Complainant is ICICI Prudential Life Insurance Corporation Limited of Mumbai, India, represented by Anand & Anand, India.
Respondent is Privacy protect of Shanghai, China / Pavol Icik of Bratislava, Slovakia.
The Disputed Domain Name <iciciprudential.com> is registered with Hebei Guoji Maoyi (Shanghai) LTD aka HEBEI INTERNATIONAL TRADING (SHANGHAI) CO., LTD dba HebeiDomains.com (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 21, 2012. On December 21, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On December 25, 2012, 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 Complainant on December 28, 2012 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on December 31, 2012.
On December 28, 2012, the Center transmitted an email to the parties in both Slovak and English language regarding the language of the proceeding. On December 31, 2012, Complainant confirmed its request that English be the language of the proceeding. Respondent did not comment on the language of the proceeding by the specified due date.
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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on January 7, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was January 27, 2013. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 28, 2013.
The Center appointed Richard W. Page as the sole panelist in this matter on February 4, 2013. 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.
A memorandum of understanding was signed on April 21, 1997 between ICICI Bank Ltd., India’s second largest bank, and Prudential Plc., a leading international financial service group headquartered in the United Kingdom, setting forth the details of a proposed joint venture for forming a life insurance company. Subsequently, Complainant ICICI Prudential Life Insurance Corporation Limited was incorporated pursuant to the joint venture formed between ICICI Bank Ltd. and Prudential Plc. Complainant is one of the leading insurance companies in India and was amongst the first private sector insurance companies to begin operations in December 2000, after receiving approval from the Insurance Regulator Development Authority. Complainant reaches its customers through 992 offices in 889 locations and has 13,000 employees and over 130,000 advisers.
Since its inception, Complainant has used the identifier ICICIPRUDENTIAL (the “ICICIPRUDENTIAL Mark”) as a trademark, service mark and trade name continuously and with exceptional success. Complainant’s annual turnover (total sales) in its last financial year 2011-2012 was INR 14,021.60 crores (INR 140,216,000,000). Complainant’s advertising expenditure for the promotion of its product and brand name in the year 2011-2012 was INR 89.02 crores (INR 890,000,000). Complainant is the market leader in life insurance in India. In addition, Complainant has received numerous awards and much recognition from news channels, media agencies, institutes and committees for its performance in the insurance sector in India.
In addition, Complainant has registrations for the ICICIPRUDENTIAL Mark in India. Complainant and its affiliates do significant advertising and promotion online. Complainant and its affiliates are the owners of the following domain names <iciciprulife.com>, <icicipruamc.com> and <iciciprupensionfund.com>.
Complainant contends that it has statutory and common law rights in the ICICIPRUDENTIAL Mark and that the Disputed Domain Name is confusingly similar to the ICICIPRUDENTIAL Mark. Complainant contends that the entirety of the registered ICICIPRUDENTIAL Mark is included in the Disputed Domain Name.
Complainant further contends that Respondent has no rights or legitimate interests in the Disputed Domain Name. Complainant asserts that Respondent has no license to use the ICICIPRUDENTIAL Mark in the Disputed Domain Name or otherwise.
Complainant asserts that Respondent is enjoying the benefits of pay-per-click revenues generated through sponsored links on its website. Complainant argues that such “parking” of the Disputed Domain Name on a pay-per-click basis does not create a “bona fide offering of goods or services” or “legitimate non-commercial or fair use,” especially given links to websites of Complainant’s competitors. Complainant further argues that there is no plausible explanation for the use of the Disputed Domain Name by Respondent, except to divert traffic from Complainant’s legitimate websites.
Complainant contends that Respondent has registered and used the Disputed Domain Name in bad faith. Among the several reasons proffered by Complainant, it asserts that Respondent is trying to usurp the reputation and goodwill of Complainant’s ICICIPRUDENTIAL Mark for commercial gain.
Respondent did not reply to Complainant’s contentions.
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “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.”
Respondent is not obliged to participate in a domain name dispute proceeding, but if it were to fail to do so, asserted facts that are not unreasonable would be taken as true and Respondent would be subject to the inferences that flow naturally from the information provided by Complainant: Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441. See also Hewlett-Packard Company v. Full System, NAF Claim No. FA 0094637; David G. Cook v. This Domain is For Sale, NAF Claim No. FA0094957 and Gorstew Jamaica and Unique Vacations, Inc. v. Travel Concierge, NAF Claim No. FA0094925.
Even though Respondent has failed to file a Response or to contest Complainant’s assertions, the Panel will review the evidence proffered by Complainant to verify that the essential elements of the claims are met.
Paragraph 4(a) of the Policy directs that Complainant must prove each of the following:
i) that the Disputed Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and,
ii) that 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.
Complainant contends that it has statutory and common law rights in the ICICIPRUDENTIAL Mark and that the Disputed Domain Name is confusingly similar to the ICICIPRUDENTIAL Mark. Complainant contends that the entirety of the registered ICICIPRUDENTIAL Mark is included in the Disputed Domain Name.
Respondent has chosen not to reply to Complainants contentions. Therefore, the Panel finds that the Disputed Domain Name is confusingly similar to the ICICIPRUDENTIAL Mark pursuant to the Policy paragraph 4(a)(i).
Complainant further contends that Respondent has no rights or legitimate interests in the Disputed Domain Name. Complainant reviews the elements of the Policy, paragraphs 4(a)(ii) and 4(c) and alleges that Respondent has not met any of these elements. Paragraph 4(a)(ii) requires Complainant to prove that Respondent has no rights to or legitimate interests in the Disputed Domain Name. Once Complainant establishes a prima facie showing that none of the three circumstances under the Policy, paragraph 4(c) establishing legitimate interests or rights applies, the burden of production on this factor shifts to Respondent to rebut the showing. The burden of proof, however, remains with Complainant to prove each of the three elements of Paragraph 4(a). See Document Technologies, Inc. v. International Electronic Communications, Inc., WIPO Case No. D2000-0270.
Complainant has come forward with a prima facie case and Respondent has chosen not to reply. Therefore, the Panel finds that Respondent has no rights or legitimate interests in the Disputed Domain Name pursuant to the Policy paragraph 4(a)(ii).
Complainant contends that Respondent has registered and used the Disputed Domain Name in bad faith. Among the several reasons proffered by Complainant, it asserts that Respondent is trying to usurp the reputation and goodwill of Complainant’s ICICIPRUDENTIAL Mark for commercial gain.
The panel notes that four non-exclusive grounds exist to support a showing of bad faith in the Policy, paragraphs 4(b)(i)-(iv). The Policy, paragraph 4(b)(iv):
“(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product.”
Respondent has chosen not to reply. Therefore, the Panel finds that the elements of the Policy, paragraph 4(b)(iv) are met and that the Complainant has satisfied the Policy, paragraph 4(a)(iii) of bad faith registration and use.
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 <iciciprudential.com> be transferred to the Complainant
Richard W. Page
Sole Panelist
Date: February 21, 2013