WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Star India Private Limited v. Hilay Modi

D2016-0880

1. The Parties

The Complainant is Star India Private Limited of Mumbai, India, represented by Saikrishna & Associates, India.

The Respondent is Hilay Modi of Ankleshwar, India

2. The Domain Name and Registrar

The disputed domain name <lifeokk.com> is registered with GoDaddy.com, LLC (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 2, 2016. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 3, 2016, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent's 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 May 6, 2016. In accordance with the Rules, paragraph 5, the due date for Response was May 26, 2016. The Respondent replied to the Center's notification of the Complaint by email on May 6, 2016, but no formal response was submitted.

The Center appointed Amarjit Singh as the sole panelist in this matter on June 3, 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

4.1 The Complainant is a group company of Star Group Limited ("Star Group"). The Star Group, through its group companies, including the Complainant, owns and operates various branded television channels including STAR PLUS, STAR GOLD, STAR ONE, CHANNEL [V], STAR UTSAV, MOVIES OK, JALSHA MOVIES, STAR WORLD, STAR MOVIES and STAR WORLD PREMIERE. It is submitted that the Star Group, through its various STAR channels, broadcasts over 60 channels in ten languages and offers a comprehensive choice of entertainment involving sports, movies, music and documentaries. STAR channels have reached more than 300 million viewers in 53 countries across Asia including India and is watched by approximately 100 million viewers every day.

4.2 One of the channels owned, managed and operated by the Complainant is LIFE OK. The LIFE OK Channel is currently the fastest growing and widely viewed "Hindi General Entertainment Channel" in India. Programmes on the LIFE OK Channel first started airing on December 18, 2011.

4.3 The Complainant has registered / applied for the registration of the mark LIFE OK and logos – both in India and abroad. The earliest registration for the LIFE OK mark goes back to October 20, 2011 in India.

4.4 In addition, the Complainant has several pending applications in India for the mark LIFE OK mark and logo.

4.5 The disputed domain name was registered on December 23, 2015, and resolves to a website claiming to sell or rent commercial real estate, but otherwise containing only stock photography of office buildings and placeholder "Lorem Ipsum" text.

5. Parties' Contentions

A. Complainant

5.A.1 The Complainant is the registered proprietor of the LIFE OK marks, in India and abroad, with the earliest registration going back to October 20, 2011. The LIFE OK marks have become highly distinctive of the Complainant's goods and services on account of extensive use, viewership and promotion. The LIFE OK marks are not only distinctive, but have also acquired substantial goodwill and reputation and are extremely valuable commercial assets of the Complainant.

5.A.2 The disputed domain name <lifeokk.com> is virtually identical to the Complainant's registered LIFE OK marks. It is clear that the disputed domain name contains and incorporates the words "life" and "ok" from the Complainant's mark in their entirety.

5.A.3 Further, the disputed domain name <lifeokk.com> has copied entirely, and is identical to the Complainant's domain name <lifeok.com>, with the addition of the suffix "k". The Complainant's domain name <lifeok.com> now automatically redirects users to the Complainant's consolidated online TV viewing platform "www.hotstar.com". It is submitted that the only difference between the domain names of the Complainant and the Respondent is the letter "k". The mere addition of the suffix "k" is not sufficient enough to distinguish and differentiate the disputed domain name.

5.A.4 The Complainant's trade mark LIFE OK, which forms the basis of the Complainant's identity online through domain names or otherwise, has been copied entirely by the Respondent in the disputed domain name and the only other element present in the disputed domain name is the letter "k". The Respondent has registered, and maintains its registration of, the disputed domain name under the hope that a confused Internet user looking for the Complainant's services will be led to the Respondent's website.

5.A.5 The Complainant submits that an Internet user who carries out a WhoIs search for the disputed domain name will find that the registration of <lifeokk.com> is in the name of the Respondent. This could be the source of severe confusion in the mind of such a user, and it is quite likely that such confusion would mislead a user into believing that the Respondent is in some way associated with or affiliated to the Complainant, or that the Respondent is acting with the consent or endorsement of the Complainant.

5.A.6 In view of the above, it is submitted that the disputed domain name <lifeokk.com> is identical with or confusingly similar to the Complainant's trade mark LIFE OK.

5.A.7 The Respondent is in no way related to the Complainant or its business activities nor is the Respondent an agent of the Complainant. The Respondent is not affiliated with the Complainant in any way and has not been authorized by the Complainant to seek registration of any domain name incorporating the LIFE OK marks (or any part thereof).

5.A.8 The Respondent could have no possible justification for registering the disputed domain name incorporating the well-known LIFE OK mark. The date of registration of the disputed domain name <lifeokk.com> appears to be December 23, 2015, which is subsequent to the dates of adoption, use and registration of the mark LIFE OK by the Complainant – i.e. October 20, 2011. The date of registration of the disputed domain name is also subsequent to the registration of the Complainant's domain name <lifeok.com> – i.e. September 4, 2003.

5.A.9 The Respondent has no intention of making any bona fide use of the disputed domain name, as is evident from the bogus design and text on the website to which it resolves. Further, none of the hyperlinks hosted on the website resolve to a corresponding webpage or window.

5.A.10 The Respondent is an Indian residing within India and, therefore, it is impossible for the Respondent to claim that he is not aware of the Complainant and its LIFE OK marks.

5.A.11 The disputed domain name was registered and is being used in bad faith, possibly with the ill motive to gain unfair commercial advantage, at the expense of the Complainant.

B. Respondent

5.B.1 In response to the notice of the Complaint issued by the Center, the Respondent, on May 6, 2016, communicated by email with the Center, stating "I don't understand", and "Sure U will delete my domain m don't mind". The Respondent did not dispute any of the averments made by the Complainant or the authenticity of the documents attached to the Complaint. No further communication was received by the Respondent.

6. Discussion and Findings

A. Identical or Confusingly Similar

6.A.1 The Complainant is the registered proprietor of the LIFE OK marks, in India and abroad, with the earliest registration going back to October 20, 2011. The disputed domain name is <lifeokk.com>.

6.A.2 The inclusion of the letter "k" as a suffix to the mark LIFE OK in the disputed domain name in no way whatsoever dilutes, reduces or diminishes the likelihood of confusion and deception caused by the disputed domain name. In light of the glaring similarity between the disputed domain name and the Complainant's marks, it is extremely likely than an Internet user who is not certain of, or familiar with the Complainant's exact and complete web address may be misled when coming across the Respondent's disputed domain name <lifeokk.com>.

6.A.3 In Philip Morris USA Inc. v. n/a, WIPO Case No. D2004-0462, the panel observed that "[t]he practice of adding a prefix or suffix to a well-known trademark has been the subject of numerous UDRP Decisions. Whether, in these circumstances, the trademark and the disputed domain name are confusingly similar depends on many factors, including the relative distinctiveness of the trademark and the non-trademark elements of the domain name, and whether the non-trademark elements detract from or contradict the function of the trademark as an indication of origin". In fact, the addition of the suffix "k" in the present case further adds to the confusion, in that an Internet user might unwittingly type an extra "k" and be directed to the Respondent's website. In several of its decisions, where the respondent has used a similar suffix, this Panel has ordered for the transfer of the domain name.

6.A.4 In view of the above, the Panel find that the disputed domain name <lifeokk.com> is identical or confusingly similar to the Complainant's trade mark LIFE OK.

B. Rights or Legitimate Interests

6.B.1 The Respondent has registered a domain name that is identical or confusingly similar to the Complainant's trade mark, without the knowledge or consent of the Complainant.

6.B.2 There is no evidence whatsoever of the Respondent's use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services. When an attempt to access the website at the disputed domain name is made, it displays the following text: "Welcome, Dear Visitor! If you are looking for warehouse or office space to rent in my city, then you have come to the right place. We have the following to offer". However, it is clear that there is no actual offering of goods or services being made on this website: upon scrolling down further the webpage contains only stock images of skyscrapers and stock Latin "Lorem Ipsum" text.

6.B.3 The Respondent is not commonly known by the disputed domain name. The Respondent appears to have no connection whatsoever to the Complainant or its mark LIFE OK.

6.B.4 In Neteller plc v. Prostoprom, WIPO Case No. D2007-1713, the panel stated as follows:

"But there is an even more fundamental reason why Paragraph 4(c)(ii) of the Policy can have no application. It cannot be the case that a cybersquatter who registers a domain name in bad faith, and then operates a business under that domain name long enough for the business to become 'commonly known by' the domain name, thereby acquires a complete defense under Paragraph 4(c)(ii). That would not make any sense. If that were the correct interpretation of Paragraph 4(c)(ii), every cybersquatter who registered a domain name in bad faith would be able to 'create' a defense under Paragraph 4(c)(ii) by the simple expedient of adopting the domain name as the name of his/her business or organization, thereby defeating the intended operation of the Policy.

In the Panel's view, the better interpretation of Paragraph 4(c)(ii) is that, to come within the safe harbor of that provision, a respondent (or his/her organization or business) must have been commonly known by the at-issue domain at the time of registration. There is no evidence of that in this case."

There is no evidence whatsoever of the Respondent being commonly known as LIFE OK.

6.B.5 In Star India Pvt. Ltd. v. Suezen Jackson, WIPO Case No. D2014-0820, the panel observed that, "[t]he disputed domain name was registered several years after the Complainant first registered and began using the LIFE OK trademark. The evidence on the record provided by the Complainant with respect to the use of the LIFE OK trademark, combined with the absence of any evidence provided by the Respondent to the contrary, is sufficient to satisfy the Panel that, at the time the disputed domain name was registered, the Respondent most likely knew of the Complainant's trademark and knew that it had no rights or legitimate interests in the disputed domain name." The Panel finds that this analysis is equally applicable to the current case.

6.B.6 The Panel holds that the Respondent does not have any rights or legitimate interests in respect of the disputed domain name.

C. Registered and Used in Bad Faith

6.C.1 The Respondent on the face of it is hosting a commercial real estate website at the disputed domain name. But a quick perusal of the site confirms that it is a sham. There are no working hyperlinks on the site and all the content save the welcome message, is in Latin, and is more specifically "Lorem Ipsum" placeholder text. This is clearly indicative of the Respondent's intent to dress-up the website in order to give it an air of false legitimacy. However, the Respondent's ill-intended efforts are clearly discernable. Such dishonest use of the disputed domain name amounts to the "blocking" of the domain name: the registration of a domain name in which one has no legitimate interest to prevent a trademark owner's registration of that domain name, in the hopes of forcing a sale to the rights holder. Further, by blocking the disputed domain name the Respondent is causing financial losses to the Complainant in the form of consumer confusion. An Internet user, while accessing the website at the disputed domain name (under the impression that it belongs to the Complainant) may be led to believe that the same is a commercial real estate website run by the Complainant.

6.C.2 The Complainant is extremely well-known and popular amongst the Indian populace and there is virtually no possibility whatsoever that the Indian Respondent was unaware of its existence or the existence of its LIFE OK mark. In light of the fact that the Respondent must have been aware of the presence, popularity and stature of the Complainant and its mark, there can be no legitimate ground or reason for which the Respondent would register the well-known trade mark of another company to attract Internet users to its website. Further, the Respondent in the present case is from the city of Ankleshwar in Gujarat state in India. By no stretch of the imagination can it be conceived that the Respondent was unaware of the presence of the Complainant and its rights in the mark LIFE OK and also the Complainant's television channel. It has been observed in Consitex S.A., Lanificio Ermenegildo Zegna & Figli S.p.A., Ermenegildo Zegna Corporation v. Mr. Lian Ming, WIPO Case No. DWS2003-0001 "that a respondent could not ignore the existence of well-known trade marks at the time of registering a domain name." Further, the panel in VolkswagenAktiengesellschaft v. LaPorte Holdings, WIPO Case No. D2005-0780 has also stated, "[t]he Panel accepts that the trademark VW is well-known. Consequently, the Respondent 'must [have known] or should have known' of the Complainant's trademarks, when it registered the domain name in question. According to the opinion of the Panel, this is evidence of bad faith especially in light of further circumstances of the case, such as the lack of any legitimate interest of the Respondent and the inactivity of the domain." The fact that the disputed domain name is almost identical to the Complainant's trademarks, and that the Respondent in its email to the Center consented to the deletion of the disputed domain name, is also evidence of bad faith.

6.C.3 The Panel therefore hold that the disputed domain name has been registered and is being used in bad faith.

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 <lifeokk.com> be transferred to the Complainant.

Amarjit Singh
Sole Panelist
Date: June 16, 2016