WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Asianet Satellite Communications Limited v. Dom Force, Domforce Ltd

Case No. DCO2018-0027

1. The Parties

Complainant is Asianet Satellite Communications Limited of Thiruvananthapuram, Kerala, India, represented by DePenning & DePenning, India.

Respondent is Dom Force, Domforce Ltd of Belize City, Belize.

2. The Domain Name and Registrar

The Disputed Domain Name <asianet.co> is registered with INTERNETX GMBH (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 24, 2018. On August 24, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On August 27, 2018 the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on September 3, 2018. In accordance with the Rules, paragraph 5, the due date for Response was September 23, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 25, 2018.

The Center appointed Richard W. Page as the sole panelist in this matter on October 4, 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

Complainant operates Indian entertainment channels broadcasting in the Malayalam language. Complainant launched its services on September 29, 1992 and has a legacy of over 25 years as a service provider in the State of Kerala, India. Complainant was among the first private channels in India to do “live” news. The trademark ASIANET (the “ASIANET Mark”) is a coined word and is the product of Complainant’s founder. Complainant has numerous trademark registrations in India all using “asianet” as their identifying element: ACV ASIANET CABLE VISION (No. 1034483)(August 6, 2001); ASIANET (No. 1280268) (April 22, 2004); ASIANET (No. 1280269) (April 22, 2004), among several others.

Complainant further states that over the years its television channels have reached the homes of Indians in over 60 countries worldwide, including the Indian sub-continent, China, Southeast Asia, the Middle East, Europe, the United States of America and the lower half of the former Soviet Union. In the course of offering its services, Complainant has been using continuously and extensively the ASIANET Mark as its trade name and trademark from the date of launch of its services.

Complainant has plans to expand and upgrade its current business to 350 channels, including 50 HD (High Definition) channels and advanced services such as HD, HD DVR, multi-screen viewing and Movies on Demand. Complainant is preparing to roll out services to digital customers and also extending digital TV services to different platforms such as smartphones and tablets, through its multi-screen strategy.

Complainant further states that since its inception in 1993, it has used the ASIANET Mark as an inherent part of its trade name and as a trademark extensively and continuously with success. The expanse of the customer reach of the brand can be perceived from a subscriber base of over 170,000 homes, SME and corporate customers in Kerala alone. It has now diversified its operations to the adjacent State of Tamil Nadu to provide Internet solutions to enterprise level customers. With the Asianet Cable TV network as a market leader in cable TV distribution, Asianet Broadband too has widened its reach across Kerala.

The Asianet Broadband, the flagship service of Complainant, has a bandwidth capacity of more than 12,000 Mbps, which is considered among the largest in Kerala among the new generation of private ISPs. It has earned IS 9001:2008 certifications for its project division in the design, development, installation, service and after-sales support of Wireless, LAN and WAN network solutions and of dedicated Internet lease line connectivity. With more than 100 service centers in Kerala, it has a 24/7 customer care facility to cater to its customers. The expanse and success of Complainant’s business under the ASIANET Mark is supported by the turnover and the investment made towards popularizing the ASIANET Mark.

Complainant has devoted an enormous amount of time, effort and energy in promoting and advertising the ASIANET Mark in the print and online media and the ASIANET Mark is consequently identified solely with Complainant. Complainant has registered the following domain names: <asianet.in>, <asianet.co.in> <asianetteleshop.com> and <asianetnews.com>, among several others.

Respondent registered the Disputed Domain Name on July 30, 2018. It currently resolves to a website with pay-per-click links.

5. Parties’ Contentions

A. Complainant

Complainant contends that it owns several registrations of the ASIANET Mark, all of which contain “asianet” as the dominant element. Complainant further contends that the ASIANET Mark has had extensive visibility and is well recognized worldwide and that the wide popularity of Complainant’s services under the ASIANET Mark can be perceived from the extensive advertisements appearing on the ASIANET TV channels. Complainant states that by virtue of priority in adoption, long, continuous uninterrupted and extensive usage of the ASIANET Mark since at least the year 1993, Complainant has acquired statutory and common law rights in the ASIANET Mark. Complainant contends that its ASIANET Mark is inherently distinctive and is associated exclusively with Complainant and its business.

Complainant alleges that the Disputed Domain Name is identical and confusingly similar to the ASIANET Mark.

Complainant further alleges that Respondent has no rights or legitimate interest in the Disputed Domain Name because: (1) Respondent is not authorized by Complainant to use the ASIANET Mark in any way; (2) Respondent has not made any legitimate offering of goods or services under the Disputed Domain Name; and (3) Respondent’s only plausible motive for using the Disputed Domain Name is to misappropriate the reputation of the ASIANET Mark and divert Internet traffic away from Complainant.

Complainant further alleges that Respondent has registered and is using the Disputed Domain Name in bad faith because: (1) Respondent had constructive knowledge of the ASIANET Mark given Complainant’s reputation, use and registrations; and (2) Respondent is passively holding the Disputed Domain Name.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “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.”

Respondent is not obliged to participate in this proceeding, but when Respondent fails to do so, asserted facts that are not unreasonable will be taken as true and Respondent will be subject to the inferences that flow naturally from the information provided by Complainant. See Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000‑0441.

Even though Respondent has failed to file a Response or to contest Complainant’s assertions, the Panel will review the evidence proffered by Complainant to verify that the essential elements of the claims are met. See section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

Paragraph 4(a) of the Policy directs that Complainant must prove each of the following:

i) that the Disputed Domain Name registered by Respondent is identical or confusingly similar to the ASIANET Mark in which Complainant has rights; and,

ii) that 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

Complainant contends that it has numerous registrations of the ASIANET Mark.

Prior UDRP decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this assumption. See, EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047.

The Panel finds that Complainant has numerous registrations of the ASIANET Mark. Therefore, for purposes of this proceeding, the Panel finds that Complainant has enforceable rights in the ASIANET Mark.

Complainant further contends that the Disputed Domain Name is identical with and confusingly similar to the ASIANET Mark pursuant to the Policy paragraph 4(a)(i).

Respondent has not contested the assertions by Complainant that the Disputed Domain Name is confusingly similar to the ASIANET Mark.

Numerous UDRP decisions have recognized that incorporating a trademark in its entirety can be sufficient to establish that a domain name is identical or confusingly similar to a registered trademark. Complainant argues that the entirety of the ASIANET Mark is incorporated into the Disputed Domain Name. See, Hoffmann-LaRoche AG v. P Martin, WIPO Case No. D2009-0323; Dixons Group Plc. v. Mr. Abu Abdullaah, WIPO Case No. D2001-0843; V&S Vin & Sprit AB v. Ooar Supplies, WIPO Case No. D2004-0962; Research in Motion Limited v. One Star Global LLC, WIPO Case No. D2009-0227; Covance, Inc. and Covance Laboratories Ltd. v. The Covance Campaign, WIPO Case No. D2004-0206; SoftCom Technology Consulting Inc. v. Olariu Romeo/Orv Fin Group S.L., WIPO Case No. D2008-0792.

The Panel notes that the entirety of the ASIANET Mark is incorporated into the Disputed Domain Name. Therefore, the Panel finds that the Disputed Domain Name is identical to or confusingly similar with the ASIANET Mark. Complainant has established the elements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Complainant contends that Respondent has no rights or legitimate interest in the Disputed Domain Name pursuant to the Policy paragraph 4(a)(ii).

Section 2.1 of the WIPO Overview 3.0 states that once Complainant makes a prima facie case in respect of the lack of rights or legitimate interests of Respondent, Respondent carries the burden of demonstrating it has rights or legitimate interests in the Disputed Domain Name. Where Respondent fails to do so, Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.

The Policy paragraph 4(c) allows three nonexclusive methods for the Panel to conclude that Respondent has rights or a legitimate interest in the Disputed Domain Name:

(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services; or

(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Disputed Domain Name, even if you have acquired no trademark or service mark rights; or

(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

Complainant alleges that Respondent has no rights or legitimate interests in the Disputed Domain Name because: (1) Respondent is not authorized by Complainant to use the ASIANET Mark in any way; (2) Respondent had not made any legitimate offering of goods or services under the Disputed Domain Name; and (3) Respondent’s only plausible motive for using the Disputed Domain Name is to misappropriate the reputation of the ASIANET Mark and divert Internet traffic away from Complainant.

The Panel finds that this is a sufficient showing to constitute a prima facie case. Respondent has not contested any of these allegations.

In addition, the Panel finds no evidence in this file that Respondent has been commonly known by the Disputed Domain Name.

Therefore, the Panel finds that Complainant has met the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Complainant contends that Respondent registered and is using the Disputed Domain Name in bad faith in violation of the Policy paragraph 4(a)(iii).

The Policy paragraph 4(b) sets forth four nonexclusive criteria for Complainant to show bad faith registration and use of the Disputed Domain Name:

(i) circumstances indicating that you [Respondent] have registered or you have acquired the Disputed Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Disputed Domain Name registration to Complainant who is the owner of the ASIANET Mark or to a competitor of Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the Disputed Domain Name; or

(ii) you [Respondent] have registered the Disputed 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 [Respondent] have registered the Disputed Domain Name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the Disputed Domain Name, you [Respondent] have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the ASIANET Mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product.

The four criteria set forth in the Policy paragraph 4(b) are nonexclusive. See, Telstra Corporation Limited v. Nuclear Marshmellows, WIPO Case No. D2000-0003 (“Telstra”). In addition to these criteria, other factors alone or in combination can support a finding of bad faith.

Respondent has made no use of the Disputed Domain Name beyond using it to display pay-per-click advertisements. Complainant alleges that Respondent has not developed any active website at <asianet.co> or made any other use of the Disputed Domain Name.

The Panel has reviewed Complainant’s Annex 2 to the Complaint and notes that the advertisements include “Watch Aisanet Online” and “Film and TV”. Such use of the Disputed Domain Name demonstrates to the Panel that Respondent was aware of Complainant and that it registered the Disputed Domain Name in order to intentionally attract, for commercial gain, Internet users to Respondent’s website, by creating a likelihood of confusion with Complainant’s AISANET Mark. This demonstrates Respondnet registered and is using the Disputed Domain Name in bad faith pursuant to paragraph 4(b)(iv) of the Policy.

The Panel finds that Complainant has met the requirements of 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 <asianet.co> be transferred to Complainant.

Richard W. Page
Sole Panelist
Date: October 17, 2018