its employees, customers, suppliers or dealers. The Complainant claims that it deploys highest information technology platform in the Indian Travel Industry. It has developed totally integrated front, mid and back office solutions. This has brought about huge cost savings for the organization, thus managing to offer “quality” service to its customers at a great cost savings.
The Complainant was initially stated to have been incorporated under the name “The Eastern Carrying Company Limited” on June 7, 1939. Subsequently, its name was changed to Cox & Kings (India) Pvt. Ltd. as on February 23, 1950. Presently, the Complainant is a public listed company on the BSE and NSE. The Complainant is an old, reputed and established organization dealing in travel related services in India and abroad.
The Complainant claims that it has been winning numerous awards and in the recent past, has won the Government of India’s National Tourism Award for Conferences, for as many as seven years. It claims to have bagged the National Tourism Award for the best Domestic Operator for the years 2004, 2005 and 2006. At the Galileo Express Awards, it has won the Best Outbound Tour Operator award in 2003-04 and since then for three years in a row, it has been winning the Best Domestic Tour Operator award. In 2005-2006 it also won the award for the Best Technology platform in the travel industry. It has also been adjudged as the Most Preferred Tour Operator at the CNBC Awaaz Travel Awards 2007.
The Complainant claims that due to the superior quality and efficient ways in which it has conducted its business and provided its services, the Complainant has acquired tremendous goodwill and reputation in its said business. Members of the trade and the general public have therefore come to trust the Complainant for excellent quality travel services. Owing to its strong national as also international presence, the Complainant has acquired an enviable reputation and goodwill in its aforesaid trademark/trade name i.e. “Cox and Kings” and the same has been exclusively connoting and denoting to the members of trade and the public. The expression “Cox & Kings” has therefore acquired a secondary meaning as indicating the Complainant.
The Complainant claims that it has been using its trademark/trade name since inception and has trademark registrations in India as stated in Section 4. Factual Background above. The Complainant is also stated to have secured registration of its trade mark Cox & Kings in various countries including the European Union, USA, New Zealand, UK and Australia as stated in Section 4. Factual Background above.
The Complainant claims to have taken steps to popularize its said goods and services bearing the trademark and trade name COX & KINGS. The Complainant claims that due to the superior quality of the said goods and services under the trademark COX & KINGS and wide publicity of the goods bearing the said trademark and services rendered under the said trademark/trade name, the Complainant’s said trademark/trade name and the goods and services have become highly well-known and popular and have acquired immense reputation and goodwill. The Complainant contends that the trademark/trade name COX & KINGS is exclusively associated with and connotes and denotes the goods and services of the Complainant and of none else to the members of the trade and the general public.
The Complainant contends that its trade name and style also contains the trademark COX & KINGS and has acquired enviable reputation and goodwill. The Complainant claims that it is known by its trademark/ trade name.
The Complainant claims that it uses the websites viz. “www.coxandkings.com” and “www.coxandkings.co.in” containing the expression “Cox and Kings” as its leading, essential, memorable and vital part with a view to conduct/expand its business through the Internet. The Complainant claims that its websites have been an instant success since their inception and till date the Complainant is stated to have done substantial business through its websites. Consequently the customers and members of the public and trade identify and associate the said websites with the Complainant and its services/ business. The Complainant website “www.coxandkings.com” was stated to have been launched on or about September 26, 1996 and is still operative. The Complainant claims that ever since it introduced the said website, the business of the Complainant has grown at a steady pace with an expanding base of customers and the Complainant’s website is regularly accessed by a large number of consumers worldwide. The Complainant contends that its second website “www.coxandkings.co.in” was launched on or about February 16, 2005 and is still operative. The said website is claimed to have helped the Complainant to widen its horizon and expand its business activities to a large extent.
The Complainant contends that on July 24, 2013 it received a call from one Mr. Lalka stating that he had received an email (Annexure I to the Complaint) from one Ms. Mukherjee stating “We are pleased to announce that you are one of the lucky winners of our ‘Duniya Dekho’ contest. You have won a trip to European Splendour – including greyhound racing tour and tour of 5 musical pubs in Ireland.” The sender of the said email claimed to have been working with the Complainant. The said email was sent from email i.d. “[…]@coxandkingslimited.com” which belonged to/related to the Respondent’s website being “www.coxandkingslimited.com”. Mr. Lalka further informed that when he replied to the said email, he did not receive any response. The said email also has an attachment which contains Itinerary which elaborately gives the detail day wise Itinerary, Inclusions & Exclusions, Cost, Hotel etc. The said attachment is identical to the Complainant’s Day wise Itinerary, Hotels, Inclusions/Exclusions, Price Grid, published on the Complainant’s website “www.coxandkings.com”. The Complainant contends that the Respondent has deliberately copied the Complainant’s logo “Cox & Kings” appearing on the Complainant’s website “www.coxandkings.com”. The Respondent has also copied the registered office address and contact details of the Complainant which are also available on the Complainant’s website “www.coxandkings.com”.
The Complainant further contends that the Respondent in the email sent to Mr. Lalka stated that he has won the Duniya Dekho contest. The word Duniya Dekho is also the trade name and trademark of the Complainant. The Complainant is the legitimate owner of the trademark DUNIYA DEKHO. The Complainant has been using the trade mark DUNIYA DEKHO for the group package holidays since the year 1999. In order to develop and promote the said trade mark in India and abroad, the Complainant has incurred huge expenses.
The Complainant further learnt that the disputed domain name was generated on July 16, 2013, i.e. much later than the dates of creation of the Complainant’s aforesaid domain names/websites. In this regard, the copy of the relevant webpage from WhoIs evidencing the date of creation of the disputed domain name/website has been annexed to the Complaint as Annex A. The Complainant contends that the Respondent had intentionally and fraudulently chosen the disputed domain name <coxandkingslimited.com> to trade upon and take undue advantage of the Complainant’s said trademark/trade name COX and KINGS and the aforesaid websites viz. “www.coxandkings.co.in” and “www.coxandkings.com”. However the disputed domain name <coxandkingslimited.com> is now found to be disabled. The Complainant further contends that though the disputed domain name is found to be disabled for the time being, the WhoIs data shows that the records will expire only on July 16, 2014. The Complainant alleges that the Respondent may have sent such fictitious emails to large number of proposed people with the sole intent to defraud them by creating confusion in the mind of the recipient of such fictitious email. Had Mr. Lalka not brought the Respondent’s email into the Complainant’s attention, the Complainant would not have known about such fraud being played by the Respondent. The Complainant alleges that by adopting the disputed domain name, the Respondent has resorted to “cyber-squatting” i.e. intentional registration, trafficking-in, or use of a domain name with bad faith and mala fide intent to profit from the goodwill of a trademark belonging to someone else.
The Complainant contends that the disputed domain name <coxandkingslimited.com> is deceptively and confusingly similar to the Complainant’s aforesaid trademark/trade name COX & KINGS as also to its domain names containing the expression “Cox and Kings”. The very use of the disputed domain name and website “www.coxandkingslimited.com” is a sufficient effort on the part of the Respondent to project that it is in some way or other associated with the Complainant.
The Complainant contends that the Respondent does not have any right or legitimate interest in the disputed domain name. There cannot be any explanation or justification for adopting the disputed domain name. The Complainant contends that it has spent huge amounts in advertisements and promotions of its services covered under its trademarks through various electronic and non-electronic media. The Respondent has adopted the disputed domain name with the purpose of riding upon the goodwill and reputation of the Complainant. Hence such an adoption cannot be a bona fide adoption.
The Complainant has relied upon the UDRP decision Cox & Kings Ltd. v. Mr. Manoj, WIPO Case No. D2011-0349 where in similar facts and circumstances, the panel has rendered a decision in favor of the Complainant.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has furnished evidence of its rights in the trademark COX & KINGS through its above-referred trademark registrations and common law rights which have accrued to it through its long and substantial use of the trademark not only in India but in certain other parts of the world.
The Panel has considered the documents submitted by the Complainant in support of its Complaint claiming that the Complainant has been using and has various registrations for the trademark COX & KINGS. The Panel observes that the Complainant has spent huge sums of money for advertisement and promotional activities in India and abroad. There does not appear to be any doubt that the Complainant is the owner of trademark COX & KINGS.
The Panel also finds that the Complainant uses the websites “www.coxandkings.com” since September 26, 1996 and “www.coxandkings.co.in” since February 16, 2005, containing its trademark/trade name COX AND KINGS for its business through the Internet. These websites are still active and operative and are being used by the Complainant. The Panel finds that the Respondent has registered the disputed domain name recently, on July 16, 2013 by adding the word “limited” to the Complainant’s trademarks/trade name/domain names <coxandkings.com> and <coxandkings.co.in>.
The Panel has no doubt that the Complainant has rights in the mark COX & KINGS and the registration and any use of the trademark in question by suffixing the descriptive word “limited” to it, has been done by the Respondent for creating a likelihood of confusion as to the source, connection, sponsorship, affiliation and endorsement of the Respondent’s website at the disputed domain name. It is the firm view of the Panel that the addition of the word “limited” in the disputed domain name <coxandkingslimited.com> would not make any meaningful difference. The disputed domain name would remain confusingly similar to the Complainant’s mark.
The Panel finds it useful to refer, in this regard, the following WIPO UDRP decisions:
(i) Samsung Electronics Co., Ltd. v. Albert Daniel Carter,
WIPO Case No. D2010-1367, holding that “the addition of generic or descriptive terms to a trademark in a domain name does nothing to distinguish it from the mark”.
(ii) Red Bull GmbH v. Chai Larbthanasub,
WIPO Case No. D2003-0709, Samsung Electronics Co. Ltd. v. Jung Hyun Shin Lee,
WIPO Case No. DMX2006-0004 and Sutton Group Reality Services, Inc. v. Bill Roder,
WIPO Case No. D2005-0126, wherein the above position has been upheld.
The Panel, therefore, concludes that the disputed domain name <coxandkingslimited.com> is confusingly similar to the Complainant’s trademark and the Complainant has therefore succeeded in establishing the first element of the test in paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
The Panel has no doubt that the disputed domain name incorporates the well-known mark of the Complainant and its domain name, by suffixing the descriptive word “limited” to it. The Respondent has chosen not to submit any reply to contradict the case of the Complainant. There is no response and/or documents to prove that the Respondent has rights or legitimate interests in the disputed domain name.
The Panel observes that the Complainant has made out a case proving its rights in the trademark/trade name COX & KINGS. The Complainant enjoys goodwill and reputation for the trademark registered by it in India and various other countries. The Panel is of the view that such an attempt on the part of the Respondent is to create confusion and to cash on/ride over the name, goodwill and reputation of the Complainant.
The Panel observes that the Respondent is in no way related to the Complainant or its business activities – the Respondent is not an agent of the Complainant, nor does he carry out activities for the Complainant.
The Panel has further observed that the date of registration of the disputed domain name <coxandkingslimited.com> by the Respondent is July 16, 2013, which is subsequent to the dates of registration and use of the trademark/trade name COX & KINGS (since more than 2 centuries) and domain names by the Complainant. The Panel also finds that the Complainant is using the domain names <coxandkings.com> and <coxandkings.co.in> for a considerably long time for its business through Internet. The date of registration of the disputed domain name by the Respondent is also subsequent to the date of registration of the Complainant’s domain names, which is September 26, 1996 for <coxandkings.com> and February 16, 2005 for coxandkings.co.in>. The Panel finds merit in the Complainant’s contention that there is no evidence of the Respondent’s use of the disputed domain name <coxandkingslimited.com> in connection with a bona fide offering of goods or services. There is also no evidence of any instance where the Respondent has made a bona fide offering of goods/services through the disputed domain name <coxandkingslimited.com> since July 16, 2013 i.e., the date of the registration of the disputed domain name.
In view of the above, the Panel has no difficulty in accepting that the Respondent has nothing to demonstrate its bona fide use of the disputed domain name as it has failed to submit any response to the contentions made by the Complainant. The Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The Panel agrees with the Complainant’s contention that there is virtually no possibility that the Respondent was unaware of the Complainant’s trademark, its existence or presence in the market as the Respondent also resides/conducts business in India, which is where the Complainant is quite prominent. In this regard, the Panel finds strength from the decision in Consitex S.A. Lanificio Ermenegildo Zegna & FigliS.p.A. Ermenegildo Zegna Corporation v. Mr. Lian Ming, WIPO Case No. DWS2003-0001, holding that a respondent could not ignore the existence of a well-known trademark at the time of registering a domain name.
Since the Respondent has not submitted any response to the contentions raised by the Complainant in its Complaint, the Panel has accepted the contention of the Complainant that the Respondent has registered the disputed domain name with the intention to deliberately deceive and trap Internet users. The Panel finds that the Respondent has intentionally attempted to attract Internet users to the Respondent’s website “www.coxandkingslimited.com” for commercial gains, by creating a likelihood of confusion among Internet users that the Respondent is associated with or endorsed by the Complainant. The Panel agrees further with the Complainant’s allegation that the Respondent intentionally created the disputed domain name for the purpose of making illegitimate commercial gain.
The Panel accepts the contention of the Complainant that trademark/trade name COX & KINGS is well-known not only in India but also in various parts of the world. There is a likelihood of deception to Internet users of the disputed domain name that there is some connection, affiliation or association between the Complainant and the Respondent thereby extracting illegal and undue gains to the Respondent and further having the effect of damaging the goodwill, reputation and business interests of the Complainant. The registration and use of the disputed domain name by the Respondent is to piggyback the goodwill and reputation of the Complainant. Furthermore, the Panel notes that the disputed domain name has been used to send fraudulent emails, which is further evidence of bad faith on the part of the Respondent.
The Panel, therefore, finds that the disputed domain name was registered and being used in bad faith by the Respondent.
7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <coxandkingslimited.com> be transferred to the Complainant.
Maninder Singh
Sole Panelist
Dated: November 4, 2013
