The Complainant is WIPRO LIMITED of Bangalore, India, represented by K&S Partners, India.
The Respondent is Registration Private. Domains By Proxy, LLC of Scottsdale, Arizona, United States of America / Hari Prasad of Noida, India.
The disputed domain name <wiproconsultancy.com> is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 15, 2016. On February 15, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, 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 February 17, 2016 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 February 19, 2016.
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 March 1, 2016. In accordance with the Rules, paragraph 5, the due date for Response was March 21, 2016. The Respondent was informed that if his response was not received by that date, he would be considered in default and the Center will proceed to appoint an Administrative Panel to review the facts and to decide the case. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 23, 2016.
The Center appointed Dr. Vinod K. Agarwal as the sole panelist in this matter on April 4, 2016. 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.
Initially the Complainant was established in the year 1945 as a vegetable oil manufacturer under the name of Western India Vegetable Products Limited. Subsequently with effect from June 17, 1977 the Complainant changed its name to Wipro Products Limited. On April 28, 1984 the Complainant once again changed its name to WIPRO Limited. Presently the Complainant is known by the name of WIPRO Limited. The Complainant is a company incorporated according to the corporate laws of India. The name WIPRO is a coined term and is derived from and is the abbreviation of the original company name Western India Vegetable Products Limited.
According to the Complainant, it has diversified its business activities covering a large number of areas, such as aerospace, automotive, banking, communication service provider, consumer goods, energy, engineering and construction, health care, hi-tech insurance, manufacturing, media, entertainment and publishing, medical devices, natural resources, network equipment provider, pharmaceutical and life sciences, securities and capital market, etc. The Complainant undertakes these activities through various group companies and associated companies in India and in different foreign countries. Some such companies are as follows:
- Wipro Trademarks Holding Limited;
- Wipro Technologies Canada Limited;
- Wipro Solutions Canada Limited;
- Wipro Travel Services Limited;
- Wipro Technology Services Limited;
- Wipro Energy IT Services India Private Limited;
- Wipro Holdings (Mauritius) Limited;
- Wipro Australia Pyt. Limited;
- Wipro KK Japan;
- Wipro Shanghai Limited;
- Wipro Cyprus Limited;
- WIPRO Enterprises Limited;
- WIPRO GE Healthcare Private Limited;
- WIPRO Kawasaki Precision Machinery Private Limited;
- WIPRO Infrastructure Engineering, etc.
The Complainant is listed on many major stock exchanges including the National Stock Exchange and the Bombay Stock Exchange of India, the New York Stock Exchange and the NASDAQ in the United States of America, etc.
Further, the Complainant is the owner of a number of domain names containing the term “wipro”. Some such illustrations are: <wipro.com>; <wipro.org>; <wipro.jp>; <wipro.co.in>; <wipro.hk>; <wipro.sg.>; <wipro. us>; <wipro.in>; <wipro.es>; <wipro.de>.
Complainant owns trademark registrations for the term “Wipro” (the term “Wipro” alone or in various combinations with other words) in several jurisdictions including India, the United States of America and the European Union for goods and services in classes 7, 9, 12, 16, 35 and 42 (among others). Its earliest WIPRO trademark in India dates back to 1974.
The disputed domain name <wiproconsultancy.com> was created on August 25, 2015 and resolves to a website displaying information regarding consultancy services. The Complainant’s WIPRO trademark has been registered for the provision of consultancy services.
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy is applicable to this dispute.
In relation to element (i), the Complainant contends that the word “wipro” is the registered trademark of the Complainant. The said trademark WIPRO of the Complainant is registered in various other jurisdictions of the world, such as Canada, Europe (CTM), the USA, etc. It is stated in the Complaint that 169 trademarks owned by the Complainant and its subsidiaries containing the word “wipro” as shown in Annexure H to the Complaint are registered in these jurisdictions. In India, the trademark WIPRO was registered in the year 1974.
By virtue of prior adoption, long and continuous use and extensive publicity and promotion, the trade name and trademark WIPRO has acquired tremendous goodwill and an enviable reputation worldwide amongst consumers and the public in general. Thus, it is associated by the business houses and public exclusively with the Complainant and its businesses, services and products.
The registration of the disputed domain name <wiproconcultancy.com> by the Respondent is confusing inasmuch as it causes the public to believe that the Respondent is associated with the Complainant and also violates the Complainant’s trademark rights in the WIPRO trademark. Thus, the intention of the Respondent is to create confusion in the market and business circles.
The Complainant has further contended that the addition or suffix of the word “consultancy” in the disputed domain name will not make any difference. It is a generic word indicative of the type of the business carried on by the Respondent. The use of the word “consultancy” is not sufficient to distinguish and differentiate the disputed domain name from the registered trademark of the Complainant. It adds to the confusion. Therefore, the disputed domain name <wiproconsultancy.com> registered by the Respondent is confusingly similar to the Complainant’s trademark WIPRO.
In support of its contentions, the Complainant has relied on the decisions in the cases of Wipro Limited and Wipro Trademarks Holding Limited v. Global LinkCom.Ltd d/b/a/ Global Online, WIPO Case No. D2000-0656; Pfizer, Inc. v. Seocho and Vladimir Snezko, WIPO Case No. D2001-1199; and Wipro Limited v. Big Shi, WIPO Case No. D2015-1353.
In relation to element (ii), the Complainant contends that the Complainant’s trademark WIPRO has become highly distinctive of the goods and services of the Complainant on account of extensive use, viewership and promotion. Further, the Respondent is in no way related to the Complainant. The Complainant has not licensed or otherwise permitted or granted to the Respondent an authorization or a right to use its trademark or to apply for or use the disputed domain name incorporating the trademark and that nobody would use the word “wipro” unless seeking to create an impression of an association with the Complainant.
The act of the Respondent constitutes infringement/passing off of the trademark of the Complainant. The Respondent registered the disputed domain name for the sole purpose of creating confusion and misleading the general public and the customers of the Complainant. Thus, it is contended that there are no rights or legitimate interests of the Respondent in the disputed domain name.
In support of its contentions, the Complainant has relied on the decisions in the cases of Wipro Limited and Wipro Trademarks Holding Limited v. Global LinkCom.Ltd d/b/a/ Global Online, WIPO Case No. D2000-0656; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Sanrio Company, Ltd. and Sanrio, Inc. v. Neric Lau, WIPO Case No. D2000-0172.
Regarding element (iii), the Complainant contends that the disputed domain name was registered and used in bad faith and with an ill-motive to gain unfair commercial advantage, at the expense of the Complainant.
According to the Complainant, the Respondent’s bad faith use and registration is further evident from the fact that the Respondent on its website “www.wiproconsultancy.com” corresponding to the disputed domain name <wiproconsultancy.com> refers to its services as Management Consulting HR Recruitment Outsourcing Training whereby misleading Internet users into believing that it is associated with the Complainant, when in fact it is not. In other words, the Respondent has registered and is using the disputed domain name in bad faith with the mala fide intention to dupe, cheat and fraudulently attract Internet users into believing that the jobs have been offered by the Complainant and that the Respondent is associated with the Complainant.
Further, the main object of registering the disputed domain name <wiproconsultancy.com> by the Respondent is to attract Internet users, for commercial gain to its website, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of the website. Therefore, the Respondent is using the disputed domain name in bad faith.
In support of its contentions, the Complainant has relied on the decisions in the cases of Wipro Limited and Wipro Trademarks Holding Limited v. Global LinkCom.Ltd d/b/a/ Global Online, WIPO Case No. D2000-0656; Intel Corporation v. The Pentium Group, WIPO Case No. D2009-0273; Info Edge (India) Limited v. Abs, Abs IT Solution, WIPO Case No. D2014-1688; and Wipro Limited v. Big Shi, WIPO Case No. D2015-1353. In these cases a view has been taken that, “…using the disputed domain name with intention of creating a likelihood of confusion with that of the complainant’s mark as to source, sponsorship, affiliation or endorsement of the respondent’s services by using an identical name or a close approximation for commercial gain from the goodwill and fame associated with the complainant’s mark indicates that the respondent is deliberately trying to free ride on the complainant’s mark.”
Therefore, the registration and use of the disputed domain name by the Respondent was in bad faith and the requirement of paragraph 4(a)(iii) of the Policy has been established.
The Respondent did not reply to the Complainant’s contentions.
According to paragraph 4(a) of the Policy, the Complainant must prove that:
(i) The disputed domain name is identical or confusingly similar to a trademark or service 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 has been registered and is being used in bad faith.
As per the WhoIs information, the Respondent has created the disputed domain name <wiproconsultancy.com> on August 25, 2015.
According to the information submitted by the Complainant, the Complainant is the owner of trademark WIPRO. The trademark WIPRO has been registered in certain jurisdictions for more than 40 years.
The present dispute pertains to the disputed domain name <wiproconsultancy.com>. The Complainant possesses a large number of domain names with the word “wipro” as indicated above. The Complainant is also the owner of several WIPRO trademarks. Most of these domain names and trademarks have been created by the Complainant much before the date of creation of the disputed domain name <wiproconsultancy.com> by the Respondent. The disputed domain name is very much similar to the WIPRO trademark of the Complainant, as it contains the mark in its entirety.
Therefore, the Panel finds that the disputed domain name <wiproconsultancy.com> is confusingly similar to the trademarks of the Complainant.
According to paragraph 4(c) of the Policy, the Respondent may demonstrate its rights to or legitimate interests in the disputed domain name by proving any of the following circumstances:
(i) before any notice to the Respondent of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the Respondent (as an individual, business or other organization) has been commonly known by the disputed domain name, even if the Respondent has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent has not filed any response in this case. There is no evidence to suggest that the Respondent has become known by the disputed domain name or by the term “wipro”. The disputed domain name was registered under a privacy or proxy registration service indicating as registrant of the disputed domain name Registration Private, Domains By Proxy, LLC. The Registrar of the disputed domain name disclosed that the underlying registrant for the disputed domain name is Hari Prasad. From the evidence submitted and the information provided, the Panel considers that the Respondent in this proceeding is known by the name of Hari Prasad.
The Complainant has not authorized the Respondent to use the name and trademark WIPRO. Further no information is available on whether the Respondent has filed any application for the registration of the mark WIPRO.
It is evident to this Panel that on a prima facie basis the Respondent does not have rights or legitimate interests in the disputed domain name. Further, in view of the fact that (i) the Complainant has not licensed or otherwise permitted the Respondent to use its trademark or to apply for or use the disputed domain name incorporating the trademark, (ii) nobody would use the word “wipro” unless seeking to create an impression of an association with the Complainant, (iii) the Respondent has not answered Complainant’s contentions, and (iv) the disputed domain name directs to a website displaying information regarding services competitive with the ones of the Complainant, this Panel concludes that the use of the Respondent’s disputed domain name does not constitute a bona fide offering of goods or services.
The disputed domain name directs to a website which is used by the Respondent for offering somewhat similar services as are offered by the Complainant. In addition, such website includes several references to the term “Wipro” along with a description of consultancy services and a reference to the provision of such services “with low cost”. Such use does not amount to a legitimate noncommercial or fair use of the disputed domain name.
Based on the default and the evidence in the Complaint, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of the domain name in bad faith:
(i) Circumstances indicating that the Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed 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 documented out-of-pocket costs directly related to the disputed domain name; or
(ii) The Respondent has registered the disputed 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 it has engaged in a pattern of such conduct; or
(iii) The Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) By using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 the Respondent’s web site or location or of a product or service on its web site or location.
The Complainant contends that the disputed domain name was registered or acquired primarily for the purpose of carrying on a business competitive with the Complainant, more particularly the business of offering jobs.
The disputed domain name comprises the Complainant’s trademark WIPRO along with the word “consultancy”. Complainant has owned the WIPRO trademark since 1974 and has registered the WIPRO trademark for goods and services in classes 7, 9, 12, 16, 351 and 42 (among others), including the provision of business consultancy and advisory services. In addition, the disputed domain name was created forty years later than Complainant’s first registration for the WIPRO trademark in India (location of the Respondent).
The Respondent is not making a noncommercial or fair use of the disputed domain name. The disputed domain name is being used with the intent of wrongful commercial gain and to mislead the general public.
Further, on October 20, 2015 the Complainant sent a cease and desist notice to the Respondent through the email address available on the website. However, the Complainant has not received any reply from the Respondent to the said legal notice which is considered by this Panel as further evidence of the Respondent not acting in good faith.
This and the other evidence submitted by the Complainant leads to the conclusion that, on the balance of probabilities, the disputed domain name <wiproconsultancy.com> has been registered and is being used by the Respondent in bad faith.
The Panel concludes that Paragraph 4(a)(iii) of the Policy is satisfied.
In the light of the foregoing reasons, namely, that the disputed domain name is confusingly similar to the trademarks in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and that the disputed domain name was registered in bad faith and is being used in bad faith, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <wiproconsultancy.com> be transferred to the Complainant.
Vinod K. Agarwal
Sole Panelist
Date: April 14, 2016
1 International trademark WIPRO number 949885 registered for services in classes 35 and 42 consisting of, among others, business consultancy and advisory services relating to the administration of information technology and consultancy and information services relating to information technology, information technology architecture and infrastructure and computer system integration.