ARBITRATION AWARD
Disputed Domain Name www.vnext.in
Decision of Ms. Pooja Dodd, Sole Arbitrator
INDRP Case No. 1047
IN THE MATTER OF:
Visaka Industries Limited
Door no. 1-8-303 / 69 / 3 Visaka Tower,
Sardar Patel Road, Secunderabad … Complainant
Versus
Madhu Nalluri
Resident of A.P.H.B. Colony (sub office) Krishna,
Andhra Pradesh
Postal Code: 520012
Country: IN
Phone:+968.71505081
Email: madhu@techie.com, madhu@nalruri.in …Respondent
1. The Parties:
The Complainant in this arbitration proceeding is Visaka Industries Ltd, a company incorporated under the laws of India with registered office at Door no. 1-8-303 769/3 Visaka Tower, Sardar Patel Road, Secunderabad, Telangana, India. The Complainant is represented by its Dy. General Manager Legal, Rajanikanth.R.
The Respondent is Madhu Nalluri a Resident of A.P.H.B. Colony (sub office) Krishna, Andhra Pradesh- 520012 as per the details provided by National Internet Exchange of India (the “NIXI”). The email address connected with the Respondent is madhu@techie.com and the phone number connected with the Respondent is +968.71505081. During the proceeding, it was revealed that the Respondent is also using madhu@nalluri.in.
2. Domain Name and Registrar:
The Disputed Domain Name is www.vnext.in which was registered on December 20, 2017.
The accredited Registrar with whom the Disputed Domain Name is registered is GoDaddy.com, LLC situated at 14455 N. Hayden Rd., Ste. 226, Scottsdale, Arizona 85260, United States of America.
3. Procedural History:
This arbitration proceeding is in accordance with the .IN Domain Name Dispute Resolution Policy (the “Policy”), adopted by NIXI and the INDRP Rules of Procedure (the “Rules”), which were approved by NIXI on June 28, 2005 in accordance with the Indian Arbitration and Conciliation Act, 1996. By registering the Disputed Domain Name with a NIXI accredited Registrar, the Respondent agreed to the resolution of the disputes pursuant to the Policy and the Rules.
As per the information received from NIXI, the history of the proceedings is as follows:
3.1. The Complaint was filed with the .IN Registry, NIXI, against Madhu Nalluri. NIXI verified the Complaint and its annexures for conformity with the requirements of the Policy and the Rules.
3.2. In accordance with the Rules, Paragraph – 2(a) and 4(a), NIXI formally notified the Respondent of the Complaint and appointed me as the Sole Arbitrator for adjudicating upon the dispute in accordance with the Arbit ration and Conciliation Act, 1996, the Policy and the Rules.
3.3. I submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by NIXI to ensure compliance with Paragraph 6 of the Rules.
3.4. NIXI notified the Parties of my appointment as the Arbitrator via email on November 16, 2018 and served an electronic copy of the Complaint on the Respondent. The Parties were notified about the commencement of arbitration proceedings on November 16, 2018 and the Respondent was directed to submit a Response within 10 days. The Respondent failed to respond within the deadline set i.e. November 26, 2018.
3.5. On November 26, 2018, I informed the parties that though no Response was received from the Respondent within the time period granted, I was granting additional time of 5 days (in the interest of justice), and that if no reply was filed by December 1, 2018, the award would be passed on merits. The additional time period granted lapsed but no Response was filed.
3.6. On December 13, 2018 the Respondent reached out to NIXI explaining the reason for default, and attempted to clarify that the Disputed Domain Name was not registered in bad faith.
3.7. On December 13, 2018, I explained that ample opportunity was given to the Respondent to submit a Response, however, none was received within the deadlines set and as a result, I would proceed with passing the award within the stipulated deadline. The Respondent requested clarity and also asked the procedure to challenge such award.
3.8. On December 14, 2018, I directed the Respondent to the Policy and Rules and reiterated that since the Respondent did not submit any Response within the deadlines set, the Complaint will be decided on merits based on materials submitted by the Complainant and contentions put forth by it, in accordance with the Rules.
Grounds for Arbitration Proceedings
A. The disputed domain name is identical or confusingly similar to a name, trade mark or service mark in which the Complainant has rights;
B. The Respondent has no rights or legitimate interest in respect of the domain name; and
C. The disputed domain name was registered and is being used in bad faith.
4. Summary of the Complainant’s Contentions:
In support of its case, the Complainant, inter alia has made the following submissions:
4.1. The Complaint is primarily based on:
4.1.1. Trade mark registrations for VNEXT and VNEXT formative marks namely:
VNEXT – next in and related variations of the above (collectively the “VNEXT Marks”), based on their registration and use in India.
4.2. The Complainant submits that the VNEXT Marks are extremely valuable assets and thus in order to protect them, the Complainant has secured trade mark registrations for them in India.
4.3. The Complainant is a public limited company incorporated in the year 1980 in Hyderabad and is one of the India’s leading manufacturers of Asbestos Cement Sheets, Designer Fiber Cement Boards, Solar Cement Boards, and Polyester Synthetic Yarn and exports its products to over 20 countries such as the United States of America, South Africa, United Kingdom and Australia, to name a few.
4.4. The Complainant coined, conceived and adopted the trade mark VNEXT and has been openly, continuously and extensively using the VNEXT Marks worldwide since April, 2013. The Complainant’s products bearing the VNEXT Marks are well known and are sold extensively across the globe.
4.5. The Complainant has legitimate rights, interest and title over the VNEXT Marks and has used the VNEXT Marks extensively in respect of goods covered under classes 19 and 20 and has painstakingly built up good reputation worldwide. The Complainant has invested substantial amounts of resources in advertising its products under the VNEXT Marks in various magazines, brochures, catalogues, Internet, other print and visual media and also through fairs, exhibitions and events.
In India, the Complainant has invested approximately Rs. 24 crores on promotion and advertisement of its products and services under the VNEXT Marks. As a result, the VNEXT Marks are distinctive and act as source identifiers connected solely with the Complainant.
4.6. On October 3, 2018, the Complainant sent the Respondent a legal notice via email as well as by Registered Post with AD, calling upon the Respondent to refrain from using the Complainant’s VNEXT Marks and holding the Disputed Domain Name but the Respondent did not respond to the legal notice and continued holding the Disputed Domain Name.
4.7. In support of the contentions, the Complainant has furnished copies of the following documents:
Annexure A Incorporation certificate of Complainant
Annexure B Board resolution authorizing authorized Representative
Annexure C WHOIS details of the Disputed Domain
Annexure D WHOIS details of the domain registered by the Complainant
Annexure E INDRP Policy and INDRP Rules of Procedure
Annexure F Advertisements or any documents on which the Complainant relies
Annexure G Trade Mark Certificates and Renewal Certificates
Annexure H Email sent to the Respondent
Annexure I Copy of Postal Return
Annexure J Copies of decisions of INDRP and WIPO (relied in the Complaint)
Annexure K Details of payments/fee paid to NIXI
5. Discussions and findings:
The submissions and documents provided by Complainant lead to the conclusion that the VNEXT Marks form an integral part of the Complainant’s business. The Respondent does not have any relationship with the business of the Complainant or any legitimate interest in the Disputed Domain Name. Moreover, the Complainant has not authorized the Respondent to use the VNEXT Marks. It is evident that the Disputed Domain Name wholly contains the Complainant’s VNEXT mark.
It’s a well-established principle that that once a Complainant makes a prima facie case showing that a Respondent lacks rights to the domain name at issue, the Respondent must come forward with the proof that he has some legitimate interest in the domain name, to rebut this presumption.
6. The Respondent and his default:
The Respondent has not filed any Response to the Complaint. Paragraph 8(b) of the Rules requires that the Arbitrator must ensure that each party is given a fair opportunity to present its case. Even though sufficient time (including additional time) was granted, the Respondent has not filed any Response to the Complaint.
Paragraph 11 (a) of the Rules empowers the Arbitrator to proceed with an ex parte decision in case any party does not comply with the time limits or fails to submit a Response against the Complaint. As stated above, I initially gave the Respondent 10 days and in the absence of a Response, I granted an additional 5 days to respond to the Complaint, but the Respondent failed to file any Response to the Complaint and has sought not to answer the Complainant’s assertions or controvert the Complaint and its contentions, in a timely manner.
The Respondent attempted to explain his default by stating that he were out of the country for the past year, however NIXI served the Complaint electronically on the Respondent and such electronic service of a Complaint qualifies as adequate service of the Complaint on the Respondent. Thus, the Respondent not being in India does not waive the Respondent’s duty to respond to the Complaint in a timely manner, especially since the Respondent was well aware of the contentious nature of the Disputed Domain Name since October 3, 2018, when the Complainant served its legal notice on the Respondent.
As a result, I find that the Respondent has been given a fair opportunity to present his case but has chosen not to come forward and defend himself.
Paragraph 12(a) of the Rules provides that the Arbitrator shall decide the Complaint on the basis of the statements and documents submitted in accordance with the Arbitration and Conciliation Act, 1996 and any law that the Arbitrator deems fit to be applicable.
In accordance with Paragraph 12 of the Rules, the Arbitrator may draw such inferences as are appropriate from the Respondent’s failure to reply to the Complainant’s assertions and evidence or to otherwise contest the Complaint.
In the circumstances, my decision is based upon the Complainant’s assertions and evidence and inferences drawn from the Respondent’s failure to submit a timely Response, despite having been given sufficient opportunity.
7. The issues involved in the dispute:
The Complainant invokes Paragraph 3 of the Rules to initiate an arbitration proceeding by submitting a Complaint to NIXI. The Respondent in registering
a .in domain name submitted to the mandatory arbitration proceeding in terms of Paragraph 4 of the Policy, which determines the elements for a domain name dispute, which are;
1) whether the domain name in question is identical or confusingly similar to a trade mark;
2) why the Respondent cannot claim any legitimate interest in the trade mark;
and
3) why the domain name in question should be considered as having been registered and being used in bad faith.
These elements are discussed below in tandem with the facts and circumstances of this case.
Element 1- The Respondent’s domain name is identical/confusingly similar to a name, trade mark or service mark in which the Complainant has rights:
I am of the view that the Complainant has submitted enough documentary evidence to prove its rights in and to the ownership of the VNEXT Marks arising out of prolonged use and registration. The VNEXT Marks have been extensively used by the Complainant to identify its products. The submissions and documents provided by Complainant lead to the conclusion that the Complainant has proprietary rights, more particularly trade mark rights and other common law rights in the VNEXT Marks. The Disputed Domain Name contains the Complainant’s VNEXT mark in its entirety. Therefore, in light of the Complaint and accompanying documents, I am of the view that the Disputed Domain Name is identical with the Complainant’s VNEXT mark. Thus, the use of the Complainant’s VNEXT mark in the Disputed Domain Name will inevitably lead consumers to believe that the Disputed Domain Name is affiliated to the Complainant. Hence, the first element is satisfied.
Element 2 – The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name:
The Respondent does not have any relationship with the business of the Complainant or any legitimate interest in the domain name www.vnext.in. Moreover, the Complainant has, in its submissions established that it has never authorized or licensed the Respondent to use its VNEXT Marks.
The burden of proof to establish any legitimate interests over the Disputed Domain Name falls on the Respondent, and by not responding to the Complaint, within the timelines set, the Respondent failed to establish legitimacy of registering the domain name www.vnext.in. For these reasons, I find that the Respondent has no rights or legitimate interests in the Disputed Domain Name.
Element 3 – why the domain name in question should be considered as having been registered and being used in bad faith.
The Complainant apprehends that the Disputed Domain Name could be used to mislead and divert internet users or to tarnish the Complainant’s VNEXT Marks. The Respondent could sell or transfer the domain name to a competitor of the Complainant who could damage the goodwill or reputation of the complainant by inserting material prejudicial to the Complainant. This should lead to the Complainant’s image being tarnished if the Disputed Domain Name falls into the hands of the competitors of the Complainant.
Though the Complainant failed to establish any intent on part of the Respondent to sell the Disputed Domain Name either to the Complainant or to a competitor, at a premium however, the Respondent continued to hold the Disputed Domain Name despite the legal notice issued on October 3, 2018 by the Complainant. The Respondent also chose not to submit a Response within the deadlines set by me. Even though the Respondent claims to have been traveling for the past one year, the nature of the email is such that it can be accessed from anywhere so long as there is Internet. Moreover, the fact of service of the said legal notice issued to the Respondent or the service of the Complaint, is not disputed by the Respondent. Having received both the legal notice and the Complaint and choosing to ignore both indicates the Respondent’s malafide intent. Thus, this element is satisfied.
8. Decision:
In view of the foregoing, I am convinced that the Disputed Domain Name is identical to the Complainant’s well-known VNEXT mark, that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name and that the Disputed Domain Name was registered in bad faith. In accordance with the Policy and Rules, I direct that the Disputed Domain Name be transferred to the Complainant with immediate effect, with a request to NIXI to monitor the transfer.
This award is being passed within the statutory deadline of 60 days from the date of commencement of arbitration proceeding. The parties are to bear their own costs.
Ms. Pooja Dodd
(Sole Arbitrator, NIXI)
Dated: January 8, 2019
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