The Complainant is Rediff.com India Limited of Mumbai, India, represented by Pravin Anand, India.
The Respondent is Domain Management, Pauta's International SA of Ciudad de Panama, Panama.
The disputed Domain Name <rediffmai.com> is registered with Dotster, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 6, 2009. On May 7, 2009, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 7, 2009, 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. On May 11, 2009 the Complainant on its own motion filed an amendment to the Complaint. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed a second amendment to the Complaint on May 14, 2009. The Center verified that the Complaint together with the amendments to 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 15, 2009.
In accordance with the Rules, paragraph 5(a), the due date for Response was June 4, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 5, 2009.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on June 12, 2009. 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.
The Complainant is a company incorporated under Indian law, headquartered in Mumbai, India. Its shares are publicly traded on the NASDAQ stock exchange in New York.
Since 1996, the company has traded under the name “Rediff.com”, offering online consumer services to Indians worldwide. The Complainant has offices in five Indian locations and in New York, with websites operated from India and the United States of America. The company's Internet and mobile services include news, business, sports, and entertainment channels, predominantly in the English language, provided through its website at “www.rediff.com” and a mobile WAP platform at “www.mobile.rediff.com”. The Complainant also employs these platforms for e-commerce and m-commerce services such as Rediff Shopping, Rediff Auctions, and Rediff Books.
The Complainant offers both free and subscription online and mobile services for consumers and businesses, including email (Rediffmail), instant messaging (Rediff Bol), domain names, web hosting, and SMS messaging. In addition, the Complainant publishes English-language newspapers and associated websites targeted to the Indian communities of the United States and Canada, including the Rediff India Abroad website.
According to Alexa's metrics on website visitors (see “www.alexa.com”), Rediff.com currently ranks as number 77 among the world's top 500 websites. Rediffmail, the Complainant's web-based email service, has more than 65 million registered users, according to published reports.
The High Court of Bombay, ruling on a “passing off” claim in 1999, explained that the coined name “Rediff” derives from the first six letters of the name of the corporate group Rediffusion Dentsu Young and Rubicam Advertising Limited. Rediff Communication Limited v. Cyberbooth, AIR 2000 Bombay 27 (Suit No. 1881 of 1999, D/-22/23-4-1999).
The Complainant claims in the current proceeding that REDIFF and REDIFF.COM are both well-known, common law marks that are internationally famous. The Complainant also holds several registered trademarks in India and the United States of America, including the following:
|
MARK |
COUNTRY |
REG. NO. |
APP. or REG. DATE |
|
WWW.REDIFF.COM |
India |
822870 |
Oct. 13, 1998; renewal app. no. 1576285 Jul. 18, 2007 |
|
REDIFF BOL |
India |
970605 |
Nov. 15, 2000 |
|
REDIFF.COM |
United States |
2779891 |
Nov. 4, 2003 |
|
REDIFFMAIL |
India |
1358320 |
May 19, 2005 |
|
REDIFF |
United States |
3101026 |
June 6, 2006 |
The Respondent, which appears to be a Panamanian company, registered the Domain Name on June 20, 2004 with a registrar located in Vancouver, Washington, United States of America.
The Panel notes that the Respondent is also listed in WhoIs records as the registrant of numerous other domain names that are apparently based on the names of well-known companies, organizations, products, or popular websites, often with a slight misspelling or common typographical error. These include <bznkofamerica.com>, <goofgle.com>, <google4.com>, <facewbook.com>, <craigslisst.org>, <freiendster.com>, <amnestyinternational.org>, <photobucket.org>, <lycos.org>, <lycosasia.com>, <moorgate.com>, and <cottonell.com>.
As with other domain names registered by the Respondent, the Domain Name resolves to a parking website with pay-per-click advertising links (shown as “Sponsored Listings”). “Related Searches” in the right frame of the landing page include purported links to the Complainant and its online services, such as “Rediffmail Login”, “Rediffmail Accounts”, “Rediffmail Messenger”,” “Rediffmail Com”, and “Www Rediff Com”.
The Complainant contends that the Domain Name is identical or confusingly similar to its REDIFF marks, and that the Respondent has no rights or legitimate interests in the name. Considering that the marks are arbitrary and well-known, and appear on the Respondent's parking website itself, the Complainant concludes that the Domain Name was registered and used in a bad-faith attempt to trade on the fame of its marks.
The Respondent did not reply to the Complainant's contentions.
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of a disputed domain name, the Complainant must demonstrate each of the following:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; 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.
Under 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.”
The Complainant unquestionably holds trademark registrations for REDIFF, REDIFF.COM, WWW.REDIFF.COM, and REDIFFMAIL. There is substantial evidence that these marks may have attained common law protection in at least India and the United States of America some years before their registration, but it is not necessary for the Panel to make that determination in this proceeding.
The Domain Name incorporates the arbitrary name “Rediff” in its entirety. The additional letters “mai” are apparently meaningless and therefore nondistinctive. They tend to heighten, rather than avoid, the possibility of confusion, because they differ only by the missing “l” from the name of the Complainant's flagship email service, REDIFFMAIL.
The Panel concludes that the Domain Name is confusingly similar to the Complainant's various REDIFF marks and that the first element of the Complaint has been established.
The Complainant asserts, and the Respondent does not deny, that the Complainant has not authorized the Respondent's use of a domain name that is confusingly similar to the Complainant's marks.
The Policy, paragraph 4(c), provides a non-exhaustive list of other circumstances in which the Respondent could demonstrate rights or legitimate interests in the Domain Name, including 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 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.”
There is no evidence in the record, or from a perusal of the website associated with the Domain Name, that the Respondent has been known by a name corresponding to the Domain Name or has relevant trademark rights. The Respondent has made commercial use of the Domain Name to advertise the goods and services of third parties. This could not be considered use in connection with a bona fide offering of goods or services where the evidence indicates, as detailed below, that the Domain Name is not a generic term and was chosen precisely for its trademark value, in a bad-faith effort to mislead Internet users and trade on the reputation of the Complainant's mark.
Although the Complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often impossible task of proving a negative proposition, requiring information that is primarily if not exclusively within the knowledge of the Respondent. Thus, the consensus view is that paragraph 4(c) shifts the burden to the Respondent to come forward with evidence of a right or legitimate interest in the Domain Name, once the Complainant has made a prima facie showing, as it has in this case. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270. The Respondent has not done so, and the Panel therefore concludes that the Complainant has established the second element of the Complaint.
Paragraph 4(b)(iv) of the Policy lists the following as an instance of bad faith:
“circumstances indicating that the respondent intentionally is using the domain name in an attempt 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.”
It is probable that the advertising portal associated with the Domain Name was established for commercial gain. As with other domain names registered by the Respondent, the Domain Name resolves to a parking website that displays third-party advertising links, characterized as “Sponsored Listings” and therefore almost certainly generating pay-per-click advertising revenues for the Respondent.
It is also probable that the Respondent selected the Domain Name because of its similarity to the Complainant's popular “www.rediff.com” website and Rediffmail email service. “Rediff” is not a dictionary word, and the Domain Name differs by only one letter from the name of the Complainant's email service, which had been operating successfully for several years before the Domain Name was registered. The Respondent has a history of registering domain names based on slight misspellings of the names of popular websites, products, and companies, such as Google, Facebook, and Lycos, and using them similarly for what appear to be pay-per-click advertising portals. Although the Respondent is a Panamanian company, the Panel notes that it's parking websites are in the English language. They do not feature advertising for Panamanian companies or products. Rather, the Respondent's domain names appear to target internationally successful trademarks and online services, like the Respondent's. Moreover, the website associated with the Domain Name prominently displays what misleadingly appear to be links to the Complainant's website and online services.
Taken together, and in the absence of any rebuttal from the Respondent, these facts strongly suggest that the Domain Name was chosen and employed precisely for its potential commercial value in misleading Internet users familiar with the Complainant's well-known and arbitrary REDIFF marks.
The Panel finds that the Complainant has established the third element of its UDRP claim.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <rediffmai.com>, be transferred to the Complainant.
W. Scott Blackmer
Sole Panelist
Dated: June 26, 2009