The Complainant is Larsen & Toubro Limited of Mumbai, India, represented by Saikrishna & Associates, India.
The Respondent is Singh, Rajveer of Delhi, India.
The disputed domain name <larsentoubrolimited.com> is registered with Network Solutions, LLC.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on May 31, 2012. On June 1, 2012, the Center transmitted by email to Network Solutions, LLC. a request for registrar verification in connection with the disputed domain name. On June 1, 2012, Network Solutions, LLC 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 the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 14, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was July 4, 2012. On June 22, 2012, the Center received an email communication from an individual identified as a “senior legal executive of Rediff.com India Limited”, whereby it acknowledged receipt of the envelopes addressed to the named Respondent and delivered by courier and informed that the person named Respondent did not work with Rediff.com India Limited. On June 26, 2012, the Center acknowledged receipt of the Respondent’s email communication. No formal response has been filed by the Respondent and therefore, on July 5, 2012, the Center notified the parties about the commencement of the panel appointment process.
The Center appointed Maninder Singh as the sole panelist in this matter on July 23, 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 claims to be the largest construction contractor in India and a leading player in the field of engineering and construction assignments. The trademark LARSEN & TOUBRO claims to have been created by combining the last names of its founders. The Complainant claims to have been carrying on its business in India since 1946. For the trademark and trade name LARSEN & TOUBRO, the Complainant claims to be the owner of numerous trademark registrations in various classes, in India. According to the Complainant, the trademark LARSEN & TOUBRO is its corporate name/trading style for some 70 years and has acquired immense popularity, goodwill and reputation. The Complainant also claims to have registered trademarks L&T and LT (in a circle device). The Complainant is also stated to be the owner of numerous Internet domain name registrations including <larsen-toubro.com> and <larsenandtoubro.in> amongst others.
The Respondent has chosen not to submit any response to the contentions raised in the Complaint. In the absence of a Response, there is no information available about the Respondent other than as provided in the Complaint, WhoIs and Registrar’s verification response.
The Complainant Company in its complaint has, inter alia, raised the following contentions:
The Complainant claims to have been carrying on its business since February 7, 1946 under its corporate name and trading style “Larsen & Toubro”. It also claims to be an industry pioneer in the field of engineering and constructions assignments. The Complainant also claims to have its presence not only in India but also in China, Oman, Saudi Arabia, Australia, and South East Asian Countries.
The Complainant also claims to have customers like Kuwait National Petrochemical Corporation (KNPL), Abu Dhabi National Oil Company (ANCL), Qatar Petroleum (QP), Petroleum Development Oman (PDO), Abu Dhabi Gas Industries Ltd., Emirates National Oil Company, Bahrain National Gas Company, PTT Exploration and Production Public Company, and Saudi Aramco in 30 countries.
The Complainant claims to have been the registered proprietor of the trademark/name LARSEN & TOUBRO, L&T and LT (in a circle device) in several classes in India. It also claims to have registered its mark in China and UAE since its inception in 1946 and is also claimed to be the proprietor of various domain names including <larsentoubro.com>, <larsen-toubro.com>, and <larsenandtoubro.in> amongst others.
The Complainant further claims to have invested enormous amounts of money into its advertising and promotional activities and thus, has acquired national and global reputation and goodwill for its services.
The Complainant also claims that because of the extensive goodwill and reputation in the domain name and trademark LARSEN & TOUBRO in India and abroad, the goods and services bearing its trade mark originate solely and exclusively from the Complainant or its licensees. The mark is also claimed to be the Complainant’s service mark used by the Complainant for the services rendered by it globally. The Complainant’s mark is also claimed to have been held as a well-known mark by courts in India.
(i) Contentions of the Complainant regarding the disputed domain name being identical or confusingly similar to the Trademark or Service Mark of the Complainant:
In order to show that the disputed domain name <larsentoubrolimited.com> is identical and/or confusingly similar to the Complainant’s mark, the Complainant contends that the disputed domain name contains and incorporates the words “Larsen” and “Toubro” in their entirety.
The Complainant further contends that the disputed domain name <larsentoubrolimited.com> has copied entirely and is identical to the Complainant’s website “larsentoubro.com” with the addition of the word “limited”.
The Complainant contends that the only difference between the domain names of the Complainant and Respondent is the word ”limited”, which is descriptive when used in connection with “Larsen” and “Toubro”. The Complainant contends that it is a public limited company and the word “limited” is a part of its full corporate name, i.e., Larsen & Toubro Limited. The Complainant contends that the inclusion of the word “limited” does not distinguish it from the Complainant’s trademark. The Complainant contends that the disputed domain name is confusingly similar or identical to the Complainant’s trademark.
The Complainant further contends that the inclusion of the word “limited” following the mark LARSEN & TOUBRO in no way reduces or diminishes the likelihood of confusion and deception being caused to an Internet user and there is likelihood of an Internet user, who is not certain of, or familiar with, the exact and complete web address of the Complainant, being misled into visiting the Respondent’s domain name <larsentoubrolimited.com>.
The Complainant further contends that an Internet user who carries out a WhoIs Search for the disputed domain name will find that the respective registration is in the name of the Respondent and this could be the source of severe confusion in the mind of any such user and it is quite likely that such confusion would mislead a user into believing that the Respondent is in some way associated or affiliated to the Complainant or that the Respondent is acting with the consent or endorsement of the Complainant. The Complainant contends that it has already registered a number of domain names and it is extremely probable that many such users would believe that another domain name like the disputed domain name genuinely belongs to the Complainant.
The Complainant further contends that the registration of identical domain name by the Respondent is extremely likely to cause confusion and deception amongst the minds of Internet users as to the identity of the Complainant and in the event that the members of the public believe that there is some association or link between the Complainant and the Respondent, the Complainant is likely to suffer a serious loss of reputation and goodwill.
(ii) Contentions regarding Respondent having no rights or legitimate interests in the disputed domain name:
The Complainant contends that the trademark LARSEN & TOUBRO was adopted in the year 1946 and through extensive and continuous use, has become highly distinctive. The Complainant claims to have registered proprietor of the trademark LARSEN & TOUBRO since January 24, 2003. The Complainant also contends that the trademark/trading style LARSEN & TOUBRO is not only inherently distinctive but has also acquired substantial goodwill over the years and is an extremely valuable commercial asset of the Complainant. The Complainant contends that the Respondent is in no way related to the Complainant or its business activities – the Respondent is not an agent of the Complainant, nor does he carry out activities for the Complainant. The Complainant further contends that it has not entered into any agreement granting to the Respondent any right, license or authorization to make use of its registered trademarks. Therefore, the Complainant has not consented to the use of its registered trademarks by the Respondent.
The Complainant also contends that the Respondent could have no possible justification for registering a domain name that incorporates both the well known trademark LARSEN & TOUBRO, as well as the domain name <larsentoubro.com>, of the Complainant. The Complainant contends that the Respondent has registered a domain name identical to the trademark and domain name of the Complainant without the knowledge or consent of the Complainant.
The Complainant has further contended that the date of registration of the disputed domain name <larsentoubrolimited.com> is March 27, 2012, which is subsequent to the dates of adoption of the trademark LARSEN & TOUBRO by the Complainant since 1946 and registration since 2003. The date of registration of the disputed domain name is also subsequent to the date of registration of the Complainant’s domain name <larsentoubro.com> which is September 2, 1997.
Complainant has further contended that there is no evidence of the Respondent’s use of the disputed domain name <larsentoubrolimited.com> in connection with a bona fide offering of goods or services. The website of the Respondent displays a sign saying “under construction” and cannot actually be used to access or avail of any goods or services. There is also no evidence of any instance where the Respondent has made a bona fide offering of goods/services through the disputed domain name <larsentoubrolimited.com> since March 27, 2012 i.e., the date of the registration of the disputed domain name.
The Complainant has also contended that at no point whatsoever has the Respondent been known by the name/mark LARSEN & TOUBRO or the disputed domain name <larsentoubrolimited.com> and that the Respondent is an individual person who was completely unknown to the Complainant until the registration of the disputed domain name <larsentoubrolimited.com>. The date of registration of the disputed domain name is as recent as March 27, 2012 and therefore, the question of the Respondent being commonly known by the name/mark LARSEN & TOUBRO does not arise.
The Complainant has contended that the Respondent is also not making any 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. The Complainant has contended that the Respondent’s use of the disputed domain name <larsentoubrolimited.com> is with the sole intent to make illegitimate commercial gain, to misleadingly divert consumers, and to tarnish the trademark at issue as it is evident from the fact that the Respondent has created an email address “career@larsentoubrolimited.com”, through which emails have been sent asking people to deposit money to attend an interview with the Complainant. Complainant has alleged that there is no doubt that the sole intent of the Respondent behind registering the disputed domain name is to commercially gain by misleadingly diverting internet users and job aspirants to its own webpage and email address and thus, the Respondent’s use of the disputed domain name is illegitimate and is not for noncommercial or fair use.
(iii) Contentions regarding bad faith registration and use of the disputed domain name by Respondent:
The Complainant has claimed to be well-known and popular amongst the Indian populace. It has contended that there is virtually no possibility that the Respondent was unaware of its existence or presence in the market as the Respondent also resides/conducts business in India, which is were the Complainant was originally established and is most prominent.
The Complainant has alleged that the Respondent registered the disputed domain name with the intention to deliberately deceiving and trapping Internet users and job aspirants to visit the incorrect website and deposit money. The Complainant has further alleged that the Respondent has intentionally attempted to attract for commercial gain, Internet users to the Respondent’s website “www.larsentoubrolimited.com” and email address “career@larsentoubrolimited.com” by creating a likelihood of confusion among Internet users that the Respondent is associated with or endorsed by the Complainant. The Complainant alleges that the Respondent intentionally created the disputed domain name and email address solely for the purpose of making illegitimate commercial gain as the contents of the emails that have been sent through the above-referenced email address asking Internet users to deposit money to attend an interview with the Complainant, leave no doubt in this regard. The emails inform the candidates that they have been selected and are offered to join the company. A refundable security deposit of Rs.8,750 has also been sought through the emails.
The Complainant has alleged that both the disputed domain name <larsentoubrolimited.com> and the email address “career@larsentoubrolimited.com” registered in the name of the Respondent are a means not only of confusion but also of fraud and deception, which is causing damage to the reputation, goodwill and business interests of the Complainant.
The Respondent did not reply to the Complainant’s contentions.
The Complainant has furnished evidence of its rights in the trademark LARSEN & TOUBRO through its above-referred trademark registrations and common law rights which have accrued to it through its long and substantial use of the mark not only in India but certain other parts of the world.
The Panel has considered the documents submitted by the Complainant in support of its claim that the Complainant has been using and has various registrations for the trademark LARSEN & TOUBRO, L&T and LT. The Panel observes that the Complainant has spent huge sums of money for advertisement and promotional activities in India and abroad. There does not appear to be any doubt that the Complainant is the owner of trademark LARSEN & TOUBRO.
The Panel has no doubt that the Complainant has rights in the mark LARSEN & TOUBRO and the registration and use of the mark in question by suffixing the descriptive word “limited” to it has been done by the Respondent for creating a likelihood of confusion as to the source, connection, sponsorship, affiliation and endorsement of the Respondent’s website. It is the firm and definite view of the Panel that the addition of the word “limited” in the disputed domain name <larsentoubrolimited.com> would not make any difference at all. The disputed domain name would remain confusingly similar to the Complainant’s mark.
The Panel finds it useful to refer, in this regard, to certain WIPO UDRP decisions. In the case of Samsung Electronics Co. Ltd. v. Albert Daniel Carter, WIPO Case No. D2010-1367, it had been held that – “the addition of generic or descriptive terms to a trademark in a domain name does nothing to distinguish it from the mark”.
Similarly, in the cases of Red Bull GmbH v. Chai Larbthanasub, WIPO Case No. D2003-0709, Samsung Electronics Co. Ltd. v. Jung Hyun Shin Lee, WIPO Case No. DMX2006-0004 and Sutton Group Reality Services, Inc. v. Bill Roder, WIPO Case No. D2005-0126, the above position has been upheld.
The Panel, therefore, concludes that the disputed domain name <larsentoubrolimited.com> registered by the Respondent by suffixing the word “limited” to “larsentoubro” is confusingly similar to the mark and the Complainant has therefore succeeded in establishing the first element of the test in paragraph 4(a) of the Policy.
The Panel has no doubt that the disputed domain name incorporates the well known Complainant’s mark by suffixing descriptive word “limited” to it. The Respondent has chosen not to submit any reply to contradict the case of the Complainant. There is no response and/or documents to prove that Respondent has rights or legitimate interests in the disputed domain name.
The Panel observes that the Complainant has made out a case proving its rights in the trademark LARSEN & TOUBRO. The Complainant enjoys goodwill and reputation for the trademark registered by it in India and in various countries. The Panel is of the view that such an attempt on the part of the Respondent is to create confusion and to cash on/ride over the name, goodwill and reputation of the Complainant. The allegation that there are e-mails inform the candidates that they have been selected and are offered to join the company and further a refundable security deposit has also been sought through the emails, converts this matter in the category of those, which may require the Complainant to ask for investigation by an investigating agency (competent under law to do so) in such emails so that gullible candidates seeking employment are not cheated/duped in the name of the Complainant.
The Panel observes that the Respondent is in no way related to the Complainant or its business activities – the Respondent is not an agent of the Complainant, nor does he carry out activities for the Complainant.
The Panel has further observed that the date of registration of the disputed domain name <larsentoubrolimited.com> is March 27, 2012, which is subsequent to the dates of adoption of the trademark LARSEN & TOUBRO by the Complainant since 1946 and registration since 2003. The date of registration of the disputed domain name is also subsequent to the date of registration of the Complainant’s domain name <larsentoubro.com> which is September 2, 1997. Panel finds merit in the Complainant’s contention that there is no evidence of the Respondent’s use of the disputed domain name <larsentoubrolimited.com> in connection with a bona fide offering of goods or services. The website of the Respondent displays a sign saying “under construction” and cannot actually be used to access or avail of any goods or services. There is also no evidence of any instance where the Respondent has made a bona fide offering of goods/services through the disputed domain name <larsentoubrolimited.com> since March 27, 2012 i.e., the date of the registration of the disputed domain name.
In the facts and circumstances of the present case, the Panel has no difficulty in accepting that the Respondent has nothing to prove its bona fide use of the disputed domain name as it has failed to submit any response to the contentions made by the Complainant. The Respondent has no legitimate interests or rights in the disputed domain name.
The Panel agrees with the Complainant’s contention that there is virtually no possibility that the Respondent was unaware of Complainant’s trademark, its existence or presence in the market as the Respondent also resides/conducts business in India, which is were the Complainant was originally established and is most prominent. In this regard, the attention of the Panel has been drawn to a WIPO decision: Consitex S.A. Lanificio Ermenegildo Zegna & Figli S.p.A. Ermenegildo Zegna Corporation v. Mr. Lian Ming, WIPO Case No. DWS2003-0001 - holding that a Respondent could not ignore the existence of a well-known trademarks at the time of registering a domain name.
Since the Respondent has not submitted any response to the contentions raised by the Complainant in its Complaint, the Panel has accepted the contention of the Complainant that Respondent has registered the disputed domain name with the intention to deliberately deceive and trap Internet users and job aspirants to visit the incorrect website and deposit money and that Respondent has intentionally attempted to attract for commercial gain, Internet users to the Respondent’s website “www.larsentoubrolimited.com” and e-mail address “career@larsentoubrolimited.com” by creating a likelihood of confusion among Internet users that the Respondent is associated with or endorsed by, the Complainant. The Panel agrees further with the Complainant’s allegation that the Respondent intentionally created the disputed domain name and e-mail address for the purpose of making illegitimate commercial gain. The emails informing the candidates about their selection and offering to join the Complainant’s company on depositing a refundable security deposit substantiate the Complainant’s allegations.
The Panel, in these facts, accepts that the Complainant’s trademark LARSEN & TOUBRO is well known not only in India but also in various parts of the world. In this connection, there is a likelihood thatInternet users of the disputed domain name would believe that there is some connection, affiliation or association between the Complainant and the Respondent thereby extracting illegal and undue gains to Respondent and further having the effect of damaging the goodwill, reputation and business interests of the Complainant.
The Panel, therefore, finds that the disputed domain name was registered and is being used in bad faith by the Respondent.
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 <larsentoubrolimited.com> be transferred to the Complainant.
Maninder Singh
Sole Panelist
Date: August 2, 2012