The Complainant is Asianet Satellite Communications Limited of Thiruvananthapuram, India, represented by DePenning & DePenning, India.
The Respondent is Future Media Architects, Inc. of Road Town, British Virgin Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland.
The disputed domain name <asianet.net> is registered with Uniregistrar Corp (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 9, 2018. On August 9, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 9, 2018, 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.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 14, 2018. In accordance with the Rules, paragraph 5, the due date for Response was September 3, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 4, 2018.
The Center appointed Adam Taylor as the sole panelist in this matter on September 12, 2018. 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, which trades under the name “Asianet”, describes itself as a supplier of “digital cable TV, broadband Internet services, cable cast channels, events & teleshopping” in the Malayalam language in Kerala, India. The Complainant first launched its services in 1992. It now has some 170,000 subscribers.
The Complainant owns a number of Indian trade marks including No. 1017594 for the word ASIANET, filed June 18, 2001, registered April 6, 2005, in class 16.
The disputed domain name was registered on October 12, 1994.
The disputed domain name currently resolves to a webpage inviting enquiries to obtain a price quote to buy the disputed domain name.
A summary of the Complainant’s contentions is as follows:
The Complainant is one of the most well-known Indian entertainment channels broadcasting in the Malayalam language.
The Complainant’s trade mark ASIANET was coined by the Complainant’s founder and is well known worldwide. The Complainant’s television channels have reached the homes of Indians in over 60 countries including the United States. The Complainant plans to expand its current business to 250 channels.
By virtue of its longstanding and uninterrupted use of the term “Asianet”, the Complainant has acquired common law rights in this name, which is uniquely related to the business of the Complainant. Its turnover ranged from some INR 150 crores in 2006/2007 to some INR 446 crores in 2016/2017.
The Complainant owns many domain names which include the term “asianet”.
The disputed domain name is identical to the Complainant’s trade mark.
The Respondent lacks rights or legitimate interests in respect of the disputed domain name.
The Complainant has not authorised the Respondent to use its trade mark.
The Respondent has not made any legitimate offering of goods or services via the disputed domain name.
There could be no plausible explanation for the disputed domain name other than to misappropriate the reputation of the Complainant’s trade mark, which is a coined term. This demonstrates that the Respondent lacks rights or legitimate interests.
The disputed domain name was registered and is being used in bad faith. The Respondent had constructive notice of the Complainant’s trade mark by virtue of the Complainant’s widespread reputation.
Previous UDRP cases have established that a respondent should have known of a complainant’s trade mark if it is a coined word or in widespread use on the Internet and that such knowledge is an indicator of bad faith registration, that passive holding can amount to use in bad faith and that use of a domain name by someone unconnected with a complainant is suggestive of opportunistic bad faith.
The Respondent’s lack of a legitimate offering of goods or services indicates that the Respondent’s purpose is to usurp the Complainant’s reputation and goodwill. Domain names are important corporate assets and it is critical that third parties are not allowed to unfairly benefit from misuse thereof.
The Respondent did not reply to the Complainant’s contentions.
The Complainant has established rights in the mark ASIANET by virtue of its Indian registered trade marks.
The Complainant has also supplied evidence which satisfies the Panel that, in relation to the Complainant’s activities in Kerala, India, the mark has become a distinctive identifier which consumers associate with the Complainant’s services and that the Complainant has thus also established common law trade mark rights in the term. Section 1.1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) makes clear that the fact that secondary meaning may only exist in a particular geographical area or market niche does not preclude a complainant from establishing trade mark rights (and as a result, standing) under the UDRP.
The Panel would add that the strength of the Complainant’s mark is a relevant factor in evaluating the other elements under the Policy. See section 1.3 of the WIPO Overview 3.0.
For the above reasons, the Panel concludes that the disputed domain name is identical to the Complainant’s trade mark.
The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy.
It is unnecessary to consider this element in light of the Panel’s conclusion in section 6C below.
While a UDRP panel may draw appropriate inferences from a respondent’s default, the lack of a response from a respondent is not necessarily an admission that the complainant’s claims are true. See section 4.3 of the WIPO Overview 3.0. In cases involving wholly unsupported and conclusory allegations advanced by a complainant, or where a good faith defence is apparent (e.g., from the content of the website to which a disputed domain name resolves), UDRP panels may find that – despite a respondent’s default – a complainant has failed to prove its case.
Here, in accordance with the above principles, the Panel considers that the Complainant has failed to prove its case in relation to bad faith despite the Respondent’s default.
First, the Complainant makes a number of conclusory allegations about the alleged extent of its reputation and the consequent likelihood that the Respondent set out to “usurp” the Complainant’s rights. But it makes no comment about the fact that the registration date of the disputed domain name is October 12, 1994, whereas the Complainant had only launched its business some two years earlier in 1992. The Complainant does not suggest that the Respondent may have only acquired the disputed domain name more recently and so it is presumably proceeding on the basis (less favourable to it) that the Respondent was the first registrant of the disputed domain name. Yet the Complainant has provided no evidence of any activity or reputation preceding the registration date of the disputed domain name on October 12, 1994, other than what appear to be some photographs of an inauguration event for the “Asianet Mayalayam Channel” on August 30, 1993.
Even if the Respondent had acquired the disputed domain name more recently, the Complainant is still in difficulty because the Respondent is not located in India and there is no evidence showing that the Complainant, whose services are focussed on the Malayalam language, has at any time acquired a significant reputation outside India such that it was reasonably likely to have come to the attention of the Respondent; the only documents produced by the Complainant which relate to activities outside India consist of correspondence with a single customer in Qatar. For example, the Complainant has not provided any evidence of turnover or of website/subscription/television-viewing statistics outside India.
The Complainant makes further conclusory allegations regarding the lack of a legitimate offering of goods or services on the part of the Respondent and about there being no plausible non-infringing explanation for registration of the disputed domain name but the Complainant fails to mention the actual use of the disputed domain name to resolve to a sale page, which the Complainant simply exhibits without comment. Although one does not know how long after the acquisition date this webpage was first uploaded, it at least raises the possibility that the Respondent acquired the disputed domain name for sale to the world at large. Or does the Complainant consider that the Respondent acquired the disputed domain name specifically for sale to the Complainant? If so, it behoved the Complainant to say so and explain why exactly.
The Complainant might also have considered it appropriate to exhibit and discuss historical records of the website at the disputed domain name from the Internet Archive at <archive.org>.
In any case, the Panel notes that no evidence has been placed before it which indicates that the disputed domain name has ever been used to target Malayalam speakers or otherwise in a manner which is relevant to the Complainant’s business.
The Panel would add that the term “Asianet” is not so inherently distinctive that it would preclude other businesses or organisations from using this name in diverse ways.
For the above reasons, the Complainant has failed to satisfy the Panel that the Respondent was likely to have been aware of the Complainant on acquisition of the disputed domain name.
The Complainant raises the issue of “passive holding”. Arguably this doctrine is inapplicable because the disputed domain name has been used for a sale page, as explained above. In any case, the factors which typically arise in a case of passive holding are entirely absent here. See section 3.3 of the WIPO Overview 3.0. There is also a lack of any other indicia generally suggesting that the Respondent set out to target the Complainant. See section 3.2.1 (first paragraph) of the WIPO Overview 3.0.
Accordingly, and notwithstanding the default of the Respondent, the Complainant has not satisfied the Panel that the Respondent registered and/or used the disputed domain name in bad faith and the Panel finds that the Complainant has failed to establish the third element of paragraph 4(a) of the Policy.
For the foregoing reasons, the Complaint is denied.
Adam Taylor
Sole Panelist
Date: September 24, 2018