WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Voltas Limited v. Tim Treleaven, T2 PROJECTS

Case No. D2020-1485

1. The Parties

The Complainant is Voltas Limited, India, represented by Ira Law Firm, India.

The Respondent is Tim Treleaven, T2 PROJECTS, Australia.

2. The Domain Name and Registrar

The disputed domain name <voltas.org> 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 June 9, 2020. On June 9, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 10, 2020, 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 June 17, 2020. In accordance with the Rules, paragraph 5, the due date for Response was July 7, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 8, 2020.

The Center appointed Luca Barbero as the sole panelist in this matter on July 22, 2020. 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 India's largest manufacturer of air conditioners and air conditioning solutions and is a well-known engineering solution provider and project specialist. It offers engineering solutions for a wide spectrum of industries in numerous fields such as heating, ventilation and air conditioning, refrigeration, climate control, electro-mechanical, textile machinery, mining and construction, water management, building management systems, and pollution control.

The Complainant also has ISO 9001 - 2008 standards certification in its projects businesses and has undertaken various projects in the Middle East, Far East and South East Asia, CIS countries, Africa, and India. The Complainant’s shares are traded on the Bombay Stock Exchange.

The Complainant’s trade name and trademark VOLTAS was coined by combining the name of the two promoters of the Complainant i.e., the Swiss company “Volkart” and the Indian company “Tatas”, by combining the first three letters of the name Volkart with the last three letters of the name Tatas.

The Complainant is the owner of numerous trademark registrations for the trademark VOLTAS in India and other countries, including the following, as per trademark certificates submitted as Annexes to the Complaint:

- Indian trademark registration No. 276224 for VOLTAS (word mark), filed on November 12, 1971, in class 12;

- Indian trademark registration No. 499618 for VOLTAS (word mark), filed on October 19, 1988, in class 21;

- Indian trademark registration No. 519218 for VOLTAS (word mark), filed on November 1, 1989, in class 22;

- Indian trademark registration No. 3982420 for VOLTAS (word mark), filed on October 24, 2018, in class 11;

The Complainant is also the owner of several domain names containing the trademark VOLTAS, including <voltas.com> which was registered on January 11, 2002, and is used by the Complainant to promote its products under the trademark VOLTAS.

The disputed domain name was registered on June 11, 2017, and is pointed to a parking page with sponsored links.

5. Parties’ Contentions

A. Complainant

The Complainant contends that disputed domain name is identical to the trademark VOLTAS in which the Complainant has rights, as it reproduces the trademark in its entirety with the mere addition of the generic Top-Level Domain (“gTLD") “.org”.

The Complainant also highlights that the disputed domain name is similar to the various domain names owned and operated by the Complainant and in particular to the domain name <voltas.com>. The Complainant underlines that the disputed domain name attempts to associate itself with the Complainant’s online services by incorporating the name of the Complainant in full.

The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name since the Complainant is in no way authorized, licensed or otherwise permitted the Respondent to use its well-known trademark VOLTAS or to apply for any domain name incorporating its trademark in full or in part and the Respondent has never been commonly known by the domain name.

The Complainant further states that the Respondent’s registration of the disputed domain name is not bona fide since it is likely to be trading on the fame and recognition of the Complainant’s registered and well-known trademark VOLTAS in order to cause confusion and bait Internet users. In addition, the Complainant submits that the Respondent is not making any legitimate, noncommercial or fair use of the disputed domain name nor is using it in connection with a bona fide offering of goods and services, as the disputed domain name leads to an inactive parked website.

The Complainant submits that the Respondent registered the disputed domain name in bad faith since the Respondent undoubtedly had constructive notice of the Complainant’s rights in the trademark VOLTAS before adopting the disputed domain name by virtue of the Complainant’s widespread reputation, use and registrations of the said trademark.

The Complainant also informs the Panel that, in 2016, the Complainant was a distributor of CQMS Razer Australia for Ground Engaging Tools (“GET”) and spares with the Complainant’s customers such as NCL and SECL. Thus, owing to the commercial value associated with the trademark VOLTAS, the Complainant asserts that the Respondent’s registration of the disputed domain name in 2017 was nothing but an opportunistic bad faith registration on the part of the Respondent.

As to the use of the disputed domain name, the Complainant states that, by redirecting the disputed domain name to a parking page with promotional links, the Respondent is not making actual use of the disputed domain name in connection with an active website and thus is not using the disputed domain name for any legitimate commercial (or other) purposes.

The Complainant further submits that the Respondent registered the disputed domain name with a bad faith intent of extorting money from the Complainant, and that the Respondent has prevented the Complainant from reflecting its trademark in the disputed domain name corresponding to its registered and well-known trademark.

The Complainant concludes that potential visitors to the website parked on the disputed domain name may be induced to believe that the Complainant has authorized, endorsed or licensed the use of its trademark by the Respondent or that the Respondent has some connection with the Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

According to paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

(i) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) that the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel finds that the Complainant has established rights over the trademark VOLTAS based on the trademark registrations cited under section 4 above and the related trademark certificates submitted as Annexes to the Complaint.

As highlighted in section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the first element functions primarily as a standing requirement, and the threshold test for confusing similarity typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name.

In the case at hand, the Complainant’s trademark VOLTAS is entirely reproduced in the disputed domain name, with the mere addition of the gTLD “.org”, which is commonly disregarded under the first element confusing similarity test (section 1.11 of the WIPO Overview 3.0).

In view of the above, the Panel finds that the Complainant has proven that the disputed domain name is identical to the trademark in which the Complainant has established rights in accordance with paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent may establish a right or legitimate interest in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:

“(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate non-commercial 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.”

In the case at hand, the Panel finds that the Complainant has made a prima facie case and that the Respondent, by not having submitted a Response, has failed to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy.

Moreover, it has been repeatedly stated that when a respondent does not avail himself of its right to respond to a complaint, it can be assumed in appropriate circumstances that the respondent has no rights or legitimate interests in the disputed domain name.

The Panel also finds that, under these circumstances, the use of the disputed domain name merely for a pay-per-click page which directs visitors to various third party commercial websites (including things like “boilers” that may be considered as within the sphere of the Complainant’s general activities) does not constitute a bona fide offering of goods or services or a legitimate, noncommercial use of the disputed domain name under the Policy, as found in Manheim Auctions Inc. v. Whois ID Theft Protection, WIPO Case No. D2006-1044.

Therefore, the Panel finds that the Complainant has proven that the Respondent has no rights or legitimate interests in the disputed domain name according to paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy requires that the Complainant prove that the disputed domain name was registered and is being used by the Respondent in bad faith.

The Panel finds that, in light of i) the prior registration and use of the Complainant’s trademark VOLTAS in connection with the Complainant’s products in India and several other countries, including Australia, ii) the well-known character of the trademark, iii) the identity of the disputed domain name with the Complainant’s trademark and with the Complainant’s domain name <voltas.com>, and iv) the lack of any Respondent’s documented rights or legitimate interests in the disputed domain name, the Respondent likely registered the disputed domain name having the Complainant’s trademark in mind.

Moreover, in view of the notoriety of the Complainant’s trademark, the Panel finds that the Respondent acted in opportunistic bad faith at the time of registration, since the disputed domain name is so obviously connected with the Complainant that its very selection by the Respondent, which has no connection with the Complainant, suggests the disputed domain name was registered with a deliberate intent to create an impression of an association with the Complainant.

The Panel also notes that, in all likelihood, the Respondent profits by earning pay per click revenues from the disputed domain name’s dynamic redirection (see inter aliaManheim Auctions Inc. v. Whois ID Theft Protection, WIPO Case No. D2006-1044, Fry’s Electronics, Inc v. Whois ID Theft Protection, WIPO Case No. D2006-1435, Barry D. Sears, Ph.D. v. YY / Yi Yanlin, WIPO Case No. D2007-0286).

In view of the above, the Panel finds that the Respondent intentionally attempted to attract Internet users to its website for commercial gain, by causing a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of its website, according to paragraph 4(b)(iv) of the Policy.

As an additional circumstance suggesting bad faith, the Panel notes that there has been no Response and in this case, as stated in Sports Holdings, Inc v. Whois ID Theft Protection, WIPO Case No. D2006-1146 “it is open for the Panel to infer a prima facie case of bad faith registration. The Panel also notes that the Respondent has used the present domain name in a commercial website. The evidence before the Panel indicates that the Respondent has used (or allowed the use) of the domain name for the purpose of some apparently commercial nature from which the Respondent (or a related third party) presumably derives or intends to derive revenue. This is not conduct consistent with registration and use in good faith”.

Along the same lines is the decision Renegade LLC v. Kenneth Gibert, WIPO Case No. D2008 0646, in which the panel stated: “The Complainant argues that the Domain Names were registered and used in bad faith to divert Internet users to the Respondent’s website for commercial gain based on confusion with the Complainant’s mark. Again, the Respondent has not denied these allegations or provided any evidence to support a finding that it registered and used the Domain Names in good faith.”

Therefore, the Panel finds that the Complainant has also proven that the Respondent registered and is using the disputed domain name in bad faith pursuant to paragraph 4(a)(iii) of the Policy.

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 <voltas.org> be transferred to the Complainant.

Luca Barbero
Sole Panelist
Date: August 7, 2020