WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Naaptol Online Shopping Pvt. Ltd. v. Prem Chaudhary
Case No. D2017-1014
1. The Parties
The Complainant is Naaptol Online Shopping Pvt. Ltd. of Thane, Maharastra, India, internally represented.
The Respondent is Prem Chaudhary of Lucknow, India.
2. The Domain Name and Registrar
The disputed domain name <naaptolonline.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 23, 2017. On May 30, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 30, 2017, 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on June 8, 2017.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 12, 2017. In accordance with the Rules, paragraph 5, the due date for Response was July 2, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 3, 2017.
The Center appointed Dr. Vinod K. Agarwal as the sole Panelist in this matter on July 14, 2017. The Administrative 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 company incorporated under the provisions of the Companies Act, 1956 having its registered office in Thane, Maharashtra, India. The Complainant is engaged, inter alia, in the business of providing a shopping portal for shoppers, merchants and market enthusiasts.
The Complainant, on its online portal "www.naaptol.com" provides a variety of products from gadgets and electronics, home and kitchen products, fashion and apparel, sports and automobiles, etc.
The Complainant is the owner of the NAAPTOL trademark, including Registration Certificate No. 3184477, registered on February 12, 2016, and uses the NAAPTOL trademark in connection with its online retail services. The Complainant also has trademark rights in NAAPTOL SHOP RIGHT SHOP MORE, dating from 2009.
The disputed domain name was registered on August 19, 2016. The disputed domain name resolves to an online shopping website similar to that of the Complainant.
5. Parties' Contentions
A. Complainant
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are applicable to this dispute. The Complainant argues, in relevant part, the following:
In relation to the first element, the Complainant contends that the Respondent has taken two words of the name of its company "Naaptol Online Shopping Private Limited" in the disputed domain name.
NAAPTOL is the registered trademark of the Complainant in India under Registration Certificate No. 3184477, registered on August 19, 2016. The said registrations are in classes 35, 38 and 41. The details of these classes have been given in the Complaint.
Through extensive use, publicity and promotion, the Complainant's trademark NAAPTOL has acquired a reputation and goodwill amongst the members of the trade, consumers and the public. Further, "online" is a part of name of the Complainant. Thus, the mark NAAPTOL and the expression "naaptolonline" is directly and exclusively associated with the Complainant.
The Complainant is also an owner of domain names containing its trademark NAAPTOL. The Complainant is the owner of the domain name <naaptol.com> since January 17, 2007. This domain name has acquired distinctiveness and is associated with the business of the Complainant.
The registration of the domain name <naaptolonline.com> by the Respondent is confusing inasmuch as it causes the public to believe that the Respondent is associated with the Complainant and also violates the Complainant's trademark rights in the NAAPTOL trademark.
Therefore, the Respondent's domain name <naaptolonline.com> is identical and/or deceptively similar to the Complainant's trademark NAAPTOL.
The Complainant further states that by registering the disputed domain name containing the mark of the Complainant, the Respondent intentionally attempted to attract Internet users to the Respondent's proposed website by creating a likelihood of confusion with the Complainant's name and mark.
In relation to the second element, the Complainant contends that the Complainant's trademark NAAPTOL has become highly distinctive of the goods and services of the Complainant on account of extensive use, viewership and promotion. Further that the Respondent is in no way related to the Complainant. The Complainant has not licensed or otherwise permitted or granted to the Respondent an authorization or a right to use its trademark or to apply for or use the disputed domain name incorporating the mark. Nobody would use the word "naaptol" unless seeking to create an impression of an association with the Complainant. The disputed domain name <naaptolonline.com> is well known and directly connected with the Complainant.
The Respondent is using the disputed domain name <naaptolonline.com> to operate an online business of selling goods in various categories such as electronics, jewelry, kitchen and home décor, etc. Thus, the purpose of the website of the Respondent is identical to the online shopping portal provided by the Complainant.
Further, the act of the Respondent constitutes infringement/passing off of the trademark of the Complainant. The Respondent registered the disputed domain name for the sole purpose of creating confusion and misleading the general public and the customers of the Complainant. Thus, it is contended that there were no rights or legitimate interests of the Respondent in the disputed domain name.
In support of its contentions, the Complainant argues that the Respondent has registered the disputed domain name with full knowledge of the Complainant's marks and uses it for the purpose of diverting Internet traffic, which is neither fair use nor noncommercial use. Such facts and circumstances create a rebuttable presumption that the Respondent has no rights in the disputed domain name and is not using it for any legitimate purpose.
Regarding the third element, the Complainant contends that the disputed domain name was registered in bad faith and with an ill-motive to gain unfair commercial advantage, at the expense of the Complainant.
The contention of the Complainant is that the Respondent has registered and is using the disputed domain name <naaptolonline.com> for the purpose of disrupting the business of the Complainant. The Respondent's use of the said domain name is purely to create an illusion of a legitimate association with the Complainant. The Respondent's actions are with a motive to wrongfully secure financial benefits that would otherwise not be available to the Respondent. Therefore, the Respondent is using the disputed domain name in bad faith.
B. Respondent
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel as to the principles the Panel is to use in rendering its decision. It says that, "A panelist shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable".
According to paragraph 4(a) of the Policy, the Complainant must prove that:
(i) The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
NAAPTOLis the trademark of the Complainant registered in India since 2009. The Complainant is also the owner of the domain name <naaptol.com>. The disputed domain name is <naaptolonline.com>.
The addition or suffix of the word "online" in the disputed domain name is not sufficient enough to distinguish and differentiate the disputed domain name from the registered trademark of the Complainant. In any case, the words "online" is also a part of the name of the Complainant. Therefore, the disputed domain name <naaptolonline.com> registered by the Respondent is confusingly similar to the Complainant's trademark NAAPTOL.
Therefore, the Panel holds that the disputed domain name <naaptolonline.com> is confusingly similar or identical to the trademarks of the Complainant.
B. Rights or Legitimate Interests
According to paragraph 4(c) of the Policy, the Respondent may demonstrate its rights to or legitimate interests in the domain name by proving any of the following circumstances:
(i) before any notice to the Respondent of the dispute, the Respondent's 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) the Respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights; or
(iii) The Respondent is 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.
The Respondent has not filed any response in this case. There is no evidence to suggest that the Respondent has become known by the disputed domain name anywhere in the world. The Respondent is known by the name of Prem Chaudhary. The Complainant has not authorized the Respondent to use the name and their trademark NAAPTOL. Further no information is available whether the Respondent has filed any application for the registration of the mark NAAPTOL anywhere in the world.
It is evident that the Respondent has no rights or legitimate interests in the disputed domain name, in view of the fact that the Complainant has not licensed or otherwise permitted the Respondent to use its trademark or to apply for or use the domain name incorporating the trademark and that nobody would use the word "naaptol" unless seeking to create an impression of an association with the Complainant,
Further, the Respondent's display of the webpage when considered in its entirety does not constitute bona fide offering of goods and services.
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration or use of the domain name in bad faith:
(i) Circumstances indicating that the Respondent has registered or 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 documented out-of-pocket costs directly related to the domain name; or
(ii) The Respondent has 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 it has engaged in a pattern of such conduct; or
(iii) The Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) By using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 its website or location.
The Complainant contends that the disputed domain name was registered or acquired primarily for the purpose of carrying on the business competitive to the Complainant. The Respondent is not making a noncommercial or fair use of the disputed domain name. The disputed domain name is being used with the intent of wrongful commercial gains by creating a likelihood of confusion with the Complainant's trademark.
The disputed domain name is used by the Respondent for offering similar goods or services as are offered by the Complainant. It does not amount to the bona fide offering of goods or services. This and other information submitted by the Complainant leads to the presumption that the said domain name <naaptolonline.com> is registered and used by the Respondent in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
The Panel concludes that the Respondent's actions amount to the registration and use of the disputed domain name in "bad faith". Paragraph 4(a)(iii) of the Policy is satisfied
7. Decision
For the foregoing reasons, namely, that the disputed domain name is confusingly similar to a mark in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and that the disputed domain name was registered in bad faith and is being used in bad faith, in accordance with paragraph 4(i) of the Policy and paragraph 15 of the Rules, the Panel orders that the disputed domain name <naaptolonline.com> be transferred to the Complainant.
Vinod K. Agarwal
Sole Panelist
Date: July 24, 2017
