The Complainant is Etechaces Marketing and Consulting Private Limited of Gurgaon, Haryana, India represented by Wadhwa Law Chambers, India.
The Respondent is Akhilesh Gupta of Thane, Maharashtra, India.
The disputed domain name <licpolicybazar.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 22, 2016. On February 22, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 22, 2016, 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 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 February 25, 2016. In accordance with the Rules, paragraph 5, the due date for Response was March 16, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 17, 2016.
The Center appointed Maninder Singh as the sole panelist in this matter on March 23, 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.
The Complainant is stated to have been registered and incorporated under the laws of India. The Complainant claims to own and operate an online insurance comparison portal at “www.policybazaar.com”. It further claims that since its inception in 2008 it has been providing insurance solutions to 5,000,000 Indian customers. The Complainant has inter alia the registered trademarks POLICYBAZAAR.COM, registered on December 17, 2008, and POLICY BAZAR, registered on August 1, 2011. The Complainant also claims to own all other intellectual property rights, including common law rights, associated with the use of the POLICYBAZAAR trademark in relation to the online insurance business in India.
The Respondent has chosen not to submit any response to the contentions raised in the Complaint. In the absence of a Response there is no information available about the Respondent’s activity.
The disputed domain name was registered on November 14, 2011.
The Complainant claims that it owns and operates India’s leading online insurance comparison portal at “www.policybazaar.com” (“PolicyBazaar”). The Complainant claims that since its inception in 2008 it has been providing insurance solutions to 5,000,000 Indian customers. The Complainant claims that in the year 2014, PolicyBazaar received more than 8.1 million page views by more than 1.6 million users.
The Complainant states that the PolicyBazaar comparison engine is the result of intense research and periodic updating by a team of more than 1,500 employees. Leading investors/funds have invested millions of dollars in PolicyBazaar. The Complainant claims to have spent a sum of more than USD 18 million over advertising, promotion and branding for PolicyBazaar. PolicyBazaar has also been awarded the best financial website in the country by the Internet & Mobile Association of India (IAMAI) for two consecutive years of 2013 and 2014.
The Complainant claims that through its website “www.policybazaar.com “, it showcases insurance plans offered by reputed pool of insurers, thereby enabling its customers to pick out the plan that works best for them on the basis of their quality and price. The Complainant further claims that apart from <policybazaar.com>, it owns a large number of domain names containing the POLICYBAZAR and the POLICYBAZAAR trademark, including, but not limited to <policybazaar.biz>, <policybazaar.asia>, <policybazaar.info>,<policybazaar.co.uk> etc.
In 2013 the Complainant noticed that the disputed domain name had been registered and blocked by the Respondent. The Respondent had adopted the disputed domain name and was also operating a website with a similar business profile providing information about various insurance policies of different companies and offering for sale such insurance policies of different companies. The Complainant asserts that it had issued a legal notice on July 2, 2013 demanding that the Respondent cease and desist from using its trademarks as a part of its name, trademark and domain name, to remove the website and Internet links, and to transfer the disputed domain name to the Complainant.
The Complainant further asserts that although the Respondent did not reply to the said legal notice, it took down the infringing website and ceased use of the disputed domain name. The Complainant has noticed that the disputed domain name was at a later time active again.
The Complainant noticed that the disputed domain name has been registered with Public Domain Registry and a WhoIs Database search revealed that the disputed domain name was registered by the Respondent.
The Complainant claims that the disputed domain name is being identical or confusingly similar to its trademarks:
Further to its registered trademark rights and alleged common law rights, the Complainant asserts that it is also the applicant with regard to the following trademarks before the Trademark Registry in India:-
|
S. No. |
Application No. |
Date of application |
Trademark |
Class |
|
1. |
2183636 |
August 01, 2011 |
POLICY BAZAAR |
35 |
|
2. |
2183637 |
August 01, 2011 |
POLICY BAZAAR |
36 |
|
3. |
2183638 |
August 01, 2011 |
POLICY BAZAAR |
38 |
|
4. |
2183639 |
August 01, 2011 |
POLICY BAZAAR |
41 |
|
5. |
2672875 |
February 05, 2014 |
POLICY BAZAAR |
16 |
The Complainant claims to have used its marks and applications since June 4, 2008 in relation to its online insurance comparison portal at “www.policybazaar.com”.
The Complainants holds the trademark POLICY BAZAR, Trade Mark No. 2183635, registered on August 1, 2011. Further, in order to show that the disputed domain name <licpolicybazar.com> is identical and/or confusingly similar to the Complainant’s domain name/marks, the Complainant contends that the disputed domain name differs from the POLICYBAZAAR trademark by only minor alterations. The disputed domain name uses <policybazar.com> by once omitting the letter “a” from BAZAAR.
The Complainant further contends that the altered spelling is also used together with “LIC”, which stands for a trademark of “Life Insurance Corporation of India”, which is used for a state owned Indian company. The close misspelling in the disputed domain name is confusingly similar to the Complainant’s mark. The use of LIC as prefix further reinforces the confusion amongst Internet users who would be led to assume collaboration between LIC and POLICY BAZAAR, both being well-known companies in the Indian insurance sector.
The Complainant contends that the Respondent has been using the website with malafide intent. The Complainant contends that upon accessing several internal links of the website an Internet user is redirected to the website of the state owned insurance company at “www.licindia.in” and to links displayed on “www.licndia.in”.
Contentions regarding the Respondent having no rights or legitimate interests in the disputed domain name:
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name because the Complainant has not granted any license or otherwise consented to the Respondent’s use of its trademarks in any connection with the disputed domain name.
The Complainant contends that it has not given the Respondent any authority to register, operate or maintain the disputed domain name, incorporating the Complainant’s trademarks.
The Complainant further contends that LIC is a well-known state owned insurance company in India and has also not consented to the Respondent’s use of the mark LIC inasmuch as LIC operates its own domain name being <licindia.in>.
The Complainant claims that it has prior rights in the trademarks which precede the Respondent’s registration and use of the disputed domain name. The Respondent, having complete knowledge of the immense reputation and goodwill of the Complainant and of LIC in the Indian online insurance industry under the marks POLICYBAZAAR and LIC, has still registered the disputed domain name and could therefore not evoke any kind of legitimate interests.
The Complainant also contends that Respondent has no valid reasons to justify the choice of its well-known trademarks in its business operations and the linking of the impugned website with the website of LIC other than for trading upon the goodwill of the Complainant’s trademark and the goodwill of LIC. The Respondent has also made use of the goodwill of LIC by illegitimately using the LIC mark in its disputed domain name. The Respondent has made use of the logo of LIC and the content of its website portrays services provided by LIC and services which are similar to the ones provided by the Complainant. Thus, the Respondent, by using the immense reputation of both POLICYBAZAAR and LIC, has sought to maximize its economic gains.
The Complainant contends that the Respondent is not commonly known by the disputed domain name. The adoption of a confusingly similar name has been done with complete knowledge of the Complainant’s rights and with intent to trade off the Complainant’s goodwill.
The Complainant contends that the Respondent is not making a noncommercial or fair use of the disputed domain name as the disputed domain name clearly displays the well-known marks of the Complainant and that the disputed domain name is being used with the sole intent of commercial gain, through the offering of services similar to that of the Complainant while using the Complainant’s well-known marks. The Complainant further contends that the intent of such use is to confuse Internet users into believing that the services have a connection with the Complainant which diminishes the reputation of the Complainant.
The Complainant further contends that the Complainant’s distinctive marks along with offering competing services is with the sole intent to divert customers to the website. Therefore such use cannot be deemed to be legitimate noncommercial or fair use under the Policy.
The Complainant contends that the Respondent is simply utilizing the immense reputation garnered by the Complainant and inducing Internet users into believing that the disputed domain name and website resolving from it, is related to or connected with the Complainant. Therefore, it cannot be said that the Respondent’s use of the disputed domain name relates to a bona fide offering of goods or services.
The Complainant contends that the Respondent is attempting to take advantage of the Complainant’s prominent presence on the Internet and thereby confuse the public, divert business, tarnish the reputation and goodwill of the Complainant and its marks and unduly gain to the Complainant’s detriment.
Contentions regarding bad faith registration and use of the disputed domain name by the Respondent:
The Complainant contends that the Respondent has registered the disputed domain name primarily for the purpose of attracting commercial gain, direct Internet users to the Respondent’s website or other online location by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location.
The Complainant contends that the Respondent is using the disputed domain name and to provide insurance information, tax planning services and other such services which are similar to the services provided by the Complainant since November 2011. The Complainant also contends that the circumstances under which the Respondent has been operating the webpage amounts to bad faith as it diverts Internet users from the Complainant’s website to the Respondent’s website by causing a likelihood of confusion as to the source, sponsorship and affiliation of the disputed domain name with the Complainant’s mark.
The Complainant further contends that the Respondent operates a website which displays the Complainant’s trademark as a banner on its webpage along with information regarding insurance schemes as provided by LIC under the aforementioned banner. The Complainant contends that the Respondent has also used LIC’s logo without obtaining prior consent. The Complainant also contends that the Respondent’s website offers services which are similar to the ones offered by the Complainant. This clearly establishes that the Respondent has registered a domain name incorporating well-known marks belonging to the Complainant and a well known third party mark LIC for the purpose of attracting Internet users and then guiding them to a website which offers services which are similar to those of the Complainant.
The Respondent did not reply to the Complainant’s contentions.
The Complainant has furnished evidence of its rights in inter alia the trademark POLICYBAZAAR and POLICY BAZAR, through its above-referred trademark registrations and common law rights which it has obtained through its long and substantial use of the marks, which also gets established by the volumes of operations being carried out by the Complainant.
The Panel has no doubt that the registration of the disputed domain name by reproduction of the Complainant’s trademarks and omitting the letter “a” once has been done by the Respondent to create a likelihood of confusion as to the source, connection, sponsorship, affiliation and endorsement of the Respondent’s website.
The Panel finds it useful to refer, in this regard, to certain WIPO UDRP decisions.
(i) In Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic, WIPO Case No. D2000-1698, it has been held that the elimination of the letter “s” between “guinnes” and “Guinness” does not significantly affect the visual impression made by the domain name compared to the mark and does not affect the pronounciation of the domain name compared to the mark.
(ii) In America Online, Inc., v. Yetech Communications Inc., WIPO Case No. D2001-0055, it was held that precedent clearly supports the principle that the adaptation of a recognized trademark in a domain name by variation in spelling or by deletion, addition or insertion of letters, words or acronyms does not hinder a finding of confusing similarity.
(iii) In Pfizer, Inc. v. Martin Marketing, WIPO Case No. D2002-0793 it was observed that “the disputed domain name <viagra-nascar.com> directly incorporates the Complainant’s mark as its lead term and adds a hyphen and the trademark and service mark of a third party. The addition of the third party mark does not eliminate the visual impression that the disputed domain name is associated with the Complainant’s trademark. Moreover, in light of the Complainant’s use of its mark in connection with the third party mark for its own advertising purposes, the combination of the two marks would convey to the Internet users familiar with the Complainant’s advertising an expected association. The panel determined that the disputed domain name is confusingly similar to the Complainant’s “Viagra” mark.”
The Complainant has therefore succeeded in establishing the first element of paragraph 4(a)(i) of the Policy.
The Panel observes that the Complainant has made out a case proving its rights in inter alia the trademark POLICYBAZAAR.
The Panel observes that the Respondent is in no way affiliated with the Complainant nor has he been authorized by the Complainant to use its trademarks or to seek registration of any domain name incorporating said marks. Furthermore, the Respondent has no prior rights or legitimate interests in the disputed domain name. The Panel has further observed that registration of the Complainant’s trademarks preceded the registration of the disputed domain names.
The Panel further observes that the Respondent is not commonly known by the name “licpolicybazar.com”.
The Panel in this regard relies upon the decision in Drexel University v. David Brouda, WIPO Case No. D2001-0067 holding that rights or legitimate interests cannot be created where the user of the domain name at issue would not choose such a name unless he was seeking to create an impression of association with the complainant.
The Panel also relies upon the decision in OLX, Inc. v. Berry Mhlongo, WIPO Case No. D2014-1657 where it was observed that “the use of the disputed domain names in order to establish websites the colour, appearance and apparent purpose of which is evidently intended to confuse Internet users into believing they have accessed a website under the control of the Complainant cannot be a bona fide offering of goods and services.”
In the facts and circumstances of the present case, the Panel has no difficulty in accepting that the Respondent has been using the disputed domain name in connection with a bona fide offering of goods and services as it has failed to submit any response to the contentions made by the Complainant. The Respondent has no legitimate interests or rights in the disputed domain name.
The Panel finds merit in the Complainant’s contention that the Respondent’s use of the Complainant’s trademarks as a banner on the website at the disputed domain name will lead any reasonable visitor to be confused and believe that the information, service or products displayed on the website is being endorsed by the Complainant and therefore constitutes bad faith under the Policy. Attention in this regard has been drawn to the earlier WIPO UDRP decision Luxottica Group S.p.A., Luxottica Fashion Brillen Vertriebs GmbH v. Rett Walters, WIPO Case No. D2011-0297 where it has been held that “by using the RAY BAN Logo on the website, the Respondent is confirming an awareness of the RAY BAN Trademark and the Complainants. The Panel believes that a reasonable visitor to the website would likely be misled in relation to the source, sponsorship, affiliation or endorsement of the website and the products purportedly made available for online sale on the website. The website is obviously targeted at attaining commercial gain from Internet users visiting it.”
The Panel also finds merit in the Complainant’s contention that the reproduction of the Complainant’s trademarks by the Respondent in its entirety on the webpage along with a third party mark of “LIC”, it is clear to this Panel that Respondent clearly knew of the existence of Complainant’s trademark and of its relevance in the Indian market. This clearly shows his mala fide intention of misusing the Complainant’s trademarks and establishes that the Respondent had knowledge of the Complainant’s rights in the trademarks at the time of registration of the disputed domain name. Attention of the Panel has been drawn to decision in DHL Operations B.V. v. Ali Kazempour, WIPO Case No. D2004-1094, where it was observed that the registration of a domain name in the name of a famous mark, of which the respondent had knowledge, may in any case be considered strong supporting evidence of bad faith.
In addition the Panel notes that the disputed domain name is being used to offer insurance services which are in competition with the Complainant’s services and this is bad faith use as per paragraph 4(b)(iv) of the Policy.
The Panel, therefore, finds that the disputed domain name was registered and being used in bad faith by the Respondent.
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 <licpolicybazar.com> be transferred to the Complainant.
Maninder Singh
Sole Panelist
Date: April 2, 2016