BEFORE THE SOLE ARBITRATOR MR.D.SARAVANAN
.IN REGISTRY (C/o. NATIONAL INTERNET EXCHANGE OF INDIA)
Disputed Domain Name: www.flipcartindia.in
FLIPKART INTERNET PRIVATE LIMITED Vaishnavi Summit, Ground Floor, 7th Main, 80 Feet Roady 3rd Block, Koramangala Industrial layout, Bangalore – 560 034, Karnataka, India
..Complainant
V.
1. Flipcart India,
Janki Enclave, South Extension,
Delhi-110 056.
2. Surya Balaji Enterprises Private Limited Dr.No. 43/9/225/226, Shop No. 13 & 14, Sri Priya Complex, Railway New Colony, Vishakapatnam, A.P. 530 020, India
..Respondents
The Parties:
The Complainant is M/s.Flipkart India Private Limited, having address at Vaishnavi Summit, Ground Floor, 7th Main Road, 80 Feet Road, 3rd block, Koramangala Industrial Layout, Bangalore-560 034, Karnataka, India. The Complainant is represented through its Attorneys, M/s. Saikrishna & Associates, B-140, Sector 51, Noida- 201 301.
The Respondents are the current Registrants of the disputed domain name <flipcartindia.in>.
Respondent No.1: Flipcart India, Janki Enclave, South Extension, Delhi, India – 110 056.
Respondent No.2: Surya Balaji Enterprises Private Limited, Dr.No.43/9/225/226, Shop No. 13 & 14, Sri Priya Complex, Railway New Colony, Vishakapatnam, A.P. 530 020, India. Neither the Respondents represented themselves nor was represented by any one.
2.The Domain Name and Registrar:
The disputed domain name is www.flipcartindia.in. The domain name has been registered with .IN REGISTRY through its Registrar, Endurance Domains Technology LLP.
3. Procedural History:
28th November, 2018 The .IN REGISTRY appointed D.SARAVANAN as Sole Arbitrator from its panel as per paragraph 5(b) of INDRP Rules of Procedure.
28th November, 2018 Consent of the Arbitrator along with declaration was given to the .IN REGISTRY according to the INDRP Rules of Procedure.
28th November, 2018 .IN REGISTRY sent an email to all the concerned intimating the appointment of arbitrator. On the same day, the complete set of the soft copy of the Complaint with Annexure was sent to the Respondents by email while sending the hard copy of the same to the address of the Respondents by NIXI through courier and speed post respectively.
1st December, 2018 Notice was sent to the Respondents by e-mail directing them to file their response within 10 days, marking a copy of the same to the Complainant’s representative and .IN Registry.
11th December, 2018 Due date for filing response.
12th December, 2018 Notice of default was sent to the Respondents notifying their failure in filing the response, a copy of which was marked to the Complainant’s representative and .IN Registry.
4. Factual Background:
4.1 The Complainant:
The Complainant is M/s. Flipkart India Private Limited, having address at Vaishnavi Summit, Ground Floor, 7th Main, 80 Feet Road, 3rd Block, Koramangala Industrial Layout, Bangalore- 560 034, Karnataka, India. The Complainant is represented through its Attorneys, M/s. Saikrishna &. Associates, having office at B-140, Sector 51, Noida- 201 301. The letter of Authority given by the Claimant to appoint M/s. Saikrishna & Associates is provided in Annexure-3 marked by the Complainant.
4.2 Complainant’s Activities:
(i) The Complainant submits that they operate an e-commerce platform, www.flipkart.com, and is the owner of the well-known brand/trademark FLIPKART. The portal www.flipkart.com is an online marketplace and a platform to facilitate transactions for e-commerce and m-commerce of a variety of goods between buyers and sellers. The Complainant is the first billion dollar company in Indian e-commerce and its mobile application is the first Indian App to cross 50 million users. The Complainant was also the first to implement the popular ‘Cash on Delivery’ facility and ‘Payment by card on Delivery’ facility, which every online shopping website in India offers as an option today.
(ii) The Complainant states further that the website www.flipkart.com operated by the Complainant’s group company, commenced its operations in October 2007 with the objective of making shopping convenient for everyone who had internet access in India. Today, Flipkart is present across categories ranging from books, movies, music, games, mobiles, cameras and computers to healthcare & personal products, home appliances and electronics etc. Flipkart.com presently offers over 80 million products across more than 80 categories and has 100 million registered users clocking over 10 million daily page visits. Flipkart handles 8 million shipments a month with the assistance of the logistics services provided by the Complainant under the brand EKART. The website www.flipkart.com is a fully automated, topically arranged and easy-to-use online services that seek to provide availability 24 hours a day, seven days a week, enabling buyers to locate the items for sale in fixed-price formats, facilitating buyers to purchase items of interest and all Flipkart users to browse through listed items from any place in the world at any time. The Complainant annexed Annexure 4 which are extracts from the Complainant’s website www.f1ipkart.com depicting the vast domain of the Complainant’s business. The Complainant’s website is one of the most popular and successful online e-commerce/shopping sites in the world being the 138th most popular website globally and 6th most visited website in India according to the Alexa Ranking. A printout from the website http://www.alexa.com/ corroborating the above is marked by the Complainant as Annexure 5. The Claimant further submitted that the popularity of the Complainant’s www.flipkart.com website is evidenced by the fact that the official Facebook page of this channel has more than 9.2 million fans and the official Twitter account has more than 2.11 million followers. A printout from the said website’s official Facebook and Twitter page is marked by the Claimant as Annexure 6. The Complainant has been held to be well-known in India vide order dated March 03, 2012 passed by NIXI in matter no. INDRP/232 against the registration of domain name www.flipcart.in. The relevant order is marked as Annexure 7. In addition to the above, vide order dated October 09, 2015 the Singapore Domain Name Dispute Resolution Policy Secretariat has held the Complainant to be well-known not only in India but also in Singapore. The relevant order is marked by the Complainant as Annexure 8.
(iii) The Complainant’s previous financial year’s (April 01, 2016 to March 31, 2017) turnover was INR 22,535,427,156. Further, the Complainant has spent substantial sums of money, in excess of INR 7,211,184,598 in promoting and advertising their e-commerce website www.flipkart.com in the financial year 2016-2017. Further, the Complainant has also actively promoted its website and the various offers/shopping festivals and discounts appearing on its website. The Complainant’s financials with regard to its turnover and advertisement expenses from 2014-2017 is marked by the Complainant as Annexure 13.
(iv) The Complainant’s e-commerce website has been the subject of widespread unsolicited media publicity. Various articles appearing internationally and in Indian national and regional websites and newspapers featuring unsolicited stories regarding the Complainant’s services under the trademark FLJPKART is marked as Annexure 14.
(v) The Complainant has been active and vigilant in enforcing and protecting its rights in its mark FLIPKART. Actions taken by the Complainant includes filing trademark applications, registering domain names, filing domain name complaints, filing oppositions against third party infringing marks with the Indian Trade Marks Registry, sending legal notices to third parties owning domains containing the mark FLIPKART or any deceptively similar marks. Pursuant to the legal notice being sent by the instant complainant, the domain name <flipkartclassifieds.com> has been transferred in the name of the Complainant whereas the domain name <flipkartplus.com> has been surrendered by the infringing Registrant. The Complainant has obtained numerous favorable orders not only in India but in foreign jurisdictions wherein the Complainant’s trademark FLIPKART has been held to be well-known. Selective copies of such orders are marked as Annexure 15.
4.3 Complainant’s Trading Name:
(i) The Complainant submitted that the trademark FLIPKART came into being in the year 2007 with the establishment of the Complainant. The word Tlipkart’ is a coined and fanciful term, which has no denotative meaning and accordingly is universally recognized as one of the most successful trademark and tradename in the world of e-commerce. The “Flipkart” trademark/service mark, apart from being inherently distinctive, has acquired substantial goodwill and is an extremely valuable commercial asset of the Complainant. It is well recognized that in the virtual world, on account of the reach of the medium of internet, trademark/ service mark rights are created much faster and more extensively. The Complainant, is thus the proprietor of the trademark, ‘Flipkart’ by virtue of priority in adoption, continuous and extensive use, widespread advertising and the tremendous reputation accruing thereto in the course of trade.
(ii) The Complainant in addition submitted that the trademark Tlipkart’ is an extremely popular trademark and apart from common law rights, the Complainant is also the registered proprietor of the said mark. The Complainant holds prior trade mark registrations of the mark FLIPKART, FLIPCART and FLIPKART.COM both in WORD and LOGO. The earliest registration for the mark FLIPKART goes back to November 13, 2009, in India. A list of some of the Complainant’s registrations for the marks FLIPKART, FLIPCART and FLIPKART.COM, both in WORD and LOGO in India is marked by the Complainant as Annexure 9. Further, copies of the registration certificates issued by the Indian Trade Marks Registry in respect of the above registrations are marked by the Complainant as Annexure 10. The Complainant submitted that in addition, the Complainant has several pending applications in India for FLIPKART trademarks and a full list of these pending applications are marked as Annexure 11. A list of the Complainant’s trademark applications for the mark FLIPKART (word & logo) in various foreign jurisdictions is marked as Annexure 12 by the Complainant.
(iii) The Complainant is the registered owner of various FLIPKART per se/formative and similar domain names that include the following:
1. FLIPKART.COM
2. FLIPAKRT.COM
3. FLIPAKRT.INFO
4. FLIPCART.COM
5. FLIPCARTAPP.CO.IN
6. FLIPCARTAPP.COM
7. FLIPCARTAPP.IN
8. FLIPCARTAPPLICATIONSHOPPINGDAY.COM
9. FLIPCARTAPPLICATIONSHOPPINGDAY.IN
10. FLIPCARTAPPSHOPPINGDAY.COM
11. FLIPCARTAPPSHOPPINGDAY.IN
12. FLIPCARTMOBILEAPP.CO.IN
13. FLIPCARTMOBILEAPP.COM
14. FLIPCARTMOBILEAPP.IN
15. FLIPCARTMOBILEAPPSHOPPINGDAY.COM
16.FLIPCARTMOBILEAPPSHOPPINGDAY.IN
17.FLIPCARTMOBILESHOPPINGAPP.CO.IN
18. FLIPCARTMOBILESHOPPINGAPP.COM
19. FLIPCARTMOBILESHOPPINGAPP.IN
20. FLIPCARTPAYMENTS.COM
21. FLIPKART.BIZ
22. FLIPKART.CO.IN
23. FLIPKART.COM
24. FLIPKART.IN
25. FLIPKART.NET
26. FLIPKART.ORG
27. FIPKARTAPP.CO.IN
28. FLIPKARTAPPLICATIONSHOPPINGDAY.CO.IN
29. FLIPKARTAPPLICATIONSHOPPINGDAY.COM
30. FLIPKARTAPPLICATIONSHOPPINGDAY.IN
31. FLIPKARTAPPSHOPPINGDAY.COM
32. FLIPKARTAPPSHOPPINGDAY.IN
33. FLIPKARTCAMPUS.COM
34. FLIPKARTCAREERS.COM
35. FLIPKARTDHANTERASSALE.COM
36. FLIPKARTDIGITAL.COM
37. FLIPKARTEMAILBKP.COM
38. FLIPKARTFLYTE.COM
39. FLIPKARTINDIA.IN
40. FLIPKARTLETTERS.COM
41. FLIPKARTMAILCO
42. FLIPKARTMAIL.COM
43. FLIPKARTMAILIN
44. FLIPKARTMAIL.NET
45. FLIPKARTMAIL.ORG
46. FLIPKARTMALLCOM
47. FLIPKARTMOBILEAPP.CO.IN
48. FLIPKARTMOBILEAPP.COM
49. FLIPKARTMOBILEAPP.IN
50. FLIPKARTMOBILEAPPSHOPPINGDAY.CO.IN
51. FLIPKARTMOBILEAPPSHOPPINGDAY.COM
52. FLIPKARTMOBILEAPPSHOPPINGDAY.IN
53. FLIPKARTMOBILESHOPPINGAPP.CO.IN
54. FLIPKARTMOBILESHOPPINGAPP.COM
55. FLIPKARTMOBILESHOPPINGAPP.IN
56. FLIPKARTPARTNERS.COM
57. FLIPKARTREWARDS.CO
58. FLIPKARTREWARDS.COM
59. FLIPKARTREWARDS.IN
60. FLIPKARTREWARDS.INFO
61. FLIPKARTREWARDS.NET
62. FLIPKARTREWARDS.ORG
63. FLYPKART.COM
64. FLYPKART.INFO
65. SELLONFLIPKART.CO.IN
66. SELLONFLIPKART.COM
67. SELLONFLIPKART.IN
68. SELLONFLIPKART.NET
69.FLIPCARTAPPLICATIONSHOPPINGDAY.CO.IN
70. FLIPCARTAPPSHOPPINGDAY.CO.IN
71.FLIPCARTMOBILEAPPSHOPPINGDAY.CO.IN
4.4 Respondents’ Identity and activities:
(i) The Complainant submitted that according to the concerned Registrar’s Whols database, the details pertaining to the Registrant are prohibited for viewing as per the security settings. In addition, on a perusal of the disputed website www.flipcartindia.in it is noted that the Registrant has declared that the website/platform belongs to ‘Surya Balaji Enterprises Pvt. Ltd’:
” The Terms and Conditions (T&C) contained herein along with the Privacy Policy and Terms of Use, form an Agreement regulating our relationship with regard to the use of Surya Balaji Enterprises Pvt. Ltd. Wpcartindia.in'(site) by you.”
(ii) That said, as per the MCA records, the Directors of Surya Balaji Enterprises Private Limited are Ajay Kumar Dugar and Ajay Pal Singh and the registered address of the company is Dr.No.43/9/225/226, Shop No. 13 and 14, Sri Priya Complex, Railway New Colony, Vishakapatnam, A.P. 530 020. The registered email id is Iuckv25999@amail.com. The Whois extract of the website www.flipcartindia.in along with an extract from the official website of the Ministry of Corporate Affairs is marked by the Complainant Annexure 1.
5. Dispute
The dispute arose when the Complainant came to know about the disputed domain name in the name of the Respondents. The Complainant had also never authorized the Respondents to use the disputed domain name. The Respondents are also not affiliated with the Complainant.
In these circumstances, the Complainant requested this Tribunal to transfer the disputed domain name in favour of the Complainant.
6. Parties contentions:
A. Complainant:
The domain name www.flipcartindia.in is identical or confusingly similar to a name, trademark or service mark in which the Complainant has rights [Para 3(b)(vi)(l) INDRP Rules of Procedure to be read with para 3 of INDRP] :
(i) The present complaint is based on, and is being filed on account of, the unauthorized and illegal registration and use of the Complainant’s registered trade marks FLIPCART/FLIPKART as part of the Respondents’ impugned domain name. The Complainant operates the extremely popular and successful e-commerce platform, www.flipkart.com. It is in connection with the above-mentioned services that the trademark/ brand name FLIPKART/FLIPCART is being used by the Complainant.
(ii) The impugned domain name <flipcartindia.in> is deceptively and confusingly similar to the Complainant’s registered marks FLIPKART/FLIPCART.COM. It is clear that the impugned domain name contains and incorporates the Complainant’s well-known and coined trademark “FLIPKART/FLIPCART” in its entirety.
(iii) The trademark FLIPKART was adopted by the Complainant in the year 2007 and thus the Complainant is the rightful proprietor of the trademark FLIPKART by virtue of priority in adoption and registration, continuous and extensive use, widespread advertising and the tremendous reputation accruing thereto in the course of trade. The trademark FLIPCART being phonetically and conceptually identical and visually similar to the trademark FLIPKART also shares similar levels of goodwill, reputation and recognition.
(iv) The Complainant submitted that it is clear that the impugned domain name contains and incorporates the Complainant’s well-known trademark “FLIPKART/FLIPCART” in its entirety. In this regard, reliance is placed on the findings of the Arbitral Tribunal in Microsoft Corporation v. Chun Mun Kam (INDRP/119, January 11, 2010 at http://registry.in/system/files/msnin O.pdfi. International Business Machines Corporation v. ZhuXumei(INDRP/646, January 30, 2015 at http://reqistrv.in/svstem/files/coanoscoin.pdf) & Jaguar Land Rover v. Yitao ( INDRP/641, January 04, 2015 at http://reqistry.in/svstem/files/1aguarlandrovercoin.pdn.
(v) Further the impugned domain name <flipcartindia.in> has copied entirely, and is identical to the Complainant’s URL/websites www.flipkart.in, www.flipcart.in , www.flipkart.com with the addition of the suffix “India”. It is submitted that the only difference between the domain names of the Complainant and the Respondent is the word “india”. The mere addition of the suffix “india” is not sufficient enough to distinguish and differentiate the impugned domain name. The Hon’ble Tribunal in Philip Morris USA Inc v. n/a. WIPO Case IMo.D2004-0462 at http://www.wipo.int/amc/en/domains/decisions/html/2004/d2004-0462.html, has observed that “the practice of adding a prefix or suffix to a well-known trademark has been the subject of numerous UDRP decisions. Whether, in these circumstances, the trademark and the disputed domain name are confusingly similar depends on many factors, including the relative distinctiveness of the trademark and the non-trademark elements of the domain name, and whether the non-trademark elements detract from or contradict the function of the trademark as an indication of origin. In several of its decisions, where the respondents has used a suffix, this Hon’ble Tribunal has ordered for the transfer of the domain name.
(vi) Further, this Hon’ble Tribunal has held in Six Group AG v. Mayangroup, WIPO Case No. D2013-0008 at http://www.wipo.int/amc/en/domains/search/text.isp?case=D2013-0008. that the “.com” at the end of a disputed domain is to be ignored in deciding the issue of confusing similarity. That is to say, a variance in the TLD is not a factor in adjudging similarity.
(vii) The essential and distinctive element of the Complainant’s trademark “FLJPKART/FLIPCART”, which forms the basis of the Complainant’s identity online through domain names or otherwise, has been blatantly copied in its entirely by the Respondent in the impugned domain name and the only other element present in the impugned domain name is the word “India”.
(viii) The Complainant submitted that the inclusion of the word “India” suffixing the mark FLIPCART in the impugned domain name, in no way whatsoever dilutes, reduces or diminishes the likelihood of confusion and deception being caused to an internet user. In light of the glaring similarity between the impugned domain name and that of the Complainant, it is extremely likely that an internet user who is not certain of or familiar with the exact and complete web address of the Complainant, may be misled when coming across the Respondent’s domain name <flipcartindiia.com>. In order to register a domain name that could be confusingly similar or identical to those of the Complainant, the Respondents would have no option but to make a minor addition to the Complainant’s domain name. In light of the fact that the Complainant is the prior adopter and owner of the FLIPKART/FLIPCART/FLIPKART.COM trade marks and the domain names <flipcart.in>, <flipkart.in> & <fiipkart.com>, the only way in which the Respondents would be able to create a confusingly similar or identical domain name would be by making a minor addition which is both non-distinctive and descriptive.
(ix) The addition of the suffix “india” would in fact increase the confusion in the minds of the internet users as “india” denotes the country of origin of Flipkart. It is further submitted that the suffix “india” also gives the impression to the internet user that the impugned domain name www.flipcartindia.in is the india specific site of the Complainant’s well-known e-commerce website www.flipkart.com. The user will be forced to associate/ derive a nexus between the Respondent’s website and that of the Complainant’s popular e-commerce portal www.flipkart.com. In the matter of Apple Inc. v Fred Bergstrom, Lotta Carlsson Georges Chaloux and Marina Bianchi, WIPO Case No. D2011-1388, http://www.wipo.int/amc/en/domains/search/text.isp?=D2011-1388 the Panel held that ‘merely causing internet users to wonder whether the domain name is associated with the Complainant is confusion enough’.
(x) Further, the use of the entire mark together with a non-distinctive and descriptive phrase is likely to cause confusion, mistake or deception as to the source, origin, sponsorship or approval of Respondent’s services such that consumers and others are likely to believe that the Complainant authorizes or controls the impugned domain name. In this regard, reference may be made to the decision of the Hon’ble Tribunal in Wal-Mart Stores, Inc v. Walsucks & Walmarket Puerto Rico, NO.D2000-0477 (WIPO July 20, 2000). “The addition of a common or generic term following a trademark does not create a new or different mark in which the Respondent has rights.”
(xi) In view of the above, it is submitted that the impugned domain name <flipcartindia.in> is identical with or similar to the Complainant’s trademark FLIPKART/FLIPCART/FLIPKART.COM.
The Respondents have no rights or legitimate interest in the domain name www.flipcartindia.in [Para 3(b)(vi)(2) INDRP Rules of Procedure to be read with Para 7 of .INDRP]:
(i) The Complainant operates the e-commerce platform, www.flipkart.com, and is the owner of the well-known brand/trademark FLIPKART/FLIPCART/FLIPKART.COM. The Complainant first launched the e-commerce portal under the mark FLIPKART in the year 2007. The Complainant is the registered proprietor of the mark FLIPKART/FLIPCART, in India and is actively pursuing trademark applications in various countries with the earliest registration dating back to November 13, 2009. As such, the said mark FLIPCART/FLIPKART has become highly distinctive of the goods and services of the Complainant on account of extensive use, popularity and promotion. The FLIPKART/FLIPCART trademark is not only distinctive but has also acquired substantial goodwill and reputation and is an extremely valuable commercial asset of the Complainant. The Respondent is no way related to the Complainant or its business activities nor is the Respondent an agent of the Complainant. Further, the Complainant has not entered into any agreement granting the Respondent any right, license or authorization to make use of its registered trademarks. Therefore, the Complainant has not consented to the use of its registered trademarks by the Respondent or been associated with him in any way whatsoever.
(ii) The Respondent could have no possible justification for registering the impugned domain name that incorporates the well-known trade mark FLIPKART/FLIPCART of the Complainant. The Respondent has, therefore, registered a domain name that is identical to the trademark of the Complainant, without the knowledge or consent of the Complainant.
(iii) The date of registration of the impugned domain name <flipcartindia.in> appears to be November 11, 2017, which is subsequent to the dates of adoption & use of the trademark FLIPKART/FLIPCART by the Complainant-i.e. 2007. To substantiate this claim, the Complainant relies on a prior decision given in Star India Pvt. Ltd v. Suezen Jackson, at
http://www.wipo.int/amc/en/domains/decisions/text/2014/d2014-0820.html. The Hon’ble
Tribunal therein observed that “the disputed domain name was registered several years after the Complainant first registered and began using the LIFE OK trademark. The evidence on the record provided by the Complainant with respect to the use of the LIFE OK trademark, combined with the absence of any evidence provided by the Respondent to the contrary, is sufficient to satisfy the Panel that, at the time the disputed domain name was registered, the Respondent most likely knew of the Complainant’s trademark and knew that it had no rights or legitimate interests in the disputed domain name.”
(iv) The Respondent has no proprietary or contractual rights in the Complainant’s trademark FLIPCART/FLIPKART’ in whole or in part to the disputed domain name. Furthermore, the Respondent is not commonly known by the disputed domain name nor does the Respondent actually engage in any business or commerce under the name ‘FLIPCART/FLIPKART’. The Respondent is not a licensee of the Complainant, nor has the Respondent ever been authorized by the Complainant to use the Complainant’s trademark or register the impugned domain name. The Complainant has no relationship with the Respondent. In this regard, reference may be made by the Complainant to the decision of the Hon’ble Tribunal in Neteller pic v.Prostoprom WIPO Case No. 02007-1713 at http://www.wipo.int/amc/en/domains/decisions/html/2007/d2007-1713.html, wherein the Hon’ble Tribunal stated as follows:
“But there is an even more fundamental reason why Paragraph 4(c) (ii) of the Policy can have no application. It cannot be the case that a cybersquatter who registers a domain name in bad faith and then operates a business under that domain name long enough for the business to become ‘commonly known by’ the domain name, thereby acquires a complete defense under paragraph 4(c) (ii). That would not make any sense. If that were the correct interpretation of paragraph 4(c) (ii), every cybersquatter who registered a domain name in bad faith would be able to ‘create’ a defense under paragraph 4(c) (ii) by the simple expedient of adopting the domain name as the name of his/her business organization, thereby defeating the intended operation of the Policy.
In the Panel’s view the better interpretation of Paragraph 4(c) (ii) is that, to come within the safe harbor of that provision, a respondent (or his/her organization or business) must have been commonly known by the at-issue domain at the time of registration. There is no evidence of that in this case.”
(v) In this regard, the Complainant made reference to the decision in The Tom Company v. Dick Egy, USDRP Case No.FA1404001553926, wherein it was held that if a respondent is not commonly known by the disputed domain name, then the respondent cannot have any legitimate rights or interests in the same.
(vi) Besides, it appears that the Respondent is an Indian and residing within India and therefore, it is impossible for the Respondent to claim that he is not aware of the Complainant and its FLIPKART/FLIPCART marks. The Complainant, therefore, submits that the Respondent does not have any legitimate interest or right in respect of the impugned domain name.
(iii) The domain name was registered and is being used by the Respondents in bad faith [Para 3(b)(vi)(3) INDRP Rules of Procedure to be read with para 6 of .INDRP]:
(i) The Complainant submitted that the lack of any legitimate, good faith use suggests bad faith. The impugned domain name was registered by the Respondent after complete knowledge of the Complainant’s extremely popular trademark FLIPKART/FLIPCART, in bad faith and with an ill-motive to gain unfair commercial advantage, at the expense of the Complainant.
(ii) The domain name “has been registered and is being used in bad faith” by the Respondent. It is imperative to note that the Respondent is hosting an e-commerce website on www.flipcartindia.in which is an exact replica of the Complainant’s well-known www.flipkart.com. The Respondent has blatantly imitated the Complainant’s e-commerce website in its entirety including the color combination, the placement of the FLIPCART logo along with the device of the cart and the placement of products such that the entire look and feel of the impugned website is identical to the Complainant’s website. Moreover, the Respondent is operating a phishing website on the impugned domain name and collecting the personal traits of the consumers by misrepresenting itself as the Complainant. The Complainant marked the screenshots from the Respondent’s website reflecting the stark identity with the Complainant’s website as Annexure 16.
(iii) The Complainant further submitted that by hosting a website with trademark and content identical to the complainant’s, the Respondent is diverting/misleading the internet users and is making use of the Complainant’s name/trade mark in bad faith. The Respondent’s purpose in registering the impugned domain name is to free-ride on the back of the Complainant’s well-known trade mark for the purpose of selling a variety of products for monetary gains. That of itself is enough to constitute bad faith registration and use. The clear intention is that Internet users will be sucked in by the use of the Complainant’s trademark for the purpose of buying all sorts of goods.
(iv) The mala fides of the Respondent are writ large as evident from the Respondent misrepresenting itself as TLIPCART’ on the active website functioning on the impugned domain name. It is stated that the Respondent was and has been never associated to the Complainant or its parent company and hence such false declarations merely indicate the ill motives of the Respondent to tread upon the coat-tails of the Complainant and make unfair and illegal commercial gains.
(v) The Respondent has no intention of bona fide use of the impugned domain name and instead, is seeking to make unfair and illegal commercial gain, at the expense of the Complainant. The fact that the users, once so diverted or attracted, are confronted with an inactive page does not cure the initial and illegitimate diversion (Estee Lauder Inc v. estelauder.com, estelauder.net and Jeff Hanna, case No.D2000-0869 http://www.wipo.int/amc/en/domains/decisions/html/2000/d2000-0869.html ). If the motive of the Respondent was clean and bona fide, he could well have chosen to use a domain name that was not confusingly identical to Complainant’s and/or in which Complainant had no rights. Hence, the Respondent registered the impugned domain name to trade upon the reputation and good-will of the Complainant in the e-commerce industry.
(vi) Further, the date of registration of the impugned domain name <flipcartindia.in> appears to be November 11, 2017, which is subsequent to the dates of adoption & use of the mark LIPKART/FLIPCART by the Complainant-i.e.2007. Respondent had substantial constructive notice of the FLIPKART/FLIPCART trademark, as a general google search on the date of registration of the domain name would have revealed numerous references and news articles indicating the e-commerce website FLIPKART/FLIPCART of the Complainant. The Respondent has acted in plain violation of Paragraph 3 of the .IN Domain Name Dispute Resolution Policy. To substantiate this claim, Expedia, Inc v. European Travel Network. D-2000-0137 at http://www.wipo.int/amc/en/domains/decisions/html/2000/d2000-0137.html. the Hon’ble Tribunal observed that, “the Respondent has registered the domain name XPEDIATRAVEL.COM with the primary purpose of diverting potential customers of Complainant to the Respondent’s website, and thus disrupting the business of a competitor, the Complainant. The Respondent first registered the domain name in May, 1999, long after the Complainant established rights and web publicity in the mark EXPEDIA for travel-related services. In the absence of contrary evidence, the Panel finds that the Respondent knew of or should have known of the Complainant’s trademark and services at the time it registered the domain name XPEDIATRAVEL.COM, given the widespread use of the Complainant’s EXPEDIA website”.
(vii) The Complainant is extremely well-known and popular amongst the relevant trade, industry and the Indian populace and there is virtually no possibility whatsoever that the Respondent was unaware of its existence or presence in the market. In light of the fact that the Respondent must have been aware of the presence, popularity and stature of the Complainant, there can be no legitimate ground or reason for which the Respondent would register the well-known trademark of another company to attract internet users to its website. Further, the Respondent in the present case belongs to the National Capital Territory of Delhi and by no stretch of imagination can it be conceived that the Respondent was unaware of the staggering presence of the Complainant and its rights in the mark TLIPKART/FLIPCART. It has been observed by this Hon’ble Tribunal in Consitex S.A., Lanificio Ermenegildo Zegna & Fig// S.p.A., Ermenegildo Zegna Corporation v. Mr.Lian Ming, WIPO Case NO.DWS2003-0001 at http://www.wipo.int/amc/en/domains/decisions/html/2003/dws2003-0001.html, that a respondent could not ignore the existence of well-known trademarks at the time of registering a domain name. Further, in Marie Clarie Album v. Marie-Claire Apparel Inc. (D2O03-0767), Veuve Clicquot Ponsardin, Maison Fondee en 1772 v. Herreveld, (D2000-0776), Adidas-Solomon AG v. Domain Locations (D2OO3-0489), it has been held that registration of a well-known trademark of which the Respondent must reasonably have been aware is in itself sufficient to amount to bad faith. Copies of the above referred WIPO decisions in this Complaint are collectively marked by the Complainant as Annexure-17.
(viii) The Respondent has registered the domain name primarily for the purpose of disrupting the business of the Complainant.
(ix) The Respondent, by using the domain name www.flipcartindia.in, has intentionally attempted to attract internet users for commercial gain, to their website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Complainant’s website or location or of a product.
(x) The impugned domain name, therefore, has been registered in bad faith.
B. Respondent:
The Respondents, in spite of notice dated 1st December, 2018 and default notice dated 11th December, 2018 did not submit any response.
7. Discussion and Findings:
It has to be asserted as to whether the Constitution of Arbitral Tribunal was proper and whether the Respondents have received the notice of this Arbitral Tribunal?
Having gone through the procedural history, this Tribunal comes to the irresistible conclusion that the Arbitral Tribunal was properly constituted and Respondents have been notified of the complaint of the Complainant. However, the Respondents did not choose to submit any response and that non-submission of the response by the Respondents had also been notified to the Respondents on 11th December, 2018.
Under paragraph 4 of the .IN Domain Name Dispute Resolution Policy (INDRP), the Complainant must prove each of the following three elements to establish their case, that:
(i) The Respondents’ domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) The Respondents have no rights or legitimate interest in respect of the domain name; and
(iii) The Respondents’ domain name has been registered or are being used in bad faith.
(a) Identical or confusing similarity:
(i) The Arbitral Tribunal finds that the Complainant has provided evidences that it possesses registered trademark “FLIPKART/FLIPCART/FLIPKART.COM” around the world, including in India. The same is evident from Annexures 9, 10, 11 and 12 marked by the Complainant. The Complainant has stated that the Complainant’s mark was first adopted in year 2007 and thus it is the rightful proprietor of the trademark FLIPKART by virtue of priority in adoption and registration, continuous and extensive use, widespread advertising and the tremendous reputation accruing thereto in the course of trade. From Annexure 9, this Tribunal perceives that the earliest registration of the Complainant’s mark, FLIPKART dates back to 13th November 2009. Whereas, from Annexure 1, this Tribunal perceives that the disputed domain name is registered on 11th November, 2017 much later to the registration of the Complainant’s mark.
This Tribunal is therefore convinced from the documents marked by the Complainant that the Complainant owns the mark “FLIPKART/FLIPCART/FLIPKART.COM”.
(ii) The disputed domain name www.flipcartindia.in only reflects the suffix “Tndia” to the Complainant’s mark “FLIPCART”. The Complainant placed reliance on the decision in Philip Morris USA Inc v. n/a. WIPO Case No.D2004-0462 at http://www.wipo.int/amc/en/domains/decisions/html/2004/d2004-0462.html, ‘wherein the Tribunal observed that xthe mere addition of a suffix is not sufficient enough to distinguish and differentiate the impugned domain name.’ This Tribunal inclines with the same and the impugned domain name reflects nothing but the suffix “India” to the Complainant’s well known mark”Flipcart”.
(iii) The Complainant further placed reliance to the decisions in Microsoft Corporation v. Chun Mun Kam (INDRP/119, January 11, 2O1O at http://reaistrv.in/svstem/files/msnin O.pdf), International Business Machines Corporation v. Zhu Xumei (INDRP/646, January 30, 2015 at
http://registry.in/system/files/cognoscoin.pdf) & Jaguar Land Rover v. Yitao ( INDRP/641, January 04, 2015 at http://reqistry.in/svstem/files/iaguarlandrovercoin.pdf), to establish that there is confusing similarity where the disputed domain name wholly incorporates the Complainant’s trademark. This Tribunal finds substance in the same and relies on the said decisions including the decision in Kenneth Cole Productions V. Viswas Infomedia INDRP/093 and finds that the disputed domain name www.flipcartindia.in incorporates the Complainant’s mark in entirety and hence is identical or confusingly similar to the Complainant’s mark.
(iv) In the light of the above, the Arbitral Tribunal concludes that the Complainant has established paragraph 4(i) of the .IN Domain Name Dispute Resolution Policy.
(b) Respondents’ Rights or Legitimate Interests:
(i) The Complainant contends that the Respondents have no legitimate interest in the disputed domain name. Paragraph 7 of the IN Dispute Resolution Policy sets out three elements, any of which shall demonstrate the Respondents’ rights or legitimate interests in the disputed domain name for the purposes of Paragraph 4 (ii) of the Policy. The Respondents had been given the opportunity to respond and to present evidence in support of the elements in paragraph 7 of the INDRP. The Respondents have not chosen to do so and has not filed any response in these proceedings to establish any circumstances that could assist it in demonstrating, any rights or legitimate interests in the disputed domain name. Although, the Complainant is not entitled to relief simply by default of the Respondents to submit a Response, the Arbitral Tribunal can however and does draw evidentiary inferences from the failure of the Respondents to respond. It is also found that the respondents have no connection with the mark “FLIPCART”. The Respondents have failed to rebut the presumption of absence of rights or legitimate interests.
(ii) Further as observed above, the Complainant’s registration of mark dates back to 2009 whereas, the disputed domain name is registered only in the year 2017. The Complainant placed reliance on the decision in in Star India Pvt. Ltd v. Suezen Jackson, at http://www.wipo.int/amc/en/domains/decisions/text/2014/d2014-0820.html, wherein the Tribunal observed that, ‘the disputed domain name was registered several years after the Complainant first registered and began using the trademark. The evidence on the record provided by the Complainant with respect to the use of the trademark, combined with the absence of any evidence provided by the Respondent to the contrary, is sufficient to satisfy the Panel that, at the time the disputed domain name was registered, the Respondent most likely knew of the Complainant’s trademark and knew that it had no rights or legitimate interests in the disputed domain name.’ This Tribunal observes that the present facts of the case squarely applies to the ratio held in the said decision wherein the Complainant has prior registration of the mark FLIPCART and the Respondents have not substantiated their right in the said mark and that it is most likely that the mark FLIPCART is known to the Respondents prior to the registration of the disputed domain name.
(iii) The WHOIS lookup in Annexure 1, reflects that the disputed domain name, www.flipcartindia.in belongs to the 2nd Respondent herein namely, “Surya Balaji Enterprises Private Limited”, which is not even in the slightest manner connected with the Complainant’s mark, namely “FLIPCART”. The view of the Tribunal is supported by the decision placed by the Complainant in Toro Company v. Dick Egy, USDRP Case No.FA1404001553926, wherein it was held that if a respondent is not commonly known by the disputed domain name, then the respondent cannot have any legitimate rights or interests in the same.
(iv) The above establishes that the Respondents do not have any rights or legitimate interest in the domain name and it intends to make unjust commercial profits.
(v) Based on the record, the Respondents do not have rights or legitimate interests in the disputed domain name as the Respondents’ current use is neither an example of a bona fide offering of goods or services as required under paragraph 7(i) of the Policy nor is there any legitimate non-commercial or fair use of the disputed domain name and as such there is no evidence that paragraphs 7(ii) or 7(iii) of the Policy apply. The Complainant asserts that they have not licensed or otherwise authorized the Respondents to use their trademark. The Respondents are therefore found to have acted in a way that tarnishes the Complainant’s well known mark “FLIPCART”, by using the mark without any proper authorization.
(vi) The Arbitral Tribunal is satisfied that the Respondents have no rights or legitimate interests in respect of the disputed domain name and, accordingly paragraph 4(ii) of the Policy is satisfied.
(c) Registration and Use in Bad faith:
(i) It is seen from Annexure 1, the Respondents had registered the disputed domain name on 11th November, 2017 which is very much after the date of registration of the Complainant’s trademark. By that time, the Complainant’s FLIPCART Mark, through extensive and continuous use, had acquired immense goodwill and reputation amongst the public and trade. The rights of the Complainant in the mark is also well established by various precedents submitted by the Complainant, collectively marked as Annexure 15.
(ii) The Complainant has been held to be well-known in India vide order dated March 03, 2012 passed by NIXI in matter no. INDRP/232 against the registration of domain name www.flipcart.in. The relevant order is marked by the Complainant as Annexure 7. Further, in the order dated October 09, 2015, placed by the Complainant in Annexure 8, the Singapore Domain name Dispute Resolution Policy Secretariat has held the Complainant to be well-known not only in India but also in Singapore.
(iii) Further, this Tribunal on perceiving the screenshots of the disputed domain name marked by the Complainant as Annexure 16, observes that the website portrays the mark FLIPCART on top; with contents similar to the Complainant’s e-commerce services, so as to portray the look and feel of the Complainant’s mark and thereby deceive the public.
(iv) The above implies that the Respondents are involved in cyber squatting by registering domain names containing well known trademarks and thereby making illegal benefits would amount to registration and use in bad faith.
(v) The Respondents have no legitimate rights or interests in the disputed domain name and there was a mala fide intent for registering the disputed domain name other than for commercial gains, and that the intention of the Respondents was simply to generate revenue, either by using the domain name for its own commercial purpose or through the sale of the disputed domain name to a competitor or any other person that has the potential to cause damage to the ability of the Complainant to have peaceful usage of the Complainant’s legitimate interest in using their own trade names.
(vi) The Arbitral Tribunal is satisfied that the Respondents used the Complainant’s domain name in bad faith and, accordingly paragraph 4(iii) of the Policy is also satisfied.
(vii) In the light of the above, this Arbitral Tribunal finds that the Complainant has established that the disputed domain name was registered and is being used in bad faith.
8. Decision:
For all the foregoing reasons, in accordance with paragraph 10 of the .INDRP, the Arbitral Tribunal orders that the Respondents shall cease to use the mark “FLIPCART” and also the disputed domain name www.flipcartindia.in be transferred to the Complainant.
D.SARAVANAN
Sole Arbitrator
1 January, 2019 Chennai, INDIA
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