The Complainant is M/s Genpact Limited of Hamilton, Bermuda, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland, represented by Saikrishna & Associates, India.
The Respondent named in the Complaint is Contact Privacy Inc. of Toronto, Ontario, Canada. As noted in Sections 3 and 6 below, the Registrar identified “self” of Gurgaon, Haryana, India as the registrant of the disputed domain name.
The disputed domain name <genpactvc.net> is registered with Tucows Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 14, 2012. On February 15, 2012, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the disputed domain name. On February 15, 2012, Tucows Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 16, 2012 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Center did not receive an amendment or amended Complaint in regards to the information provided by Tucows Inc. transmitted to the Complainant on February 16, 2012. The Center sent an email communication to the Complainant on February 29, 2012 confirming that it was not in receipt of an amendment or amended Complaint or confirmation of Complainant’s election to proceed with the Complaint without amendment. In the email communication sent by the Center on February 29, 2012, the Center informed the Complainant that notwithstanding the lack of an amended Complaint, or confirmation of Complainant’s election to proceed without amendment, a copy of the Complaint both to the Respondent as currently named in the Complaint, and to the registrant contact details subsequently disclosed by the Registrar, would be provided.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 29, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was March 20, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 21, 2012.
The Center appointed Luca Barbero as the sole panelist in this matter on March 26, 2012. 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 provides business process and technology management services, including finance and accounting, collections and customer relations, insurance, procurement and supply chain, analytics, software, IT infrastructure, content solutions and re-engineering, under the mark GENPACT. The Complainant operates through an international network in more than 17 countries, including India, China, Republic of the Philippines, Romania, Hungary, Poland, Republic of South Africa, the Netherlands, Spain, Morocco, Mexico, Guatemala, United States of America (the “United States”), Colombia, Brazil, United Arab Emirates and Japan.
The Complainant is the owner of several trademark registrations for GENPACT in various countries of the world, including the following: the Indian trademark registration No. 1363160, filed on June 10, 2005, in classes 35, 36, 41 and 42; the United States trademark registration No. 3610355, registered on April 21, 2009, in international class 36; the Chinese trademark registration Nos. 4752263, 4751770 and 4751768 of February 7, 2009, in classes 35, 36 and 42, respectively; the Brazilian trademark registration Nos. 827486294, 827486260 and 827486286, filed on June 6, 2005, in classes 35, 41 and 42, respectively.
The Complainant is the owner of the domain name <genpact.com>, which was registered on March 3, 2005 and is used by Complainant to promote its services. The Complainant is also the owner of the domain names <genpact.eu>, <genpact.ro>, <genpact.cn>, <genpact.us>, <genpact.co.uk>, <genpact.jp>, <gentpactindia.in> and <gentpactindia.co.in>.
Two favorable decisions according to the .IN Domain Name Dispute Resolution Policy were obtained by the Complainant in 2008 relating to the domain names <genpact.in> and <genpact.co.in>.
The disputed domain name <genpactvc.net> was registered on June 16, 2011.
The Complainant points out that the trademark GENPACT has been used by the Complainant and its predecessors in business (the company GECIS Global Holdings SICAR s. a. r. l., subsequently renamed Genpact Global Holdings SICAR Sarl) since 2005 and highlights that the trademark GENPACT is part of the Complainant’s corporate name and trading style and is used as a mark by the Complainant for all its services, which are rendered in various countries of the world.
The Complainant states that it has “invested enormous sums of money” in its promotional activities and that it has nowadays reached a global reputation for its services. The Complainant’s global net revenues amounted to USD 1041 million in 2008 and rose to USD 1259 million in 2010.
The Complainant underlines that, by virtue of its continuous and extensive use and its investments in advertising, it has become immensely popular and well-known and the trademark GENPACT has, therefore, acquired immense reputation and goodwill. The Complainant highlights that the trademark GENPACT is exclusively associated with the Complainant or its licensees and that the use of the trademark in relation to any goods or services by any entity other than the Complainant would infringe the Complainant’s trademark rights.
The Complainant contends that the disputed domain name is virtually identical to its trademark, as it is constituted by the trademark GENPACT with the letters “vc”, the addition of which is not sufficient to avoid a likelihood of confusion.
The Complainant states that “Genpact” is a coined term with no denotative meaning, that the mark is inherently distinctive and has acquired substantial goodwill, being also a valuable commercial asset of the Complainant.
Therefore, the Complainant contends that the Respondent could have no justification for registering the disputed domain name, which reproduces the mark GENPACT in its entirety, and that it did not make a bona fide offering of goods or services under the mark GENPACT. The Complainant also submits that the Respondent is not known by the mark GENPACT or the disputed domain name and that the Respondent’s intent in registering the disputed domain name was diverting Internet users to a parking page published at “www.genpactvc.net” for commercial gain.
With reference to the circumstances evidencing bad faith, the Complainant states that the disputed domain name was registered by the Respondent primarily to gain illegitimate consideration from the Complainant or any of its competitors in return for transferring the disputed domain name. The Complainant also points out that the Respondent has intentionally attempted to attract Internet users to its website for commercial gain, by creating a likelihood of confusion among Internet users inducing them to believe that the Respondent has some association with the Complainant.
As further circumstances evidencing bad faith, the Complainant states that the Respondent is diluting the distinctiveness of the Complainant’s mark GENPACT and that the use of a privacy service to conceal the registrant’s true identity is indicative of bad faith use. The Complainant also points out that the disputed domain name is an instrument of fraud and deception which is causing considerable damage to the Complainant’s business interests, as well as prejudicing substantial public interest.
The Respondent did not reply to the Complainant’s contentions.
Preliminary questions arise in the present case on i) the determination of the proper Respondent and ii) whether the Complainant’s election not to amend the Complaint to reflect the Registrar-identified underlying registrant information does not render the Complaint administratively deficient. In fact, as mentioned in Section 3, the Respondent named in the Complaint is Contact Privacy Inc. of Toronto, Ontario, Canada, while the Registrar identified “self” of Gurgaon, Haryana, India as the owner of the disputed domain name. The Complainant was duly notified by the Center of the change in registrant information, but did not reply to the Center’s communication, neither submitting an amendment to reflect the registrar-disclosed information nor confirming its election to proceed without amendment. The Center, as indicated in its email communication dated February 29, 2012 mentioned in Section 3, transmitted a copy of the Complaint both to the Respondent as named in the Complaint and to the registrant contact details subsequently disclosed by the Registrar.
As a preliminary consideration, the Panel notes that the Policy was not designed to deal with privacy services, whose existence postdates the adoption of the Policy and the Rules. In the absence of clear guidance from ICANN on their status and treatment for UDRP purposes, the distillation of applicable principles in this still developing area is left to UDRP parties, providers and panels.
As indicated in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2. 0”), paragraph 4. 9, and cases cited therein, most panels in cases involving privacy or proxy services in which disclosure of a so-called underlying registrant (or registrants) has occurred, took due account of both, or even focused solely on the registrar-confirmed registrant. Even in cases where panels have upheld complainant elections to proceed in their Complaint formally against the privacy service only (see e.g. Research In Motion Limited v. PrivacyProtect.org / Pluto Domain Services Private Limited, WIPO Case No. D2009-0324, panels have still tended to take substantive account in their decisions of any registrar-confirmed registrants of record.
The reasons for these approaches are to be found in the interpretation of the Policy and the Rules as well as in practical principles and considerations, which the Panel will try to summarize in the paragraphs hereinafter.
First of all, paragraph 1 of the Rules provides a definition of “Respondent” as “the holder of a domain-name registration against which a complaint is initiated”.
A number of panels appear to have opted for treating as proper respondent in cases involving privacy services the person or entity that has adopted and registered through such service, even though that person or entity may be a cipher and their real identity cannot be determined (see Association Robert Mazars v. Private Whois Service, c/o mazarsrevenge.com, WIPO Case No. D2009-0183). In such cases, it is of course still practically necessary to have a means of referring to the respondent, for which purposes use of the name of the relevant service as identified in the WhoIs may suffice as a necessary proxy.
Other panels have suggested that the definition of the Respondent in the Rules should be interpreted literally. See, e. g., Mark Alan Pearson and Markco Media Limited v. Domains by Proxy, Inc. and China Snake Media, WIPO Case No. D2009-0253, in which the Panel found that “there ought to be no ‘need’ for an Amended Complaint in these circumstances, because at the outset the Complaint will have been targeted correctly at the named registrant on the Registrar's WhoIs database, namely the Proxy service”.
However, as also highlighted by the panel in the afore-mentioned decision, paragraph 8(a) of the Policy (“You [respondent] may not transfer your domain name registration to another holder (i) during a pending administrative proceeding brought pursuant to Paragraph 4 or for a period of fifteen (15) business days (as observed in the location of our principal place of business) after such proceeding is concluded. ”) raises the question whether the “pending administrative proceeding” should be considered as commenced at the time the Complaint is filed with the Provider (in this case, the Center) or at the date on which the Provider, as provided for in paragraph 4(c) of the Rules, “completes its responsibilities under Paragraph 2 (a) in connection with forwarding the Complaint to the Respondent”.
As stated in Research In Motion Limited v. PrivacyProtect.org / Pluto Domain Services Private Limited, WIPO Case No. D2009-0324, since the first recorded decision by a Center-appointed UDRP panel, World Wrestling Federation Entertainment, Inc. v. Michael Bosman, WIPO Case No. D1999-0001, the Center has considered proceedings as formally “commencing” upon notification of the complaint, not its filing. The filing of a complaint may suffice to render a proceeding “pending” for the purpose of paragraph 8 of the Policy, while, pursuant to paragraph 4(c) of the Rules, the date of “commencement” is the date on which the provider completes its verification of the Complaint and forwards it (together with a possible amended complaint) to the Respondent.
In cases of registrar-disclosed information differing from the one of the named Respondent in the Complaint, the Center offers the complainant the opportunity to submit an amendment, and leaves ultimate resolution on the determination of the proper respondent to the discretion of the panel.
Even where the complainant does not submit an amendment, the Center, in application of paragraph 2(a) of the Rules, which states that the provider must “employ reasonably available means calculated to achieve actual notice to Respondent”, transmits the complaint to both the party and address provided for the respondent in the complaint and to the other entity as disclosed by the registrar.
The Panel concurs with the view expressed in Research In Motion Limited v. PrivacyProtect. org / Pluto Domain Services Private Limited, supra, finding that the Center’s pragmatic approach in cases concerning proxy registration providers ensures a fair procedure addressing the interests of all the parties in a dispute and advances the purpose of the Policy (“A bright line rule determining the identity of the proper respondent by strict adherence to the WhoIs data base at the date the complaint is prepared (and perhaps – but not always – filed) could easily frustrate the Policy, for example by mooting responsible registrars’ recent practice of disclosing a domain name's underlying registrant upon receipt of a Policy complaint; see discussion in Bittorrent Marketing GmbH v. AdIntensity Ltd, Adam Smith, WIPO Case No. D2007-1033 section 6-B. A more practical approach of having panels address particular issues in the particular factual circumstances in which they arise while awaiting possible amendment of the Policy or the Rules, or a provider’s adoption of a duly considered supplemental rule, better serves all parties and the public interest as well as the Policy’s objectives. That may mean in certain cases that a panel will treat differently the Policy’s proof requirements in privacy service cases, especially when the proceeding’s facts suggest circumvention. Or it may mean use of a panel's discretion under paragraph 12 of the Rules to request additional information appropriate in a particular proceeding. It should not mean a Procrustean approach that may do as much harm as good”).
Furthermore, the Panel notes that limiting the identification of a UDRP respondent to that entity or individual that appeared in the WhoIs at the time of Complaint filing, regardless of whether a privacy service was in use, may present significant complications in practice.
Besides the fact that, as highlighted in the decision cited above, this practice would make no allowance for corrections, or identification by the responsible registrar of other registrants during subsequent phases of the process, it may also contribute to depriving UDRP filing complainants of the benefit of information regarding the substantive identity of registrants about which they are seeking to make a case under the three elements UDRP, and potentially impact the ability of such registrants to receive notice and participate as parties to such disputes.
In addition, such approach may contribute to the obscuring in published UDRP decisions of the true identity of registrants found to have engaged in previous instances of cybersquatting, enabling shielding behind privacy services in the published decision database.
Furthermore, it could potentially open the flood-gates to UDRP complaints brought in respect of hundred or even thousands of disputed domain names, on the basis that a single privacy service appeared in the WhoIs on the date that the Complaint was filed, regardless of how many different registrants may in fact be identified by the responsible registrar during verification and in the public WhoIs, and regardless of the potential detriment to any beneficial interest or due process right to be heard such identified individual registrants may have.
It may also prompt questions about the extent to which a privacy service which the responsible registrar says is not the registrant in fact, would or could be regarded as having entered into the necessary registration agreement with the registrar which incorporates and provides for the application of the UDRP to the dispute.
Finally, and especially in the absence of clear guidance from ICANN on the issue of use and treatment of privacy and proxy registration services and of registrar “disclosures” in such cases, it may contribute to enforcement difficulties in the event that a successful complainant would seek to implement a transfer or cancelation order against a registrant which the responsible registrar has indicated is in fact a different individual or entity.
For the foregoing reasons, this Panel’s view is that the safer and more appropriate approach in UDRP cases involving privacy services in which the identification of a registrant (or registrants) different from the privacy service has occurred after the filing of the Complaint is generally to take due account of both.
The Panel is also satisfied that the Complaint was appropriately filed in this case, and that the Complainant’s choice not to submit an amendment to the Complaint to reflect the underlying registrant’s contact information does not render the Complaint administratively deficient according to the Policy and Rules.
Since the Center prudently forwarded a copy of the Complaint both to the privacy provider and to the Registrar-disclosed underlying registrant, also the latter has been provided the opportunity to submit a response, which the Panel would certainly have considered, if any had been submitted.
The Panel therefore also considers the registrar-disclosed domain holder as being at least an appropriate substantive Respondent.
Another relevant procedural aspect in cases involving privacy providers is the mutual jurisdiction, which is defined by paragraph 1 of the Rules as “a court jurisdiction at the location of either (a) the principal office of the Registrar (provided the domain-name holder has submitted in its Registration Agreement to that jurisdiction for court adjudication of disputes concerning or arising from the use of the domain name) or (b) the domain-name holder’s address as shown for the registration of the domain name in Registrar’s WhoIs database at the time the complaint is submitted to the Provider”.
The Panel notes that, in the present case, the fact that the registrar-disclosed registrant is located in a country (India) different from the one of the privacy service (Canada) indicated in the registration information at the time of the filing of the Complaint, does not have any impact in the present case since the Complainant opted for submitting, with respect to any challenges that may be made by the Respondent to a decision by the Administrative Panel to transfer or cancel the disputed domain name, to the jurisdiction of the courts at the location of the principal office of the concerned Registrar.
Such an option is compliant with Paragraph 3 (b)(xiii) of the Rules, which prescribes that the Complainant may “state that Complainant will submit, with respect to any challenges to a decision in the administrative proceeding canceling or transferring the domain name, to the jurisdiction of the courts in at least one specified Mutual Jurisdiction”.
According to paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted 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 a service in which the Complainant has rights; and
(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.
The Complainant has established its prior rights in the mark GENPACT as indicated in its trademark registration certificates attached to the Complaint. The Complainant is also the owner and operator of a website located at the domain name <genpact.com>, which it registered on March 3, 2005.
The Panel finds that the disputed domain name is confusingly similar to the registered trademark GENPACT owned by the Complainant, since the Respondent has merely added the two letters “v” and “c” to the Complainant’s trademark, which is certainly not sufficient to exclude the confusingly similarity. See, among others, ACCOR v. Eduardo Marchiori Leite, WIPO Case No. D2004-0680 (<thalassar.com>), finding that the addition of the letter “r” added nothing distinctive, the emphasis remaining on the name “Thalassa” which was apt to attract the attention of Internet users.
In view of the above, the Panel finds that the Complainant has proven that the disputed domain name is confusingly similar to the trademark in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.
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 names 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 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.”
It is well-established that the burden of proof lies on the Complainant. However, satisfying the burden of proving a lack of the respondent’s rights or legitimate interests in respect of the domain name according to paragraph 4(a) (ii) of the Policy is potentially quite onerous, since proving a negative circumstance is always more difficult than establishing a positive one.
Accordingly, in line with the UDRP precedents, it is sufficient that the Complainant show a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name in order to shift the burden of production on the Respondent. If the Respondent fails to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy or on any other basis, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy (Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110; MetAmerica Mortgage Bankers v. Whois ID Theft Protection, c/o Domain Admin, NAF Claim No. FA0611000852581).
In the case at hand, by not submitting a Response, the Respondent has not rebutted the Complainant’s prima facie case, failing to invoke any circumstance that could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain name.
The Panel observes that there is no relation, disclosed to the Panel or otherwise apparent from the record, between the Respondent and the Complainant. The Respondent is not a licensee of the Complainant, nor has the Respondent otherwise obtained an authorization to use the Complainant’s trademark.
Moreover, the Panel finds that the Respondent, whose true identity was obscured by the privacy shield, has not shown that it is commonly known by the disputed domain name, as stated in Fry’s Electronics, Inc v. Whois ID Theft Protection, WIPO Case No. D2006-1435. See along these lines Advance Magazine Publishers Inc. d/b/a Condé Nast Publications v. MSA, Inc. and Moniker Privacy Services, WIPO Case No. D2007-1743, in which the Panel has stated that “[h]ere, the Respondent MSA either used a domain privacy service that did not reliably forward communications about alleged infringement, or else the Respondent MSA simply disregarded such communications when they were forwarded. In either case, this reflects a cavalier attitude toward the rights of others that is contrary to the spirit of the registration agreement and suggests bad faith in the registration and use of the Domain Name. It also suggests that a motive for using a domain privacy service in this instance was to increase the difficulty for a trademark owner of identifying the registrant, assessing the merits of a legal claim or Policy complaint, and contacting the registrant, which does not reflect good faith”.
Furthermore, there is no indication before the Panel that the Respondent has made preparations to use the disputed domain name, corresponding to the Complainant’s mark, in connection with a bona fide offering of goods or services, or that it intends to make a legitimate, noncommercial or fair use of the disputed domain name.
Thus, in light of the above, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name, in accordance with paragraph 4(a)(ii) of the Policy.
As to bad faith at the time of the registration, the Panel notes that, in light of the prior registration and use of the trademark GENPACT made by the Complainant and its predecessors since 2005 in many countries of the world, including India, where the substantive Respondent is apparently located according to the WhoIs database, in view of the fact that GENPACT appears to be a coined term and considered the wide known character of the Complainant’s trademark, the Respondent was more likely than not aware of the Complainant’s trademark when registered the disputed domain name in June 2011.
The Panel shares the view of a number of panel findings of “opportunistic bad faith” in the registration of renowned or even somewhat less famous trademarks as found in Gateway, Inc. v. Lorna Kang, WIPO Case No. D2003-0257. Along the same lines were Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; Expedia, Inc. v. European Travel Network, WIPO Case No. D2000-0137; Prada S. A. v. Mark O’Flynn, WIPO Case No. D2001-0368; Ferrari S.p.A. v. Inter-Mediates Ltd., WIPO Case No. D2003-0050 and The Nasdaq Stock Market, Inc. v. Act One Internet Solutions, WIPO Case No. D2003-0103. As stated inter alia in DHL Operations B. V v. Net Marketing Group, WIPO Case No. D2005-0868 “[. . .] it is obvious that the value and goodwill, of the Complainant’s mark DHL which has an extensive worldwide recognition, would have been known to the Respondent at the time of registration of the disputed domain name. The registration and use of the mark by an entity unconnected to the Complainant gives rise to the presumption of opportunistic bad faith”.
The disputed domain name is, at the time of the drafting of this decision, not pointed to any active website, i.e., is passively held. The Panel finds that, as also established in a number of prior cases the concept of “bad faith use” in paragraph 4(b) of the Policy includes not only positive action but also passive holding. See the landmark case Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
As an additional circumstance evidencing bad faith, the disputed domain name was registered using a privacy service and also the registrar-disclosed contact information (the registrant’s name “self” and the postal address of the registrant and administrative contact “Gurgaon, Gurgaon, Haryana 122015 IN”) is incomplete. As stated, inter alia, in The American Automobile Association, Inc. v. aaaaautoinsurance.com Privacy--Protect.org, aaa-netaccess.com Privacy--Protect.org, aaanetacceess.com Privacy--Protect.org, Isaac Goldstein, WIPO Case No. D2011-2069, “[w]hereas the use of a privacy or proxy registration service is not in itself an indication of bad faith, the manner in which such service is used can in certain circumstances constitute a factor indicating bad faith, for example use of a privacy service in combination with provision of incomplete contact information or continued concealment of the ‘true’ or ‘underlying’ registrant”.
As a final remark, the Panel finds that the Respondent’s failure to submit a response is a further evidence of bad faith, since such conduct is not consistent with what one reasonably would expect from a good faith registrant accused of cybersquatting.
In light of the above, the Panel finds that the disputed domain name was registered and is being used in bad faith.
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 <genpactvc.net> be transferred to the Complainant.
Luca Barbero
Sole Panelist
Dated: April 10, 2012