TimesofMoney Ltd. v. Vikas Gupta / NETCOM USA INC.
Claim Number: FA1302001487687
Complainant is TimesofMoney Ltd. (“Complainant”), represented by Sachin Gupta of Inttl Advocare, India. Respondent is Vikas Gupta / NETCOM USA INC. (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <remit2indiafraud.com>, 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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 28, 2013; the National Arbitration Forum received payment on February 28, 2013.
On March 4, 2013, 1 & 1 Internet Ag confirmed by e-mail to the National Arbitration Forum that the <remit2indiafraud.com> 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 disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On March 13, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 2, 2013 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@remit2indiafraud.com. Also on March 13, 2013, the Written Notice of the Complaint, notifying Respondent of the e-mail 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.
A Response was received on April 3, 2013, and was determined to be late and therefore deficient.
On April 9, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <remit2indiafraud.com> domain name is confusingly similar to Complainant’s REMIT2INDIA mark.
2. Respondent does not have any rights or legitimate interests in the <remit2indiafraud.com> domain name.
3. Respondent registered and used the <remit2indiafraud.com> domain name in bad faith.
B. Respondent failed to submit a timely Response in this proceeding.
Complainant has registered its REMIT2INDIA.COM mark with the India Department of Industrial Policy and Promotions (“IDIPP”), which it uses in connection with the facilitation of money transfers (Reg. No. 947,591 registered on Aug. 14, 2000.)
Respondent registered the <remit2indiafraud.com> domain name on January 28, 2008, and uses it to complain about Complainant and to suggest the use of Complainant’s competitors.
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."
Paragraph 4(a) of the Policy requires that 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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.
Preliminary Issue: Deficient Response
Respondent’s Response was received after the deadline had passed. Thus, the National Arbitration Forum does not consider the Response to comply with ICANN Rule 5. Accordingly, the Panel declines to accept the deficient response. See Sears Brands, LLC v. Airhart, FA 1350469 (Nat. Arb. Forum Dec. 2, 2010) (electing to not accept and not consider the response as the response was not in compliance with ICANN Rule 5).
Complainant has registered variations of the REMIT2INDIA mark with the India Department of Industrial Policy and Promotions (“IDIPP”), which it uses in connection with the facilitation of money transfers. See REMIT2INDIA.CO.IN Reg. No. 991,825 registered on Feb. 22, 2001; REMIT2INDIA.COM Reg. No. 947,591 registered on Aug. 14, 2000. The Panel finds that Complainant’s registration of its REMIT2INDIA.COM mark with the IDIPP is sufficient evidence of Complainant’s rights in the mark under the Policy ¶4(a)(i). See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a trademark authority).
Respondent’s <remit2indiafraud.com> domain name is confusingly similar to Complainant’s REMIT2INDIA.COM mark, as it merely adds the derogatory term “fraud” to the mark. The Panel finds that the disputed domain name causes confusion among Internet users, likely to believe the Complainant owns the <remit2indiafraud.com> domain name, using it, for example, to accept complaints from Complainant’s own customers about fraud in the money transfer business. See Vivendi Universal v. Sallen, D2001-1121 (WIPO Nov. 7, 2001) (finding the domain name <vivendiuniversalsucks.com> was confusingly similar to the complainant's VIVENDI UNIVERSAL mark, because non-English speakers would associate the domain name with the owner of the trademark).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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.”).
Complainant argues that Respondent is in the business of registering domain names, and the WHOIS information shows that Respondent is known as “Viktor Gupta.” Complainant states that it did not authorize Respondent to use its REMIT2INDIA.COM mark in a domain name. The Panel finds that there is no evidence on record that Respondent is commonly known by the <remit2indiafraud.com> domain name. See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant argues that Respondent is clearly using the <remit2indiafraud.com> domain name for commercial gain. Complainant demonstrates that the disputed domain name’s resolving website disparages Complainant’s business and specifically recommends the services provided by competitors of Complainant, such as the State Bank of India and ICICI Bank, and provides click-through links. The Panel finds that Respondent is diverting Internet users to these competing banks, and thus that Respondent has not made a Policy ¶ 4(c)(i) bona fide offering of goods or services, or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use in connection with the domain name. See Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks).
The Panel notes that Respondent also uses the disputed domain name to lodge complaints against Complainant. Respondent’s right to criticize Complainant, however, does not extend to infringement on Complainant’s registered, and therefore protected, REMIT2INDIA.COM mark. Previous panels have agreed that, while the speech on a disputed domain name’s resolving website may be protected speech, the use of a confusingly similar domain name that embodies a complainant’s entire mark is not protected by constitutional safeguards. See Eastman Chem. Co. v. Patel, FA 524752 (Nat. Arb. Forum Sept. 7, 2005) (“the domain name <eastman-chemical.com> is not protected by free speech although the content of the website supported by this domain name is protected. Free speech cannot be used as a defence against the use of a confusingly similar mark as a domain name.”). The Panel agrees with this line of precedent and notes that Respondent has many other ways to exercise free speech without incorporating Complainant’s entire registered mark. Thus, the Panel finds that Respondent lacks rights and legitimate interests in the <remit2indiafraud.com> domain name.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent might have registered this <remit2indiafraud.com> domain name to sell it to Complainant. Complainant believes that the disparaging remarks on this domain name’s website will make it easy for Respondent to coerce Complainant into buying the domain name. However, Complainant provides no evidence that the domain name has ever been offered for sale, and the Panel dismisses this argument.
Complainant also argues that Respondent registered this <remit2indiafraud.com> domain name primarily to disrupt Complainant’s business by disparaging Complainant and redirecting Internet users to competing financial services. Complainant’s evidence supports this contention. Therefore the Panel finds that Respondent has engaged in bad faith disruption under Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <remit2indiafraud.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: April 16, 2013
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page