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
The domain name <huntnews.in> of the Respondent is confusingly or deceptively similar to the registered trademark of the Complainant NewsHunt, which is the mere interchange of prefix to suffix. Further, the Respondent is attempting for a clandestine adoption of the Complainant’s trademark by using the confusingly similar domain name <huntnews.in>.
- The Respondent’s services under the impugned domain <huntnews.in> is identical and/or exactly similar to the goods or services offered by the Complainant under its well-known mark NewsHunt. The Respondent is merely trying to take undue advantage of the goodwill of the Complainant’s trademark by using the confusingly similar domain name <huntnews.in>.
- The impugned domain name is confusingly and/or deceptively similar to the trademark NewsHunt of the Complainant, as the domain name of the Respondent is only an inverted version of the Complainant’s trademark, formulated by interchanging the order of the words “NEWS” and “HUNT”. Further, the use of the impugned domain name by the Respondent in relation to identical and similar goods and services is likely to deceive and confuse consumers with Complainant’s services. The Respondent is merely attempting to take advantage of the popularity and goodwill of the Complainant by adopting a domain name that is an inverted version of the Complainant’s well known trademark. By adopting an identical and similar mark, the Respondent is attempting to misrepresent its domain and services as that of the Complainant, thus opening doors for passing off actions.
- In support of its contentions, the Complainant relies upon various domain dispute awards in the matter of:
- NCRAS Management LP v. Cupcake City and John Zuccarini [WIPO Case No D2000-1803], where the Respondent owned a domain www.nationalcarrental.com and the complainant owned the Trademark “National” for car rental services, where it was held that, merely inverting the terms of a mark, by the Respondent in forming a domain name, is quite insufficient to dispel consumer confusion; the mark and the resulting domain name are simply too similar to each other. In fact, such a domain name, rather than ameliorating confusion, exacerbates it, particularly when Internet users seeking to reach a site associated with the mark actually, by virtue of their innocent mistakes, reach a totally unrelated site after having entered the domain name. Therefore, it was held that inverting the terms of a mark in a domain name sufficiently resembles the Complainant’s marks as to cause confusion.
- In the case, Victoria’s Secret Stores Brand Management, Inc v. Purple Buchquet / Purple [Claim No FA1012001363116], The National Arbitration Forum panel held that the inversion of the terms in a mark informing the contested domain name does not distinguish the domain from the Complainant’s mark sufficiently to avoid a finding of confusing similarity.
- In the case Pearl Jam General Partnership v. Peter Lyn C/o Jam Pearl limited, [Claim No FA03120001238], The National Arbitration Forum panel held that the domain name JamPearl.com is confusingly similar to the Trademark ‘PEARLJAM’ of the Complainant and ordered the Domain Name be transferred from the Respondent to the Complainant.
- In Playboy Enterprises V Movie Name Company, [WIPO Case No D2001-1201] The administrative panel of the WIPO arbitration and mediation center had held that the Domain Name ChannelPlaybBoy.com is confusingly similar to the Trademark PlayBoyChannel of the Complainant and ordered the cancellation of the impugned Domain Name.
- In the Layman Marcus Group Inc. and N.M. Nevada Trust v. Dewey Mackay DBA PMA media group [NAF Claim No FA0610000813531], the National Arbitration Forum held that the inversion of the words of the mark fail to sufficiently distinguish a domain name from a mark.
- Further, in Swarovski A. G. v. Modern Empire Internet Ltd [WIPO Case No D2006-0148], it was held that if a Respondent’s Domain Name incorporates a slightly misspelled version of a complainant’s name and Trademark, there are likely to be circumstances where a person might unintentionally type in the Domain Name instead of the trademark term, particularly having regard to the potential for persons using the internet to “guess” at domain names. This is a typical “typo-squatting” case in which a finding of confusing similarity is appropriate.
- The Respondent is not associated with the Complainant in any manner and that the Complainant has never granted any permission to the Respondent to use the registered Trademark of the Complainant or any inverted versions of the said mark.
- The registration and the use of the confusingly similar impugned domain is a direct infringement of the legitimate rights held by the Complainant of the mark NewsHunt. In support of this Contention the Complainant relies upon the award of F. Hofmann. Laroche AG v. Relish Enterprises, [WIPO Case No D2007-1629], where it was held that, if the Complainant owns a registered Trademark then it satisfies the threshold requirement of having the Trademark rights and the Domain name is confusingly similar to Complainant’s Trademark because disputed Domain Name looks and reads like Complainant’s Trademark.
- The disputed domain name <huntnews.in> has been coined through the use of two generic words “Hunt” and “news”. According to the Shorter Oxford Dictionary (Fifth Edition) “hunt” means make a diligent or energetic search for; or look eagerly for, while the word “news” means Information published or broadcasted about important or interesting recent events. Therefore, once both words are placed next to each other, a bare reading of the words gives rise to a simple phrase that will interpret to mean ‘news will be diligently and eagerly searched for’. Keeping the aforesaid in mind the fact that the disputed domain name is a news reporting website, the two words used in conjunction provide substantial context to what the purpose of the domain name is, i.e. to hunt for news. Hence, the descriptiveness of the mark used in the domain name is apparent at its face and cannot in any manner confuse any person as to the origin or association of the domain. It is further submitted that the definition for “news” in the same dictionary as included colloquially and derivative terms to the said word, which included the word “newshawk” and “newshound” both of which mean a newspaper reporter. Simply, the suffixes to both words have animals that are considered as hunters and/or seekers respectively and the word clearly describes a word for someone who acts as a hunter for the news. Therefore, prefixing the word “hunt” before the word “news” as a short phrase or hunting the news is purely descriptive for a news reporting website such as that of the Respondent’s Copies of the relevant extracts from the Shorter Oxford Dictionary (Fifth Edition) is annexed herewith as Annexure.
- The Complainant has wrongfully pleaded that the Respondent is taking undue advantage of the alleged goodwill subsisting in the Complainant’s trademark NewsHunt through the registration and operation of the disputed domain name. It is reiterated that the Respondent’s use of the <huntnews.in> domain for news is descriptive of the news services it offers through the said domain and therefore can in no manner take undue advantage of such a mark, which are ubiqutiously found to be used in common usage of the English language. See Marico Ltd V. Agro Tech Foods, FAO (OS) No 352/2010 before the High Court of Delhi “… it is an aspect of concern with respect the claim of the plaintiff that if partly tweaked descriptive words, the same would result in a grave and absurd situation because a non-tweaked word being a completely descriptive word will in fact be deceptively similar to the tweaked descriptive English Language word or expression of which registration is obtained. Meaning thereby that because of success in getting registered a minor modification of a descriptive word or expression of the English language, a person who gets registration can prevent a purely descriptive word or expression of the English language, a person who gets registration can prevent a purely descriptive use of a normal word or expression as found in English language dictionary on the ground that it would be identical with or deceptively similar to a registered trademark – a position which is found in the present case. Such a position, in our opinion, cannot at all be countenanced and must be struck down with a heavy hand.”
- Furthermore, it is settled law if each word in a combination retains its original descriptive meaning, such that the combination is no more than the sum of its parts, such a mark will be considered inherently descriptive. Respondent has cited a matter Campina Melkunie V Benelux Case No 265/00 fled under Uniform Dispute Resolution Policy.
- The Respondent asserts that the conjunctive use of the terms “hunt” and “news” is common to the trade for websites providing news reporting services such as those of both parties to the present proceedings. The Respondent annexes the whois list of such websites that provide news service for its subscribers. The aforesaid list makes it abundantly clear that the conjunctive use of “hunt” and “news” is common to the trade wherein the relevant market is operating a news reporting service online.
- Furthermore, the stark difference in the manner in which the Respondent uses the mark goes a long way dispelling any possibility or likelihood of confusion. The Respondent’s 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. In contrast, the Complainant’s website www.newshunt.com immediately displays promotional literature for its NewsHunt mobile application placed next to a colorful logo with 4 petals. The Complainant’s domain name does not publish any news items or stories but instead directs the viewers to the online software application market through which the NewsHunt application of the Complainant can be downloaded on a mobile device. To clarify, visitors of the Respondent’s website can read the news through the impugned domain name whereas, visitors of the Complainants website would be redirected to a third party software market portal through which the Complainant’s news aggregator software application would need to be downloaded onto the visitor’s mobile device. Furthermore, the Respondent’s website is a news reporting website whereas the Complainant’s use of “hunt news” as a domain name is for its news aggregator software application.
Complainant under Rejoinder:
- The complainant denies and disputes all averments, statements, contentions, submissions and claims made by the Respondent in paragraphs V(1)(a) to V(1)(c) of the Response.
- It is humbly submitted that the complainant is the registered owner of the trademark NewsHunt in classes 38 and 42 vide application numbers 1907414 and 1907413. Moreover, the complainant is also the registered owner of the websites www.newshunt.in and www.newshunt.com. It is reiterated that the complainant’s services under the mark NewsHunt is available internationally and that the complainant offers access to more than 500 Newspapers in 13 different languages. Moreover, the complainant’s mobile application under the mark NewsHunt has been downloaded more than 10,000,000 (Ten Million) times through the Google Play Services. The complainant holds the largest market share among similar services arising from India with over 20 million monthly active users and over 2.5 billion page views monthly. Due to complainant’s continuous use and extensive promotional activities since February 2009, the mark NewsHunt has acquired secondary meaning among the public and even qualifies to be called as a well-known mark under the provisions of the Indian Trademark Act.
- The Complainant denies that the impugned domain name is a term coined by the Respondent by combining the generic words “hunt” and “news”. Contrary to the descriptiveness angle given to the said domain name by the Respondent, it is humbly reiterated that the domain <huntnews.in> is confusing and/or deceptively similar to the Complaint’s mark as it is only an inverted version of the Complainant mark NewsHunt. It is a well settled position under UDRP that mere inversion of terms of a mark is insufficient to dispel consumer confusion as the mark and the resulting domain name are confusingly similar to each other. Moreover, by adopting a confusingly and/or deceptively similar domain <huntnews.in> for similar services as that of the Complainant, the Respondent is attempting to take undue advantage of the popularity and goodwill of the Complainant. In support of this contention, the Complainant relies upon the cases mentioned in the Complaint.
- Additionally, the Complainant relies upon the following legal matters:
a) The Trademark Trial and Appeal Board In re San Antonio Shoe Inc, Serial No. 75/079,940,
b) Toronto Convention & Visitors Ass’n v. This Domain is For Sale, [WIPO Case No D2001-1463 – Feb 25, 2002],
c) Reed Elsevier Properties Inc. and Reed Elsevier Inc. v. Weekly Publisher’s [NAF Claim Number: FA0303000151536],
d) Dollar Rent A Car, Inc. v. Rob Smith d/b/a Ameriasa [ NAF Claim Number: FA0404000257706],
e) Toyota of El Cajon v. Toyota of El Cajon c/o Cobalt Domains and The Cobalt Group, Inc. [NAF Claim Number: FA0605000712323],
f) Lifetouch, rnc. v. Schools online Inc. [NAF Claim Number: FA0501000399497],
g) CV Underground LLC v. Gulf S. Ltd., FA 116732 (Nat. Arb. Forum Sept. 13, 2002).
- It is humbly submitted that the use of confusingly and/or deceptively similar domain name by the Respondent will lead to diversion of the Complainant’s users who might mistakenly access the impugned domain believing it to be associated with the Complainant. Further, ordinary users seeking to locate the functions or details of the complainant’s services under the mark NewsHunt may be confused with the presence of the impugned domain.
- The complainant denies and disputes that the inexplicable claim that impugned domain being descriptive of news services and hence in no manner take undue advantage of well-known mark NewsHunt of the complainant. Contrary to this, the complainant humbly submits that the impugned domain was registered by the Respondent with the intention of gaining unjust benefits by riding on the goodwill of the complainant’s mark. Further, it is humbly submitted that the Respondent cannot take the defence of descriptiveness to evade proceedings under INDRP, if the impugned domain is likely to cause confusion among the public owing to its similarity with a popular trademark like NewsHunt. The principle underlying domain name infringement cases is that no one is entitled to carry on its business in a such a way that it leads public to believe that it has any connection with any third party mark or business. It is humbly submitted that the use of the confusingly similar domain <huntnews.in> will mislead the public to believe that the Respondent services are associated with the complainant or are endorsed by the complainant.
- The Complainant denies and disputes all averments, statements, contentions, submissions and claims mentioned in paragraphs V(1)(d) to V(1)(f) of the Response. It is hereby denied that the conjunctive use of the terms ‘news’ and ‘hunt’ is common to the trade for websites providing news reporting services. The Complainant is an IP savvy company and has taken all necessary steps to prevent third parties from infringing its trademark rights.. Furthermore, it is specifically denied that seventeen websites with domain names comprising of the mark NewsHunt is currently in use. It is specifically pointed out of the long list cited by the Respondent, in which 13 domains are merely parked domains with negligible use. The Complainant humbly submits that will initiate stringent legal action against these infringing entities. The presence of these parked domains in no manner grant many special right to the Respondent to use a confusingly similar trademark and to take a free ride over the goodwill and popularity enjoyed by the complainant.
- The Complainant denies and disputes that the manner in which the mark HUNTNEWS is used would dispel any possible or likelihood of confusion among the public. The complainant also relies on the statement of the Respondent that the mark HUNTNEWS is restricted to the domain name itself and is not used anywhere else in the website. When the impugned website is opened it can be seen that the Respondent identifies the website as INDIA NEWS. However, no specific details or contact address of the Respondent including the name of the Respondent’s company TMT Investment is not provided anywhere in the said website. This clearly indicates that the Respondent is not known among the public under the mark HUNTNEWS. It is reiterated that the Respondent has utterly failed to provide an adequate reason as to why the impugned domain name has been adopted by the Respondent.
- The fact that the mark HUNTNEWS is mentioned only as part of the domain name and that website is maintained as an anonymous site indicates that the adoption of the impugned domain is in bad faith with the objective of diverting the traffic or users from the complainant’s website or application to the website of the Respondent.
- Further, it is denied that the Respondent’s website is a news reporting site whereas the Complainant use of the domain NewsHunt is for a news reporting site whereas the news aggregation application. The fact that the Complainant mark and services relates to news aggregation and that the impugned domain deals with news reporting has no relevance whatsoever with respect to the current proceeding as the consuming public (newsreaders) who are exposed to both websites and marks are the same. Contrary to what has been stated it in the Response, it is humbly submitted that the complainant also operates a news reporting website through the domain m.dailyhunt.in under the associated mark DailyHunt. Notwithstanding the aforementioned it is denied and disputed that the impugned website is a news reporting site. A mere perusal of the contents of the impugned website as well as the contents included as Annexure proves beyond doubt that the Respondent is actually engaged in aggregating and illegally copying news contents from numerous sources including the Complainant’s mobile application or websites. Therefore, it is humbly submitted that both complainant as well as the Respondent is engaged in offering similar or identical services to the public and that the usage of the similar domain <huntnews.in> would result in consumer confusion.
- In light of the aforementioned facts and submissions, the complainants submits that the domain name <huntnews.in> is confusingly and/or deceptively similar to the registered Trademark NewsHunt of the Complainant.
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