5th Jul 2011
WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
IndiaMART InterMESH Limited v. DomainShield, LLC
Case No. D2011-0623
1. The Parties
The Complainant is IndiaMART InterMESH Limited of Uttar Pradesh, India, represented internally.
The Respondent is DomainShield, LLC, of Mesa, United States of America, represented by ESQwire.com Law Firm, United States of America.
2. The Domain Name and Registrar
The disputed domain name <indiamartinusa.net> is registered with eNom, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 8, 2011. On April 8, 2011, the Center transmitted by email to eNom, Inc. a request for registrar verification in connection with the disputed domain name. On April 8, 2011, eNom, Inc. 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 13, 2011. In accordance with paragraph 5(a) of the Rules, the due date for Response was May 3, 2011. The Response was received by the Center on May 4, 2011.
The Center appointed Brigitte Joppich, Pravin Anand and The Hon Neil Brown QC as panelists in this matter on June 14, 2011. The Panel finds that it was properly constituted. Each member of the Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with paragraph 7 of the Rules.
On June 16, 2011, the Center received a supplemental submission from the Complainant.
4. Factual Background
The Complainant’s business dates back to 1996 and was incorporated in 1999. The Complainant maintains the biggest b2b marketplace in India with a sales volume of USD 11.25 million in 2009. The Complainant has more than 3.700 employees, maintains 75 offices in India, and serves more than 5 million customers worldwide. It spent a total of USD 11 million in advertising so far, including expenses of USD 2 million in 2009/2010.
The Complainant is registered owner of numerous Indian trademarks for “INDIAMART”, inter alia Indian trademark registration no. 1486285 “INDIAMART” in class 42 and Indian trademark registration no. 1693949 “INDIAMART” in class 9 (hereinafter referred to as “the INDIAMART Marks”). The Complainant’s trademark registrations predate the Respondent’s registration of the disputed domain name.
The Respondent registered the disputed domain name on April 14, 2009 and is using it in connection with a website offering inter alia Indian jewelry, dance jewelry, dance costumes, fashion jewelry, antique jewelry, kundan jewelry and dance make-up accessories.
In January 2011, the Complainant sent a cease and desist letter to an entity named Indiana-as-AstralComm, which, according to the information included in the Response, is the true owner of the disputed domain name and therefore the true Respondent (behind the privacy shield). The Respondent replied claiming that it registered the disputed domain name in good faith and has been offering goods and services under such name for several years.
5. Parties’ Contentions
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy is given in the present case:
(1) The disputed domain name is confusingly similar to the Complainant’s highly reputed registered and unregistered rights in “INDIAMART” as it incorporates the entire mark and differs from the mark only by the additional words “in” and “USA” which, just as the top level domain name “.net”, may be disregarded for the purpose of determining whether a domain name is identical or confusingly similar to a mark.
(2) The Respondent has no rights or legitimate interests in the disputed domain name as it is not commonly known by the disputed domain name and as the Complainant has not licensed or otherwise permitted the Respondent to use the INDIAMART Marks or to apply for a domain name incorporating such marks. The Complainant further submits that the Respondent registered the disputed domain name with a clear view to misappropriate the goodwill associated with the Complainant’s INDIAMART Marks or at least knowing that the use of the disputed domain name constitutes an infringement of the Complainant’s rights and that the Respondent therefore cannot rely on any rights or legitimate interests in the disputed domain name.
(3) The disputed domain name has been registered and is being used in bad faith. The Complainant contends that the disputed domain name has been registered with full knowledge of the Complainant’s prior rights. With regard to bad faith use, the Complainant contends that there is no reason for the Respondent to use the Complainant’s INDIAMART Marks in the disputed domain name other than to attract Internet users to the Respondent’s website for commercial gain and that the Respondent is creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website and the products offered on such website.
The Respondent denies that there is any basis for transferring the disputed domain name to the Complainant.
The Respondent states that the Complainant does not have enforceable rights to a trademark under the Policy for the INDIAMART Marks, which are supposed to be generic.
The Respondent further states that it has operated a business selling Indian jewelry and cultural goods since 2008, that it registered the disputed domain name because of its generic meaning to support its business selling Indian-related jewelry and cultural items, and that the generic meaning of the disputed domain name is further evidenced by substantial third party use of the term “India Mart”.
The Respondent finally denies that it has ever displayed any links or information related to the goods and services associated with the Complainant’s trademark and states that it did not register the disputed domain name having the Complainant in mind but without any knowledge of the Complainant, and that the Complaint contains no evidence demonstrating an abusive domain name registration by the Respondent.
6. Discussion and Findings
The first point to be dealt with is the fact that the Response was received by the Center on May 4, 2011, i.e. one day after the due date. However, given that the Response was filed by the Respondent on May 3, 2011, 10:36 p.m. United States Eastern Standard Time and was received by the Center on May 4, 2011, only because of the time difference, the Panel finds that the Response was filed within the deadline.
The second point to be dealt with is the admissibility of the Complainant’s supplemental submission. The Rules do not allow the parties to file supplemental submissions on their own volition, and paragraph 12 of the Rules provides that a panel may in its sole discretion request further statements or documents from either of the parties. Thus, no party has the right to insist upon the admission of additional arguments or evidence. Grounds justifying new submissions are generally those regarding the existence of new pertinent facts that did not arise until after the complaint was filed. In particular, if the respondent raises objections that reasonably could not have been anticipated when the complaint was filed, a panel can give the complainant a right to reply to the submission or may accept the complainant’s unsolicited additional submission (cf. Universal City Studios, Inc. v. G.A.B. Enterprises, WIPO Case No. D2000-0416; QNX Software Systems Ltd. v. Future Media Architects, Inc. and Thunayan K AL-Ghanim, WIPO Case No. D2003-0921; Goldline International, Inc. v. Gold Line, WIPO Case No. D2000-1151). The Complainant does not cite any exceptional circumstances necessitating further submissions, nor does the Response itself disclose any new facts or new legal authority unavailable at the time the Complaint was submitted. Instead, the Complainant appears to have made the supplemental filing solely to reply to the Response. In the present case, such a reply is not justified under the Rules (cf. AT&T Corp. v. WorldclassMedia.com, WIPO Case No. D2000-0553; Universal City Studios, Inc. v. G.A.B. Enterprises, supra; AIB-Vincotte Belgium ASBL, AIB-Vincotte USA Inc./Corporation Texas v. Guillermo Lozada, Jr., WIPO Case No. D2005-0485). Therefore, the Panel elects not to accept the Complainant’s supplemental submission and has not relied on it in reaching this Decision.
Under paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present:
(i) the domain name is identical or confusingly similar to the Complainant’s trade mark; and
(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
The disputed domain name fully incorporates the Complainant’s INDIAMART Marks in which the Complainant has exclusive rights.
The additional words “in” and “USA” following the term INDIAMART in the disputed domain name are merely generic. It is well established that a domain name that wholly incorporates a trademark may be confusingly similar to such trademark for purposes of the Policy despite the addition of common or generic words, such as “in” or “USA” (cf. Quepasa Corporation v. Martin Gondra, NAF Claim No. 1214615 (<quepasainusa.com> et al.); Lilly ICOS LLC v. John Hopking / Neo net Ltd., WIPO Case No. D2005-0694 (<buyonlinecialisinusa.com>, <onlinecialisinusa.com> et al.))
Furthermore, it is well established that the specific top level domain name is generally not an element of distinctiveness that can be taken into consideration when evaluating the identity or confusing similarity between the complainant’s trademark and the disputed domain name (cf. Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com, WIPO Case No. D2001-0374).
The Respondent argues that the Complainant does not have enforceable rights in a trademark under the Policy as the Complainant’s INDIAMART Marks are generic. Even though the Panel is convinced that the fact that a trademark is generic does not per se hinder a finding that a complainant can rely on rights in such a trademark under the Policy, it is not necessary for the Panel to come to a decision in this regard in the light of the Panel’s finding under the head of “Rights or Legitimate Interests” (cf. 6.B. below) and “Bad Faith” (cf. 6.C. below).
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by a respondent, shall demonstrate its rights to or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) of the Policy, i.e.
(i) before any notice to the respondent of the dispute, the use by the respondent 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 customers or to tarnish the trademark or service mark at issue.
Even though the Policy requires the complainant to prove that the respondent has no rights or legitimate interests in the disputed domain name, it is the consensus view among panelists that a complainant has to make only a prima facie case to fulfill the requirements of paragraph 4(a)(ii) of the Policy. As a result, the burden of coming forward with evidence of the respondent’s rights or legitimate interests in the disputed domain name will then shift to the respondent.
The Complainant has substantiated that the Respondent has no rights or legitimate interests in the disputed domain name. The Panel finds that the Complainant has fulfilled its obligations under paragraph 4(a)(ii) of the Policy.
The Respondent has denied the Complainant’s assertions and stated that it has operated a business selling Indian jewelry and cultural goods since 2008 and that it registered the disputed domain name because of its generic meaning to support its business selling such items.
Having reviewed the case file and the documents included therein, the Panel is satisfied that the Respondent has in fact used the disputed domain name in connection with a website offering inter alia Indian jewelry, dance jewelry, dance costumes, fashion jewelry, antique jewelry, kundan jewelry and dance make-up accessories for several years. Furthermore, the Complainant did not provide sufficient evidence that the disputed domain name has been registered with a clear view to misappropriate the goodwill associated with the Complainant’s INDIAMART Marks and that the use of the disputed domain name constitutes an infringement of the Complainant’s rights in its INDIAMART Marks, which have been registered in connection with goods and services in classes 9, 35 and 42 but not in connection with jewelry, clothing or related products. Finally, the Respondent has used the disputed domain name in connection with its business before notice of this dispute in January 2011.
As a result, the Panel finds that the Respondent has used the disputed domain name in connection with its generic meaning, namely to provide an online marketplace for Indian goods in the USA, and therefore in connection with a bona fide offering of goods or services under paragraph 4(c)(i) of the Policy and that the Complainant has failed to prove that the Respondent has no rights or legitimate interests in respect of the disputed domain name under paragraphs 4(a)(ii) and 4(c) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which are evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, i.e.:
(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 trade mark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s 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 trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent 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 on line 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.
Although the Complainant failed to prove that the Respondent has no rights or legitimate interests in respect of the disputed domain name and the Complaint must be dismissed on this basis, the Panel also wishes to point out that it is not convinced that the disputed domain name was registered and has been used in bad faith.
The Complainant failed to provide evidence of any business activities in the United States of America, where the Respondent is located, and therefore did not convince the Panel that the Complainant is “highly reputed” in the United States of America and that the Respondent must have been aware of the Complainant and its rights in the INDIAMART Marks at the time of the registration of the disputed domain name. Furthermore, even if the Complainant had provided sufficient evidence in this regard, the Respondent, doing business in the field of Indian goods, could still have registered the disputed domain name because of its generic meaning. Under these circumstances the Panel must find for the Respondent also in this regard.
Finally, given that the Respondent’s use satisfies the criteria set out in paragraph 4(c)(i) of the Policy and that the Complainant failed to provide evidence of any bad faith use by the Respondent (the Complaint was only based on bad faith use as in paragraph 4(b)(iv) of the Policy), there is no room for a finding of bad faith use under the Policy either.
Therefore, the Panel concludes that the Complainant has not satisfied the requirements of paragraph 4(a)(iii) of the Policy.
For all the foregoing reasons, the Complaint is denied.
The Hon Neil Brown QC
Dated: July 5, 2011
Before giving a dissenting opinion, I would like to clarify that I am conscious of the fact that UDRP proceedings are different from a regular Trademark infringement lawsuit and that they were intended for blatant instances of cyber squatting and trademark infringement.
I am also conscious of the fact that sometimes parties may not present their case as well as it could have been done and that normally panelists decide matters on the basis of the materials before them.
Having said this, the facts of this case have troubled me and I rely upon Section 4.5 of the WIPO Overview 2.0 which reads as under:
“A panel may undertake limited factual research into matters of public record if it deems this necessary to reach the right decision. This may include visiting the website linked to the disputed domain name in order to obtain more information about the respondent and the use of the domain name, consulting a repository such as the Internet Archive (at www.archive.org) in order to obtain an indication of how a domain name may have been used in the relevant past, reviewing dictionaries or encyclopedias to determine any common meaning, or discretionary referencing of trademark online databases. A panel may also rely on personal knowledge. If a panel intends to rely on information from these or other sources outside the pleadings, especially where such information is not regarded as obvious, it will normally consider issuing a procedural order to the parties to give them an opportunity to comment. Alternatively or additionally, if the panel feels that it requires supplemental information to make a decision in a proceeding, it can issue a procedural order to the parties requesting the submission of such information.”
Since it does appear to me that a panelist may undertake limited research, I looked up the websites which have been referred to in the complaint, the response and in the accompanying documents. My views given below are mostly based on the documents on record and to some extent on facts apparent from these websites to which both the parties (as also the general public) clearly have access.
Further, I did not consider it necessary to issue a procedural order; first, on account of the use of the word “normally” in the aforesaid passage; and second, due to the public nature of the aforementioned websites.
In view of the above considerations, I render my opinion as under:
I agree with my co-panelists on the point that the disputed domain name adopted by the Respondent incorporates the trademark of the Complainant as a whole and is confusingly similar to the same. I further agree that even if a trademark seems generic, it does not per se hinder a finding that a Complainant can rely on rights in such a trademark under the Policy and the panel would have to evaluate the legitimate interest of the Respondents in the disputed domain name as well as their intention to register the disputed domain name in bad faith in order to reach a decision.
In evaluating the two elements of legitimate interest in the disputed domain name and bad faith registration, the first question that comes up is that how many IndiaMarts with a presence as big as the Complainants would be there in existence?
The documents placed on record by the Complainant do suggest that they are carrying on extensive business under their trademark “IndiaMart” on the internet throughout the world for a long period of time. A general internet search confirms that there is no other IndiaMart with a presence as big as the Complainant either on the Internet or otherwise. Further, a search for the word “IndiaMart” as a whole as well as “India” and “Mart” separated by a space resolve to links of the Complainant’s website only. In fact, an advanced search of the other entities, mentioned by the Respondent in its reply, using the mark “IndiaMart” reveals the following results:
India Mart Omaha
KC India Mart
India Mart Gainesville
No website. Listing on an online directory.
Taj India Mart
Little India Mart
No website. Listing on an online directory.
The above table indicates the following:
(i) That none of the said entities have incorporated the mark “IndiaMart” as a whole or in a confusingly similar manner in their domain name;
(ii) That all the entities are grocery stores operating within a local area of a town or city and have incorporated the name of that town or city or other distinguishing elements in their domain name;
(iii) That the word “Mart” may have become generic for a grocery store but not the combination mark “IndiaMart” which has become distinctive having acquired a secondary meaning through extensive use, duly recognized by the Registrar of Trademarks through registration of the said marks in India.
The second question which would need to be answered is whether there is any way that the Respondent knew of IndiaMart and does the Respondent have any Indian connection? Here, considering the material on record it seems that the main objective of the Complainant’s business is to promote the small and medium enterprises in India. However, the following facts indicating the Complainant to have a global presence and being well known cannot be overlooked:
Firstly, traders from all over the world including the United States of America can trade online on the Complainant’s website. Further, the “leads section” of the website shows an active participation of most countries on its website. In fact, any entity in the United States of America looking to trade with Indian entities would definitely be aware of the Complainant’s website.
Secondly, the Complainant has shown that they actively take part in trade fairs across the globe including the United States of America.
Thirdly, the name of the owner of the Respondent website, Ms. R. Varghese, and the fact that the Respondent offers Indian dance costumes and Indian jewelry for sale through its website suggest that the Respondent does indeed have an Indian connection.
Lastly, as the main objective of the Complainant’s business is to promote small and medium industries in India, a perusal of its website indicates that they are promoting a wide array of businesses including Indian jewelry, Indian apparels, antiques, gems, etc. which fall into the scope of the Respondent’s business activities. Therefore, in some way the business activities of the Complainant and the Respondent do tend to overlap.
The third question would be that is the Respondent doing anything to misrepresent or to suggest a “connection” and whether they have registered the disputed domain name in bad faith? Is the Respondent commonly known in the trade by the disputed domain name and is the Respondent attempting to derive an affiliation with the Complainant by using the disputed domain name?
First and foremost, using the Complainant’s trademark “IndiaMart” as a whole in its domain name and merely adding a suffix of ‘in USA’ in itself suggests bad faith as there is an attempt to contrast itself in a non-US territory. Additionally, as mentioned above the scope of the Respondent’s business seems to be covered in the Complainant’s business activities. Although the business of the Respondent is more specific than that of the Complainant the disputed domain name has no direct correlation to its business activities.
Finally, a perusal of home page of the Respondent’s website “www.indiamartinusa.net” reads as under (emphasis added):
“Dear visitor, ClassicalDanceJewelry.com website is maintained and operated by Astral Comm LLC, the parent company of DanceCostumesAndJewelry.com, ClassicalDanceCostumes.com and IndiaMartInUSA.com. Through our online store DanceCostumesAndJewelry.com, we offer all types of Indian jewelry, Dance Jewelry, dance costumes, fashion jewellery, antique jewelry, kundan jewelry, and dance make-up accessories…..”
A mere reading of the first few lines of the above text suggests that the Respondent, by its own admission is commonly known in the trade as “ClassicalDanceJewelry.com” or “DanceCostumesAndJewelry.com”. Interestingly, upon visiting the website “www.indiamartinusa.COM” (not the disputed domain name, which ends in “.net” however similar to it) as mentioned above, diverts the user to the Respondent’s main website i.e. “www.dancecostumesandjewelry.com”.
Therefore, the above findings suggest to me that the Respondent has registered the disputed domain name with the bad faith intention of attempting to attract customers by creating a likelihood of confusion with the Complainant’s mark thereby suggesting an affiliation or sponsorship with the Complainant.
Therefore, for the reasons stated above, the Complaint should be allowed.
Dated: July 5, 2011