Environmental Science U.S. Inc. v. Vikas Kumar
Claim Number: FA2212002025152
Complainant is Environmental Science U.S. Inc. (“Complainant”), represented by Vanessa A. Ignacio of Lowenstein Sandler LLP, USA. Respondent is Vikas Kumar (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <envuindia.com>, registered with GoDaddy.com, LLC.
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.
Dr. Reinhard Schanda as Panelist.
Complainant submitted a Complaint to Forum electronically on December 22, 2022; Forum received payment on December 23, 2022.
On Dec 28, 2022, GoDaddy.com, LLC confirmed by e-mail to Forum that the <envuindia.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 January 3, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 23, 2023 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@envuindia.com. Also on January 3, 2023, 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 January 12, 2023.
On January 16, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Dr. Reinhard Schanda as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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.
The Panel is of the view that Complainant has not implicitly consented in its Complaint to the transfer of the disputed domain name without a decision on the merits by the Panel. The Panel finds that the “consent-to-transfer” approach is but one way for cybersquatters to avoid adverse findings against them. In Graebel Van Lines, Inc. v. Tex. Int’l Prop. Assocs., FA 1195954 (Forum July 17, 2008), the panel stated that:
Respondent has admitted in his response to the complaint of Complainant that it is ready to offer the transfer without inviting the decision of the Panel in accordance with the Policy. However, in the facts of this case, the Panel is of the view that the transfer of the disputed domain name deserves to be along with the findings in accordance with the Policy.
Therefore, the Panel decides to analyze the case under the elements of the UDRP.
A. Complainant
Complainant contends that it provides a variety of environmental health-related products and services, including pest management. Complainant has rights in the ENVU mark through multiple trademark registrations, including with the European Union Intellectual Property Office (“EUIPO”) Respondent’s <envuindia.com> domain name is identical and confusingly similar to the ENVU mark as it incorporates the entire mark and merely adds the term “India” and “.com” generic top-level domain (“gTLD”).
Complainant further contends that Respondent lacks rights or legitimate interests in the disputed domain name since Respondent is not licensed or authorized to use Complainant’s ENVU mark and is not commonly known by the disputed domain name. Additionally, Respondent does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent offers the disputed domain name for sale and offers competing products and services.
Complainant finally contends that Respondent registered and uses the <envuindia.com> domain name in bad faith by offering the name for sale and competing with Complainant. Respondent also registered the disputed domain name with a privacy service. Further, Respondent knew or should have known of Complainant’s rights in the ENVU mark.
B. Respondent
Respondent registered <envuindia.com> on September 11, 2022. Respondent contends that it was not aware that Complainant owned the disputed domain name. As of now, Respondent is not using and has deleted <envuindia.com> and consents to transfer the disputed domain name to Complainant.
The Panel finds that:
(1) The domain name <envuindia.com> is confusingly similar to Complainants’ registered trademarks.
(2) The Respondent has not established rights or legitimate interests in the domain name <envuindia.com>.
(3) The Respondent has registered and is using the domain name <envuindia.com> 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 claims rights in the ENVU mark through numerous trademark registrations, including EUIPO Reg. No. 018706098, which was registered on October 5, 2022. Registration of a mark with the EUIPO is a valid showing of rights in a mark under Policy ¶ 4(a)(i). See Sanlam Life Insurance Limited v. Syed Hussain / Domain Management MIC, FA 1787219 (Forum June 15, 2018) (“Registration of a mark with the EUIPO, a government agency, sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i).”). Since Complainant provides evidence of registration of the ENVU mark with the EUIPO, the Panel finds that Complainant has demonstrated rights in the ENVU mark per Policy ¶ 4(a)(i).
Complainant argues that the <envuindia.com> domain name is identical and confusingly similar to its ENVU mark. When a disputed domain name includes a complainant’s entire mark, additional terms have been found insufficient to defeat a finding of confusing similarity. See Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) (“Where a relevant trademark is recognisable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element.”). Similarly, gTLDs are irrelevant for purposes of Policy ¶ 4(a)(i) analysis. See Blue Cross and Blue Shield Association v. Shi Lei aka Shilei, FA 1784643 (Forum June 18, 2018) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶4(a)(i) analysis because domain name syntax requires TLDs.”). The domain name wholly incorporates the ENVU mark while simply adding the term “India” and “.com” gTLD. Therefore the Panel finds that Respondent’s <envuindia.com> domain name is identical or confusingly similar to Complainant’s ENVU mark under Policy ¶ 4(a)(i).
The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent does not assume the burden of proof, but may establish a right or legitimate interest in a disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy:
(a) He has made preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services prior to the dispute;
(b) He is commonly known by the domain name, even if he has not acquired any trademark rights; or
(c) He intends to make 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.
The Panel determines that the Complainant has discharged the onus of proof for the second criterion: The Respondent has failed to demonstrate any legitimate right or interest.
According to the majority of Panel decisions this Panel also takes the position that while Complainant has the burden of proof on this issue, once the Complainant has made a prima facie showing, the burden of production shifts to the Respondent to show by providing concrete evidence that it has rights to or legitimate interests in the domain name at issue. See Document Technologies, Inc. v. International Electronic Communications, Inc., D2000-0270 (WIPO June 6, 2000); Inter-Continental Hotel Corporation v. Khaled Ali Soussi, D2000-0252 WIPO July 5, 2000); Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the Complainant has asserted that the Respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the Respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the Respondent”); see also G.D. Searle v. Martin Mktg., FA 118277 (Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent.”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Complainant argues that Respondent has no rights or legitimate interests in the <envuindia.com> domain name because Respondent is not commonly known by the disputed domain name and Complainant has never licensed rights to or authorized Respondent to use the ENVU mark. In the absence of a response, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name. See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same). In addition, where there is no evidence to indicate a complainant has authorized the use of a mark, it may act as support that a respondent is not commonly known by the disputed domain name and thus lacks any rights or legitimate interest in the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”); see also Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The WHOIS information for <envuindia.com> lists the registrant as “Vikas Kumar.” Further, there is no evidence to suggest that Respondent was authorized, licensed rights to, or otherwise permitted to use the ENVU mark. Therefore, the Panel finds that Respondent is not commonly known by, and lacks rights or legitimate interests in, the disputed domain name per Policy ¶ 4(c)(ii).
Complainant also argues that Respondent registered the domain name in order to sell it to Complainant or another third party. A respondent’s offer to sell a disputed domain name has been considered by Panels not to confer rights or legitimate interests in a domain name. See Enterprise Holdings, Inc. v. Huang Jia Lin, FA1504001614086 (Forum May 25, 2015) (“Accordingly, the Panel finds that Respondent’s general attempt to sell the disputed domain name is further evidence of Respondent’s lack of rights and legitimate interests under Policy ¶ 4(a)(ii).”); see also Vance Int’l, Inc. v. Abend, FA 970871 (Forum June 8, 2007) (“An attempt by a respondent to sell a domain name to a complainant who owns a trademark with which the domain name is confusingly similar for an amount in excess of out-of-pocket costs has been held to demonstrate a lack of legitimate rights or interests.”). Complainant provides a copy of an email sent by Respondent on October 10, 2022, a month after <envuindia.com> was registered, offering to sell the domain name to Complainant. In addition, the disputed domain name is still being offered for sale on a parked page for $100,000. The Panel is of the view that Respondent’s offers to sell the <envuindia.com> domain name is an additional support that Respondent lacks rights or legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii).
Complainant further claims that Respondent is using the disputed domain name to operate a competing pest control business. Previous Panels have found that using a disputed domain name to offer competing goods or services does not constitute either a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Vanguard Trademark Holdings USA LLC v. Dan Stanley Saturne, FA 1785085 (Forum June 8, 2018) (“Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use” where “Respondent is apparently using the disputed domain name to offer for sale competing services.”). In this case, Complainant argues that <envuindia.com> redirects to <pestlogicindia.com>. Here, Respondent advertises pest management products and services, which Complainant also provides. The Panel is of the view that Respondent’s competing business is a further reason that Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use of the <envuindia.com> domain name under Policy ¶¶ 4(c)(i) and (iii).
Complainant argues that Respondent registered and uses the <envuindia.com> domain name in bad faith by offering the domain name for sale for an amount far in excess of the registration cost. Previous Panels have used a respondent’s offer to sell a disputed domain name to find a respondent has acted in bad faith under Policy ¶ 4(b)(i). See Vanguard Trademark Holdings USA LLC v. Wang Liqun, FA1506001625332 (Forum July 17, 2015) (“A respondent’s general offer to sell a disputed domain name for an excess of out-of-pocket costs is evidence of bad faith under Policy ¶ 4(b)(i).”). As noted previously, <envuindia.com> is publicly offered for sale for $100,000. The Panel is of the view, that Respondent’s offer to sell the domain name justifies a finding for bad faith pursuant to Policy ¶ 4(b)(i).
Complainant also argues that Respondent’s use of the disputed domain name for a competing pest management business evinces bad faith. Previous Panels have agreed, finding bad faith disruption of a complainant’s business under Policy ¶ 4(b)(iii) and bad faith attraction for commercial gain under Policy ¶ 4(b)(iv) when a respondent offers products or services that directly compete with a complainant. See LoanDepot.com, LLC v. Kaolee (Kay) Vang-Thao, FA1762308 (Forum January 9, 2018) (Finding that Respondent’s use of the disputed domain name to offer competing loan services disrupts Complainant’s business under Policy ¶ 4(b)(iii)); see also Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”). <envuindia.com> redirects to <pestlogicindia.com> where Respondent advertises pest management products and services. Since the Panel agrees that Respondent is competing with Complainant, it finds bad faith under Policy ¶ 4(b)(iii) and/or Policy ¶ 4(b)(iv).
Complainant notes that the <envuindia.com> domain name was registered with a privacy service. Registering a disputed domain name through a privacy service has been used to support a finding of bad faith. See Robert Half International Inc. v. robert arran, FA 1764367 (Forum Feb. 5. 2018) (“Respondent's use of a privacy registration service in an attempt to conceal his identity, though not itself dispositive, is a further indication of bad faith.”). The Panel notes that Respondent used a privacy service to hide its identity. The Panel considers Respondent’s concealment of his identity through a privacy service when evaluating bad faith pursuant to Policy ¶ 4(b)(iii).
Lastly, Complainant claims that Respondent knew or should have known of Complainant’s rights in the ENVU mark when registering <envuindia.com>. UDRP precedent has declined to use constructive knowledge as a basis for bad faith. However, the Panel may determine whether Respondent had actual knowledge, as actual knowledge may adequately demonstrate a respondent’s bad faith. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). To support its assertion, Complainant points to the uniqueness of the ENVU mark, the mark’s international presence, and Respondent’s communication with Complainant about purchasing the domain name. The Panel determines that Respondent had actual knowledge of Complainant’s rights in the ENVU mark. Therefore the Panel finds that Respondent registered and uses the <envuindia.com> domain name in bad faith under 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 <envuindia.com> domain name be TRANSFERRED from Respondent to Complainant.
Dr. Reinhard Schanda, Panelist
Dated: January 19, 2023
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