Interactive Data Corporation v. Maharaja
Global c/o Tamal Das Gupta
Claim Number: FA1001001305447
PARTIES
Complainant is Interactive Data Corporation (“Complainant”), represented by Ronald E. Shapiro, of Shapiro and Silverstein PLLC, Virginia, USA. Respondent is Maharaja Global c/o Tamal Das Gupta (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <esignalindia.com>, registered with Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com.
PANEL
The undersigned certifies that he or she has acted independently and
impartially and to the best of his or her knowledge has no known conflict in
serving as Panelist in this proceeding.
Bruce E. O’Connor as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on January 29, 2010. With
its Complaint, Complainant also chose to proceed entirely electronically under
the new Rules for Uniform Domain Name Dispute Resolution Policy (“Rules”) and
the new Forum’s Supplemental Rules for Uniform Domain Name Dispute Resolution
Policy (“Supplemental Rules”) by submitted an “opt-in” form available on the
Forum’s website.
On January 29, 2010, Directi Internet Solutions Pvt. Ltd. d/b/a
Publicdomainregistry.com confirmed by e-mail to the National Arbitration Forum
that the <esignalindia.com>
domain name is registered with Directi Internet Solutions Pvt. Ltd. d/b/a
Publicdomainregistry.com and that the Respondent is the current registrant of
the name. Directi Internet Solutions
Pvt. Ltd. d/b/a Publicdomainregistry.com has verified that Respondent is bound
by the Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com
registration agreement and has thereby agreed to resolve domain-name disputes
brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute
Resolution Policy (the “Policy”).
On February 12, 2010, the Forum served the Complaint and all Annexes,
including a Written Notice of the Complaint, setting a deadline of March 4,
2010 by which Respondent could file a Response to the Complaint, via e-mail to
all entities and persons listed on Respondent’s registration as technical,
administrative, and billing contacts, and to postmaster@esignalindia. Also on February 12, 2010, the Written Notice
of the Complaint, notifying Respondent of the email addresses served and the
deadline for a Response, was transmitted to Respondent
via post and fax, to all entities and persons listed on Respondent’s
registration as technical, administrative and billing contacts.
Respondent did not indicate assent to participate in an electronic
process; therefore Respondent’s submission was required to be sent in hard copy
per the version of Rule 5 currently in effect.
A Response was received on March 4, 2010, that was deemed deficient by
the National Arbitration Forum because it was not received in hard copy prior
to the Response deadline.
On March 15, 2010, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Bruce E. O’Connor as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
The complaint is based upon the following United States registrations,
which are owned by Interactive Data Corporation:
i. Registration No.: 2,432,180
A. Mark: ESIGNAL
B. First Use in Commerce: At least as early as May 3, 1999
C. Registration Date: February 27,2001
D. Description of Services: In international Class 36 - financial
market
quotes; news, information, analysis, and commentary all related to
financial markets and investments; all provided via a global computer network;
and in International Class 42 - news agencies, namely, gathering news and
disseminating news via a global computer network
ii. Registration No.: 3,113,831
A. Mark: eSignal Pro
B. First Use in Commerce: At least as early as March 21,2001
C. Registration Date: July 11, 2006
D. Description of Services: In International Class 36 - financial
market
quotes; news, information, analysis, and commentary all related to
financial markets and investments; all provided via a global computer network;
and in International Class 41 - news agencies, namely, gathering news and
disseminating news via a global computer network.
Interactive Data Corporation has made continuous use of the
above-described registered service marks in connection with its provision of
the aforementioned services since registration. In connection with its
provision of such services, Interactive Data Corporation has continuously
operated the website <esignal.com> since 1999.
The domain name <esignalindia.com> is virtually identical and
confusingly similar to the service mark ESIGNAL, in which Complainant has
rights under Registration No. 2,432,180.
In this case, the term "india" does not alter or detract from
the overall impression of the dominant part of the domain name (Comp1ainant's
mark), which denotes the services of Complainant. "India" is simply a
geographically descriptive term denoting that Registrant directs at least a
portion of its services to providing data on stocks, futures and commodities in
India. It has little, if any, trademark significance. By itself,
"india" cannot serve as a source identifier or trademark and does not
affect the virtual identity of the domain name and the mark.
Similarly, for the reasons enumerated above, and as hereinafter
described, the domain name <esignalindia.com> is virtually identical or
confusingly similar to the service mark eSignal Pro, in which Complainant has
rights under Registration No. 3, 113,831. The only difference between
<esignalindia.com> and eSignal Pro is the substitution of the descriptive
term "india" in the domain name for the term "Pro." Even if
a domain name is not identical to a Complainant's mark, it is confusingly
similar where it incorporates the primary, distinctive element of that mark.
Here,
Respondent has commandeered the use of Complainant's registered marks for its
own commercial benefit. Such use is in direct competition with Complainant. It
is inconceivable that Respondent could have registered the disputed domain
names in ignorance of Complainant's rights in the marks, since the goods and
services offered by Respondent on the <esignalindia.com> site are in
direct competition with those offered by Complainant. Even if Respondent were
to claim ignorance of Complainant, Complainant's federal registration of its
ESIGNAL mark prior to Respondent's registration of the <esignalindia.com>
domain name was constructive notice of Complainant's exclusive rights in the
ESIGNAL mark. As such, Respondent either knew, or should have known, of
Complainant when Respondent registered the <esigna1india.com> domain
name. Such knowledge at the time of registration, by itself, constitutes per se
bad faith registration.
Respondent is not commonly known by the domain name or any portion
thereof. In fact, according to the materials posted on the home page of the
<esignalindia.com> website, the copyright in the contents of the website
is owned by "FINOSYS." Moreover, the web page containing contact
information related to the website directs that correspondence be sent
to FINOSYS at an address that differs from that listed in the WHOIS registry
for the domain name <esignalindia.com>. In addition, the legal disclaimer
page of the website indicates that the "website site is owned by FINOSYS,
a firm under the Maharaja GLOBAL group of firms."
Respondent is not making legitimate noncommercial or fair use of the
domain name without the intent for commercial gain. The action of Respondent in
knowingly adopting a domain name similar to Complainant's marks creates a
presumption that the public will be deceived.
Respondent's registration and use of the disputed domain name is
intended to attract internet users to Respondent's competing website by
creating a likelihood of confusion with Complainant's ESIGNAL and eSignal Pro
marks as to the source, sponsorship, affiliation, and endorsement of
Respondent's goods and services. Internet users interested in web content of
the type provided by Complainant under its ESIGNAL and eSignal Pro marks and
pertinent to India are likely to search for that content by typing in the
disputed domain name, <esigna1india.com>. Once such users have arrived at
Respondent's site, they are likely to believe that the site is associated or
affiliated with Complainant due to the similarity of the content provided and
the similarity of the domain name to Complainant's marks. Even if the site informed
such users that it is not associated or affiliated with Complainant,
Respondent's use of the domain name would still infringe Complainant's marks
because of the initial interest confusion that drove those users to
Respondent's site in the first instance.
Further, Respondent's use of the domain name does not constitute fair
use. That Respondent's use of the domain name is for commercial gain is evident
from the fact that Respondent offers its goods and services (namely, its "Intra Day Data," "Intra Day Data for
Commodities," "End of Day Data," "Technical Analysis and
Education Course," and "Expert Trading System") for sale through
links on the home page of the <esigna1india.com> website. Such parasitic
use, which, at its essence, relies on instigating and exacerbating user
confusion, does not constitute bona fide noncommercial or fair use, and thus
does not give rise to any legitimate rights or interests in the domain name.
Given that Complainant and Respondent are competitors, "it is
reasonable to infer that Respondent registered and used the contested domain
name in order to disrupt Complainant's business."
Respondent is acting in bad faith by using the domain name to attract,
for commercial gain, internet users to its website by creating a likelihood of
confusion with Complainant's marks as to the source, sponsorship, affiliation,
or endorsement of Respondent's website or Respondent's products or services.
Respondent's registration and use of the <esignalindia.com> domain name
amount to an "attempt to 'piggyback' on the goodwill and brand
recognition created by the Complainant in its marks and is intended to confuse
consumers into believing the services provided by the Respondent are affiliated
with or endorsed by the Complainant, when, in fact, that is not the case.
B. Respondent
The two words “e” and “signal” both got their own meaning. “e” is very popular
abbreviated form of electronics and there are many sites in web, which starts
with “e” (the most famous are eBay etc). “e” may be
considered the most generic term in virtual world just like “signal” is also
very generic term in the world of science and technology. The Complainant
cannot claim exclusive rights on these two words simply because they have
registered them.
India is a geographic term, without going into the legal documentation
as quoted by the Complainant, it may be noted that the “Air India” and “Air
France” are not same though they are providing similar services. Similarly
whether America online is same as India online may please be left to discretion
of netzens.
So esignal and esignal
It is not confusing because as per web design, packaging, product,
pricing, location, company status, target customers are concern esignalindia is
different in all respect to the Complainant.
Respondent is mainly a data vendor for one specific third party
software; technical analysis course is based on general principles of Technical
analysis. Respondent provides data for very limited selected exchanges like lot
of other data vendors provides in India. Where as the Complainant provide 100s
exchanges. Respondent doesn’t provide any charting platform where as
Complainant provide highly commendable and efficient charting platform with
sophisticated packaging with high price range. The target of “esignal India” is
to provide low-cost data for the common man and small traders. The products
offered by “esignalindia” are limited to India only, where as the Complainant
offer much wider range of product and services worldwide. The Complainant is a
25 year’s old experienced company; we are touching 5 years only confined in
India having only one office at Kolkata, India. Hence the learned customers
(internet users) have little scope to confuse with esignalindia with the Complainant.
Finally, to avert any confusion a legal disclaimer is put up on the
site categorically allying any confusion in this regard. The
Panel is also requested to clarify the legal “locus standee” of disclaimer
while delivering judgment on this case.
Regarding “eSignal Pro”, it may be mentioned that the name is
registered on July 11, 2006 and the domain name in dispute was created in
November 5. 2005. Therefore, if that domain name is alleged for confusing
similarity since it came into existence on a later date than ESIGNAL, the same
charge can be leveled against eSignal Pro by this Respondent on the same
ground.
Respondent doesn’t have any intention to compete directly or indirectly
with the Complainants. There are differences in almost all respects. There are
two remote similarities: the data
(graph) National Stock Exchange of India (NSE) and Indices,
includes NIFTY of selected scrips, and Multi Commodity Exchange India (MCX) of
selected scrips. Moreover the
Complainant’s data is better in quality, with longer back history and superior
technique, higher priced and packaging in all respect. There are lots of data
vendors in India who provide data like Respondent, which doesn’t provide any
own charting software like the Complainant. Targeted customers are also
different because Respondent caters to very low-end clients that may be seen
from the price comparison between the two concerns.
FINOSYS is a proprietary firm having much lesser turnover. The target
is to provide low priced solution to low budget traders comprising of most
common people. To keep the product price low, Respondent reduced its overhead
by not registering the name (sic) which otherwise costs substantial amount of
money in India, no other intention is there. Moreover if Respondent was aware
of this Policy and some how expected the objection of the Complainant,
Respondent would not go for this domain name with investing money in booking and maintenance from last 5
years.
Respondent find the allegation, that it is not commonly known by the
domain name, to be not acceptable since the Complainant i.e. Interactive Data
Corporation is also not known by their domain names. The only
difference between us that they have registered the names (sic).
Respondent makes an argument concerning “intraday data” that is not
understood by the Panel.
If Internet users type in search <esignalindia.com>in normal
process they will get Respondent’s website details. If they type “esignal” they will get the web
details of the Complainant details only.
Nothing confusing with that, it means the Internet user is well aware of
what he is searching for.
Respondent has not registered or not acquired the domain name primarily
for the purpose of selling, renting, or otherwise transferring the domain name
registration to the Complainant or to the competitor of the complaint, for
valuable consideration in excess of Respondent’s out–of–pocket costs directly
related to the domain name in dispute.
Respondent never has tried to contact or what so ever to the
Complainant for any monetary gain in lieu of the domain name in dispute
Respondent has not engaged intentionally in pattern of any conduct to
prevent the Complainant of the trademark or service mark from reflecting the
mark in a corresponding domain name.
Respondent has no intention disrupting the business of the Complainant
because the parties have very littlie similarity in product, pricing etc.
Respondent has not intentionally attempted to attract, for commercial
gain, internet users to its website or other on- line location, by likelihood
of confusion with the Complainant’s mark as to the source, sponsorship,
affiliation, or endorsement of Respondent’s website or location or of a product
or services on its website or location.
Respondent’s website is a self-explainer regarding source, sponsorship,
affiliation, or endorsement and Respondent has already mentioned all the differences
and negligible similarity (if any) with the Complainant.
FINDINGS
Deficient Response
Although Respondent did not expressly assent
to electronic processing of this matter, the Respondent did electronically and
timely file the Response (constituting an implied assent to electronic
processing). The Panel finds that
Respondent’s technical violation of the Rules as recently amended should not
bar consideration of the Response. See J.W. Spear &
Sons PLC v. Fun League Mgmt., FA
180628 (Nat. Arb.
Forum Oct. 17, 2003) (finding that where the respondent submitted a timely
response electronically, but failed to submit a hard copy of the response on
time, “[t]he Panel is of the view that given the technical nature of the breach
and the need to resolve the real dispute between the parties that this
submission should be allowed and given due weight”).
Policy
The Panel finds that Complainant has rights in the ESIGNAL and eSignal
Pro trademarks and that the disputed domain name is confusingly similar to
those trademarks. The Panel finds that
Respondent has no rights or legitimate interests in and to the disputed domain
name. Finally, the Panel finds that
Complainant has failed to establish that Respondent registered and used that
domain name in bad faith.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution
Policy (the “Rules”) instructs this Panel to “decide a complaint on the basis
of the statements and documents submitted in accordance with the Policy, these
Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy requires that the Complainant must prove
each of the following three elements to obtain an order that a domain name
should be cancelled or transferred:
(1)
the
domain name registered by the Respondent is identical or confusingly similar to
a trademark or service mark in which the Complainant has rights;
(2)
the
Respondent has no rights or legitimate interests in respect of the domain name;
and
(3)
the domain name
has been registered and is being used in bad faith.
Identical and/or Confusingly Similar
The Panel finds that Complainant has established rights in the ESIGNAL
mark pursuant to Policy ¶ 4(a)(i) through Complainant’s registration of the
mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,432,180 issued February
27, 2001). See Miller Brewing Co. v. Miller Family, FA 104177
(Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established
rights to the MILLER TIME mark through its federal trademark registrations); see also Microsoft Corp. v. Burkes, FA
652743
(Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the
MICROSOFT mark through registration of the mark with the USPTO.”).
The Panel finds that it is not
necessary for Complainant to have registered its ESIGNAL mark in the country of
Respondent’s residence (India). See Koninklijke
KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the
Policy does not require that the mark be registered in the country in which the
respondent operates; therefore it is sufficient that the complainant can
demonstrate a mark in some jurisdiction).
Complainant argues that Respondent’s <esignalindia.com> domain name is confusingly similar to
Complainant’s ESIGNAL mark pursuant to Policy ¶ 4(a)(i). Complainant alleges that Respondent’s
disputed domain name is comprised of Complainant’s mark, adds the
geographically descriptive term “India,” and adds the generic top-level domain
(“gTLD”) “.com.” The Panel finds that the addition of a geographically descriptive term to
a registered mark does not avoid confusing similarity. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007)
(finding that the addition of geographic terms, such as “cancun” to the end of
the CHEAPTICKETS mark in the <cheapticketscancun.com>,
<cheapticketscancun.biz>, <cheapticketscancun.net>, and
<cheapticketscancun.org> domain names, does not overcome a finding of
confusing similarity under Policy ¶ 4(a)(i)); see also Skype Ltd. & Gannett Co. v. Chan, D2004-0117 (WIPO
Apr. 8, 2004) (“…it is well established that a domain name consisting of a
well-known mark, combined with a geographically descriptive term or phrase, is
confusingly similar to the mark.”).
The Panel also finds that the
addition of a gTLD is irrelevant in distinguishing a disputed domain name from
an established mark. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb.
Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name
is irrelevant to a Policy ¶ 4(a)(i) analysis); see also Reese v. Morgan, FA 917029
(Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic
top-level domain “.com” is insufficient to differentiate a disputed domain name
from a mark).
Respondent contends that the use of a disclaimer on its web site allays
any confusion between the disputed domain name and the ESIGNAL mark.[1]
That disclaimer states, in part:
This website is owned by Finosys, a firm under the Maharaja GLOBAL
group of firms. Any similarity in name or whatsoever is purely
coincidental. Neither this site, nor anyone associated with Finosys and its web
site esignalindia.com, is responsible for any confusion or whatsoever in this
regard.
Just saying that similarity is coincidental and that Respondent is not
responsible for any confusion doesn’t make it so. Also notable is the fact that
Respondent’s disclaimer does not make any reference to Complainant, does not
appear on the main or initial page of Respondent’s web site, and can be reached
by the user only by clicking on a link on that main page.
Complainant has pointed out that the use of a confusingly similar domain
name results in “initial interest” confusion in which a user is drawn to
Respondent’s web site by the use of that domain name. See Sony Corporation v.
Times Vision, Ltd., FA 095686 (Nat. Arb. Forum, Mar. 9,2001)
(“Complainant contends that the facts of this case justify resort to the
doctrine of initial interest confusion … even though Internet users accessing a
domain name web site immediately realize that they have reached a site wholly
unrelated to the registered mark holder whose name is identical or similar to
the domain name used by another without permission of the holder of the mark,
the domain name operator will still have gained a customer by appropriating the
goodwill that the holder of the mark has developed. The Panel agrees that initial interest
confusion has occurred and will in the future occur regarding the domain name
JUMBOTRON.COM).
The Panel finds that Complainant has met its
burden of proof under ¶ 4(a)(i) of the Policy.
Rights or Legitimate Interests
Complainant must first make a prima facie case that Respondent
lacks rights and legitimate interests in the disputed domain name under Policy
¶ 4(a)(ii), and then the burden shifts to Respondent
to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t
Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the
complainant must first make a prima facie case that the respondent lacks
rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show
that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25,
2006) (“Complainant must first make a prima facie showing that Respondent does
not have rights or legitimate interest in the subject domain names, which
burden is light. If Complainant
satisfies its burden, then the burden shifts to Respondent to show that it does
have rights or legitimate interests in the subject domain names.”).
The Panel finds that Complainant has made such a prima facie showing.
Respondent is using the domain name in dispute for financial
informational services within the scope of those for which Complainant has
secured rights in the trademark ESIGNAL.
¶ 4(c) of the Policy lists three circumstances in particular,
without limitation, that demonstrate rights or legitimate interest of a domain
name registrant to a domain name, for the purposes of ¶ 4(a)(ii) of the
Policy:
(i) before
any notice of the dispute, the Respondent’s use of, or demonstrable
preparations to use the domain name or a name corresponding to the domain name
in connection with a bona fide
offering of goods and services; or
(ii) the
Respondent, as an individual, business, or other organization, has been commonly
known by the domain name, even if no trademark or service mark rights have been
acquired; or
(iii)
the Respondent is making a legitimate non‑commercial
or fair use of the domain name, without intent for commercial gain to
misleadingly divert consumers or to tarnish the trademark or service mark at
issue.
Complainant presents the relevant WHOIS information identifying the
registrant of the disputed domain name as “Maharaja Global c/o Tamal Das
Gupta.” There is no evidence in the
record to suggest that Respondent is otherwise commonly known by the disputed domain name. The Panel finds that Respondent is not
commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum
July 7, 2006) (concluding that the respondent was not commonly known by the
disputed domain names where the WHOIS information, as well as all other
information in the record, gave no indication that the respondent was commonly
known by the disputed domain names, and the complainant had not authorized the
respondent to register a domain name containing its registered mark); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent
has no rights or legitimate interests in a disputed domain name where there was
no evidence in the record indicating that the respondent was commonly known by
the disputed domain name).
Respondent’s disputed domain name resolves to a website offering
financial information services in exchange for fees. The Panel finds that this commercial use of
the disputed domain name makes the defense of ¶ 4(c)(iii)
unavailable to Respondent.
Regarding the defense of ¶ 4(c)(i), the issue
is whether Respondent made a bona fide
use of the Domain name in dispute prior to notification of this dispute.
The Panel disagrees with Complainant’s contention that its US
Registration provided constructive notice of the dispute. Only
The Complainant has not established any actual notification to
Respondent of this dispute, prior to these proceedings.
Was Respondent’s use prior to notification bona fide?
Respondent’s use postdates the establishment of Complainant’s rights in
the trademark ESIGNAL.
Both Complainant and Respondent provide real-time securities data to
their customers. Respondent provision of
such data is limited to three exchanges in India: the National Stock Exchange (NSE), the Bombay
Stock Exchange, and the Multi Commodity Exchange India (MCX). Complainant also provides such data for these
three Indian exchanges, and for many more exchanges worldwide[2]. Nothing has been shown to the Panel that
would preclude customers in India from using the services of Complainant, or
that would preclude customers in the US from using the services of Respondent,
to obtain data for securities on these three exchanges.
Complainant and Respondent are thus direct competitors, using domain
names (and trademarks[3])
that are confusingly similar.
Respondent’s contention that the components “e” and “signal” of the
ESIGNAL mark are generic, absent any evidence that the combination of those
letters is also generic, is immaterial to the issue of whether or not
Respondent’s use is bona fide.
Respondent’s contention that it provides a lower quality service than
does Complainant does not legitimatize its service. Rather, that contention supports
Complainant’s contention that Respondent’s use is not legitimate.
The Panel finds that Respondent’s use of the disputed domain name is
not a bona fide offering of goods and
services. See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb.
Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK
mark to market products that compete with Complainant’s goods does not
constitute a bona fide offering of goods and services.”).
Complainant has met its burden of proof under ¶ 4(a)(ii)
of the Policy.
Registration and Use in Bad Faith
The circumstances of ¶ 4(b) of the Policy are illustrative but not
exhaustive of the circumstances under which bad faith registration and use
under ¶ 4(a)(iii) can be established.
¶ 4(b) of the Policy reads:
[T] he following circumstances, in particular
but without limitation, if found by the Panel to be present, shall be evidence
of the registration and use of a domain name in bad faith:
i) circumstances indicating that you have
registered or you have acquired the domain name primarily for the purpose of
selling, renting, or otherwise transferring the 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 your
documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the 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 you have engaged in a
pattern of such conduct; or
(iii) you have
registered the domain name primarily for the purpose of disrupting the business
of a competitor; or
(iv) by using the domain name, you have
intentionally attempted to attract, for commercial gain, Internet users to your
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 your web site or location or of a product or service on your web
site or location.
In each of the circumstances listed in Policy ¶ 4(b), the Complainant
must establish that Respondent intentionally and actively registered and used
the domain name for the purpose of causing injury to the Complainant.
Complainant only makes general contentions as to the bad faith of
Respondent, repeating and parroting the circumstances of ¶ 4(b). Complainant makes no attempt whatsoever to
offer any specific factual contentions or introduce any documentary evidence
that would establish that Respondent’s acts fall within those circumstances.
The fact that both parties are competitors, while sufficient to
establish Respondent’s lack of rights or legitimate interest in the domain
name, does not show that Respondent has registered and used that domain name to
disrupt the business of Complainant:
Respondent’s website using the domain name at issue does not emulate in
any way the website of Complainant using the ESIGNAL trademark;
Complainant has not established that its ESIGNAL trademark is so well
known that Respondent can be presumed to have been intended to trade on
Complainant’s reputation and goodwill in registering and using the domain name
in dispute;
Respondent specifically denies each of Complainant’s contentions
regarding bad faith.
Lack of rights or legitimate interest under Policy ¶ 4(a)(ii) does not automatically translate into a finding of bad
faith under Policy ¶ 4(a)(iii).
Proof of ¶ 4(a)(iii) generally requires more
than assertions of bad faith. See Starwood Hotels & Resorts Worldwide,
Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005)
(finding that the complainant failed to establish that respondent registered
and used the disputed domain name in bad faith because mere assertions of bad
faith are insufficient for a complainant to establish Policy ¶ 4(a)(iii)); see also Graman USA Inc. v. Shenzhen Graman
Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general
allegations of bad faith without supporting facts or specific examples do not
supply a sufficient basis upon which the panel may conclude that the respondent
acted in bad faith).
The Panel finds that Complainant has failed to carry its burden of
proof under ¶ 4(a)(iii) of the Policy.
DECISION
Complainant not having established all three elements required under
the Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the Complaint be dismissed.
Bruce E. O’Connor, Panelist
Dated: March 29, 2010
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NATIONAL ARBITRATION FORUM
[1] This contention is more properly considered with reference to the issue of rights or legitimate interest under Policy ¶ 4(a)(ii) and bad faith under Policy ¶ 4(a)(iii). A determination of “confusing similarity” under Policy ¶ 4(a)(i) involves only the comparison of a disputed domain name and a trademark. That determination is different than the test for trademark or trade name infringement based on “likelihood of confusion” or “confusing similarity” that also involve a comparison of the markets in which the parties operate.
[2] See www.esignal.com./exchanges/exch_list.aspx, available on Complainant’s <esignal.com> website.
[3] Respondent uses the trademark ESIGNALINDIA.COM on its <esignalindia.com> website.