The Complainant is Reliance Industries Limited of Mumbai, India, represented by Anand & Anand, India.
The Respondent is App X of Beijing, China.
The disputed domain names <jio.chat> and <jio.buzz> (the “Disputed Domain Names”) are registered with GoDaddy.com, LLC. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 26, 2015. On September 28, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On September 28, 2015, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is the registrant of the Disputed Domain Names and the Respondent’s contact information.
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 proceeding commenced on October 2, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was October 22, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 23, 2015.
The Center appointed Tee Jim Tan S.C. as the sole panelist in this matter on November 3, 2015. 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 in this administrative proceeding is Reliance Industries Limited, a company incorporated in India, with its principal place of business in Mumbai, India, and business in other parts of India and several other countries. The Complainant is India’s largest private sector enterprise, with businesses spanning various industries, including oil and gas exploration and production, petroleum refining and marketing, petrochemicals, retail and telecommunications. In the Complainant’s group of companies are Reliance Jio Infocomm Limited, its telecommunications arm, and Reliance Jio Messaging Services Private Limited, which offers chat and messaging services to customers globally. Others include Reliance Jio Intratel Private Limited and Reliance Jio Media Private Limited.
In April 2015, Reliance Jio Messaging Services Private Limited launched a mobile instant messaging application by the name of “JIO CHAT”. The JIO CHAT application is available on both the Android and iOS mobile platforms, and is promoted through the website “www.jiochat.com”. The application has apparently become popular and has been downloaded over 500,000 times from the Google Play Store.
The Complainant is the registered proprietor of the trade mark JIO in India:
(I) JIO, Trade Mark No. 224760, dated December 9, 2011, under class 9;
(II) JIO, Trade Mark No. 2247360, dated December 9, 2011, under class 38.
The Complainant has also applied to register several other marks containing JIO in various classes.
In addition, the Complainant has registered over 4,600 domain names incorporating the JIO mark, including <jio.com>, <jio.in>, <jio.info> and <jio.mobi>.
The Respondent is the registrant of the Disputed Domain Names, which resolve to no content at the time of the Complaint filing. The Disputed Domain Name <jio.chat> was registered on August 11, 2015 and the Disputed Domain Name <jio.buzz> was registered on March 13, 2015.
The Complainant contends that:
(1) The Disputed Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(2) The Respondent has no rights or legitimate interests in the Disputed Domain Names; and
(3) The Disputed Domain Names have been registered and are being used in bad faith.
The Disputed Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights
The Complainant submits principally that:
(1) The Disputed Domain Names incorporate in its entirety the Complainant’s JIO mark. In addition, the Disputed Domain Name <jio.chat> is identical to the JIO CHAT mark, in which the Complainant claims common law rights and for which applications have been made for its registration.
(2) The “.chat” generic Top-Level Domain (“gTLD”) is promoted as an ideal domain name for companies offering chat services, such as the Complainant. It is likely that Internet search users, on being led to the Respondent’s website at the Disputed Domain Name <jio.chat> will be confused into believing that the website is associated with the Complainant.
(3) The “.buzz” gTLD is promoted as an ideal domain name for businesses seeking to create a “buzz” around their brands. A Google search based on the keywords “Jio Buzz” now leads mostly to news about the Complainant and its business under the JIO brand.
(4) In the event that the Respondent uses the Disputed Domain Name <jio.buzz>, users searching for information on the Complainant’s brands will be directed to the Respondent’s website, which will be confused as being associated with the Complainant.
The Respondent has no rights or legitimate interests in the Disputed Domain Names
The Complainant submits principally that:
(1) The Respondent is not a licensee of the Complainant and has not obtained permission or consent from the Complainant to use the JIO or JIO CHAT marks.
(2) The Respondent is not commonly known by the Disputed Domain Names.
(3) The Respondent has not demonstrated any preparation to use the Disputed Domain Names in connection with the bona fide offering of goods or services.
The Disputed Domain Names have been registered and are being used in bad faith
The Complainant submits principally that:
(1) The Respondent’s registration of the Complainant’s well known mark as domain names, which the Respondent must reasonably have been aware of, is in itself sufficient to prove bad faith.
(2) The Respondent had earlier registered the domain name <jio.social>, which corresponds with the name given to the Complainant’s instant messaging application in earlier reports. The Complainant hence believes that the Respondent is a cybersquatter that hopes to sell the Disputed Domain Names to the Complainant or the Complainant’s competitors.
(3) The Respondent’s use of the Disputed Domain Names without offering or making preparation to offer any bona fide goods or services amounts to mala fide behaviour.
The Respondent did not reply to the Complainant’s contentions.
To succeed, the Complainant must prove the three elements set out in paragraph 4(a) of the Policy:
(1) the Disputed Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(2) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and
(3) the Disputed Domain Names have been registered and are being used in bad faith.
In accordance with paragraph 14(a) of the Rules, if the Respondent does not submit a Response, the Panel shall, in the absence of exceptional circumstances, decide the dispute based on the Complaint. In this instance, the Panel has neither received the Respondent’s Response nor noted any exceptional circumstances that would take the present case out of the abovementioned rule. The Panel thus comes to its findings based on the Complaint.
The Complainant has submitted evidence of both its registered and unregistered rights in the JIO mark.
Paragraph 1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) offers helpful guidance as to whether there is confusing similarity between the Complainant’s JIO mark and the Disputed Domain Names. Under the WIPO Overview 2.0, the test is described as a straightforward visual or aural comparison of a complainant’s mark with the disputed domain name. The top-level suffix is generally disregarded, unless the suffix forms part of the trade mark in question.
The Panel further notes that it is a well-stated position that where a complainant’s mark is incorporated in totality into a disputed domain name, there is a real and strong likelihood of confusing similarity.
The present case is one that features new gTLDs – in this case, “.buzz” and “.chat”. The Panel thus turns to recent cases that have similarly considered new gTLDs for further guidance. Inter IKEA Systems B.V. v. Hka c/o Dynadot Privacy, WIPO Case No. D2014-1874 (“Inter IKEA Systems”)is one such case.
In considering the impact of the “.buzz” suffix in the determination of whether there was identity or confusing similarity between the complainant’s IKEA mark and the disputed domain name, the panel in Inter IKEA Systems held that:
“As in the recent case involving the same Respondent, Novartis AG v. Hka c/o Dynadot Privacy, WIPO Case No. D2014-1737, if one were to disregard the suffix in this case, the Domain Name is identical to the Complainant’s IKEA trademark. If the suffix ‘.buzz’ is taken into consideration, the Domain Name is confusingly similar to the trademark. Moreover, to the extent ‘.buzz’ denotes news and information about ‘Ikea’ this would exacerbate confusion.”
The Panel agrees with this finding and applies it accordingly to the case at hand.
Turning to the present case, the Disputed Domain Names contain the Complainant’s JIO mark in its entirety, and add to it merely the suffixes “.buzz” and “.chat”. As in Inter IKEA Systems, the Disputed Domain Names are identical to the Complainant’s JIO mark if one were to disregard the suffixes. The Panel is also not swayed from this conclusion even if the suffixes are taken into account: the “.buzz” and “.chat” suffixes may in fact, as in Inter IKEA Systems, provide further room for confusion as Internet users may be mistaken into thinking that the Disputed Domain Names provide discussions or news on the Complainant’s products or the Complainant’s JIO CHAT mobile application respectively. This is especially so for the Disputed Domain Name <jio.chat>, which reflects the name of the JIO CHAT mobile application.
In the circumstances, the Panel is satisfied that the first element under the Policy is made out by the Complainant.
It is clear from the evidence submitted that the Respondent is not licensed or otherwise authorised by the Complainant to use its trade mark. The evidentiary burden thus shifts to the Respondent to rebut the prima facie case established by the Complainant based on available evidence.
Regrettably, the Respondent has not submitted a Response to prove any of the circumstances listed in paragraph 4(c) of the Policy, or any other circumstances that may reasonably give the Respondent a right to or legitimate interest in the Disputed Domain Names. There is no evidence that the Respondent is commonly known by any of the Disputed Domain Names. The Respondent was also not shown to be, before receiving notice of the dispute, using or demonstrating preparations to use the Disputed Domain Names or names corresponding to the Disputed Domain Names in connection with a bona fide offering of goods or services. The term “App X” bears no relevance or similarity to the Disputed Domain Names. The Panel further notes that the Disputed Domain Names resolve to no content at the time of the filing of Complaint.
In the Panel’s view, the Respondent’s failure to submit a Response reflects adversely upon the Respondent. In particular, the Panel finds the Respondent’s silence “indicative of a lack of interest inconsistent with an attitude of ownership and a belief in the lawfulness of one’s own rights.” Pomellato S.p.A v. Richard Tonetti, WIPO Case No. D2000-0493.
Having regard to the above, the Panel concludes that the Respondent does not hold any rights or legitimate interests in the Disputed Domain Names and the second element under the Policy is therefore made out by the Complainant.
Under paragraph 4(a)(iii) of the Policy, the Complainant must prove that the Disputed Domain Names have been registered and are being used in bad faith. Such bad faith may be proved by any of the following circumstances set out in paragraph 4(b) of the Policy:
(1) circumstances indicating that the Respondent has registered or has acquired the Disputed Domain Names primarily for the purpose of selling, renting, or otherwise transferring the Disputed Domain Name registrations to the Complainant who is the owner of the trade mark or service mark or to a competitor of that Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the Disputed Domain Names; or
(2) the Respondent has registered the Disputed Domain Names in order to prevent the owner of the trade mark or service mark from reflecting the mark in corresponding domain names, provided that the Respondent has engaged in a pattern of such conduct; or
(3) the Respondent has registered the Disputed Domain Names primarily for the purpose of disrupting the business of a competitor; or
(4) by using the Disputed Domain Names, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website 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 the Respondent’s websites or locations or of a product or service on the Respondent’s websites or locations.
The Panel observes that the Respondent had previously registered the <jio.social> domain name, which corresponded to the name that the Complainant’s instant messaging application was earlier known by. In the Panel’s opinion, such behavior, in conjunction with the Respondent’s registration of the Disputed Domain Names, possibly points to a pattern of conduct aimed at preventing the Complainant from reflecting its trade mark in corresponding domain names.
Additionally, it is well established that the passive holding of a domain name does not as such prevent a finding of the requisite bad faith under the Policy. WIPO Overview 2.0, paragraph 3.2.
By failing to file a Response, the Respondent did not take the opportunity to raise any circumstances that could indicate that its registration of the Disputed Domain Names was not in bad faith. In the Panel’s view, the lack of a Response indicates bad faith on the part of the Respondent. There is no reason for the Respondent’s silence if the registrations were legitimate and in good faith. Further, the Panel cannot conceive of any plausible good faith use of the Disputed Domain Names, as they correspond exactly to the Complainant’s mark.
The Panel is therefore satisfied that the Disputed Domain Names were registered and are being used in bad faith. The third element under the Policy is therefore made out by the Complainant.
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 Names <jio.chat> and <jio.buzz> be transferred to the Complainant.
Tee Jim Tan S.C.
Sole Panelist
Date: December 2, 2015