WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Independent News Services Private Ltd. v. Vijay Tayade

Case No. D2017-1464

1. The Parties

The Complainant is Independent News Services Private Ltd. of New Delhi, India, represented by Singh and Singh Law Firm LLP, India.

The Respondent is Vijay Tayade of Nagpur, India.

2. The Domain Name and Registrar

The disputed domain name <indiatv10.com> is registered with Domainshype.com, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 28, 2017. On July 28, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 29, 2017, 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.

On August 3, 2017, the Center received an email from the Complainant, forwarding an email from the Respondent in which the Respondent consented to transfer the disputed domain name. On August 3, 2017, the Center invited the Complainant to suspend the proceedings to enable the Parties to discuss settlement. On August 11, 2017, having received no suspension request from the Complainant, the Center informed the Parties that the proceeding would continue.

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 proceedings commenced on August 24, 2017. In accordance with the Rules, paragraph 5, the due date for Response was September 13, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 14, 2017.

The Center appointed Harini Narayanswamy as the sole panelist in this matter on September 21, 2017. 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.

4. Factual Background

The Complainant runs the television news channel “India TV”, and the news portal “www.indiatvnews.com”. The Complainant owns the trademark INDIA TV and its formative marks. Details of the Complainant’s Indian trademark registrations are:

The Respondent Vijay Tayade, registered the disputed domain name on December 6, 2016.

The Respondent has used the disputed domain name in connection with running a local news portal. The Respondent has expressed his willingness to transfer the disputed domain name to the Complainant.

5. Parties’ Contentions

A. Complainant

The Complainant states it is a company incorporated in the year 1997 by Mr. Rajat Sharma, an Indian journalist and television anchor, who is the Chairman and Editor-in-Chief of the Complainant company. The Complainant states that it was initially producing news bulletins for television news channels. On June 17, 2003, the Complainant states it obtained permission from the Ministry of Information and Broadcasting to uplink its 24 hour Hindi news channel “India TV”, which was launched in March 2004. The Complainant states the term “India TV” is coined by Rajat Sharma as a platform for depicting India for a global audience.

The Complainant contends that since its adoption in 2002 and launch in 2004, India TV has grown in strength and it is presently a leading Hindi news channel in India. It produces programs on current affairs and in particular raises issues of public concern including consumer rights issues. It has obtained fame and reputation due to its unmatched services that extend to about 150 countries covering Europe, the Middle East, Asia and Africa.

The Complainant states it owns the domain name <indiatvnews.com> that was registered on November 18, 2003 and its website is popular. As evidence of the popularity of its website, the Complainant has filed figures from “www.alexa.com” showing its website was ranked 11,054 globally, as of July 2017. The Complainant further alleges that it has kept pace with technology advances in broadcasting and webcasting. Its mobile phone applications are available on Android and IOS platforms to provide its customers latest news updates in Hindi and English on various topics.

The Complainant alleges that it has registered various domain names incorporating the INDIA TV mark. Some of these domain names are <indiatvlifestyle.com>, <indiatvcricket.com>, <indiatvastrology.com>, <indiatvbreakingnews.com>, <indiatvbusiness.com> and <indiatvshopping.com>. The Complainant states its channel is streamed live on its websites, “www.indiatvnews.com” and “www.khabarindiatv.com”.

The Complainant states that its INDIA TV trademark is well known due to extensive use and no other party has a right to use the mark. The Complainant states it owns common law and statutory rights for the unique combination “India” and “TV” and that it has acquired secondary meaning, which is protectable in law. The Complainant claims that its rights have been recognized by the courts and refers to a Delhi High Court order in its favor. The Complainant further claims its INDIA TV mark is a “well known mark” within the meaning of the Trademark Act 1999, and it is therefore entitled to a high degree of protection.

The Complainant argues that the Respondent ought to have known of the Complainant’s prior rights in the mark at the time of registration of the disputed domain name. The Complainant submits that the disputed domain name is nearly identical to its mark and the Respondent has no rights in the disputed domain name. The Complainant further adds that the Respondent has registered and uses the disputed domain name in bad faith to exploit the goodwill and reputation associated with its mark. The Complainant requests for the transfer of the disputed domain name.

B. Respondent

The Respondent did not file a formal response in these proceedings. However, the Respondent sent an email to the Complainant dated August 3, 2017. The said email was forwarded to the Center by the Complainant. The Respondent’s email of August 3, 2017 is reproduced here verbatim:

“Hello Sir

I received mail that you filed complaint for my domain indiatv10.com. I just gone through all details but my intentions are not to use your brand for commercial purpose. I am just driving local news portal with that name. Still I am ready to transfer or cancel that domain and I already taken that site down. So, let me know how we can initiate the procedure.

Regards

Vijay Tayade”

6.1. Preliminary Issue: Consent by Respondent to Transfer the Disputed Domain Name

Under paragraph 17(a) of the Rules, if the parties agree to settle the dispute before the panel renders a decision, the panel may terminate the proceedings. The Panel in the present case, finds the material on record shows the Respondent appears to consent to the transfer of the disputed domain name. The Complainant on its part, however, did not request suspension of the proceedings to attempt settlement under paragraph 17 of the Rules. Consequently, as no formal settlement was made between the Parties, the proceedings were continued.

If the Parties have not agreed to a formal settlement, although the Respondent has consented to the requested relief, terminating the dispute would not give effect to the Parties’ intentions. See Williams-Sonoma, Inc. v. EZ-Port, WIPO Case No. D2000-0207 (pertaining to the disputed domain name <pottery-barn.com>, where the proceedings continued after respondent had consented to transfer the disputed domain name, in the absence of a formal settlement between the parties).

Consent by a respondent to transfer the disputed domain name to the complainant has been held to provide a sufficient basis for an order of transfer of the disputed domain name to the complainant in several previous cases. The transfer order in such cases can be made without necessarily delving into whether the requirements of paragraph 4(a) of the Policy are met. Some of the cases following this line of thought are: La Quinta Worldwide LLC v. Privacy Ltd. Disclosed Agent for Yolapt, WIPO Case No. D2009-0524; BPG SRL v. Eugenie Staicut / loan Cad, WIPO Case No. DRO2016-0013; The Cartoon Network LP, LLLP v. Mike Morgan, WIPO Case No. D2005-1132; Infonxx.Inc v. Lou Kerner, Wildsites.com, WIPO Case No. D2008-0434; Paramount Pictures Corporation v. Texas International Property Associates, WIPO Case No. D2007-1753.

In some other cases it has been held that a respondent’s consent to transfer the disputed domain name would be tantamount to the requirements under the paragraph 4(a) of the Policy being fulfilled. See Lonely Planet Publication Pty Ltd v. Hoang Anti Minh and cicvn.com, WIPO Case No. D2003-0355; eMusic.com, Inc. v. Mp3DownLoadCity, WIPO Case No. D2004-0967 and Sanofi Aventis v. Day Corporation, WIPO Case No. D2004-1075.

The Panel notes from the Respondent’s communication that the Respondent appears to be willing to transfer the disputed domain name to the Complainant. The Panel also notes, however, that the Respondent claims not to have registered the disputed domain name for any commercial purpose. In light of the Complainant’s allegations in this regard, the Panel considers it appropriate to proceed to a substantive decision on the merits, as noted below.

6.2. Discussion and Findings

Under paragraph 4(a) of the Policy, a complainant is required to establish the following for the transfer of the disputed domain name:

(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 lacks rights or legitimate interests in the disputed domain name; and

(iii) The disputed domain name was registered and is being used in bad faith by the respondent.

A. Identical or Confusingly Similar

The first element requires the Complainant to establish the disputed domain name is identical or confusingly similar to a trademark or a service mark in which it has rights.

The disputed domain name contains the Complainant’s trademark INDIA TV along with the numeral 10. The Panel finds from the Respondent’s email, that the Respondent has clearly recognized and identified the Complainant as the owner of the INDIA TV brand or trademark. Further, trademark registration is prima facie evidence or proof of rights in a mark. The Complainant has provided evidence of its registered ownership for multiple trademark registrations bearing the INDIA TV mark in several classes. There is therefore no ambiguity regarding the Complainant’s ownership rights in the INDIA TV mark.

The Complainant’s trademark INDIA TV is the primary part of the disputed domain name. The numeral “10”, does not lessen the confusing similarity or the over-all impression of similarity of the disputed domain name with the mark. The trademark INDIA TV is the focal part of the disputed domain name.

It is therefore found, that the disputed domain name is confusingly similar to a mark in which the Complainant has rights. The Complainant has successfully established the first requirement under paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

The Complainant, under paragraph 4(a)(ii) of the Policy is required to make a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Complainant has submitted that the Respondent is not known by the disputed domain name and further has not been given any authorization to use its mark. Therefore, the Complainant has submitted that the Respondent intends to exploit the reputation associated with the mark by its unauthorized use in the disputed domain name.

If the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests, the burden of production shifts to the Respondent to come forward with evidence demonstrating its rights or legitimate interests in the disputed domain name. If the Respondent does not establish rights or legitimate interests in the disputed domain name, the Complainant is deemed to have successfully made a prima facie case. (See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 2.1.

The Respondent has mentioned in his email that the disputed domain name was used for purposes of running a local news portal. The Panel finds the Respondent has registered the disputed domain name subsequent to the Complainant’s adoption, extensive use, obtaining trademark registrations and after the INDIA TV mark has become well-known and associated with the Complainant’s services.

The only plausible explanation for the Respondent’s registration and use of the disputed domain name, under the described circumstances, is to exploit the reputation associated with the Complainant’s mark in an unauthorized manner. The Respondent’s use of the disputed domain name is not bona fide as it seeks to trade on the fame associated with the Complainant‘s mark. Such use is not a basis to find any rights or legitimate interests in the disputed domain name.

Accordingly, it is found that the Complainant has successfully made a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not come forward with evidence of a nature to rebut the Complainant’s prima facie case. Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The third element of paragraph 4 (a) of the Policy requires the Complainant to establish the disputed domain name has been registered and is being used in bad faith by the Respondent.

Under paragraph 4(b)(iv) of the Policy, where there are circumstances to suggest there is deliberate and misleading use of another’s trademark for the purpose of diverting Internet users looking for sites associated with the owner of that trademark to the respondent’s website for commercial gain, bad faith registration and use can be found. By using the trademark in the disputed domain name, the Respondent has intentionally attempted to attract Internet users to his website by creating a likelihood of confusion with the Complainant’s mark as to the website’s source, sponsorship, affiliation or endorsement.

Notwithstanding the Respondent’s statements, the circumstances of this case, including the presence of commercial advertising on the Respondent’s website, show the domain name was registered by the Respondent with an intention to attract Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s well-known mark as to the source, sponsorship, or endorsement of the Respondent’s website, which is indicative of bad faith registration and use under paragraph 4(b)(iv) of the Policy. Based on these findings, the Panel concludes that the Complainant has successfully established the third element under paragraph 4(a)(iii) of the Policy, that the disputed domain name was registered and is being used in bad faith.

7. Decision

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 <indiatv10.com> be transferred to the Complainant.

Harini Narayanswamy
Sole Panelist
Date: October 5, 2017