WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Network18 Media and Investments Limited v. Registration Private, Domains By Proxy, LLC / Ravindra Baloda, ZeroneByte

Case No. D2017-1718

1. The Parties

The Complainant is Network18 Media and Investments Limited of Mumbai, India, represented by Krishnamurthy & Co. (K Law), India.

The Respondent is Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States of America ("USA") / Ravindra Baloda, ZeroneByte of Jaipur, India, self-represented.

2. The Domain Name and Registrar

The disputed domain name <network18.com> is registered with GoDaddy.com, LLC (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 11, 2017. On September 11, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 12, 2017, the Registrar 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 September 14, 2017 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on September 19, 2017. The Respondent submitted an email requesting the Center to provide the Complaint on September 19, 2017.

The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 20, 2017. In accordance with the Rules, paragraph 5, the due date for Response was October 10, 2017. The Response was filed with the Center on October 10, 2017.

The Center appointed Harini Narayanswamy as the sole panelist in this matter on October 18, 2017. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant is a media and entertainment company with interests in allied businesses. The Complainant is the proprietor of several registered trademarks for the device mark NETWORK18 and for the device mark 18. A list of Indian registered trademarks for the said marks, as provided by the Complainant is given here:

The Respondent registered the disputed domain name <network18.com> on November 16, 2008. The disputed domain name resolves to a generic registrar parking page.

5. Parties' Contentions

A. Complainant

The Complainant states it was incorporated in 1996 originally under the name "SGA Finance & Management Services Private Limited". In April 2006, the Complainant states it changed its name to "Network 18 Fincap Private Limited" and was converted to a public limited company in November 2006. The Complainant states its shares were listed in the Indian stock exchanges from February 2007 and its name was again changed to "Network18 Media and Investments Limited" in December 2007.

The Complainant submits that it manages various digital businesses and runs the news portals "news18.com" and "firstpost.com". Its subsidiary company TV18 Home Shopping Network Limited, operates an e-commerce marketplace called "HomeShop18.com". The Complainant states it is a leading publisher of magazines, and publishes magazines such as Overdrive, Better Interiors, and Better Photography. The Complainant's group company Digital18 Media Limited, also publishes Forbes India. The Complainant's subsidiary company, TV18 Broadcast Limited, owns and operates news channels that are broadcast in India. These are CNBC – TV18, CNBC Awaaz, CNBC Bajar, CNBC-TV18 Prime HD, CNN-News 18 and News 18 India. The News18 channel is distributed and broadcast in United Kingdom of Great Britain and Northern Ireland ("UK"), USA, Singapore and other countries. The Complainant states that its subsidiary TV18 Broadcast Limited also has a joint venture with Viacom, Inc. called Viacom 18 Media Private Limited which has a portfolio of popular satellite channels in India such as Colors, Colors HD, Colors Infinity, Rishtey, Comedy Central, Vh1, Nick, Sonic, Nick Jr., Teen Nick etc. Viacom18 Motion Picture, runs the group's film and entertainment business.

The Complainant's subsidiary company, TV18 Broadcast Limited, through a joint venture with A&E Television Networks, LLC, operates the following satellite channels in India: FYI, TV18, History TV18 HD, and History TV18 that are owned by AETN18 Media Private Limited. TV18's subsidiary company Panorama Television Private Limited operates 13 regional news channels, these are: News 18, Kerala, News 18 Assam / North East, News 18 Tamil Nadu, ETV Rajasthan, ETV Bihar / Jharkhand, ETV News Bangla, ETV News Odia, ETV News Kannada, ETV News Gujarati, News 18 Punjab / Haryana / Himachal Pradesh, ETV Urdu, ETV Uttar Pradesh, ETV MP / Chhattisgarh. The Complainant states that its subsidiary company Greycells18 Media Limited also owns and operates an educational channel called "Topper", in India.

The Complainant states that it has used the NETWORK18 mark continuously and extensively since September 9, 2007, and has trademark registrations for the NETWORK18DIGITAL mark and its variants in India. It has filed as evidence, printouts of its trademark registrations and renewals. It has also registered the domain name <network18online.com> in 2007 and has been using it continuously. The Complainant states its mark, comprised of "network" and "18" is unique and distinctive and claims it has acquired goodwill and reputation in India and other territories through extensive use.

The Complainant states the disputed domain name is deceptively and confusingly similar to its mark NETWORK 18. The Complainant asserts that the disputed domain name is merely parked and is not used for a bona fide offering of goods or services. Further, the Respondent is not commonly known by the disputed domain name and it does not reflect the Respondent's corporate name. The Complainant claims that it has no connection with the Respondent who has not been given any authorization to use its mark, and argues that the Respondent has no rights or legitimate interests in the disputed domain name.

The Complainant argues that the Respondent has registered and uses the disputed domain name in bad faith. The Complainant claims its mark is unique, distinctive and well known due to its extensive use, and states that the Respondent ought to have been aware of the mark. The Complainant argues there is willful blindness on the part of the Respondent, who ought to have taken efforts to see that the disputed domain name is not similar to a third -party mark. The Complainant argues that passive holding of the disputed domain name, concealing his identity by using a proxy service and the Respondent's lack of rights, show bad faith. The Complainant requests for transfer of the disputed domain name.

B. Respondent

The Respondent claims rights or legitimate interests in the disputed domain name and states that he is a reputed software developer for reputed clients in the USA, UK, and owns the company Zeronebyte Software. The Respondent states he is not a domain name trader or investor and has not sold any domain name that he has acquired for the last five years. He claims that every domain name he has registered or acquired has been used by him to develop a website or for a product that he has intention to develop. The Respondent states that he has continuously used the disputed domain name in connection with a bona fide preparation of a product for a bona fide offering of goods or services, and its development has commenced prior to acquiring the disputed domain name. The Respondent states that the disputed domain name was registered to assist in the development of a commercial product, called the "Networking Bot Portal". The Respondent has filed screenshots of the "Network18_Bot Platform", and he states it is in a product development stage.

The Respondent states the Networking Bot Portal is a framework for providing both design and runtime functionality to design and build bots that network with various back-end systems including SAP. It is a multi-tenant application with a separate database for each tenant. It uses Microsoft LUIS (Natural Language processing) and Microsoft Text Analytics (TA Engine) to detect intents, entities and sentiments of the conversation between bots and end users. The Respondent states that the purpose for using the term "Network18", is because the application connects 18 bots under a framework, to be used in different industries. The Respondent states that the application is intended to be used in the USA markets and hundreds of hours have been put into its development and has filed screenshots as evidence.

The Respondent states that the number 18 has got emotional value for him. He adds that many vehicles owned by the Respondent's family have the number RJ18. He states that the name of his firm "Zeronebyte Software" has got 18 letters in it, and the number 18 has always brought him luck. The Respondent refutes that the disputed domain name resolves to an inactive page and the Complainant's allegations that the Respondent is not commonly known by the disputed domain name. The Respondent states that it takes a while for developers to prepare, before putting up a live website and adds that he has attached screenshots as evidence of his extensive preparation.

The Respondent states that the Complainant has been probed by Securities Exchange Board of India (SEBI) for violating norms and has provided links to news article published in the Huffington Post and the Business Standard regarding this. The Respondent further alleges that Reliance is in the news for acquiring media company NDTV through a web of shell companies and alleges that the Complainant is known to indulge in twisting facts and making assumptions to get control of assets.

The Respondent states that the Complainant has made false submissions that it has promoted the NETWORK 18 mark extensively. Media house TV18, is a subsidiary of the Complainant, and the NETWORK 18 mark does not show up in any of its advertisements or promotions. Only few people know that the company behind the channels or the magazines is Network 18, the subsidiary companies act independently and are not affiliated with the Complainant to market themselves. The Respondent adds that the name of a company can be different from the products it launches. The Respondent alludes to Google's parent company Alphabet, and argues that many people use Google, yet few know its holding company Alphabet.

The Respondent argues that "Network" is a generic term and the domain name <network.com> can be used only by one entity, therefore, people use variations of generic terms to distinguish themselves. The Respondent argues that the Complainant has claimed rights in the word mark NETWORK18DIGITAL and other marks, but this does not justify its rights in the disputed domain name. He adds that the classes in which the Complainant claims to hold the mark, does not clash with the disputed domain name. The Respondent argues that the Complainant has given evidence of its NETWORK18DIGITAL mark and then shifts in subsequent paragraphs to derive "network" and "18" out of it, then combines these to claim the disputed domain name. The Respondent adds that the word mark NETWORK18DIGITAL is used by the Complainant to create confusion to claim the term "Network18".

The Respondent denies the disputed domain name was registered and used in bad faith by him. The Respondent submits that the Complainant has wrongfully described the reason for his use of privacy services is to conceal his identity. He states that privacy service was used by him to avoid getting spam calls and unsolicited offers. As the disputed domain name was not for sale, he did not want his details in public view. The Respondent argues that if he wanted to benefit from the disputed domain name, he could have put it up for sale or parked it with parking companies to gain from the popularity claimed by the Complainant. The Respondent states that the disputed domain name resolves only to a default web page provided by the registrar, and there is no advertisement for its sale. The Respondent adds that registrars give free pages for domain names under construction, and also provide privacy services to domain name registrants. The Respondent then argues that the case cited by the Complainant to establish the Respondent's bad faith, can be distinguished from the facts of the present case, as the Respondent has not registered a number of trademarked domain names nor attempted to sell domain names for quick money.

The Respondent states NetworkXX or NetworkXXX domain names, numeric and alphanumeric variations are abundantly found and traded just like WebXX and WebXXX domain names, because of their perceived value. The Respondent states that he had conducted a "USPTOV" (sic) search, prior to acquiring the disputed domain name, as the intended market for his enterprise network application is the USA and Canada.

The Respondent states that the Complainant owns another domain name <network18.in>, that was registered on September 26, 2006, but failed to disclose this in the Complaint. The Respondent argues that as the Complainant has not used the said domain name or constructed any website, the Complainant has no use for the term "network18". The Respondent further argues that the mark is not distinctive and the Complainant has not promoted the mark, and is trying to hijack a premium domain cheaply via the UDRP.

The Respondent states that a number of domain names are available for sale online, and states that Huge Domains have put on sale <network180.com> for USD 2,295, alongside <piano18.com>, <charton18.com>, <amor18.com> and many other such variations. He states that domain names are available with the terms "web", "tv" or with the number "18" that are quoted at high value. The Respondent argues that the Complainant could claim rights in some domain names that it does not own, such as <tv18.com> and <web18.com> and that these domain names also have privacy settings. The Respondent refers to articles on premium domain names published by "news18.com" and "firstpost.com", and argues that the Complainant is aware of the value of premium domain names and is attempting to acquire the disputed domain name which is a premium ".com" domain name "cheaply" through this route.

The Respondent argues that mere assertions of bad faith are insufficient without supporting facts. The Respondent states that he holds an engineering degree, runs a reputable company and has big clients. He claims that he has made ample preparations to launch an enterprise network portal and has no prior history of holding trademarked domain names and does not acquire domain names for reselling. The Respondent states that he did not know about the Complainant or of its marks, and his "USPTOV" search found no related marks. The Respondent requests for a finding of Reverse Domain Name Hijacking as he believes the Complainant has not satisfied paragraph 4(a)(i) and parts of paragraph 4(a) of the Policy.

6. Discussion and Findings

Procedural Issue: Supplemental Submission

The Complainant has filed a supplemental submission on October 26, 2017, in reply to the Respondent's Response. Supplemental filings, that are not specifically sought for by a panel, may not be entertained by panels in UDRP cases, unless there are valid reasons to allow the additional submissions. If there are new relevant facts that the respondent has raised, or new issues which the complainant has not addressed, or if the respondent's arguments could not have been reasonably anticipated by the complainant, panels can exercise their discretion to allow additional submissions made by the parties. In other words, panels may be inclined to allow supplemental submissions from the parties to address any unexpected factual assertions, or to bring to light any new facts that are omitted in the initial pleadings.

On reviewing the Complainant's supplemental submission in the present dispute, the Panel finds the Complainant has not addressed or raised any new material facts that are relevant to the issues in the present dispute. The Complainant has merely filed a reply to the Respondent's response. The Panel is therefore of the view that under the circumstances, it is appropriate not to accept the additional pleadings filed by the Complainant, and renders the decision based on the merits of the initial pleadings made by the Parties.

To obtain the remedy of transfer of the disputed domain name, the Policy states that the Complainant has to establish three elements under paragraph 4(a):

(i) The disputed domain name is identical or confusingly similar to a mark in which the Complainant has rights; and

(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) The disputed domain name was registered and is being used in bad faith by the Respondent.

A. Identical or Confusingly Similar

The first element under paragraph 4(a) of the Policy requires the Complainant to prove that the disputed domain name is identical or confusingly similar to a mark in which it has rights.

The Complainant has provided evidence of its registered rights in the NETWORK18 device mark and in the NETWORK18DIGITAL word mark. Trademark registration is considered prima facie evidence of rights in a trademark. The first requirement under paragraph 4(a) of the Policy is deemed to be met when a direct comparison of the trademark and the disputed domain name is made, and it is found identical or confusingly similar. Assessment of identity or confusing similarity involves comparing the alphanumeric domain name and textual components of the relevant trademark. The figurative and stylized elements in a device mark are incapable of representation in domain names and these elements are largely disregarded for purpose of assessing identity and confusing similarity. See section 1.10 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0").

The test is a straightforward comparison, typically a side by side comparison of the disputed domain name and the textual components of the relevant mark. Confusing similarity is generally found where the Complainant's mark is recognizable in the disputed domain name. See section 1.7 of the WIPO Overview 3.0. The first element has been proven by the Complainant, if the disputed domain name incorporates the dominant word or textual element in the Complainant's mark. See Javier Narvaez Segura, Grupo Loading Systems S.L v. Domain Admin, Mrs. Jello, LLC, WIPO Case No. D2016-1199 (<loading.com>). If the disputed domain name is identical to the mark, there is high risk of affiliation. See Blue Apron, LLC v. Whois Guard Protected, Whois Guard Inc. / Jason Blackmom, WIPO Case No. D2017-1000 (<blueapron.reviews>).

The Panel finds the alphanumeric and the textual components of the Complainant's NETWORK18 device mark are easily identified in the disputed domain name. Accordingly, the Panel finds that the disputed domain name is identical to a mark in which the Complainant has rights. The Complainant has successfully established the first requirement under paragraph 4(a) the Policy.

B. Rights or Legitimate Interests

The second element under paragraph 4(a) of the Policy requires the Complainant to make a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Policy under paragraph 4(c), provides circumstances by which a respondent may demonstrate rights or legitimate interests in the disputed domain name, these are:

(i) Before any notice of the dispute, 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) Being commonly known by the domain name, as an individual, business, or other organization, even if no trademark or service mark rights are acquired; or

(iii) Making legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or tarnish the trademark or service mark at issue.

The Respondent has argued that he has continuously used the disputed domain name in connection with a bona fide preparation for developing a product for a bona fide offering of goods or services. He claims the product development had commenced prior to acquiring the disputed domain name.

The Panel notes from the Respondent's submissions that he is allegedly developing a product, and that he intends to offer the product in the future, using the term "Network18". In other words, the Respondent has clearly admitted that he has not yet developed the product, although he has held the disputed domain name for about nine years, the said product and its related website have yet to be developed and launched by the Respondent. The evidence submitted by the Respondent, are some screenshots to show the product is being developed. In the Panel's view, the screenshots provided as evidence by the Respondent appear to be disingenuous, and certainly do not reflect his claims of hundreds of hours put in by the Respondent. In the Panel's view, the Respondent appears to be making exaggerated claims in an attempt to justify the registration of the disputed domain name.

The Panel also notes the Respondent has stated that his motivation for using the number "18" with term "network" in the disputed domain name, is because he intends to use 18 bots in the Networking Bot Portal, due to his emotional attachment to the number 18. The Respondent's mere intentions to use a disputed domain name in future (as against actual use) when the disputed domain name is obviously similar with another's trademark, coupled with the Respondent's implausible explanations to justify the registration of a disputed domain name, does not demonstrate rights or legitimate interests. See Educational Testing Services v. Eunho Hwang, WIPO Case No. D2017-0993 (<toeflcenter.com>) (where the respondent said he intended to use the disputed domain name for a free learning center known as "Technology of Evolution Free Learning". The disputed domain name in that case had been held by the respondent for over 15 years, and it was found that the respondent's claims of starting a free learning center was unsupported by credible evidence. The panel found the acronym for TOEFL given by the respondent, was a made-up term to justify the registration of the domain name, because it corresponded to the complainant's trademark TOEFL).

The Respondent in the present case has essentially argued that he intends to adopt a mark for an alleged product that he intends to develop, when it is well established that the mark is already being used by the Complainant for a number of years. Mere intentions of future use of a disputed domain name in connection with a proposed project or an incomplete project is generally not considered a basis for finding rights or legitimate interests in a disputed domain name.

Bald explanations given by a respondent without sufficient credible evidence, is viewed as a pretext to justify registration of a domain name bearing the trademark of another, and such an adoption of an existing mark is not considered legitimate. See Audi AG v. Mohamed Mann, WIPO Case No. D2015-0756 (<audi.press>). If the respondent fails to disclose specifics, and does not offer a reasonable or plausible explanation for use of a term that is a trademark, it is found to be indicative of lacking of good faith and honest use of the trademark in the disputed domain name.See MadonnaCiccone, p/k/a Madonna v. Dan Parisi and "Madonna.com", WIPO Case No. D2000-0847 (<madonna.com>).

Merely stating that the respondent has an intention of using the disputed domain name for an intended project without any credible evidence to support the contentions does not show the respondent has made demonstrable preparations to use of the disputed domain name in connection a bona fide offering of goods or services. See for instance, Autodesk v Brian Byme, LLC, WIPO Case No. D2017-0191. (The respondent argued that he was planning on providing services. The panel did not accept the respondent's arguments as there was no reference to the respondent's services, it was held that it did not constitute credible evidence of demonstrable preparations to use the disputed domain name).

The Respondent in the present case has not provided convincing or credible evidence that he or his organization has used the disputed domain name in connection with demonstrable preparations to use the disputed domain name or reference to the term "Network 18". The Respondent's explanation of his ongoing development of an enterprise network application and his emotional attachment to the number 18, in the Panel's view does not help the Respondent to show any rights in his favor as he has not put forward credible evidence to support his claims. The use of the number 18 being a lucky number for the Respondent and his ostensible preparations to use the disputed domain name appears to be a lame justification and the Panel does not find the explanation convincing in the absence of evidence.

The words "bona fide offering" in paragraph 4(c)(i), refers to clear cut cases, where a respondent has adopted the name in connection with a business in good faith. The evidence and facts before the Panel, precludes a finding favoring the Respondent's demonstrable preparations in connection with a"bona fide" offering as understood in paragraph 4(c)(i) of the Policy. There is no convincing evidence filed by the Respondent that shows the Respondent's project is known by the disputed domain name or that third parties have come to associate the term "Network 18" with the Respondent's project. The evidence submitted by the Respondent, in the Panel's view, appears to be a mere justification for registration of the disputed domain name that uses a third party's trademark.

The Panel finds, in the light of all that has been discussed, the Respondent is not commonly known by the disputed domain name and the disputed domain name does not reflect the Respondent's corporate name. The Respondent is not affiliated with the Complainant and has not been authorized by the Complainant to use its mark. The Respondent has not submitted convincing evidence that he has made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services.

The Panel finds the Complainant has fulfilled the second element under paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

The third element under paragraph 4(a) requires the Complainant to establish that the disputed domain name was registered and is being used in bad faith by the Respondent.

The Panel notes that the Respondent has argued that there is no evidence of his offering the dispute domain name for sale or parking it on sites for making any monetary gain from it. The Panel also notes that the Respondent has highlighted the monetary value of other domain names and in particular domain names containing "network" and "18". The question is whether the Respondent's registration of the disputed domain name and its passive holding amounts to registration and use of the disputed domain name for the purposes of the Policy. Based on the material on record and the circumstances discussed, the Panel has hesitation regarding the alleged good faith motivations on the part of the Respondent.

Passive holding of a domain name that is identical or confusingly similar to trademark of another, under certain circumstances, has been widely accepted as abusive registration and use, see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The Respondent's passive holding and lack of convincing evidence and making self serving claims does not help the Respondent's case. See for instance Autodesk, Inc. v. Brian Byrne, meshIP, LLC, WIPO Case No. D2017-0191, citing Telstra Corporation Limited v. Nuclear Marshmallows, supra, "the relevant issue is not whether the Respondent is taking a positive action in bad faith in relation to the domain name, but instead whether, in all the circumstances of the case, it can be said that the Respondent is acting in bad faith."

The Respondent has argued that the Complainant has no use for the term "network18", as no website has been constructed by the Complainant on its domain name <network18.in>, that it has held since 2006. Such an argument would, under the circumstances, more appropriately apply to the Respondent's case, as the disputed domain name has been held by him with no website constructed for over nine years. The Panel finds, on the balance, the passive holding of the disputed domain name by the Respondent, and the Respondent's alleged professed intentions of good faith use of the disputed domain name is not backed by credible evidence. The Panel finds, in the light of all that has been discussed, that the disputed domain name which reflects the Complainant's trademark, has been held passively by the Respondent, which is recognized as bad faith registration and use of the disputed domain name under the Policy.

The Panel finds that the Complainant has established the third element under paragraph 4(a) of the Policy.

Reverse Domain Name Hijacking

The Respondent has made a plea of Reverse Domain Name Hijacking ("RDNH"), on grounds of the Complainant not having allegedly established requirements under the Policy. Under paragraph 15(a) of the rules, if the panel finds the complaint has been brought in bad faith, for instance in an attempt at RDNH or brought primarily to harass the domain name holder, it would amount to the complaint being brought in bad faith and in abuse of the administrative proceedings.

The Panel finds that the Complainant has based its cause of action and the Complaint on its rights in the trademark. The Complainant at the time of filing the Complaint was not aware of the identity of the Respondent, and initiated its cause of action against the registrant of the disputed domain name reflecting its mark and on grounds that the disputed domain name was being passively held by the Respondent. These facts, persuade the Panel that the Complaint was not brought in bad faith by the Complainant against the Respondent. Therefore, no case of Reserve Domain Name Hijacking has been established here.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <network18.com> be transferred to the Complainant.

Harini Narayanswamy
Sole Panelist
Date: November 5, 2017