The Complainants are The Indian Express Online Media Private Ltd. and The Indian Express Limited, both of New Delhi, India, with internal representation, New Delhi, India.
The Respondent is Mr. Sanjeev Saluja, Klongtoey, Bangkok, Thailand.
The disputed domain name <indianexpress.mobi> is registered with GoDaddy.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 17, 2009. On March 18, 2009, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On March 19, 2009, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on March 26, 2009. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 26, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was April 15, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 16, 2009.
The Center appointed Francine Tan as the sole panelist in this matter on April 29, 2009. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
The Indian Express Online Media Private Ltd. (“Complainant No. 1”) and The Indian Express Limited (“Complainant No. 2”) belong to one of India's premier media and publishing groups, the “Indian Express Group” (“the Group”), and are publishers of several newspapers and magazines in English and other regional languages.
With effect from January 5, 2009 following a de-merger from the Indian Express Newspapers (Mumbai) Limited (“IENM”, another entity within the Indian Express Group), Complainant No. 1 became the owner of the print media business of the Group as well as the owner of all intellectual property formerly in the name of IENM. The English language daily newspaper “The Indian Express” has been published since 1932. It is published from more than 11 centers, including North America, and there is also an online edition. “The Indian Express” enjoys immense prestige and goodwill among its readers which include those in India and abroad.
Complainant No. 1 has registered rights in the trade mark INDIAN EXPRESS in respect of newspapers, journals, magazines, books and other literary works. The said trade mark was registered on June 23, 1994 in Class 16. THE INDIAN EXPRESS was also registered as a trade mark on June 21, 2006 in Classes 35 and 41. Additionally, Complainant No. 1 registered the words “INDIAN EXPRESS GROUP” in combination with a “Flame of Hope” logo as an artistic work on March 13, 1997 with the Copyrights Office of India which is valid for 60 years from the death of the author. The Complainants consider this registered logo to be an established and well-known corporate and group brand. THE INDIAN EXPRESS was also registered as an artistic work on May 6, 2008 with the Copyrights Office.
Both complainants are owners of many domain names incorporating the words “Indian Express”, including <indian-express.co.in>, <indian-express.in>, <indianexpress.in>, <indianexpress.co.in>, <theindianexpress.com>, and <indianexpress.com>.
Complainant No. 2 manages the electronic publication of the newspapers and the websites of the group, available at “www.indianexpress.com” and “www.expressindia.com”. It also owns a few of the Group's domain names containing the words “Indian Express”.
Both Complainants therefore claim a common interest in the disputed domain name <indianexpress.mobi>. Significant amounts have been spent in promoting and advertising their newspapers and publications, especially The Indian Express. Various social, cultural and entertainment events have been organized, as well as research and educational programs.
In February 2009 the Complainants discovered that the Respondent had, without their consent, registered and had been using the disputed domain name. The Complainant sent a cease and desist letter on February 25, 2009 to the Respondent, relying on the contact details reflected in the WHOIS data. No reply was received. Nevertheless, the Complainants' representative in these proceedings received a phone call on March 3, 2009 from the Respondent. The Complainants allege, inter alia, that the Respondent acknowledged receipt of the notice and offered to remove the Complainants' trade marks and other objectionable material from the website hosted under the disputed domain name. The Respondent was allegedly not willing to transfer the disputed domain name unless the Complainants were prepared to pay for it. Upon being informed that this indicated his bad faith in registering the domain name, the Respondent allegedly informed the Complainants' representative that he would immediately put up the disputed domain name for auction and sell it to a third party.
Within hours of the phone call, the Complainants discovered that the website contents had been removed and Internet users were redirected to another website “http://indianexpress-mobi.ning.com” which purported to be a news website. The said website provided sponsored links to various news websites including the Complainants' website, “www.indianexpress.com”. Further, it displayed extracts of the Complainants' news content. The Complainants sent a notice on March 4, 2009 to the Registrar, GoDaddy.com, Inc., to notify it of their intention to file a complaint under the Policy and to advise them to maintain the status quo as regards the registration of the disputed domain name pending the proceedings and to refrain from transferring the disputed domain name. The Respondent was copied in the correspondence to the Registrar. The Complainants noted that quite soon thereafter, all traces of objectionable content had been removed from the Respondent's website at “www.indianexpress.mobi” and the website appeared to be inaccessible to the general public.
The Respondent replied on March 5, 2009 by email in which he stated, inter alia, that the Complainants' representative had misrepresented the facts in his letter to the Registrar and he accordingly denied the statements made therein. In particular, the Respondent denied having asking for money (he claimed he was only seeking to understand the process of what the Complainants were demanding); denied saying he was going to sell the website or the disputed domain name; confirmed that he immediately removed “all connections to [the Complainants'] website via marks, links and RSS feeds prior to the phone conversation as demanded”; and contended that his website “has always carried a disclaimer” to the effect “that <indianexpress.mobi> does not have any connections to The Indian Express (India) website(s) that are acknowledged by [the Complainants/their representative]”. The Respondent also claimed that it was difficult to communicate with the Complainants' representative as he was apparently disrespectful and abusive in his tone and the conversation was essentially a one-way dialogue. The letter ends with the following paragraphs:
“I honestly don't understand why I was mistreated by you when I was merely hoping for a conversation about what the first letter was about and I am still confused as to what your intentions are at this point. I have done all that was demanded from me; to removed [sic.] all the connections to your company's website from my website. I have done what you requested and now it seems you are claiming something more. It seems to me as an act of bullying for no reason, and I will not stand for this.
I hope this response clarifies my position with respect to you[sic.] accusations and outrageous demands...”
The Panel notes from the Complainants' Annexure M consisting of a printout of the Respondent's website as at March 3, 2009 that there is indeed a disclaimer which reads as follows:
“IndianExpress.mobi is not and has no affiliation with IndianExpress.com. IndianExpress.mobi encourages readers to find in-depth articles and complete stories displayed herein at IndianExpress.com or ExpressIndia.com. This site is only for reference and designed to provide the latest and updated stories for mobiles, PDA's and handheld devices. All logo(s) referenced herein belong to their respective companies. IndianExpress.mobi does not claim any rights of the content displayed. All content herein are copyrighted to Indian Express Newspapers (Mumbai) Ltd. ”.
The Panel also notes that the aforesaid disclaimer ends with the following statement:
“This domain name is for sale. Please send your offers via email to the above address.”
The Complaint is based on the following:
(1) The domain name is identical and/or confusingly similar to a trade mark(s) in which the Complainant has rights.
Reference was made to the relevant trademark registrations consisting of the words “INDIAN EXPRESS”/ “THE INDIAN EXPRESS”. The Respondent has registered and is using the disputed domain name which incorporates the identical words INDIAN EXPRESS which is a trade mark in which the Complainants have rights.
(2) The Respondent has no rights or legitimate interests in respect of the disputed domain name on the following grounds:
(a) In order to take advantage of the Sunrise Period Registration offered for the “.mobi” TLD, a registrant was required to be the holder of a valid trade mark, which was not the case here.
(b) The Respondent registered the disputed domain name long after Complainants' trade mark had become famous.
(c) There is no evidence of the Respondent (as an individual, business, or other organization) being commonly known by the name “Indian Express”.
(d) The Respondent has made no bona fide offering of goods or services on the website which is in any way connected with the disputed domain name or otherwise. Bearing in mind that the “.mobi” domain is meant for use on the mobile web, the Respondent has made no bona fide offering of services to mobile users except by riding, in bad faith, on the Complainants' goodwill.
(e) There is no evidence of any legitimate non-commercial or fair use of the disputed domain name, without intent for commercial gain or to misleadingly divert users or to tarnish the trademark or at issue.
(3) The domain name was registered and is being used in bad faith, as evidenced by the following:
(a) The Respondent's initial use of the disputed domain name misdirected internet/mobile internet users seeking the Complainants' website, their newspaper or other related content on the mobile web, to the Respondent's website and was intended to and actually did confuse and mislead the readers and viewers into thinking that they had reached the mobile version of the website/e-paper of The Indian Express, i.e., an interface that provides mobile users mobile-friendly content as well as access to the Indian Express websites and its contents.
(b) The Respondent has not only, without the Complainants' consent, used the latter's widely-known registered trade mark in his domain name but also displayed the Complainants' trade marks (the “Flame of Hope” logo and the words “Indian Express”) on his website.
(c) The Respondent's activity diverted Internet users trying to access the Complainants' official mobile version of the websites/e-paper, leading to loss and/or disruption of business to the Complainants in respect of the mobile web.
(d) There is clear evidence that the Respondent had actual prior knowledge of the Complainants' brand and trade marks. The Respondent's posting of the disclaimer on his website is not legally effective because it appears at the end of the page far below the Complainants' trade mark and the boxes where advertisements and the RSS feeds are displayed. Moreover, Internet users' initial interest has already been attracted by the incorporation of the INDIAN EXPRESS trade mark in the disputed domain name, and the Internet user is misdirected long before he/she has the opportunity to see the disclaimer, more so since most of the users are viewing the content on their mobile devices. The disclaimer comes too late to address the fact that mischief has been caused by the misuse of Complainants' trade mark. On the other hand, the disclaimer indicates the Respondent was aware that he has no legitimate rights to the Complainants' registered trade marks.
(e) There is clear evidence that the Respondent was aware of the Complainants' trade marks at the time of registration of the disputed domain name. Firstly, the Complainants' “Flame of Hope” logo is displayed prominently on the top of the webpage, leading Internet users to presume they have already reached a website with which the Complainants' trade mark or brand is associated. Secondly, the disclaimer at the end of the web page clearly shows the Respondent's knowledge of all the major websites that run the Complainants' e-papers.
(f) The Respondent registered the disputed domain name not with the intention to conduct fair use, but to park the domain name and commercially exploit it, inter alia, by selling, renting, or otherwise transferring the domain name registration to the Complainants who are the owners of the trade mark or to a competitor, for commercial gain. The fact that the Respondent has offered the disputed domain name on the Internet for sale is evidence of bad faith use. In putting the disputed domain name up for sale, the Respondent knew that the Complainants, as legitimate owners of the trademark, would have been the most likely purchasers.
(g) The Respondent's subsequent act of repeatedly changing the contents of his website after being put on notice by the Complainants, not once but three times, with the intention to remove traces of bad faith use, does not negate bad faith use as all the while he persisted in holding on to the disputed domain name in order that he may, at a later point in time, restart trading on the Complainants' goodwill or sell the disputed domain name for commercial gain.
(h) The Respondent's second attempt to change the content of the website resulted in the website providing Internet users with a number of sponsored links to various news web sites including that of the Complainants' at “www.indianexpress.com”. It displayed extracts of the Complainants' news content and thus traded on the Complainants' goodwill.
(i) By using the disputed domain name thus, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of his web site.
(j) The Respondent's third attempt to change the content of the website by blocking the contents of the website indicates that the Respondent not only had no intention of making a bona fide offering of goods or services but also his intention to either trade on the Complainants' goodwill at a later point in time or to block the domain name so as to prevent the Complainants from reflecting the INDIAN EXPRESS mark in a corresponding domain name.
The Respondent did not file a Response in this case.
Paragraph 4(a) of the Policy sets forth three elements that the Complainants would have to establish in order to obtain the relief they seek, namely in securing a transfer of the disputed domain name:
(i) the disputed domain name is identical or confusingly similar to a trade mark or services mark in which the Complainants have rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The Complainants have established that they have trade mark rights in the words “INDIAN EXPRESS”/ “THE INDIAN EXPRESS”. The domain name in this case <indianexpress.mobi> incorporates in its entirety the said “INDIAN EXPRESS” trade mark and is for the purposes of these UDRP proceedings essentially identical to the Complainants' trade mark. It is well established in many cases under the UDRP that the suffix “.com” is of no significance.
The Panel therefore finds that the first condition under Paragraph 4(a) of the Policy has been satisfied.
Paragraph 4(c) of the Policy sets out three circumstances (without limitation) which, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate the Respondent's rights or legitimate interests to the disputed domain name. The onus is on the Complainants to establish a prima facie case, after which the Respondent may refute the Complainants' claim by submitting evidence of his rights or legitimate interests in the disputed domain name.
In this case, the following facts have been established by the Complainants:
(a) The Complainants have not authorized the Respondent to use the trade mark THE INDIAN EXPRESS/INDIAN EXPRESS nor to include that mark in any domain name and there is no evidence that the Respondent has acquired rights in these marks.
(b) There is no evidence that the Respondent's use of the disputed domain name (prior to notice of the dispute) was in connection with a bona fide offering of goods and services.
(c) There is no evidence that the Respondent has been commonly known by the domain name concerned.
(d) There is no evidence that the Respondent has been making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark at issue. There is no doubt in this case that the Respondent knew of the Complainants' trade marks when he registered the disputed domain name. The Panel finds that this is a case of misappropriation of the Complainants' trade mark.
The Respondent has not asserted any rights or legitimate interests in the disputed domain name and accordingly, in the absence of any evidence to the contrary, the facts presented are such that the Panel cannot but conclude that the Respondent has no rights or legitimate interests in the domain name. The Respondent's website is misleading and Internet users would be led to believe that the website is the Complainants' or endorsed by them.
The Panel therefore finds that the first condition under Paragraph 4(b) of the Policy has been satisfied.
Paragraph 4(b) of the Policy sets out, four circumstances, each of which, if proven, shall be evidence of the registration and use of the domain name in bad faith for the purpose of paragraph 4(a)(iii) of the Policy:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the registrant's documented out-of-pocket costs directly related to the domain name; or
(ii) the registrant has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the registrant has engaged in a pattern of such conduct; or
(iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant's website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the registrant's website or location or of a product or service on the registrant's website or location.
The Panel finds that the Respondent has registered and used the disputed domain name in bad faith under paragraph 4(b)(iv) of the Policy, as the evidence shows that the Respondent registered the disputed domain name and used it to attract Internet users to the Respondent's website for commercial gain, by creating a likelihood of confusion with the Complainants' trade mark. The Respondent was clearly aware of the Complainants, their trade marks and reputation in the area of news publication services. As has been established in previous panel decisions, incorporating a widely-known trade mark into a domain name is clear indication of bad faith. Even the passive holding of a domain name by a respondent to prevent the complainant from exploiting it in accordance with his trademark rights also constitutes bad faith. (See Kabushiki Kaisha Hitachi Seisakusho v. APT Co., WIPO Case No. DIR2008-0004; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.)
Whilst the Respondent did, in his email of March 5, 2009, deny that he was intending to sell the domain name or that he was asking for money, the fact remains that the offer for sale was posted in the disclaimer portion of his website. This is evidence of bad faith use. The Panel finds that the following passage drawn from the case of Prestige Brands Holdings, Inc., and Prestige Brands International, Inc. v. The domain is not for sale/ Motohisa Ohnoi, WIPO Case No. D2006-0608 is a relevant consideration in the Panel's finding of bad faith registration in this case:
“If, on the other hand, the Respondent knew of the Complainants' brand at time of registration of the Domain Name, there can be no question but that the registration is abusive within the meaning of Paragraphs 4(b)(i) and (iv) of the Policy. In putting the Domain Name up for sale, the Respondent will have known that the Complainants would have been the most likely purchasers. Moreover, the Respondent will have appreciated that in using the Domain Name as he has, Internet users visiting his site will be likely to be people hoping to reach a site associated with the Complainants' …brand of products.”
As to the effect of the disclaimer notice posted by the Respondent on his website, the Panel finds that it is ineffectual in disproving bad faith use and registration in this case where circumstances showing bad faith have been established. It also does not support a claim that there is no intention on the Respondent's part to divert consumers because by the time consumers get to read the disclaimers (assuming they do read the fine print), the Respondent's domain name would have already served to divert them from legitimate sites authorized by the Complainants. Disclaimers therefore do not serve to address the mischief caused by the initial and illegitimate diversion. (See Arthur Guiness Son & Co. (Dublin) Limited v. Dejan Macesic, WIPO Case No. D2000-1698; Estee Lauder Inc. v. estelauder.com, estelauders.net and Jeff Hanna, WIPO Case No. D2000-0869; Dell Inc. v. Biosunlockers, WIPO Case No. D2008-0879). In any event, the Panel is inclined to agree with the Complainants that the disclaimer indicates that the Respondent was well aware of the fact that he had no legitimate rights to the INDIAN EXPRESS trade mark and the disputed domain name.
The Panel therefore finds that the third condition under Paragraph 4(b) of the Policy has been satisfied.
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <indianexpress.mobi> be transferred to the Complainants.
Francine Tan
Sole Panelist
Dated: May 8, 2009