WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Fashion Design Council of lndia v. Kaustav Saikia, Design India

Case No. D2016-0531

1. The Parties

The Complainant is Fashion Design Council of lndia of New Delhi, India, represented by LexOrbis, India.

The Respondent is Kaustav Saikia, Design India of West Bengal, India, self-represented.

2. The Domain Name and Registrar

The disputed domain name <delhicoutureweek.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 17, 2016. On March 17, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 18, 2016, the Registrar 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" 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 29, 2016. In accordance with the Rules, paragraph 5, the due date for Response was April 18, 2016. The Response was filed with the Center on April 18, 2016.

The Center appointed Maninder Singh as the sole panelist in this matter on April 25, 2016. 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 society registered under the Societies Registration Act. The Complainant is an apex body of the Indian fashion industry constituted and represented by India's leading and most renowned fashion designers. The Complainant is the organizer of various fashion events such as India Fashion Week, India Couture Week, Delhi Couture Week, etc. The Complainant holds applications for the trademark DELHI COUTURE WEEK filed on May 21, 2010 and July 20, 2010. The Complainant claims common law trademark rights in DELHI COUTURE WEEK.

The Respondent registered the disputed domain name on July 21, 2010.

5. Parties' Contentions

A. Complainant

The Complainant claims to be an apex body of the Indian fashion industry constituted and represented by India's leading and renowned fashion designers. The Complainant also claims to be a national body representing the Indian fashion industry with over 350 distinguished members from the Indian fashion fraternity. The Complainant states that its business is supported by the Ministry of Commerce and Industry and the Ministry of Textiles of India. The Complainant also claims to be well known in the sphere of organizing internationally recognized fashion events and promotion of international trade.

The Complainant also claims that to endorse the Indian fashion industry at a global level, it advises and assists fashion designers, models, retailers, photographers, hair stylists and manufacturers in raising professional standards and improving business practices. The Complainant is the organizer of various fashion events such as India Fashion Week, India Mens Week, India Couture Week, Delhi Couture Week etc. The Complainant is renowned for its famous fashion events, inter alia, the well known Delhi Couture Week, which was held in 2010, 2011, 2012 and 2013.

The Complainant claims that the Delhi Couture Week was attended by renowned persons of the Indian and global fashion industry, members of relevant trade circles, etc. The Complainant claims that over the years, as a result of extensive use, widespread marketing, advertising and promotion, the DELHI COUTURE WEEK brand has acquired immense reputation and goodwill, both nationally and internationally and that DELHI COUTURE WEEK is synonymous with the Complainant as an exclusive indicator of the source or origin of services and events organized and promoted exclusively by the Complainant. The Complainant is also preparing and planning to hold its next event under the trademark DELHI COUTURE WEEK in the near future.

The Complainant also claims to be associated with a large number of national and international corporate houses and industry players who sponsor events organized by the Complainant. It promotes fashion designers in India and internationally through strategically planned and executed promotional campaigns.

The Complainant claims that the mark DELHI COUTURE WEEK has been extensively covered and promoted in various newspapers, magazines, journals, news and entertainment websites and various online publications.

The Complainant claims to have invested a great deal of resources in advertising and promoting its services and events, particularly, the Delhi Couture Week which is being held in India since 2010. The said advertisements have appeared in leading Indian and international print and electronic media and over the Internet across a number of popular websites, blogs, etc.

The Complainant claims that by virtue of prior adoption, extensive use and promotion of the trademark DELHI COUTURE WEEK, it has established itself as the exclusive and legitimate owner of the trademark DELHI COUTURE WEEK, which extends to all domestic and international fashion events, goodwill and reputation associated thereto, domain names and merchandise associated with these events. The Complainant also claims to have engaged television channels for the broadcast of its event and for advertising and promoting its event under the trademark DELHI COUTURE WEEK.

The Complainant also claims to have filed the following applications for the trademark DELHI COUTURE WEEK:

Contentions of the Complainant regarding the disputed domain name being identical or confusingly similar to the Trademark or Service Mark of the Complainant:

The Complainant contends that the Respondent, in complete disregard of the Complainant's statutory and common law rights over its trademark DELHI COUTURE WEEK, has dishonestly obtained registration of the disputed domain name.

The Complainant contends that the disputed domain name fully incorporates the Complainant's trademark DELHI COUTURE WEEK of which the Complainant is the prior adopter, senior user and legitimate proprietor.

The Complainant also contends that confusion would arise on account of the presumption that may be drawn about a franchise arrangement, nexus, trade connection or association between the services and business of the parties, particularly since the trademark DELHI COUTURE WEEK is an extensively used and promoted trademark carrying a high degree of distinctiveness. The Complainant alleges that its trademark DELHI COUTURE WEEK has acquired secondary meaning through its extensive use. The result of this misrepresentation is and will be confusion as to the source of the origin of services offered by the Respondent causing monetary loss as well as damage to the reputation and goodwill of the Complainant.

The Complainant further contends that the registration of the disputed domain name amounts to passing off, misrepresentation and fraud by the Respondent.

Contentions regarding the Respondent having no rights or legitimate interests in the disputed domain name:

The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name.

The Complainant also contends that the Respondent is not at all known by and is in no way associated with the disputed domain name. The Complainant contends that several landmark judgments by Indian courts have held that domain names are akin to trademarks and that registration of the disputed domain name by the Respondent clearly violates the trademark and common law rights of the Complainant.

The Complainant further contends that till date, the Respondent has not used the disputed domain name as no content (text, video or audio) has ever been uploaded by the Respondent. This clearly establishes cybersquatting by the Respondent with no legitimate and realistic intention to actually use the disputed domain name.

The Complainant contends that the Respondent has not been authorized by the Complainant to use the trademark DELHI COUTURE WEEK in any manner and/or to seek registration of any domain name incorporating their trademark, nor is the Respondent affiliated with the Complainant in any manner.

The Complainant further contends that the Respondent has no prior rights of legitimate interests in the disputed domain name. The adoption, use and filing of the application of the trademark DELHI COUTURE WEEK by the Complainant precedes the date of creation of the disputed domain name. The mark DELHI COUTURE WEEK was first used by the Complainant in the year 2010 as part of its famous event and the first trademark application of the trademark DELHI COUTURE WEEK was filed on May 21, 2010 whereas the date of the creation of the disputed domain name is July 21, 2010 as per the WhoIs database.

Contentions regarding bad faith registration and use of the disputed domain name by the Respondent

The Complainant contends that bad faith of the Respondent in adopting and obtaining registration of the disputed domain name is clearly reflected from his conduct. The Complainant held its event under the trademark DELHI COUTURE WEEK in the year 2010. The first event was held from July 20, 2010 to July 25, 2010. The Respondent registered the disputed domain name on the very next day, i.e., July 21, 2010 which is subsequent to the date of first use by the Complainant. The Respondent's registration is undoubtedly inspired by the use and registration of the Complainant's trademark and also the Respondent ought to have been aware of the event held under the trademark DELHI COUTURE WEEK, which was covered and promoted in all forms of print and digital media.

The Complainant claims that as a result of extensive and uninterrupted use, widespread advertising and strategic promotion of its trademark DELHI COUTURE WEEK, it has built substantial goodwill and amassed enormous fame. The Complainant contends that the Respondent is attempting to benefit illegitimately by misusing the fame associated with the Complainant's trademark by establishing a false association. The Respondent has never actually used the disputed domain name as an active website. The Complainant contends that it is cybersquatting and an attempt to usurp the disputed domain name. The Complainant contends that the adoption and registration of the disputed domain name is a blatant attempt to free ride on the established goodwill and hard-earned reputation of the Complainant.

The Complainant claims that it is well known across India as well as internationally. The Complainant contends that it is impossible that the Respondent was unaware of the Complainant when it registered the disputed domain name. The Complainant also contends that the subsequent adoption and mala fide registration of the disputed domain name, which is identical to the Complainant's extensively used and promoted trademark, clearly demonstrates and establishes bad faith on account of the Respondent.

The Complainant also contends that the Respondent was aware that the trademark DELHI COUTURE WEEK enjoyed substantial reputation and in light of this knowledge, the Respondent deliberately adopted and registered the disputed domain name.

B. Respondent

The Respondent in his Response to the Complaint, inter alia, submits the following:

Response to contentions regarding the disputed domain name being identical or confusingly similar to the Trademark or Service Mark of the Complainant:

With regard to the Complainant's contention that the disputed domain name is identical or confusingly similar to the Complainant's trademark DELHI COUTURE WEEK, the Respondent submits that it is a combination of the generic words "Delhi", "couture" and "week" and that individually these words cannot be trademarked.

The Complainant has applied for, but a trademark registration has not been granted yet upon the said combination of words.

The Complainant had argued last year with the domain name registrar Resellerclub.com, alleging the disputed domain name was involved in cybersquatting, and the verdict was in favor of the Respondent.

Response to contentions regarding the Respondent having no rights or legitimate interests in the disputed domain name:

The Respondent claims to have graduated from one of the premier fashion institutes of the National Institute of Fashion Technology, established under the aegis of the Ministry of Textiles of India as a fashion designer.

The Respondent claims that it has been conducting various businesses related to the industry of fashion, including organizing fashion weeks in various parts of the country, and creating lookbooks and fashion shoots for various designers participating in these shows.

The Respondent is an award winning and nationally recognized fashion consultant and also a fashion photographer, conducting business since 2001 (9 years prior to the Complainant's trademark application).

The Respondent's business runs on online marketing of services catering to fashion/couture weeks and the disputed domain name generates legitimate traffic and business to his website.

The disputed domain name has been registered since July 2010 and the Respondent has been running a website to divert traffic to his main websites: "www.photoshoot.in" and "www.kaustavsaikia.com".

The Respondent states that it has ownership of a few other domain names, e.g., <kolkatacoutureweek.com>, <mumbaicoutureweek.com> etc. and they all cater to region specific fashion designers who contact the Respondent for lookbooks and photoshoots during the fashion week time.

The Respondent submits that at no point, the disputed domain name falsely misleads or pretends to represent the Complainant, or the Complainant's business.

Response to contentions regarding bad faith registration and use of the disputed domain name

The Respondent states that he has been running the disputed domain name for almost 6 years, and with the sole purpose of conducting business via the website under the disputed domain name. At no point, was the domain up for sale, demonstrating that it is not a case of cybersquatting.

The Respondent is free to, and in fact has, booked the equivalent alternate domain name <delhicoutureweek.in>, making the use of the disputed domain name redundant.

The Complainant and the Respondent are not competitors and/or the disputed domain name was not registered by the Respondent primarily to disrupt the Complainant's business.

The disputed domain name was not registered by the Respondent in an intentional attempt to attract for commercial gain, Internet users to the Respondent's website or other online 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 the Respondent's website or location.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant has furnished evidence of its prior adoption, extensive use and promotion of the mark DELHI COUTURE WEEK. The Complainant has also furnished evidence of its rights in the mark DELHI COUTURE WEEK, through its above-referred trademark applications (Annexure 7) and common law rights which have accrued to it through its long and substantial use of the mark since 2010 (Annexures 3, 4 and 5).

The Panel finds no merit in the Respondent's argument that the mark has not yet been registered in favor of the Complainant. In this regard, the Panel refers to the decision in Multi Screen Media Private Limited v. Privacy Protection Service INC d/b/a PrivacyProtect.org / Syed Fahim Jafari, Zindoro, WIPO Case No. D2015-1457 (finding that Policy paragraph 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark) and is therefore satisfied that the Complainant has acquired requisite common law trademark rights for the purpose of the Policy.

The Panel finds that the disputed domain name is identical or confusingly similar to the Complainant's mark DELHI COUTURE WEEK.

The Complainant has therefore succeeded in establishing the first element of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

The Panel finds that the Complainant has made out a prima facie case demonstrating that the Respondent has no rights or legitimate interests in the disputed domain name.

The Panel observes that the Respondent is in no way affiliated with the Complainant nor has he been authorized by the Complainant to use and register its trademarks, or to seek registration of any domain name incorporating said marks. Furthermore, the Respondent has not demonstrated prior rights or legitimate interests in the disputed domain name. The Panel has further observed that the date of filing of the Complainant's applications for the trademark DELHI COUTURE WEEK preceded the registration of the disputed domain name.

It is apparent that for holding the first event on July 20, 2010, the Complainant had undertaken preparations for the event much earlier. The application for trademark registration had also been made in May 2010. The event scheduled for July 20, 2010 was widely advertised and the trademark DELHI COUTURE WEEK was publicly used before July 21, 2010, i.e., the date on which the Respondent registered the disputed domain name.

The Panel finds that it is not coincidental that the Respondent registered the disputed domain name one day after the Complainant started its event Delhi Couture Week in 2010 and relies upon the decision in Drexel University v. David Brouda, WIPO Case No. D2001-0067, holding that rights or legitimate interests cannot be created where the user of the domain name at issue would not choose such a name unless he was seeking to create an impression of association with the complainant.

The Panel also observes that the Respondent is not commonly known by the disputed domain name.

The Respondent claims to work in the fashion industry as a fashion designer, consultant and photographer and that he organizes fashion weeks in various parts of India. However, there is no evidence to support those claims. The copy of the business registration provided by the Respondent states that his company's name is "Design India" and that the nature of its trade is "computer software developer". The Respondent does not claim that he is commonly known by the disputed domain name, and there is no evidence in this sense.

The Panel also observes that the Complainant claims that the website under the disputed domain name has always been inactive (Annexure 10). The Panel further observes that the Respondent himself has stated that he has used the disputed domain name to divert traffic to his other websites "www.photoshoot.in" and "www.kaustavsaikia.com". The Panel finds that this does not amount to a bona fide offering of goods or services.

In the facts and circumstances of the present case, the Panel has no difficulty in accepting that the Respondent has not been able to prove its bona fide use of the disputed domain name. The Response submitted by the Respondent, virtually has no answer to the contentions raised 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 finds merit in the contention of the Complainant that the Respondent was aware of the Complainant's trademark DELHI COUTURE WEEK at the time of the registration of the disputed domain name since it has been used and promoted extensively and that the Respondent cannot possibly pretend that it has legitimately sought registration of the disputed domain name.

The Respondent claims to be connected with the field of fashion. That being the case, the Respondent would have known about the DELHI COUTURE WEEK event, which was organized by the Complainant and had been extensively advertised. The Panel also observes that given the reproduction of the Complainant's mark DELHI COUTURE WEEK by the Respondent in its entirety in the disputed domain name and the fact that the disputed domain name was registered only one day after the Complainant's event Delhi Couture Week started, it is very likely that the Respondent knew of the existence of the Complainant's trademark and of its relevance in the Indian market. This clearly shows his mala fide intention in the registration of the disputed domain name and establishes that the Respondent had knowledge of the Complainant's rights in the mark DELHI COUTURE WEEK at the time of registration of the disputed domain name.

The Panel finds that the mala fide of the Respondent further gets established and demonstrated from the date of the registration of the disputed domain name, i.e., July 21, 2010, which is just one day after the commencement of the DELHI COUTURE WEEK event, organized by the Complainant from July 20, 2010 to July 25, 2010 and which had been extensively advertised.

The Panel in this regard finds it useful to refer to and rely upon the decision in DHL Operations B.V. v. Ali Kazempour, WIPO Case No. D2004-1094, wherein it was observed that the registration of a domain name in the name of a famous mark, of which the respondent had knowledge, may in any case, be considered strong supporting evidence of bad faith.

The Panel also observes that the Complainant claims that the website under the disputed domain name has always been inactive, whereas the Respondent himself has stated that he has used the disputed domain name to divert traffic to his other websites "www.photoshoot.in" and "www.kaustavsaikia.com". The Panel finds that this constitutes an intentional attempt to attract for commercial gain, Internet users to the Respondent's website or other online 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 the Respondent's website or location and that it amounts to bad faith use of the disputed domain.

The Panel, therefore, finds that the disputed domain name was registered and is 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, <delhicoutureweek.com>, be transferred to the Complainant.

Maninder Singh
Sole Panelist
Date: May 4, 2016