THE NATIONAL INTERNET EXCHANGE OF INDIA [NIXI]
ADMINISTRATIVE PANEL DECISION
Eterno Infotech Pvt. Ltd. V Zheng Wei <www.HuntNews.in>
SOLE ARBITRATOR: ANKUR RAHEJA, FCS LLB MCA
Dispute Domain Name: HuntNews.in
Discussion and Findings:
B. Registrant’s rights to or legitimate interests in the domain name
- For the second condition as to legitimate interests, the Para 7 of the INDRP policy, states any of the following circumstances, in particular but without limitation, if found by the Arbitrator to be proved based on its evaluation of all evidence presented, shall demonstrate the Registrant’s rights to or legitimate interests in the domain name for the purposes of Paragraph 4 (ii) :
- (i) before any notice to the Registrant of the dispute, the Registrant’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 or services;
(ii) the Registrant (as an individual, business, or other organization) has been commonly known by the domain name, even if the Registrant has acquired no trademark or service mark rights; or
(iii) the Registrant 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.
- Before the next two clauses are analyzed, it is important to take note of some important observations made by the Arbitrator as to the Content upon the impugned website. The UDRP Overview 2.0, lays down that the content of a website (whether it is similar to or different from the business of a trademark holder) would usually be disregarded in the threshold assessment of risk of confusing similarity under the first element of the UDRP, although such content may be regarded as highly relevant to assessment of intent to create confusion under subsequent UDRP elements (i.e. rights or legitimate interests and bad faith).
- That while the matter was initially ordered to be proceeded ex-parte on 29 April 2016. The Arbitrator had a look at the disputed domain website to observe the facts as to the website hosted at the disputed domain name, stated by the Complainant:
“The Complainant submits that the respondent’s website despite showing evidences of regular updates, is not accessible beyond the main page… ”
- Arbitrator, on visiting the website, observed the website very closely and found that website was accessible beyond the main/home page. Arbitrator took screenshots of the inner pages from the disputed domain <huntnews.in>, as annexed herewith as Annexure I (a) with this award. The Annexed screenshot from disputed domain name, few were taken on 03 May 2016 and others from archive.org dated 30 July 2015 as well [Annexure I (b) herewith], clearly provides the name of the news source on the top right position of the detailed news web page on the impugned website.
- The said first annexed I (a) news dated 03rd May 2016 opened when clicked on the news link on the HomePage of disputed domain name at <huntnews.in> and appeared at URL: http://huntnews.in/p/detail/605292471644731?uc_param_str=dnfrpfbivesscpgimibtbmntnijblauputoggdnw&pos=1462277700859&channel=subject3h&chncat=hotnews_english. Also, over the few days, Arbitrator has observed during the same time, that the top few headlines always had reference to the Complainant website DailyHunt.in. This proves that Complainant provided the functioning of the disputed domain name wrongly initially. But before anything could have been clarified from the Complainant based upon Arbitrator’s observation, the Respondent had already entered the proceedings.
- Arbitrator again visited the disputed domain, after the response was filed by the Respondent on 25 May 2016, to observe (in May 2016 end) that the references to news sources missing from all of the detailed news (inner) pages. That is, the URL ‘dailyhunt.in’ visible in the first screenshot on the top right went missing but on viewing the source code for the said webpage as in June 2016, the source code (which uses basic HTML Tags and CSS syntax) do contain said reference to dailyhunt.in… reads as follows:
<a class=”w-article-from” >dailyhunt.in</a>
- Importantly, it has been programmed through CSS (Cascading Style Sheet) Tag not to be visible on the webpage, i.e. it is not visible to the normal eyes of an Internet User… as internal CSS code provided within the same source code of the said page (before the HTML <body> tag) have been programmed, not to display the CSS class “w-article-from”, with the following coding:
- The current version of the first screenshot page and it’s complete source code of this particular page as on 26 June 2016 has been Annexed as Annexure II (a) and (b) respectively with this award.
But still the keywords as to reference source like DailyHunt.in, etc are still visible through the google search engine for the news uploaded till beginning of May 2016, though thereafter those news sources are completely missing! In any case, the use of third party keyword/mark/brand including that of the Complainant on the webpage, indirectly helped Complainant website to gain visitors through Google search engine, such a google search result page is Annexed as Annexure III (a) herewith and above all, it proves that the news have been copied from various sources.
- Now given the facts, it will be safe to assume that before responding to the Complaint in this INDRP matter, the Respondent seems to have made relevant changes to the website to their advantage by removing reference to the news sources from the top right of a detailed news page, with the help of CSS. The same is also evident on Archive website www.archive.org, which shows the detailed news page for very few headlines though but references for news in similar fashion was visible for archives starting 30 July 2015, as observed by the Arbitrator, upon disputed domain name. [annexed herewith as Annexure I (b)]
- Evidence from Internet Archive – Archive.org is considered a reliable source of evidence. Just very recently, in the matter of Facebook, Inc. v. Domain Admin, Privacy Protection Service Inc. d/b/a PrivacyProtect.org / Ông Trần Huỳnh Lâm [Case No. D2016-0771], the screen captures from “www.archive.org” were considered to see where the disputed domain was previously resolving to “http//360facebook.blogspot.com>”, as presently the disputed domain name was not resolving anywhere. [Case D2016-0771]. Even the WIPO Overview 2.0, recognizes the Archive.org and any attempt to block access to Archive.org by use of ‘robots.txt’ file is considered as bad faith.
- Now most importantly, as held in the UDRP matter before National Arbitration Forum (NAF) of MB Financial Bank, N.A. v. MBBANK – Claim Number: FA0602000644517 – “the proper record for review of this dispute should be based on the website at the Domain Name as it existed on the date the Complaint was filed, not on the post hoc website that the Respondent created after the fact.” That is, website as it existed on the date the Complaint was filed, needs to be considered.
- The UDRP policy that came into force in 1999, followed by INDRP policy & Rules in 2005, do not include any reference to the website content, but recent Uniform Rapid Suspension (URS) Procedure that was published in 2013 and is applicable to Domain Name Disputes as to new gTLDs mostly, also very clearly provides in this regard – “Registrant should be prohibited from changing content found on the site to argue that it is now a legitimate use”, as follows:
- “During the Default period, the Registrant will be prohibited from changing content found on the site to argue that it is now a legitimate use and will also be prohibited from changing the Whois information. [Para 6(2) – UNIFORM RAPID SUSPENSION SYSTEM (“URS”) procedure]”.
- Now coming to the analysis of legitimate use of the Disputed Domain by the Respondent. The Respondent has put the disputed domain name in use in connection with a offering of news aggregation services, similar to the Complainant but cannot be referred as bona fide or legitimate. Though Respondent states as having invested a substantial amount of monetary and human resources to run the disputed domain name and provide its readers a high end news reporting service. But the following further observations have been made of the disputed domain name:
- The Complainant was the first to use the coined word and registered the mark NewsHunt as well. The disputed domain name contains the inverse of the Complainant’s registered Mark.
- Respondent offers mobile version of the website, which is evident from the low resolution pictures used similar to Complainant’s online version. And also has similar language selection option.
- Above all, disputed domain has news copied from various sources including Complainant’s website DailyHunt.in. There are references to various URLs on the Disputed Domain that belong to the Complainant like dailyhunt.in, newshunt.net.in and dhunt.in that all belong to the Complainant, as elaborated later.
- In May 2016, the Respondent has attempted to remove the visibility of all the reference to news sources, that were provided on the top right of every detailed news pages, including references to Complainant’s website. Such references seem to be deliberately hidden through use of CSS (Cascading Stylesheet) by the Respondent before responding to the Complaint as elaborated above, in a bid to prove bonafide use of the disputed domain name. [IslandAir, Inc. v. Flanders, FA 96098 (Nat. Arb. Forum Feb. 8, 2001) (“Making changes to a web site after notice of a dispute may negate a finding of rights or legitimate interest.”); Also Wal-Mart Stores, Inc. v. Walmarket Canada, D2000-0150 (WIPO, May 2, 2000) (finding that the respondent had no rights or legitimate interests where he changed website after receiving complainant’s “cease and desist” notice).
- Complainant further rightly contends that the impugned website merely contains contents aggregated from multiple news providers including that of Complainant and does not show any information about the purpose of the business of the Respondent. The WIPO panel has made clear in Paris Hilton v. Deepak Kumar, WIPO Case No. D2010–1364, if the owner of the domain name is using it in order “…to unfairly capitalise upon or otherwise take advantage of a similarity with another’s mark then such use would not provide the registrant with a right or legitimate interest in the domain name. The Respondent’s choice of the Domain Name here seems to be a clear attempt to unfairly capitalise on or otherwise take advantage of the Complainant’s mark and resulting goodwill.
- The Rule 3(11) of the Intermediaries Guidelines also require an Intermediary to appoint a grievance officer and provide contact details over the website for any user or victim to contact in case of any violation under Rule 3 of the said Rules, which is comprehensive enough to cover Trademark, Copyright or other Proprietary Rights as well. But as the Complainant has rightly pointed out that the name of the Respondent or any kind of contacts details or nature of services provided by the Respondent are nowhere mentioned on the impugned website. Though Respondent contends that the website contains a Feedback form for the readers to contact but that does not satisfy the requirements.
- In the matter of RMO, Inc. v Andy Burbidge Claim Number: FA0103000096949, the National Arbitration Forum interpreted Paragraph [subclause (ii) above] to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail. But in the present matter, it is pointed out by both parties that the mark as contained in the Respondent’s Domain Name – HUNTNEWS is used only as part of the domain in the said website. The Respondent admits that the use of the mark “huntnews” is restricted to its use in the domain name itself… upon logging on to the website, the viewer can only see the words “India News” as a heading with dozens of news stories below various tabs of news categories. It clearly proves that the Respondent indirectly identifies itself as ‘India News’ at the disputed domain and not HUNTNEWS.
- Further, there is no evidence on record or otherwise from the WHOIS that words HUNTNEWS was ever used to identify the said domain or the Respondent, therefore, it can be concluded the Respondent or his company were never commonly known by the Disputed Domain name. In the matter of Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum February 10, 2003) it was held: “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy paragraph, does not apply to the Respondent either. Further, in any case, the Complainant had never authorized or permitted the Respondent to use the inverted version of its registered Trademark.
- Respondent has been using the inversion of the Complainant’s mark, blatantly copied news from Complainant’s website and included reference to the Complainant’s websites. Therefore, cannot be said to be making a bonafide or fair use of the domain name. Rather it has indulged in misleading & diverting users to his own website and thereby tarnishing the mark at issue and trying to capitalize on the goodwill and reputation of the Complainant’s mark NewsHunt. In Reed Elsevier Properties Inc. and Reed Elsevier Inc. v. Weekly Publishers Claim Number: FA0303000151536, the Panel accepted that the Respondent’s domain name weeklypublishers.com is confusingly similar to its mark PUBLISHERS WEEKLY because it merely transposes the two words within the Complainant’s mark. Inverting or transposing words in a trademark is not sufficient to avoid confusing similarity because the two words create the same commercial impression and meaning. Further, it was found that by inverting the words of the PUBLISHERS WEEKLY mark, the Respondent is creating user confusion to attract potential clients to its website.
- Lastly, the Complainant had registered the Domain in 2009, while mark was applied for registration with Trademark Registry in 2010. While the Respondent chose to register the disputed domain name only in July 2015. Therefore, given the long and widespread reputation of the Complainant’s trademarks, the compelling conclusion is that the Respondent, by choosing to register and use a domain name which is not only confusingly similar to the Complainant’s widely known and distinctive trade mark but identical, intended to ride on the goodwill of the Complainant’s trademark in an attempt to exploit, for commercial gain, Internet traffic destined for the Complainant. Potential partners and end users are led to believe that the website is either the Complainant’s site, especially made up for the bearings, or the site of official authorized partners of the Complainant, while in fact it is neither of these. [Viacom International Inc., and MTV Networks Europe v. Web Master, WIPO Case No. D2005-0321 – mtvbase.com]. The Complainant specifically submits that it had never authorized or permitted the Respondent to use the inverted version of its registered Trademark.
- In the circumstances, the Arbitrator concludes that the Complainant has established the requirement of paragraph 4 (ii) of the INDRP Policy, i.e. Respondent has no rights to or legitimate interests in the disputed domain name.