WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Etechaces Marketing and Consulting Private Limited v. Arvind Uchil, New Shield Insurance Brokers

Case No. DAE2017-0007

1. The Parties

The Complainant is Etechaces Marketing and Consulting Private Limited, of India, represented by Wadhwa Law Chambers, India.

The Respondent is Arvind Uchil, New Shield Insurance Brokers, of United Arab Emirates (UAE).

2. The Domain Name and Registrar

The disputed domain name <policybazaar.ae> is registered with AE Domain Administration (.aeDA).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 17, 2017. On November 17, 2017, the Center transmitted by email to AE Domain Administration (.aeDA) a request for registrar verification in connection with the disputed domain name. On November 19, 2017, AE Domain Administration (.aeDA) transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In reply to a request for clarification issued by the Center, the Complainant filed an amended Complaint on November 28, 2017.

The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the UAE Domain Name Dispute Resolution Policy for – UAE DRP approved by .aeDA (the “Policy”), the Rules for UAE Domain Name Dispute Resolution Policy – UAE DRP (the “Rules”), and the Supplemental Rules for UAE Domain Name Dispute Resolution Policy – UAE DRP (the “Supplemental Rules”). The Respondent sent two email communications to the Center on November 28, 2017.

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 29, 2017. In accordance with the Rules, paragraph 5(a), the due date for Response was December 19, 2017. The Respondent did not submit any formal Response. The Center informed the parties about the commencement of the Panel Appointment Process on December 28, 2017.

The Center appointed Dr. Clive N.A. Trotman as panelist in this matter on January 10, 2018. 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

Background information about the Complainant is taken from the Complaint. The Complainant has since September 25, 2014, owned a company named Policybazaar Insurance Web Aggregator Private Limited (“PolicyBazaar”). PolicyBazaar, through the Indian website “www.policybazaar.com”, provides a portal at which users may compare a variety of products from different insurance companies. The scale of PolicyBazaar is that the website has between 7 million and 8 million registered users and employs 1,500 people.

The Complainant holds 13 trademarks of which the following are representative for this proceeding:

POLICYBAZAAR.COM, Indian trademark, registered December 17, 2008, registration number 1764833, class 38;

POLICYBAZAAR.COM, Indian trademark, registered December 17, 2008, registration number 1764834, class 41;

POLICY BAZAAR.COM, Indian trademark, registered December 17, 2008, registration number 1764831, class 35;

POLICYBAZAR, Indian trademark, registered August 1, 2011, registration number 2183635, class 16.

The Complainant also owns 290 domain names nearly all of which incorporate the words “policy” and either “bazaar” or “bazar”.

The Respondent has not provided any background information except for the contact details provided to the Registrar of the disputed domain name, which resolves to a parking website. The date of registration is January 17, 2014 according to the Registrar.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has rights in 13 trademarks including those listed in section 4 above and has produced copies of the relevant online registration documents in its name. The Complainant also claims common law rights in the trademark POLICYBAZAAR.

The Complainant says it is well known and spent over USD 11 million on promotion in the year 2015-2016. It has won a number of awards, 16 of which it has listed, including best financial website in the country by the Internet and Mobile Association of India.

The Complainant says the disputed domain name, omitting the country code Top-Level Domain (“ccTLD”) “.ae”, is identical to and confusingly similar to the Complainant’s trademark POLICYBAZAAR.

The Complainant also contends that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has no relationship with the Respondent and has not granted it any consent to use the Complainant’s trademarks. The Complainant says its trademark registrations predate the registration of the disputed domain name. The Respondent is assumed to have had prior knowledge of the Complainant, its reputation and its goodwill. The Respondent’s intent with respect to the use of the disputed domain name cannot be legitimate because the incorporation of the entirety of the Complainant’s trademark indicates an intention to divert customers from the Complainant to the Respondent’s website, which is a parking page with commercial advertising. The Respondent cannot claim the use of the disputed domain name is noncommercial or fair. The Respondent is not commonly known by the disputed domain name.

The Complainant further contends that the disputed domain name has been registered or is being used in bad faith. The disputed domain name is registered in the name of an insurance consultancy and service provider, which would be directly in conflict with the Complainant’s business that has operated since 2008. The Respondent has reproduced entirely the Complainant’s trademark, which is evidence that the Respondent knew of the Complainant’s trademark and business. It is submitted that the registration of the disputed domain name similar to a famous trademark by an entity having no relationship to that mark is in itself evidence of registration and use in bad faith. The disputed domain name, through confusion with the Complainant’s trademark, creates the erroneous impression of being associated with the Complainant, and is for commercial gain, even if to the benefit of the Registrar.

The Complainant has cited a number of decisions under the Policy and under the Uniform Domain Name Dispute Resolution Policy that it considers relevant to its position.

The Complainant requests the transfer of the disputed domain name.

B. Respondent

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

6. Discussion and Findings

Paragraph 6(a) of the Policy states that the Respondent is required to submit to a mandatory administrative proceeding in the event that the Complainant asserts to the applicable dispute-resolution provider, in compliance with the Rules, that:

“(i) your Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) you have no rights or legitimate interests in respect of the Domain Name; and

(iii) your Domain Name has been registered or is being used in bad faith.”

The Complainant has made the relevant assertions as required by the Policy. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute.

A. Identical or Confusingly Similar

The Complainant has produced evidence of its ownership of the registered trademarks POLICYBAZAR, POLICYBAZAAR.COM, and POLICY BAZAAR.COM. The disputed domain name is <policybazaar.ae>, of which the significant element, omitting the ccTLD “.ae”, is “policybazaar”. The Complainant’s extensive trademark registrations do not include POLICYBAZAAR standing alone precisely, but the Complainant asserts common law rights in that trademark. The period of time over which the Complainant has been known as “Policy Bazaar” (or “PolicyBazaar”) is since 2008, its clientele is measured in millions, and its advertising spend is claimed to have been over USD 11 million in a recent year. Nevertheless it is not necessary for the Panel to decide whether POLICYBAZAAR has the status of a common law trademark for the purpose of this proceeding. On a typographical, phonetic or holistic comparison, the Panel finds confusing similarity between the disputed domain name and each of the Complainant’s registered trademarks. Accordingly the Panel finds for the Complainant under paragraph 6(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant has asserted a prima facie case to the effect that the Respondent has no rights or legitimate interests in respect of the disputed domain name, that it has no relationship with the Respondent, and that it has not granted the Respondent any licence to use the Complainant’s trademarks, which were registered prior to the disputed domain name.

Paragraph 6(c) of the Policy provides for the Respondent to contest the Complainant’s prima facie case under paragraph 6(a)(ii) of the Policy and to establish rights or legitimate interests in a disputed domain name by demonstrating, without limitation:

“(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..

The Respondent has not responded and has not asserted rights or legitimate interests in the disputed domain name with reference to paragraphs 6(c)(i), (ii) or (iii) of the Policy or otherwise.

According to the screen capture of the website to which the disputed domain name has resolved, it led to a parking page with advertising that did not indicate any demonstrable preparations for a bona fide offering of goods or services and was not noncommercial. There is no evidence that the Respondent as Arvind Uchil or as New Shield Insurance Brokers has been commonly known by the disputed domain name.

The Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name and accordingly finds for the Complainant under paragraph 6(a)(ii) of the Policy.

C. Registered or is Being Used in Bad Faith

The Complainant must prove under paragraph 6(a)(iii) of the Policy that the disputed domain name has been registered or is being used in bad faith. Paragraph 6(b) of the Policy lists four alternative circumstances that shall be evidence of the registration or use of a domain name in bad faith by a respondent, namely:

“(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the Domain Name; or

(ii) you have 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 you have engaged in a pattern of such conduct; or

(iii) you have Registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the Domain Name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”

The provisions of paragraph 6(b) of the Policy are without limitation and bad faith may be found otherwise by the Panel.

The evidence shows the Complainant to be a company of substance. The Certificate of Incorporation records its formal registration on June 4, 2008. The Complainant’s website, according to Alexa statistics, received 4.48 million visits in the 6 months May-October 2017, 86.8% being from India, some of the remainder being from Saudi Arabia, Qatar, the United States of America and the UAE (and by calculation, 7.1% from the rest of the world). Annual advertising or promotional expenditure has recently been in the order of USD 11 million. For the purposes of this proceeding, the Complainant’s trademarks may be regarded as well known in India and internationally. The Complainant holds no fewer than 290 domain names, nearly all being identifiable with or broadly related to its trademarks. It is not reasonably conceivable on the balance of probabilities that the Respondent, prior to registration of the disputed domain name under the auspices of an insurance brokerage, was unaware of the Complainant operating in the same field, and in any case the Respondent was bound by paragraph 4 of the Policy which imposes the obligation that “It is your responsibility to determine whether your Registration or use of the Domain Name Registration infringes or violates someone else's rights”. On the evidence, and on the balance of probabilities, the Panel finds the registration of the disputed domain name comprising effectively the Complainant’s trademark to have been, in an of itself, an act of bad faith on the part of the Respondent (see, for example, the decision in Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163).

It is not necessary to know under which, if any, of the clauses 6(b)(i), (ii), (iii) or (iv) of the Policy the Respondent may have intended to act, since these are without limitation. The screen capture of the website to which the disputed domain name has resolved, however, shows it to be in use for commercial advertising, which will be reached by Internet users who have followed a domain name comprising essentially the Complainant’s trademark. It is immaterial whether the commercial benefit of the website accrues in part to the Respondent, to the hosting company of the parking page, or to any other entity. The Panel finds use of the disputed domain name in bad faith within the meaning of paragraph 6(b)(iv) of the Policy.

Accordingly the Panel finds both registration and use of the disputed domain name in bad faith, either of which satisfies the requirements of paragraph 6(a)(iii) of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 6(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <policybazaar.ae> be transferred to the Complainant.

Dr. Clive N.A. Trotman
Panelist
Date: January 22, 2018