Godrej Consumer Products Limited v. Vishnu D. Dutta
Claim Number: FA1103001377811
Complainant is Godrej Consumer Products Limited (“Complainant”), represented by Rodney D. Ryder of ANM Global Solicitors & Advocates, India. Respondent is Vishnu D. Dutta (“Respondent”), Louisiana, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <godrej.us>, registered with 1&1 INTERNET AG.
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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on March 14, 2011; the Forum received a hard copy of the Complaint on March 14, 2011.
On March 15, 2011, 1&1 INTERNET AG confirmed by e-mail to the Forum that the <godrej.us> domain name is registered with 1&1 INTERNET AG and that Respondent is the current registrant of the name. 1&1 INTERNET AG has verified that Respondent is bound by the 1&1 INTERNET AG registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with the U. S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On March 21, 2011, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of April 11, 2011 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”).
Having received no Response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On April 15, 2011, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the Policy, the Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
1. Respondent’s <godrej.us> domain name is identical to Complainant’s GODREJ mark.
2. Respondent does not have any rights or legitimate interests in the <godrej.us> domain name.
3. Respondent registered and used the <godrej.us> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
FINDINGS
Complainant, Godrej Consumer Products Limited, owns the exclusive rights to the GODREJ mark which it uses in connection with its large group of companies, focusing on various industries ranging from personal hygiene products, to home appliances, to rocket launchers. Complainant holds multiple trademark registrations through the Government of India for its GODREJ mark (e.g., Reg. No. 4773 issued September 4, 1942).
Respondent, Vishnu D. Dutta, registered the <godrej.us> domain name on October 1, 2004. The disputed domain name resolves to a webpage featuring third-party, pay-per-click links.
DISCUSSION
Paragraph 15(a) of 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.”
In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to Paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to Paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
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; and
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
Complainant contends that it has established rights in its GODREJ mark. Previous panels have found governmental trademark registrations to be valid evidence of rights in a mark, irrespective of Respondent’s country of operation. 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 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). Because Complainant holds numerous trademark registrations with the Government of India for its GODREJ mark (e.g., Reg. No. 4773 issued September 4, 1942), the Panel finds that it has established sufficient rights under Policy ¶ 4(a)(i).
Complainant asserts that Respondent’s <godrej.us> domain name is identical to its GODREJ mark. The disputed domain name features Complainant’s GODREJ mark in its entirety, simply adding the country-code top-level domain (“ccTLD”) “.us.” Earlier panels have determined that the addition of “.us” is an insignificant distinction and therefore renders the domain name as identical. See Lifetouch, Inc. v. Fox Photographics, FA 414667 (Nat. Arb. Forum Mar. 21, 2005) (finding the respondent’s <lifetouch.us> domain name to be identical to the complainant’s LIFETOUCH mark because “[t]he addition of “.us” to a mark fails to distinguish the domain name from the mark pursuant to the [usTLD] Policy”); see also Mattel, Inc. v. Unknown, FA 490083 (Nat. Arb. Forum July 11, 2005) (“The domain name [<Barbie.us>] is identical to the trademark “Barbie”, as it uses the trademark in its entirety. The only difference is the addition of the country code “us” which for this purpose is insufficient to distinguish the domain name from the trademark.”). Accordingly, the Panel finds Respondent’s <godrej.us> domain name to be identical to Complainant’s GODREJ mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) is satisfied.
Complainant alleges that Respondent lacks rights and legitimate interests in the <godrej.us> domain name. Previous panels have asserted that pursuant to Policy ¶ 4(a)(ii), once a complainant makes its prima facie case, the burden of proving rights or legitimate interests should shift to the respondent. Here, the Panel finds that Complainant has made a prima facie case. And because Respondent has failed to respond to the complaint, the Panel is allowed to infer that Respondent does not have rights or legitimate interests in the <godrej.us> domain name. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under [UDRP] ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence). However, the Panel still chooses to examine the record to determine if Respondent has rights or legitimate interests under Policy ¶ (c).
Complainant asserts that it has not discovered any registered trademarks or trade names registered by Respondent corresponding to the disputed domain name. The Panel therefore finds that Respondent does not have rights or legitimate interests in the domain name pursuant to Policy ¶ 4(c)(i). See Meow Media Inc. v. Basil, FA 113280 (Nat. Arb. Forum Aug. 20, 2002) (finding that there was no evidence that the respondent was the owner or beneficiary of a mark that is identical to the <persiankitty.us> domain name); see also Pepsico, Inc. v Becky, FA 117014 (Nat. Arb. Forum Sept. 3, 2002) (holding that because the respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to UDRP ¶ 4(c)(i)).
Complainant makes the claim that Respondent is not commonly known by the <godrej.us> domain name. Complainant has not authorized Respondent to use the GODREJ mark. Further, the WHOIS information identifies the domain name registrant as “Vishnu D. Dutta.” Given that there is no other evidence in the record to indicate that Respondent is commonly known by the disputed domain name, the Panel finds that Respondent does not have rights or legitimate interests under Policy ¶ 4(c)(iii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that UDRP ¶ 4(c)(ii) does not apply); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Respondent uses the disputed domain name to display pay-per-click links, some of which are related to Complainant’s business. The Panel finds that such use does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(ii) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iv). See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees); see also ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be a use in connection with a bona fide offering of goods or services pursuant to UDRP ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to UDRP ¶ 4(c)(iii)).
The Panel finds Policy ¶ 4(a)(ii) is satisfied.
Respondent displays third-party, click-through links at the disputed domain name, some of which are links to Complainant’s competitors. The Panel finds this to be a disruption of Complainant’s business and to be evidence of both bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under UDRP ¶ 4(b)(iii)); see also Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to UDRP ¶ 4(b)(iii) where a respondent used the disputed domain name to operate a commercial search engine with links to the complainant’s competitors).
Complainant contends that Respondent is using an identical domain name to attract Internet users that think they are reaching an official website of Complainant. Respondent likely profits from this creation of confusion when Internet users utilize the links displayed at the disputed domain. The Panel finds this to again constitute both bad faith registration and use under Policy ¶ 4(b)(iv). See T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under UDRP ¶ 4(b)(iv)); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (holding that the use of a confusingly similar domain name to display links to various third-party websites demonstrated bad faith registration and use pursuant to UDRP ¶ 4(b)(iv)).
The Panel finds Policy ¶ 4(a)(iii) is satisfied.
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <godrej.us> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: April 22, 2011
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