The Complainant is FDC Limited, India, represented by Fidus Law Chambers, India.
The Respondent is Electronica Digital ELECTRAL Cia. Ltda., Ecuador.
The disputed domain name <electral.com> is registered with Network Solutions, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 21, 2020. On November 23, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 24, 2020, the Registrar transmitted by email to the Center its verification response:
(a) confirming it is the Registrar for the disputed domain name;
(b) confirming that the Respondent is listed as the registrant and the contact details are correct;
(c) indicating the language of the registration agreement is English;
(d) confirming that the registration agreement included an acknowledgement that the disputed domain name was registered subject to the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”).
The Complainant submitted an amended Complaint amending the Mutual jurisdiction on November 26, 2020.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Policy, 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 November 26, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 16, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 17, 2020. The Center appointed Warwick A. Rothnie as the sole panelist in this matter on December 28, 2020. 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 an Indian company which manufactures and distributes healthcare products. The business was initially started as a partnership in 1936. In 1940, the business was incorporated as a private limited company. After some name changes, the Complainant was converted into a publicly listed company in September 1988. It has been listed on the Bombay and National Stock Exchanges of India since 1996.
The Complainant currently manufactures and sells some 300 products. It has four separate R & D laboratories in India and over 150 patents and patent applications. Its manufacturing facilities for the production of Active Pharmaceutical Ingredients have been accredited by the regulatory authorities in, amongst others, the United States of America (the Food & Drug Administration), the United Kingdom, South Africa, and Brazil.
According to the Complaint, the Complainant coined the term “Electral” in 1968. It has been using this trademark to market one of its products, an oral rehydration salt, since 1972. The Complainant claims that this product is the market leader in its category in India with around 70% market share. The Complainant exports its “Electral” product to a number of other countries including Ethiopia, Myanmar, Mozambique, Tanzania, Botswana, Oman, and Zimbabwe. The Complainant has also offered its “Electral” product for sale since 2000 from its website at “www.fdcindia.com”.
The Complaint includes an annexure setting out the revenues and promotional and marketing expenditure for the Complainant’s “Electral” products for each year since 1972-1973. These include the following amounts:
|
Year |
Revenue |
|
Expenditure |
|
|
1972-1973 |
995,000 |
13,600 |
112,000 |
1,533 |
|
2010-2011 |
662,318,616 |
9,064,102 |
30,242,078 |
413,875 |
|
2011-2012 |
607,467,954 |
8,313,448 |
30,141,095 |
412,493 |
|
2018-2019 |
1,433,718,734 |
19,621,028 |
103,044,410 |
1,410,205 |
The Complainant has registered 12 trademarks in India for ELECTRAL as a word mark only or as part of a label. These registrations include:
(a) Indian Registered Trademark No. 251,636, ELECTRAL, in International Class 5 which was registered on September 12, 1968; and
(b) Indian Registered Trademark No. 356,663, ELECTRAL label, in International Class 5 which was registered on December 19, 1979.
The other registrations range in date from 1997 to 2019. In addition, the Complainant has an International Registration, No. 1505521, for ELECTRAL in International Class 5 which was registered on November 5, 2019. Through this International Registration, the Complainant has registered trademark protection for ELECTRAL also in Botswana, Curaçao (Netherlands), Kazakhstan, Kenya, Mozambique, Namibia, New Zealand, Oman, Russian Federation, Sudan, and Uzbekistan.
The Complainant states that the Respondent registered the disputed domain name on September 23, 2012.
The disputed domain name currently resolves to a website which displays two device marks and what appears to be the Respondent’s address. One of the device marks is the word ELECTRAL in a slightly stylized presentation with a C-section tilted on a 45º angle with a diamond solid inside it.
The other device is a stylised version of the word VIRTUAL E.
So far as records stored on the Wayback Machine show, the webpage has taken this form since around December 2014. In May 2013, the webpage stored by the Wayback Machine redirected to a webpage at “www.electral.net”. This webpage displayed the ELECTRAL device described above, two other devices and the same address details. The other two devices were a “Dell Partner Direct Premier” badge and a “VMware Partner Professional Solution Provider” badge. The domain name <electral.net> currently resolves to a page which features the same two devices and business address as the webpage to which the disputed domain name resolves.
No response has been filed. The Complaint and Written Notice have been sent, however, to the Respondent at the electronic and physical coordinates confirmed as correct by the Registrar in accordance with paragraph 2(a) of the Rules. The courier attempting delivery of the Written Notice was unable to complete the delivery, noting simply “bad address”. Bearing in mind the duty of the holder of a domain name to provide and keep up to date correct WhoIs details, therefore, the Panel finds that the Respondent has been given a fair opportunity to present its case.
When a respondent has defaulted, paragraph 14(a) of the Rules requires the Panel to proceed to a decision on the Complaint in the absence of exceptional circumstances. Accordingly, paragraph 15(a) of the Rules requires the Panel to decide the dispute on the basis of the statements and documents that have been submitted and any rules and principles of law deemed applicable.
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:
(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.
The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant’s trademark rights.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark at the date the Complaint was filed and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.
The Complainant has proven ownership of the registered trademarks for ELECTRAL referred to in Section 4 above.
The second stage of this inquiry simply requires a visual and aural comparison of the disputed domain name to the proven trademarks. Questions such as the scope of the trademark rights, the geographical location of the respective parties and other considerations that may be relevant to an assessment of infringement under trademark law are not relevant at this stage. Such matters, if relevant, may fall for consideration under the other elements of the Policy. e.g. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Overview 3.0), section 1.7.
In undertaking that comparison, it is permissible in the present circumstances to disregard the generic Top Level Domain (“gTLD”) component as a functional aspect of the domain name system. WIPO Overview 3.0, section 1.11.
Disregarding the “.com” gTLD, the disputed domain name consists of the Complainant’s registered trademark alone. Accordingly, the Panel finds that the Complainant has established that the disputed domain name is identical with the Complainant’s trademarks and the requirement under the first limb of the Policy is satisfied.
In the circumstances of this case, the Panel considers it appropriate to address the third requirement under the Policy next.
Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent. These are conjunctive requirements; both must be satisfied for a successful complaint: see e.g. Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd, WIPO Case No. D2010-0470.
Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant.
In the present case, the Complainant points out that it has been using its trademark for over 40 years and has very substantial use, particularly in India but also in a number of other countries - what the Complainant describes as “an expanding global footprint”. It says, as a result, the Respondent should be deemed to have constructive notice of the Complainant and its trademark. The Complainant further points out that the webpage to which the disputed domain name resolves is not “a fully functioning website”, but does reference the Complainant’s trademark. Accordingly, the Complainant contends, the Respondent should be found to have registered and is using the disputed domain name to block the Complainant from registering its trademark as a domain name and to take advantage of the confusion resulting from the disputed domain name’s resemblance to the Complainant’s trademark.
As recorded in Section 4 above, the sales and promotional expenditure by the Complainant under its trademark are substantial. They are significantly more substantial in recent times compared to 2011 and 2012 when the Respondent registered the disputed domain name. Nonetheless, the sales in 2011 and 2012 were substantial.
The countries where the Complainant says it has exported its products to do not include Ecuador. Nor do the countries where the Complainant has registered its trademark. However, it is well-recognised under the Policy that the global reach of the Internet and the facility provided by search engines means that the apparent lack of trading activity in Ecuador does not necessarily preclude a finding of registration in bad faith. Examples of the application of this principle can be seen in WIPO Overview 3.0, section 3.2.2 and 3.2.3.
As recorded in section 3.2.2 of the WIPO Overview 3.0, however, panels rarely apply the concept of constructive notice outside disputes between parties located in the United States of America involving federally registered trademarks unless there are additional factors present which put, or should have put, the respondent on inquiry. Examples of cases where a respondent has been found at least to have been put on inquiry include Supermac’s (Holdings) Limited v. Domain Administrator, DomainMarket.com, WIPO Case No. D2018-0540 and Research In Motion Limited v. Privacy Locked LLC/Nat Collicot, WIPO Case No. D2009-0320 (which is discussed further below).
In the present case, the Panel accepts that it was certainly possible that the Respondent knew of the Complainant and its trademark when registering the disputed domain name. The Panel also accepts that the term “electral” is for present purposes a fancy or coined term and distinctive of the Complainant’s goods.
The Panel also accepts that the website to which the disputed domain name resolves is rudimentary, to say the least.
The Respondent has held the disputed domain name, however, for some eight years. Throughout that period, it has never referenced products of the type manufactured by the Complainant or medical or pharmaceutical products.
Moreover, the disputed domain name appears to be derived from the Respondent’s corporate name. That name and the content of the Respondent’s website, such as it is, is suggestive of a business or organisation involved in digital electronics or computer / IT related activities. For example, the first two words of the Respondent’s name, “electronica digital”, translate from the Spanish into English as “digital electronics”.
The term “electral” is also not directly descriptive of electronics or computer / IT products or activities. It is, however, a fairly obvious contraction of the terms “electronica digital”.
There is no information about when the Respondent was incorporated as a company or when it adopted its name. The Respondent has not submitted a Response providing that information. That is information, however, which should be readily ascertainable by the Complainant. For example, a simple Google search on the Respondent’s name reveals that a company report by an organisation called EMIS is available inexpensively for a company having the Respondent’s name and address as at January 2020.2 Another report is available from Dunn & Bradstreet (at <dnb.com>) for a company of that name with an address different to that provided by the Registrar, but in the same city in Ecuador. The summary information available on both sites for free state the company was incorporated in 1982.
The case referenced by the Complainant in support of the Complaint are very different circumstances.
In SembCorp Industries Limited v. Hu Huan Xin, WIPO Case No. D2001-1092, the respondent claimed that he derived the domain name <sembcorp.com> as an acronym for a proposed business adventure he and a friend were proposing to establish under the name “Sino Edward and Michael Business Corporation”. The complainant in that case was one of the largest engineering and construction groups in Asia with a market capitalisation of USD 2.8 billion and had substantial business activities where the respondent was based. The panel described the claimed derivation of the domain name as “far fetched”. While it may not be necessary to go that far to discredit such a claim, the circumstances of the case are very different to the present case.
The case of Bruichladdich Distillery Company Limited v. Johannes Iga Schneemann, WIPO Case No. D2014-0168 involved the domain name <octomore.net>. The panel considered that the complainant’s trademark, OCTOMORE for whisky, was not widely known on the basis of the materials provided. However, the panel accepted the respondent was aware of it when registering the domain name. In addition, the panel rejected the respondent’s claim that he registered the domain name in connection with a proposed business. The domain name was not derived from the respondent’s name. The domain name had not been used at all and the respondent did not provide any evidence to support demonstrating that plans for its development or launch were on foot.
The decision in Research In Motion Limited v. Privacy Locked LLC/Nat Collicot, WIPO Case No. D2009-0320 concerned the domain name <backberry.com> at a time when Research In Motion Limited’s “Blackberry” devices had for several years had extremely wide market penetration throughout the world. The respondent had acquired the domain name as part of a bulk purchase and it was “parked” to generate pay-per-click advertising revenues. The very experienced panel explained:
“is it likely that the Respondent knew of the Complainant’s BLACKBERRY trade mark when he acquired the Domain Name? Yes. Would he have appreciated that the Domain Name was clearly intended to be a confusingly similar mis-spelling of the Complainant’s trade mark? Yes. Would he have appreciated that the use to which the Domain Name is being put is an abusive use of the Domain Name within the meaning of paragraphs 4(b)(iv) and 4(a)(iii) of the Policy? Yes.”
As with the SembCorp Industries case, supra, the Panel does not consider the circumstances of the Research In Motion case are analogous to the present case.
Similarly, Telstra Corporation Limited v Nuclear Marshmallows, WIPO Case No. D2000-0003 referenced by the Complainant is a very different case. Apart from anything else, the panel in that case found that “it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate”.
The Panel is conscious that it was not possible to deliver the Written Notice of the Complaint to the address verified as correct by the Registrar. The provision of a false address can be a basis for inferring registration and use in bad faith. The Panel is not prepared to draw that inference in the present case given the matters already referred to including, in particular, the Respondent has held the registration for some eight years and, presumably, has needed to renew the registration at various points.
In these circumstances, therefore, the Panel is unable to find that the Respondent registered the disputed domain name in bad faith.
As the Complainant must establish to the required standard that the disputed domain name was registered in bad faith, therefore, the Complaint must fail.
As the Complaint must fail in any event, it is unnecessary and would serve no good purpose to address this requirement under the Policy.
For the foregoing reasons, the Complaint is denied.
Warwick A. Rothnie
Sole Panelist
Date: January 8, 2021
1 The amount in US dollars (USD) is a conversion at current exchange rates intended to provide a rough illustration only.
2 https://www.emis.com/php/company-profile/EC/Electronica_Digital_Electral_C_Ltda_en_3977895.html.