Complainant is Athena Infonomics India Private Limited of Chennai, India, represented by Eshwars - House of Corporate and IPR Laws, India.
Respondent is Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States of America / Renji Mathew of Windsor, Ontario, Canada.
The disputed domain name <athenainfonomics.com> (the "Disputed Domain Name") is registered with GoDaddy.com, LLC (the "Registrar").
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 14, 2017. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On September 16, 2017, 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 September 19, 2017, 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 September 21, 2017.
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 Respondent of the Complaint, and the proceedings commenced on September 22, 2017. In accordance with the Rules, paragraph 5, the due date for Response was October 12, 2017. The Center received an email communication from Respondent on September 21, 2017, and pursuant to paragraph (2)(h)(iii) of the Policy, the communication was copied to Complainant. An informal Response was filed with the Center on October 13, 2017.
The Center received an unsolicited supplemental filing from Complainant on September 25, 2017.
The Center appointed David H. Bernstein as the sole panelist in this matter on October 19, 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.
Complainant is Athena Infonomics India Private Limited, a policy research and development analytics firm that was incorporated in 2010. Complainant currently operates at the domain name <athenainfonomics.in>, which Complainant created on July 5, 2011. Complainant registered this domain name, along with several other domain names, consisting of generic and country code top level domains in combination with the second level domain "athenainfonomics." Complainant is also the owner of the trademark INFONOMICS, which was registered with the Indian Trademarks Registry, under classes 35 and 42, as of December 27, 2016 and December 28, 2016, respectively. Complainant has submitted applications for the trademark ATHENA INFONOMICS, under classes 35 and 42; those applications are still pending.
In 2010, Complainant engaged OrangeLab Design Studios Private Limited ("OrangeLab") to register and maintain a domain name on Complainant's behalf, and to provide related hosting services. Complainant paid advances to OrangeLab for these services. At the time, Respondent was working as a software developer for OrangeLab. An OrangeLab director, whose credit card would not work, asked Respondent to register the Disputed Domain Name on behalf of Complainant. Respondent agreed and used his personal credit card to register the Disputed Domain Name. However, instead of registering it in Complainant's name, Respondent listed his own name under "Registrant Name." Since this registration on July 20, 2010, Respondent has refused to transfer the Disputed Domain Name to Complainant unless Complainant provides him with compensation (even though Complainant has already paid OrangeLab for the registration expenses).
Complainant's contentions are as follows:
Complainant contends that the Disputed Domain Name is identical to Complainant's common law trademark ATHENA INFONOMICS and is confusingly similar to Complainant's registered trademark INFONOMICS because the Disputed Domain Name incorporates those trademarks in their entirety.
Complainant contends that Respondent has no legitimate interests in or rights to the Disputed Domain Name. First, Complainant asserts that Respondent demonstrated an intention to extort money from Complainant. As an example, Complainant points to an email correspondence from May 2011, in which Respondent, in response to a request to transfer the Disputed Domain Name, indicated that he would only sell the Disputed Domain Name. In the email, Respondent demanded USD 3500 in exchange for transfer, and explained that this was necessary to recoup some of the losses he had incurred from his dealings with OrangeLab. Complainant contends that this intention to extort money was further evidenced by Respondent's 2013 email, urging Complainant to purchase the Disputed Domain Name before Respondent accepted the offer of a competitor, as well as Respondent's 2015 email, offering to sell the Disputed Domain Name for USD 2500, in response to an email from Complainant's legal counsel. Second, Complainant argues that by virtue of its business relationship with OrangeLab, Respondent was instructed to register the Disputed Domain Name on behalf of Complainant and had knowledge of Complainant's trademarks at the time of registration. Third, Complainant contends that Respondent is not commonly known by the trademarks associated with the Disputed Domain Name and that Respondent is not using the Disputed Domain Name for a bona fide offering of goods or services. Fourth, Complainant contends that the Disputed Domain Name contains the entirety of the INFONOMICS and ATHENA INFONOMICS trademarks, and that Complainant has not licensed or otherwise permitted Respondent to use those trademarks.
Complainant contends that Respondent registered and is using the Disputed Domain Name in bad faith. In support of this contention, Complainant notes that its trademarks are distinctive and have acquired strong reputation and goodwill as a result of substantial press coverage and publicity. Complainant further contends that Respondent registered the Disputed Domain Name for and on behalf of Complainant, but then refused to transfer the Disputed Domain Name unless Complainant would pay monetary consideration. In support of this contention, Complainant points to email correspondences in which Respondent consistently rebuffed offers to settle amicably and to transfer the Disputed Domain Name. Throughout these email communications, Respondent made monetary demands of USD 3500, USD 2500, and USD 2200, fees far in excess of the cost of registration and maintenance of the Disputed Domain Name. Moreover, Complainant notes that Respondent passively held the Disputed Domain Name until June 16, 2017, at which point Respondent set up a domain-forwarding from the Disputed Domain Name to <athenainfonomics.in>, and continued to demand monetary compensation for the transfer of the Disputed Domain Name.
Complainant also contends that Respondent registered the Disputed Domain Name in bad faith. Complainant argues that Respondent, who was professionally engaged by OrangeLab, knew that Complainant's consent to registration by OrangeLab's personnel was conditioned upon the retention of complete control over the Disputed Domain Name. Complainant further notes that Respondent, in spite of this knowledge, registered the Disputed Domain Name under his personal name.
Respondent asserts that he held the Disputed Domain Name in order to recoup some of the money he lost from his dealings with OrangeLab. In his email Response to the Complaint, Respondent stated the following, which comprises the entire substantive portion of Respondent's Response:
"6 years ago i was developing a software and i used a company called orangelab in India to do the development. during the course of the project, i realize the company i am dealing with is not capable or willing to complete the project and subsequently i lost the contract and had to fork out 1000s of dollars. during the course of the development, company director called me over the phone and asked me if i could register a domain name because his credit card didn't work. i said ok and i registered using my credit card under my name. after i lost so much money, i realize i had to hold on to this domain to recoup some money i lost because of their inability to complete the project.
so when the company called Athena Infonimics contacted 5-6 years ago, i said this is what happened and i can sell this domain to you for a price. Please note, i purchased this domain using my credit card and i NEVER had any contract or dealings with the Athena infonimics about purchase of the domain. as far as i believe, i legally own this domain and if they want to purchase this domain they should offer the value i am asking for.
i know they have a law firm backing them up, but as far as i concern i am the legal owner of this domain and have been renewing them ever since and if they want, they can buy it from me for a price." See email Response from September 21, 2017.
Pursuant to paragraph 4(a) of the Policy, 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.
(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 bears the burden of proof with respect to each of the aforementioned elements. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, ("WIPO Overview 3.0"), section 2.1 (explaining that the overall burden of proof is on the complainant). The Panel shall evaluate whether Complainant has met this burden of proof, according to paragraph 15(a) of the Rules, which states: "[a] Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
As noted above, Complainant has submitted a Supplemental Submission. The Panel has not considered this Supplemental Submission as it did not include any facts or arguments that could not have been anticipated at the time of the Complaint and discussed in the Complaint. See generally, WIPO Overview 3.0, section 4.6.
Complainant has submitted evidence that establishes its ownership of the INFONOMICS and ATHENA INFONOMICS trademarks. Specifically, Complainant has demonstrated ownership of the registered trademark INFONOMICS. Complainant also has established ownership of the common law trademark ATHENA INFONOMICS through the submission of news articles, media recognition and publicity materials, which reference and use the ATHENA INFONOMICS trademark. See Complaint, Annexure 6. Respondent has not refuted these facts.
It is undisputed that the Disputed Domain Name is identical to the ATHENA INFONOMICS trademark and encompasses the entirety of the INFONOMICS trademark. Therefore, the Panel finds that the Disputed Domain Name is identical to Complainant's trademarks for the purposes of the Policy. See WIPO Overview 3.0, section 1.7 (explaining that, "in cases where a domain name incorporates the entirety of a trademark … the domain name will normally be considered confusingly similar to that mark").
Accordingly, the Panel concludes that Complainant has established the first element of paragraph 4(a) of the Policy.
Complainant has asserted that Respondent, who was instructed to register the Disputed Domain Name for Complainant, improperly registered the Disputed Domain Name in his own name and has since held the Disputed Domain Name hostage. Complainant further asserts that Respondent has attempted to extort money from Complainant. These facts are sufficient to establish a prima facie case that Respondent has no rights or legitimate interests in the Disputed Domain Name.
Where a complainant makes the requisite prima facie showing that a respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent. If the respondent fails to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name, the complainant is deemed to have satisfied the second element of paragraph 4(a) of the Policy. See generally WIPO Overview 3.0, section 2.1.
Here, Respondent has failed to come forward with any rebuttal evidence establishing that he has rights or legitimate interests in the Disputed Domain Name. To the contrary, Respondent's email serves only to confirm his lack of rights. Respondent admits that he registered the Disputed Domain Name at the request of OrangeLab on behalf of a company for whom OrangeLab was doing work, admits that he registered the Disputed Domain Name in his own name, admits that he refused to transfer the Disputed Domain Name unless Complainant would purchase it from him, and purports to explain that he kept the Disputed Domain Name because he needed "to recoup some money [he] lost because of [OrangeLab's] inability to complete [Respondent's software development] project." Quite apart from establishing any rights of his own, Respondent's admission establishes that Respondent has no rights or legitimate interests in the Disputed Domain Name, and that he is merely holding it hostage because he claims to be owed money by his former employer. Whatever dispute Respondent may have with OrangeLab does not give Respondent the right to hold an OrangeLab client's property - here the Disputed Domain Name - hostage. See generally CCTV Outlet, Corp. v. Moises Faroy, WIPO Case No. D2015-0682 (UDRP may be implicated in appropriate cases when "allegations of cybersquatting are presented within the context of a broader dispute between former partners," and noting that panels "must disregard disputes that are outside the allegations of cybersquatting and instead focus on whether, as part of the parties' business dispute, the [r]espondent is guilty of abusive cybersquatting").
Accordingly, the Panel concludes that Complainant has established the second element of paragraph 4(a) of the Policy.
The same admissions that prove Respondent's lack of rights or legitimate interests also prove that Respondent's registration and use of the Disputed Domain Name were in bad faith. Respondent was supposed to have registered the Disputed Domain Name for the benefit of Complainant; instead, without authorization, he registered the Disputed Domain Name in his own name and has held the Disputed Domain Name hostage. Although Respondent claims that he is only trying to recoup money that Respondent claims is owed to him by OrangeLab, this alleged dispute does not justify the bad faith conduct towards Complainant. Respondent's admitted conduct supports a strong inference that Respondent registered the Disputed Domain Name in his own name in order to control the ultimate disposition of the Disputed Domain Name. Furthermore, Respondent has conceded that his plan is to hold the Disputed Domain Name hostage, which is further evidence of abusive cybersquatting. See generally WIPO Overview 3.0, section 3.1; see also, Policy, paragraph 4(b)(i).
Complainant is able to establish bad faith as of the time of registration, even though Respondent registered the Disputed Domain name in 2010, before Complainant developed trademark rights in INFONOMICS and ATHENA INFONOMICS in 2011. The consensus view of UDRP panels is that, "where a respondent registers a domain name before the complainant's trademark rights accrue, panels will not normally find bad faith on the part of the respondent," WIPO Overview 3.0, section 3.8.1. However, UDRP panels have also noted that in some exceptional cases, complainants may be able to prove bad faith where a respondent tries to capitalize unfairly on a complainant's nascent (typically as yet unregistered) trademark rights. WIPO Overview 3.0, section 3.8.2. This is one of those exceptional cases. Respondent was asked to register the Disputed Domain Name on behalf of Complainant, which, in 2010, was a newly incorporated business. The nascent nature of Complainant's rights in the INFONOMICS and ATHENA INFONOMICS trademarks in 2010 does not prevent Complainant from succeeding in this action. Here, Respondent was aware of Complainant, and was working for a company hired to help Complainant establish this critical domain presence. As a result, the Panel finds that Respondent registered the Disputed Domain Name in bad faith.
Accordingly, the Panel concludes that Complainant has established the third element of paragraph 4(a) of the Policy.
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 <athenainfonomics.com> be transferred to Complainant.
David H. Bernstein
Sole Panelist
Date: November 1, 2017