One97 Communications Limited v. S Ramkumar / Ramkumar Corporation
Claim Number: FA1703001722205
Complainant is One97 Communications Limited (“Complainant”), represented by J.V. Abhay of Shardul Amarchand Mangaldas & Co., India. Respondent is S Ramkumar / Ramkumar Corporation (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <paytmkart.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Roberto A. Bianchi as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 17, 2017; the Forum received payment on March 17, 2017.
On March 17, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <paytmkart.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 22, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 11, 2017 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@paytmkart.com. Also on March 22, 2017, 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 timely Response was received and determined to be complete on April 10, 2017.
Complainant’s Additional Submission was received and determined to be in compliance with the Rules on April 17, 2017.
On April 18, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Roberto A. Bianchi as Panelist.
A Respondent`s Reply to Complainant`s Additional Submission was received on April 23, 2017.
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 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.
Complainant is the leading mobile internet provider in India. Complainant uses the PAYTM mark in conjunction with its business practices. Complainant registered the PAYTM mark with the Government of India Trade Marks Registry (e.g., Reg. No. 1,842,916, registered on July 23, 2009). See Compl., at Attached Annex D. Additionally, Complainant registered the PAYTM trademark with the United Arab Emirates, Ministry of Economy, Trade Marks Department (e.g., Reg. No. 217234, registered Sept. 4, 2014). See Compl., at Attached Annex G. Respondent’s <paytmkart.com> is confusingly similar to Complainant’s PAYTM mark because it incorporates the mark in its entirety, adding the generic term “kart” and the “.com” generic top level (“gTLD”).
Respondent has no rights or legitimate interests in <paytmkart.com>. Respondent is not commonly known by the disputed domain name. Complainant has not authorized or licensed Respondent to use the PAYTM mark in any regard, nor is Respondent affiliated with Complainant. Respondent has not made a bona fide offering of goods and services, or a legitimate non-commercial or fair use of the domain. The website at the disputed domain name merely leads to a page claiming to provide services for domain name registration, sale and web hosting by prominently displaying PAYTMKART. The use of the mark PAYTM by Respondent has not been authorized by Complainant. Complainant submits that the website of Respondent is a passive one with no bona fide goods/services on offer therein, and the same has been registered with a view to draw association and mileage from the goodwill and reputation of Complainant, and to redirect consumers who may otherwise be looking for information on Complainant or its products under the reputed trade mark PATYM.
The disputed domain name has been registered primarily for the purpose of disrupting Complainant’s business. Further, it appears that Respondent is using the domain ‘PAYTMKART.COM’ to lure internet users to its site so that it may generate income from such use. Hence, Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services. See Compl., at Attached Annex N.
Respondent is not making any legitimate non-commercial or fair use of the disputed domain Name. Respondent is using the disputed domain name with an intent for commercial gain, to misleadingly divert consumers and thereby, tarnishing the reputation of Complainant and its trademark PAYTM. The disputed domain name has been registered with a view to make wrongful gain from the immense goodwill and reputation of Complainant’s trademark PAYTM, thereby creating a dent in its business. Thus, Respondent is indulging in (i) unfair use of the domain name with an intention to reap profits therefrom (ii) is operating a website thereunder to misleading/diverting customers who may be looking for Complainant’s websites and (iii) is tarnishing the goodwill and reputation enjoyed by Complainant’s well-known trademark PAYTM.
Furthermore, Respondent has intent to engage in a business collaboration, presumably seeking monetary gains from the sale, rent, or transfer of the disputed domain name. See Compl., at Attached Annexes M, T.
Respondent registered and is using <paytmkart.com> in bad faith. Respondent registered <paytmkart.com> with actual knowledge of Complainant and its rights to the PAYTM mark. Respondent has registered multiple domain names infringing on the rights of well-known marks, as well as attempting to register the infringing marks with government agencies in many countries. See Compl., at Attached Annexes O–S. The disputed domain name attempts to attract internet users to Respondent’s website for commercial gain. Respondent is purportedly creating a likelihood of confusion among internet users that Respondent is affiliated with or endorsed by Complainant. Respondent has contacted Complainant to engage in a business collaboration, presumably seeking monetary gains from the sale, rent, or transfer of the disputed domain name. See Compl., at Attached Annexes M, T.
Respondent is the current owner of <paytmkart.com>. Complainant does not have a class 38 trademark in the United States or any other government agency. Respondent applied for a class 38 mark registration for the PAYTM mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Ser. No. 86,760,791, filed Sept. 18, 2015). See Resp., at Attached Annex A. USPTO sent a Notice of Allowance (“NOA”) to Respondent indicating that no oppositions have been filed for the mark and that Respondent must submit a Statement of Use (“SOU”) to receive a registration certificate or file for an extension of time. See Resp., at Attached Annex B. On February 21, 2017, USPTO granted an extension of time request to provide Respondent an additional six months to file a SOU. See Resp., at Attached Annex C.
Respondent has rights and legitimate interests in <paytmkart.com>. Respondent received a NOA from USPTO, entitling him rights to register domain names related to the PAYTM mark. Furthermore, Respondent’s domain name does not infringe upon Complainant’s ability to reflect its mark.
Respondent is not a serial trademark or domain name squatter. Respondent’s registrations of other domain names potentially related to other third party marks is not relevant to the case at hand. Respondent creates domain names and trademarks that are dissimilar to third party trademarks and offers unrelated goods.
Complainant does not have the right to bring forward this claim due to the fact that Complainant does not have a company incorporated under the laws of the United States. See Resp., Sect. VI.
Complainant reasserts its arguments in its Complaint. Respondent has conceded that Complainant has rights in the PAYTM mark. Respondent is well aware of Complainant and its rights in the mark.
Respondent’s Notice of Allowance is not indicative of rights, and Respondent has yet failed to file a Statement of Use of the mark.
Respondent’s statement that Complainant has no business presence in the USA is false as Complainant has a subsidiary incorporated in Delaware. See Compl. Add. Sub., at Attached Annex 3.
Respondent has a pattern of trying to file for trademark protection of marks and has yet to receive a registration. See Compl. Add. Sub., at Attached Annex 4 (e.g., FLIPKART, SNAPDEAL, OLX).
In its reply to Complainant`s Additional Submission, Respondent states that according to a press article, Paypal, the global payments firm, has filed a trademark infringement complaint with the Indian Trademark Office against Complainant. According to Paypal, Complainant in the logo of its PAYTM trademark is using colors similar to Paypal`s mark. (See Annexure I). Paypal has been using its trademark since 1999, and has requested the Indian Trademark registration body to refuse the registration of the PAYTM mark by Complainant. The article clearly shows that Complainant is a trademark squatter of the third party trademark PAYPAL.
Complainant has no PAYTM company incorporated under the laws of USA, or any PAYTM registered office in USA. Thus, Complainant has no right to bring this Complaint. Complainant has no use of goods of PAYTM in USA until date.
Respondent reiterates its arguments concerning the USPTO Notice of Allowance for Respondent`s trademark PAYTM in class 38, and the USPTO`s Notice of Approval of Extension Request to file a Statement of Use for Respondent`s trademark PAYTM in class 38. Respondent has a right to submit in the coming months the documents evidencing the Statement of Use in Commerce for its trademark “PAYTM” in class 38.
Complainant owns trademark registrations for PAYTM and PAYT.M trademarks in India. The disputed domain name incorporates the PAYTM mark, just adding the generic “kart” term plus the top level domain “.com”. The Panel finds that the disputed domain name is confusingly similar to Complainant`s PAYTM mark.
Respondent filed a trademark application for PAYTM with the USPTO. A Notice of Allowance was issued and an extension for filing a Statement of Use (SOU) has been granted. As of May 2, 2017, no SOU has been filed, and the mark has not registered. Thus, Respondent failed to prove its only allegation of rights or legitimate interests, based exclusively on its trademark application with the USPTO, as it now stands.
Considering that the registrations of Complainant`s PAYTM marks predate the disputed domain name by several years, and the fact Complainant`s marks and activities are well known in India, the country of residence of Respondent, the Panel finds that Respondent knew of, and had Complainant and its marks in mind, at the time of registering the disputed domain name. Respondent`s use of the disputed domain name in a commercial website, by creating confusion among Internet users presumably looking for Complainant, its products and services, is found to be evidence of registration and use in bad faith.
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.
Complainant has submitted copies of the following trademark certificates issued by the Trade Marks Registry of the Government of India:
- Certificate No. 1278112, issued on June 8, 2016, for the trade mark PAYT.M PAY THROUGH MOBILE (device), Reg. Number 1842916, Reg. Date September 23, 2009, filed on September 23, 2009, covering payment of utility bills, etcetera, through mobile, in International Class 38.
- Certificate No. 1419664, issued on December 22, 2016 for the trade mark PAYTM (device), Reg. Number 2508287, Reg. Date April 5, 2013, filed on April 5, 2013, covering: provides payment gateway, E-recharge and other E-commerce and M-Commerce, in International Class 38, and
- Certificate No. 1434625, issued on January 4, 2017 for the trade mark PAYT.M PAY THROUGH MOBILE(device) Reg. Number 1842917, Reg. Date July 23, 2009, filed on July 23, 2009, covering: provide mobile value added services to telecom operators and other customers, through web, wap, technologies and software applications, in International Class 42.
In the opinion of the Panel, these registrations demonstrate that Complainant has rights in the PAYTM and PAYT.M marks for purposes of Policy ¶ 4(a)(i).
The Panel notes that the disputed domain name incorporates the PAYTM mark, just adding the generic term “kart” and the top level domain “.com”. It is well established by panels applying the Policy that the addition in a domain name of a generic term and a - technically necessary – top level domain is inapt to distinguish the domain name from the mark. Accordingly, the Panel finds that the disputed domain name is confusingly similar to the PAYTM and the PAYT.M marks of Complainant.
Complainant contends that Respondent has no rights or legitimate interests in the disputed domain name.
The Panel agrees with Complainant that Respondent does not appear to be known – commonly or otherwise - by the disputed domain name. In fact, Respondent in the Response identifies itself as S Ramkumar / Ramkumar Corporation, and this information coincides with the corresponding WhoIs data provided by the Registrar to the Forum. Therefore, Policy ¶ 4(c)(ii) is not applicable.
Complainant also contends that it has not authorized or licensed Respondent to use the PAYTM mark in any regard, nor is Respondent affiliated with Complainant. The Panel sees nothing on the casefile indicating otherwise.
Further, Complainant has shown that Respondent’s website at the <paytmkart.com> domain name resolves to a webpage offering registration of domain names, while displaying the registrar`s GoDaddy`s address and registration policies as Respondent`s own address and policies, thus creating a false impression among Internet users presumably looking for Complainant`s products or services. The Panel agrees with Complainant that Respondent`s use of the disputed domain name is neither a use in connection with a bona fide offering of goods or services under Policy ¶4(c)(i), nor a fair or legitimate noncommercial use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue pursuant to Policy ¶4(c)(iii).
Considering the above, the Panel is of the opinion that Complainant has made a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. It is then up to Respondent to come forward with allegations and evidence that it has at least a right or legitimate interest in the disputed domain name. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (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 (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 only circumstance alleged by Respondent as evidence of rights or legitimate interests in the disputed domain name was its application before the USPTO for registration of the PAYTM mark. A Panel`s visit to the USPTO website conducted on May 2, 2017 showed that, with regard to trademark application US Serial Number 86760791 for the PAYTM trademark, a Notice of Allowance (NOA) was issued on September 20, 2016, and that Respondent has requested, and the USPTO granted on February 17, 2017, a time extension to file a Statement of Use (SOU). The Panel also notes, however, that no SOU has been filed yet, and that, as explained by the USPTO on its website, a NOA indicates that the mark has been allowed, but it does not mean that the mark has registered.[1] Thus, Respondent cannot derive rights in the disputed domain name based merely on its trademark application as it now stands. The Panel also notes that Respondent has not submitted any evidence of use constitutive of a common law PAYTM trademark, i.e. by proving secondary meaning.
In absence of any facts or circumstances in favor of Respondent, the Panel concludes that Complainant has made out its case that Respondent lacks any rights or legitimate interests in the disputed domain name.
Registration and Use in Bad Faith
The Panel notes that Complainant`s registrations in India for its PAYTM trademark predate the registration of the disputed domain name (on August 2, 2015) by several years. See section “Identical and/or Confusingly Similar” above.
The Panel also notes that, as evidenced by Complainant, Complainant`s payment-through-mobile services provided under the PAYTM marks had become well-known in India, the country of residence of Respondent, by the time of the registration of the disputed domain name. Further, it is noteworthy that Respondent`s letter`s dated November 7, 2016, approaching Complainant for a business collaboration with regard to an e-commerce business in the United States, implies that Respondent was well aware of Complainant`s business and trade mark. For these reasons, the Panel concludes that Respondent knew of, and had Complainant, its PAYTM trademark, and PAYTM products and services in mind at the time of the registration of the disputed domain name. In other words, in the circumstances of this case, the registration of the disputed domain name was in bad faith.
Lastly, Complainant has shown that the website at the disputed domain name redirects to “www.secureserver.net”, a commercial website offering search, registration and transfer of domain names, web mail, web marketing, SSL certificates, etcetera, for a price. See Annexure N to the Complaint. The Panel agrees with Complainant that Respondent, by using the disputed domain name as shown, has intentionally attempted to attract, for commercial gain, Internet users presumably looking for Complainant`s well known payment and other services to its website or other on-line location, by creating a likelihood of confusion with Complainant's PAYTM mark as to the source, sponsorship, affiliation, or endorsement of Respondent`s website or location or of a product or service on Respondent`s website or location, which is a circumstance of registration and use in bad faith pursuant to Policy ¶ 4(c)(iv).
Thus, the third requirement of the Policy is met.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <paytmkart.com> domain name be TRANSFERRED from Respondent to Complainant.
Roberto A. Bianchi, Panelist
Dated: May 2, 2017
[1] See United States Patent and Trademark Office, “Basic Facts About Trademarks”, page 26, at
https://www.uspto.gov/sites/default/files/documents/BasicFacts.pdf, visited by the Panel on May 2, 2017.
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