WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

National Securities Depository Limited v. Supratik Basu

Case No. D2016-2257

1. The Parties

The Complainant is National Securities Depository Limited of Mumbai, India, represented by Quest IP Attorneys, India.

The Respondent is Supratik Basu of Kolkata, India, self-represented.

2. The Domain Name and Registrar

The disputed domain name <nsdlbank.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 November 7, 2016. On November 7, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 8, 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 Respondent sent several communications to the Center on November 9, 2016 and November 10, 2016.

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 November 21, 2016. In accordance with the Rules, paragraph 5, the due date for Response was December 11, 2016. An automatic extension of the Response due date was granted until December 11, 2016 under paragraph 5(b) of the Rules. The Response was filed with the Center on December 14, 2016.

The Center appointed Harini Narayanswamy as the sole panelist in this matter on December 22, 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 an Indian company based in Mumbai that is engaged in the business of providing infrastructure for dematerialized securities trading the Indian capital markets. The Complainant and its group of affiliated companies and subsidiaries use NSDL as a trademark and as an acronym of its corporate name.

The Complainant owns registered trademarks for the device marks:

Device mark bearing trademark number 808364, dated June 30, 1998.

Device mark bearing trademark number 2566579, dated July 18, 2013.

The Respondent is an individual named Supratik Basu, located in Kolkata, India. He has registered the disputed domain name <nsdlbank.com> on June 15, 2015. The Respondent has parked the disputed domain name on the SEDO website, which displays pay-per-click advertisements.

5. Parties’ Contentions

A. Complainant

The Complainant states it was established in 1995 and, after the enforcement of the Depositories Act 1996, it established the depositaries business and started functioning when it received a certificate of commencement from Securities & Exchange Board of India (“SEBI”) in October 1996. The Complainant states its group comprises three entities: (i) National Securities Depository Limited (“NSDL”); (ii) NSDL e−Governance Infrastructure Limited (“NSDL e-Gov”); and ( iii) National Database Management Limited (“NDML”). The Complainant states it uses the NSDL trademark and logo in India and other countries and it is recognized as a designation of source of its financial and related services.

The Complainant states it is the largest depository in India and is promoted by large public and private banks. It holds about 14.6 million dematerialized accounts of Indian customers and institutions. The value of settlement of securities on a daily basis is about USD 2 billion per day and its services are provided through depository participants located in about 9800 offices in 1360 cities or towns in India.

The Complainant states it is a quasi-governmental financial institution of immense importance because it acts as an intermediary between consumers / institutions, the SEBI and the companies. In November 2015, its securities holding exceeded USD 1.75 trillion. The Complainant states it operates its primary website from “www.nsdl.co.in”, from where its customers can transact. It owns several other domain names in connection with its business and has launched mobile applications that are sold under the NSDL trademark.

The Complainant states that it has taken up various financial projects for the Indian government and for public sector enterprises. Some of these projects are: Tax Information Network (“TIN”) for the Income Tax Department and introduction of “warehouse receipts” for Multi Commodity Exchanges and Warehouse; EASIEST project for the Indian Customs and Excise Department. Its diverse services include monitoring of Permanent Account Numbers (similar to social security numbers), development of TIN for the Central Board of Direct Taxes (“CBDT”), Ministry of Finance, Government of India and other such projects and services.

The Complainant states that it has interactions and associations with similar institutions in other jurisdictions and is a member of the Asia Pacific Central Securities Depository Group (“ACG”). It has hosted the fourteenth ACG meeting at Mumbai in December 2010. Due to the significant use of its mark in commerce, the Complainant states that its mark has acquired common law rights. The Complainant has filed articles and newspapers reports as evidence of fame of its trademark and also screenshots of Internet searches showing its significant presence on the Internet and as evidence of the mark being associated with the Complainant.

The Complainant states that in 2015 the Reserve Bank of India had granted it approval to establish a payments bank. The Complainant contends that such approval was widely reported in the Indian media and shortly after these media announcements, the disputed domain name was registered on June 15, 2015. On the same day, the Respondent registered two other domain names <nsdlbank.co.in> and <nsdlbank.in> that are not being used, but are put up for sale. The Complainant argues that the choice of the disputed domain name is predicated on the media announcements, as banking is not an activity that can be pursued by anyone at will without permissions. Therefore, the disputed domain name is not likely to be used for legitimate purposes, but is intended to mislead Internet users.

The Complainant bases the Complaint on the grounds that the disputed domain name is confusingly similar to a trademark in which it has rights; the Respondent lacks rights in the disputed domain name and the Respondent has registered and uses the disputed domain name in bad faith. The Complainant requests for transfer of the disputed domain name.

B. Respondent

The Respondent denies the Complainant’s allegations and denies knowing about the Complainant or about its business till receipt of the Complaint. The Respondent states his business involves tours and travels and not securities. The Respondent argues that the Complainant does not have a trademark or service mark for NSDLBANK. The Respondent further argues that the Complainant incorporated “nsdl payments bank limited” on August 17, 2016, whereas the disputed domain name was registered on June 15, 2015, which is more than a year prior to the incorporation of the Complainant’s banking entity.

The Respondent states that the Complainant’s allegations about the Respondent being the owner of the domain name <icicibanklogin.com>, pertaining to ICICI Bank, one of India’s leading banks is false, as the said domain name is still available for registration. The Respondent has submitted evidence to support his contentions. The Respondent further argues that the Complainant has made a false statement and has submitted false or forged WhoIs document in order to malign the Respondent.

The Respondent further alleges that the Complainant’s statement that the disputed domain name has been put on sale at the SEDO website is false, and is based on a forged document submitted by the Complainant. The Respondent further alleges that the evidence filed by the Complainant is doctored, as the words: “Buy this domain name maybe for sale by its owner” is missing in the document. The Respondent states the webpage resolving to the disputed domain name is generated by SEDO, over which he has no control. He further argues that the third-party advertisers are not in competition with the Complainant or its business. The Respondent denies allegations that the disputed domain name was based on media reports about the Complainant’s entry into banking, as the Complainant does not own a mark for “Nsdl Payment Bank”, which term is used in media articles.

The Respondent argues that the disputed domain name is not confusingly similar to a trademark in which the Complainant has rights. The Respondent, states that the Complainant does not have a word trademark for NSDL BANK and the Complainant is not likely to have any common law rights for the term as NSDL PAYMENT BANK LIMITED which is a newly formed entity. He reiterates that the disputed domain name was registered more than a year prior to the incorporation of the Complainant’s banking entity.

The Respondent states he has rights in the disputed domain name as he has a travel business and owns the website “www.travel365.com”, and has registered several domain names such as <btczilla.com>, <connectedcarindia.com> and <theholylance.com>. The Respondent argues that domain name buying and selling is a legitimate business and he has not tried to sell, rent or transfer the disputed domain name to the Complainant or its competitors. The Respondent further argues that he obtains no commercial gain for the content or advertisement due to parking the domain names, and the parking service provider is instrumental for the advertisement or content.

The Respondent denies the disputed domain name has been registered or used in bad faith as he alleges the Complainant does not have any trademark rights for NSDLBANK. The Respondent then adds that the disputed domain name <nsdlbank.com> was registered randomly by him and parked and it does not resolve to the Respondent’s active tours and travel website. The Respondent alleges the Complainant’s claim is one of Reverse Domain Name Hijacking (“RDNH”) to obtain the disputed domain name without having trademark rights in NSDLBANK.

Notwithstanding the Respondent’s late submission, the Panel considers the Response in its decision as it does not unduly delay the proceeding.

6. Discussion and Findings

To obtain the remedy of transfer of the disputed domain name, the Complainant needs to establish three elements under paragraph 4 (a) of the Policy. These are:

(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) The Respondent lacks rights or legitimate interests in the disputed domain name; and

(iii) The disputed domain name was registered and is being used in bad faith by the Respondent.

A. Identical or Confusingly Similar

The first element requires the Complainant to establish the disputed domain name is identical or confusingly similar to a trademark or a service mark in which it has rights.

The Complainant has filed documents to establish that the Complainant has common law rights and registered trademark rights in the NSDL trademark and logo. Documents and details of trademark registration for the NSDL device mark are submitted along with evidence of use of the mark in commerce, and extensive media recognition of the mark. Based on the evidence, the Panel finds NSDL is a distinct identifier of the Complainant’s products and services and the Complainant has rights in the NSDL mark.

The disputed domain name reproduces the mark in its entirety along with the term “bank”. The term “bank” is insufficient to distinguish the disputed domain name from the mark as the Complainant is a financial institution that has interests in the bank business, and adds to the association of the disputed domain name with the mark. An unwary Internet user is likely to be confused or mislead into thinking that the disputed domain name is associated with the Complainant, as the NSDL trademark has been used by the Complainant for a period of approximately two decades and is associated with the Complainant and its financial services. The Panel finds that the disputed domain name is confusingly similar to a trademark or a service mark in which the Complainant has rights.

The Complainant has successfully established the first requirement under paragraph 4(a)(i) of the Policy, that the disputed domain name is identical or confusingly similar to a trademark or a service mark in which it has rights.

B. Rights or Legitimate Interests

The second element under paragraph 4(a) of the Policy requires the Complainant to make a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. Once the Complainant has made a prima facie case, the onus of demonstrating its rights or legitimate interests shifts to the Respondent. If the Respondent fails to come forward with any evidence establishing rights or legitimate interests in the disputed domain name, the Complainant prevails. The overall burden of establishing that the Respondent lacks rights or legitimate interests in the disputed domain name, however, rests with the Complainant. (See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, paragraph 2.1).

Under the paragraph 4(c) of the Policy, a non-exhaustive, exemplary list of circumstances sets out the manner in which a respondent may typically establish rights or legitimate interests in a disputed domain name; these are:

(i) Before any notice of the dispute, the respondent’s use or demonstrable preparations to use, the disputed domain name or a name corresponding to the domain name in connection with a bona fide offering ofgoods or service;

(ii) The respondent (as an individual, business or other organization) has been commonly known by the disputed domain name, even if the respondent has not acquired any trade or service mark rights; or

(iii) The respondent is making legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain or to misleadingly divert customers or tarnish the trademark or service mark at issue.

The Panel finds that the Respondent has not made a submission that he has used the disputed domain name in connection with a bona fide offering of goods or services or stated that the Respondent’s name or business name corresponds to the disputed domain name. The Respondent has stated that he has a travel business and has registered domain names that are random choices and that he has parked these domain names (including the disputed domain name) at a parking site. Further, the Respondent has stated that buying and selling domain names is a legitimate activity.

While the Panel agrees with the Respondent’s statement that the business of buying and selling domain names may be legitimate, however, given the facts in the present dispute, the Panel is of the view that, under the circumstances discussed, the confusing and deceptively similar use of the Complainant’s trademark in the disputed domain name is with an intention to attract Internet traffic based on the reputation associated with the Complainant’s trademark. Such use of the disputed domain name is not a basis to find any rights or legitimate interests in favor of the Respondent. Further, as argued by the Complainant, given the fact that the word “bank” is misleading when used with the widely known trademark of the Complainant, it is unlikely that there could be any contemplated legitimate use of the disputed domain name by the Respondent under the present circumstances.

The Panel therefore finds, the Complainant has successfully established that there is a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name. The Respondent has failed to come forward with sufficient demonstration of its rights or legitimate interests under the Policy. Accordingly, the second element under paragraph 4(a)(ii) of the Policy has been fulfilled by the Complainant.

C. Registered and Used in Bad Faith

The third element requires the Complainant to establish the disputed domain name has been registered and is being used in bad faith by the Respondent.

The Complainant has submitted that the disputed domain name was registered and is being used in bad faith and the Respondent ought to have known of its trademark. The Complainant maintains that registration of a domain name that is connected with a trademark, shows bad faith registration and use. The Complainant further argues, there can be no actual or contemplated good faith use of its trademark in the absence of a license or permission to run a banking business. The Complainant asserts that the disputed domain name was registered to prevent its use by the Complainant and to mislead consumers.

The Respondent has submitted that the disputed domain name has not been registered or used in bad faith as he has not tried to sell, rent or transfer the disputed domain name to the Complainant or to its competitors. The Respondent has further submitted that he obtains no commercial gain for the content or advertisement due to parking the disputed domain name as the parking service provider is instrumental for the advertisement or content. The Respondent has alleged that the Complainant does not have any trademark rights for the word NSDLBANK. The Respondent has alleged that the disputed domain name <nsdlbank.com> was registered as a random choice by him and parked and it does not resolve to the Respondent’s active tours and travel website.

The Panel finds, given the Respondent states his business involves tours and travels and he is not in the business of securities, he has not provided any reasonable explanation for his choice of registering the disputed domain name. The reason offered by the Respondent of registering the disputed domain name as a random choice, derides a reasonable explanation, as there is evidence of the Respondent’s pattern of registering domain names containing trademarks of other third−party financial entities. The Complainant has provided evidence of the Respondent’s involvement in a previous UDRP dispute, Goldman, Sachs & Co. v. Supratik Basu, NAF Claim No. FA1508001633381, and of registration of domain names containing trademarks of third parties, such as the domain name <reliancepaymentbank.com>. Under the circumstances discussed, the registration and use of the disputed domain name, as argued by the Complainant, is unlikely to be in good faith, given the widely known character of the Complainant’s trademark.

The Respondent has argued that the Complainant has not shown any rights in the term NSDLBANK. The disputed domain name captures the essence of a new area of expansion of the Complainant’s business, namely “bank” business. Previous UDRP panels have found that registration and use of a disputed domain name that uses a widely−known trademark without the permission of the trademark owner, under such circumstances, gives rise to an inference of bad faith use under the Policy. Accordingly, for the reasons discussed, the disputed domain name is found to be used in bad faith by the Respondent.

The Respondent has made allegations of some of the Complainant’s documents being doctored and false. The Panel is not in a position to ascertain the veracity or authenticity of the documents that have been mentioned by the Respondent under these proceedings. The preponderance of unchallenged evidence on record however suggest that the Respondent ought to have known of the Complainant’s rights in the mark and has registered and used the disputed domain name to target the Complainant’s mark. The public are likely to presume that the use of the term “bank” will be used by an entity that has the necessary permission by the authorities to do banking business. The Complainant has used the trademark extensively for several years prior to registration of the disputed domain name in India and the Respondent is located in India. All these facts and circumstances indicates that the Respondent’s intention of registration of the disputed domain name for the purpose of deriving benefit from a known trademark.

Under the provisions of paragraph 4(b)(iv) of the Policy, trying to create a false association with the Complainant’s trademark, when none exists for commercial gain is recognized as bad faith registration and use of the disputed domain name. It is likely to be widely assumed by the public and Internet users that the trademark used in the disputed domain name, is associated with the Complainant or is sponsored, affiliated with or endorsed by the Complainant, the legitimate owner of the trademark. Moreover, it has been consistently found the respondent responsible for the content appearing on the website associated with the domain name.

The Panel finds the Complainant has successfully established the third element under paragraph 4(a)(iii) of the Policy, that the disputed domain name was registered and is being used in bad faith by the Respondent.

Reserve Domain Name Hijacking

The Respondent has made a plea of RDNH. The Panel finds the requirements of RDNH are not met under the circumstances of the case. The Respondent has not demonstrated that the Complaint has been brought in bad faith by the Complainant or has been brought to abuse the administrative proceedings or to harass the legitimate holder of the disputed domain name.

The Panel finds the requirements under the Policy for the transfer of the disputed domain name have been met by the Complainant. No case of RDNH has been made 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, <nsdlbank.com>, be transferred to the Complainant.

Harini Narayanswamy
Sole Panelist
Date: January 5, 2017