Havells India, Electrical Goods Company – Well Known Mark – Based upon name of Complainant Company – Trademark for Havells – Distinctive and Unique Mark – Passive Holding of Disputed Domain – Incomplete WHOIS – No Response – Misleading Consumers – Domain Transferred
IN THE MATTER OF
Havells India Limited
904, 9th Floor,
Surya Kiran Building,
K.G. Marg, Connaught Place,
New Delhi-110001.
and
QRG Enterprises Limited,
904, 9th Floor,
Surya Kiran Building,
K.G. Marg, Connaught Place,
New Delhi-110001. …Complainants
versus
Adarsh Kumar
Mysore Road,
Bengaluru
Karnataka- 560056.
India. .. .Respondent
1. The Parties
The Complainants in this arbitration proceeding are Havells India Limited and QRG Enterprises Limited (collectively ‘The Complainant’), both of the address 904, 9th Floor, Surya Kiran Building, K.G. Marg, Connaught Place, New Delhi-110001, represented by Mr Rodney Ryder, Scriboard, New Delhi.
The Respondent in this arbitration proceeding is Adarsh Kumar, an individual, of the address at Mysore Road, Bengaluru, Karnataka- 560056, India.
2. The Domain Name, Registrar and Registrant
The present arbitration proceeding pertains to a dispute concerning the registration of domain name <havellsindia.in> with the .IN Registry. The Registrant in the present matter is Adarsh Kumar, and the Registrar is GoDaddy.com, LLC.
3. Procedural History
The arbitration proceeding is in accordance with the .IN Domain Name Dispute Resolution Policy (INDRP), adopted by the National Internet Exchange of India (NIXI).
NIXI vide its email dated December 13, 2018, sought consent of Mrs. Lucy Rana to act as the Sole Arbitrator in the matter. The Arbitrator informed of her availability and gave her consent vide Statement of Acceptance and Declaration of Impartiality and Independence in compliance with the 1NDRP Rules of Procedure vide email on the same day.
Thereafter, NIXI forwarded the soft copy of the Complaint, along with Annexures, as filed by the Complainant in the matter, to all Parties, including the Arbitrator vide emails dated December 21, 2018 and made the pronouncement that Mrs. Lucy Rana, in her capacity as Arbitrator, would be handling the matter.
On December 24, 2018, NIXI confirmed that the soft copy of the Complaint along with annexures, as sent to the Respondent vide email, had not bounced back.
Therefore, the Arbitrator, vide email dated December 26, 2018, announced that the Complaint along with Annexures has been duly served upon the Respondent, at least vide email, as is evidenced by the fact that the emails as sent have not bounced back, and as per Rule 2(a)(ii) of the INDRP Rules of Procedure, this constitutes effective service. Hence the service of notice was deemed to have been completed upon the Respondent. Therefore, the Respondent is deemed to have been duly served with the Complaint and Annexures thereto and is granted a period of fourteen (14) days from the date of receipt of the email in which to file a response to the Complaint in hard as well as soft copy and forward copies of the same to the Complainant, the Arbitrator and the .IN Registry, failing which, the matter will be decided on the basis of material already available on record and on the basis of applicable law.
On January 10, 2019, the Arbitrator, vide email, addressed to the Respondent brought it on the record that despite the prescribed deadline for the Respondent to respond in the matter having elapsed on January 09,2019, in the interests of justice the Respondent was being granted an additional but final and non-extendable period of three (3) days within which to submit a response (if any) in the matter.
As no response to the Complaint was preferred by the Respondent in the matter even after expiration of the aforementioned final time period of three (3) days, the Arbitrator, vide email dated Janaury 15, 2019, reserved the award to be passed on the basis of facts and documents available on the record.
4. Factual Background
The (first) Complainant, i.e. Havells India Limited, claims to be one of the fastest growing Fast Moving Electrical Goods (FMEG) company in India, and a major power distribuition equipment manufacturer, with a strong global footprint. The incorporation certificate of the (first) Complainant, i.e. Havells India Limited has been annexed with the domain complaint as Annexure C.
The Complainant has provided extensive details to show its popularity and dominant position in the relevant market, i.e of electrical goods and appliances, including financial figures; industrial certifications, both national as well as international; awards and recognition; promotional material; social media presence and search results; publications; mobile applications; and sponsorships.
The Complainant has submitted that they consider their trade/service name/mark an important and an extremely valuable asset and thus in order to protect the same, have secured several trademark registrations for the mark HAVELLS in India as well as several other jurisdictions. That around 700 applications/registrations for the mark HAVELLS have been filed/obtained across the world and the first trademark registration dates back to the year 1955 in India. A list of global trademark registrations/applications as well as copies of the trademark registrations obtained by the Complainant in India are annexed as Annexure E. The Complainant has submitted that they are the exclusive owner and proprietor of the registrations listed above and said registrations are duly valid and subsisting as of this date.
Tha Complainant has further submitted that apart from trademark registrations, they also have copyright registrations for the HAVELLS logo and stylized rendering of the word HAVELLS, copies of which registrations have been annexed by the Complainant as Annexure N.
The Complainant has submitted that their present official website, i.e. wvvw.havells.com is a comprehensive, unique and acclaimed introduction to HAVELLS- the company and the brand. The Complainant has additionally submitted that the said domain name was registered by the Complainant in 1997. The Complainant has annexed a print out of the home page of the website as Annexure F. The Complainant has also submitted that along with their subsidiaries, they own more than 45 different domain names out of which each and every one comprises of the mark HAVELLS. The Complainant has annexed a list of such domain names as Annexure G.
The Complainant has submitted that Google Search of the term ‘Havells’ throws up a huge number of results of which, each and every one pertains to the Complainant only. The Complainant has annexed a copy of the first page of the Google Search as referred to as Annexure H.
The Complainant has submitted that they have a joint-venture in China and had subsidiaries in around 50 different countries before recently divesting its 80% stake in Sylvania Lighting. That all these entities have/had the mark HAVELLS as part of their ‘corporate name. The Complainant has annexed a complete list of all such ventures as well as a list of countries where the Complainant has/had presence as Annexure K.
The Complainant has submitted that they had learned that somebody had obtained a domain name registration for <havellsindia.in>. The Complainant immediately searched the WHOIS database for the disputed domain name [and sent an e-mail to NIXI] and found that the impugned domain name is registered in the name of Adarsh Kumar (the Resdpondent herein). The Registrar for the disputed domain name is GoDaddy.com LLC.
The Complainant has submitted that, being aggrieved by the registration of the disputed domain name i.e. <havellsindia.in>, the Complainant had approached NIXI for adjudication of the same by filing a requisite domain complaint on December 08,2018.
5. Complainant’s Contentions
The Complainant has contended that the mark HAVELLS is a coined word and is extremely distinctive and unique. It is thus entitled to the highest degree of protection. That the mark HAVELLS was coined and adopted by the Complainant’s predecessor in title, the Late Haveli Ram Gandhi in the year 1942 and has been extensively used as a trademark ever since. That the trademark HAVELLS was derived from the first five alphabets of the word ‘Haveli’ which formed a part of the Complainant’s predecessor’s first name.
The Complainant has contended that the profile and popularity of the Complainant under the trade/service name/mark HAVELLS has been continuously increasing since the date of adoption and use of the mark. That therefore the Complainant’s mark is well-known. That at present, the Complainant’s trade name/mark is identified by the purchasing public exclusively with the Complainant, and has acquired an enormous goodwill not only in India but in several other countries across the globe.
The Complainant has contended that trademark HAVELLS has gained enormous reputation and goodwill in India as well as abroad, and products under the HAVELLS brand are sold all over the world. The Complainant has annexed a few copies of invoices supporting such global exports sales as Annexure L.
The Complainant has contended that the mark HAVELLS has been protected by civil, criminal and other quasi-judicial actions in several countries such as Bangladesh, Saudi Arabia, Ghana, China, etc. The Complainant has annexed copies of such as Annexure M.
The Complainant has also contended that the mark HAVELLS has been recognised and declared as a ‘well-known’ mark by the courts in India and Turkey as well as by the Indian Trade Marks Registry. Similarly, HAVELLS has been declared as a well-known mark by the WIPO Panel in Havells India Limited, QRG Enterprises Limited v. Whois Foundation, WIPO Case No. D2016-1775. The Complainant has annexed copies of such judgments / declarations as Annexure J, and a copy of the decision issued by the WIPO Panel has been annexed as Annexure Jl.
6. Legal Grounds Submitted by the Complainant
The Complainant has submitted the following legal grounds in support of its complaint: A. The Disputed Domain Name’s Similarity to the Complainant’s Rights.
The Complainant has contended that the disputed domain name is identical/confusingly similar to the Complainant’s registered trademark and corporate name, HAVELLS. The Complainant has further contended that the Respondent’s malafide intentions are evident in that they have added the suffix ‘INDIA’ to the Complainant’s well-known trademark ‘HAVELLS’. The Complainant has further contended that the disputed domain name gives rise to enormous confusion regarding its origins as the same is identical to the Complainant’s well-known trademark ‘HAVELLS’.
The Complainant has, in this regard, placed reliance on the previous order passed in its favour in Havells India Limited, QRG Enterprises Limited v Whois Foundation, WIPO Case No. D2016-1775, wherein the circumstances had been similar and the adj udicating Panel had held that:
“…the addition by the Respondent, as a suffix, of the geographical term ‘India’ to the Complainant’s well-known HAVELLS trademark, as part of the disputed domian name, does nothing to distinguish the disputed domain name from the Complainant’s well-known HA VELLS trademark…
“In fact, this addition, in the view of the Panel, tends to lead to more confusion, as the Complainant is a well-known and well-established company in India… ”
The Complainant has further placed reliance on the following decisions in various domain name disputes, before the WIPO and other fora, in favour of its arguments:
• Facebook, Inc. v. Naija Host, WIPO Case No. D2015-1057;
• AltaVista Company v. S.M.A., Inc., WIPO Case No. D2000-0927;
• Reuters Ltd. v. Global Net 2000 Inc., WIPO Case No. D2000-0441;
• AltaVista Company v. Grandtotal Finances Ltd., WIPO Case No. D2000-
0848;
• Playboy Enterprises v. Movie Name Company, WIPO Case No. D2001-
1201;
• Living Media, Limited v. India Services, WIPO Case No. D2000-0973;
• eAuto, LLC v. Triple S Auto Parts, WIPO Case No. D2000-0047′
• Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,
WIPO Case No. D2000-1525;
• Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429;
• Wells Fargo and Company v. Jessica Frankfurter, INDRP/392 (September
25, 2012).
The Complainant has asserted that its mark HAVELLS had been adopted in the year 1942, and has been in extensive, continuous and uninterrupted use ever since. The Complainant has further mentioned that its trademark HAVELLS has been prominently displayed on all its printed materials and stationery items, and has further been used relation with advertisement, promotional materials and commercial information and has been disseminated amongst print and online media published around the world. The Complainant has contended that in each such instance, its trademark HAVELLS has been prominently displayed and has become the focus of the Complainant’s entire business, to the extent that the Complainant’s trademark HAVELLS has become popular and well-known across the world. The Complainant has annexed some copies of its promotional materials in this regard as Annexure Q.
The Complainant has contended that the use by any other concern of an identical/deceptively similar mark to that of the Complainant’s well-known mark and name HAVELLS is bound to lead to confusion and deception and amounts to passing off as well as trademark infringement. Any person or entity using the mark/name
HAVELLS in any manner is bound to lead to custromers and users to infer that that its product or service has an association or nexus with the Complainant’s.
The Complainant has contended that the name HAVELLS being the Complainant’s corporate name, having been used extensively over many years for their business as well as corporate identity, has come to be associated exclusively with the Complainant.
The Complainant has relied on the decision passed in WIPO Case No. D2000-1435, i.e. Realmark Cape Harbour LLC v. Lawrence S. Lewis, wherein it has been noted that a mark is capable of being a trademark if it has acquired a secondary meaning in the market. The Complainant has contended that the Complainant’s mark HAVELLS has acquired sufficient secondary meaning for this purpose.
The Complainant has contended that the mark/brand HAVELLS falls under the category of famous or well-known mark as provided for under Section 2(l)(zg) of the Trade Marks Act, 1999, and Article 6 bis of the Paris Convention.
The Complainant has annexed copies of decisions/declarations/awards issued by Indian courts, the Trademarks Registry and a WIPO adjudicatory Panel wherein the mark HAVELLS has been expressly declared as well-known, collectively as Annexures J and Jl.
The Complainant has contended that the disputed domain name is identical to the well-known trademark HAVELLS. The Complainant has further contended that numerous UDRP Panels have held in diverse decisions that a domain name wholly incorporating a complainant’s registered trademark may be considered sufficient to establish identity or confusing similarity, despite addition of other words to such marks. The Complainant has relied on the following decisions in support of its arguments:
• Farouk Systems Inc. v. Yishi, WIPO Case No. D2010-0006;
• Havells India Limited, QRG Enterprises Limited v. Whois Foundation, WIPO Case No. D2016-1775;
The Complainant has contended that the trademark HAVELLS is an invented, coined and arbitrary mark, and is therefore entitled to the highest degree of protection.
The Complainant has contended that, in the present case, it is very natural for a generic internet user who wishes to visit the Complainant’s Indian website, to type in the brand name, followed by “India” and then the the domain extension <.in>. In such a scenario, it will lead the internet user to believe that the Complainant is associated with or owns the website at www.havellsindia.in.
The Complainant has contended that in the past, adjudicatory panels in domain dispute cases have ruled in favour of brand owners even in cases where the trademark/brand was not registered. The Complainant has relied on the following decisions in support of its arguments:
• Satyam Computer Service Limited v. Vasudeva Varma Gokharaju, WIPO Case No. D2000-0835;
• Express Publications (Madural) Ltd. v. Murali RamaUrishnan, WIPO Case No. D2001-0208;
• Hindustan Petroleum Corporation v. Neel Punatar, WIPO Case No. D2004-0351.
Owing to the aforesaid submissions, the Complainant has contended that the conditions of Paragraph 4(i) of the INDRP have been satisfied in the present matter.
B. The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name
The Complainant has referred to Paragraph 7 of the INDRP and has submitted that the Respondent in the present case has not fulfilled any of the conditions as stipulated thereunder so as to demonstrate rights or legitimate interests in the disputed domain name, <havellsindia.in>.
The Complainant has contended that the Respondent has no proprietary or contractual rights in any registered or common law trademark corresponding in whole or in part to the disputed domain name <havellsindia.in>.
The Complainant has contended that the mark HAVELLS is a coined word, and the addition of the geographical term ‘India’ after the mark HAVELLS coupled with the fact that the Respondent is an Indian resident based in India clearly indicates that the Respondent knew of the Complianant’s well-known mark HAVELLS as it has been in use in India since 1942, Therefore, the Complainant has contended that it is thus highly improbable that the Respondent has has any rights or legitimate interests in the impugned domain name <havellsindia.in>. The Complainant has relied on the following decisions in support of its arguments:
• Havells India Limited, QRG Enterprises Limited v. Whois Foundation, WIPO Case No. D2016-1775;
• Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003;
• Kelemata S.p.A. v. Mr. Bassarab Dungaciu, WIPO Case No. D2003-0849.
The Complainant has submitted that:
i. The Respondent has no connection with the Complainant or any company licensed by the Complainant;
ii. The Respondent is not commonly known by the disputed domain name <havellsindia.in> or the trademark HAVELLS/ HAVELLS INDIA;
iii. The Respondent has never been authorised by the Complainant to register, hold or use the disputed domain name <havellsindia.in>.
The Complainant has contended that the Respondent’s name is ‘Adarsh Kumar’, and that he is not commonly known by the disputed domain name <havellsindia.in>, nor does the Respondent actually engage in any business or commerce under the name/mark HAVELLS. The Complainant has relied on the following decisions in support of its arguments:
• Etro S.p.A v. M/s Keep Guessing, INDRP/024 (June 27, 2007);
• Tata Sons Limited v. Jacob W., WIPO Case No. 2016-1264.
The Complainant has contended that in light of the uniqueness of the domain name <havellsindia.in>, which is identical to the Complainant’s well-known trademark HAVELLS, it is difficult to foresee any justifiable use that the Respondent may have with the disputed domain name (considering that the Respondent does ^not have the Complainant’s permission or license to register or use the disputed domain). The Complainant has further contended that on the contrary, registering the disputed domian name, gives rise to a false impression of an association of the Respondent with the Complainant. The Complainant has relied on the following decisions in support of its arguments:
• Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003;
• Daniel C. Marino Jr. v. Video Images Productions, et ah, WIPO Case No. D2000-0598.
The Complainant has contended that the Respondent has no active business under the name HAVELLS; the Respondent is not a licensee of the Complainant, nor has the Respondent ever been authorized by the Complainant to use their registered trademark HAVELLS, or register the disputed domain name <havellsindia.in>. The Complainant has asserted that they have no relationship with the Respondent.
The Complainant has relied on the following decisions in support of its arguments:
• Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403;
• ITC Limited v. Mr. Mark Segal; INDRP/079 (February 10,2009);
• Wells Fargo & Co. and Anr. v. Krishna Reddy, INDRP/581 (May 15,2014);
• AON Pic and Ors. v. Gangadhar Mahesh, INDRP/632 (October 31,2014);
• AON Pic and Ors. v. Guanrui, INDRP/633 (October 28, 2014).
The Complainant has contended that the fact that the Respondent has provided (evidently) incomplete WHOIS contact information is indicative of the fact that the Respondent does not have any legitimate rights in the disputed domain name <havellsindia.in>. That moreover, by providing inaccurater and unreliable information in this regard, the Respondent has violated Section 2 of the Terms and Conditions for Registrants’ as issued by the .IN Registry.
The Complainant has contended that the illegality in the registration of the disputed domain name (i.e. <havellsindia.in>) arises from the fact that domain names today are a part and parcel of corporate identity.”That in this specific case, the Complainant is involved in the business of manufacturing and selling electrical goods under the brand name HAVELLS. That moreover, a domain name acts as the address of a company on the internet and can be termed as a web address or a ‘web mark’, similar to a trade mark or a service mark, as well as being the internet address of the company.
The Complainant has contended that the Respondent can thus not have any rights or legitimate interests in the disputed domain name <havellsindia.in>, because the same incorporates the mark HAVELLS in entirety, which is in fact the Complainant’s registered trademark in which they have the sole and exclusive right, and that has become well-known in India and elsewhere owing to the Complainant’s efforts. That moreover, it is inconceivable that an individual in India would be unfamiliar with the Complainant’s popular and well-known brand HAVELLS.
The Complainant has contended that the fact that there is no website hosted at the disputed domain <havellsindia.in> further indicates that the Respondent does not have any rights or legitimate interests either in the HAVELLS mark or in the disputed domain name.
The Complainant has annexed a print of the home page at the disputed domain name, in support of their arguments in this regard, as Annexure S.
The Complainant has contended that HAVELLS is a coined term in which the Complainant has sole and exclusive rights, and which has become well-known owing to the Complainant’s efforts, therefore the Respondent cannot have rights or legitimate interests in the disputed domain name <havellsindia.in>. The Complainant has relied on the decision in the case Havells India Limited, QRG Enterprises Limited v. Whois Foundation, WIPO Case No. D2016-1775 in support of its arguments.
The Complainant has contended that the Respondent is a cybersquatter and has never been commonly identified with the disputed domain name or any variation thereof prior to Respondent’s registration of the disputed domain name. The Complainant has further contended that the burden is on the Respondent to prove that it has rights and legitimate interests in the disputed domain name.
Therefore, the Complainant has contended that it has amply established a prima facie case for the absence of rights or legitimate interests in the disputed domain name in favour of the Respondent.
C. The Registrant’s Domain Name has been registered or is being used in bad faith
The Complainant has contended that it is inconceivable that the registration of the disputed domain name was made without full knowledge of the existence of the Complainant/s and their ‘well-known’ trademark HAVELLS. The Complainant has further contended that their HAVELLS trademark is well-known in India and elsewhere as it has been continuously used since 1942. The Complainant has additionally contended that in fact, the addition of the geographical term ‘India’ after the Complainant’s trademark HAVELLS in the disputed domain name makes it apparent that the Respondent knew about the Complainant and its business activities in the electrical goods sector.
The Complainant has contended that, in light of the fact that the Respondent registered the domain name as recently as February 03, 2018, it is inconceivable that the Respondent, who is an Indian and resides in India, was not aware about the popularity of the Complainant’s well-known mark HAVELLS at the time of registration of the impugned domain name, especially since the mark is regularly featured in advertisements and news articles across all mediums – including over the internet, in India and elsewhere.
The Complainant has contended that since India is the home country of the Complainant and the HAVELLS mark has been used in India since several decades, it is apparent that the Respondent, who is an Indian and resides in India, registered the disputed domain name to cash-in on the reputation of the Complainant’s mark. The Complainant has further contended that it is obvious that the Respondent registered the disputed domain name to mislead consumers into believing that the impugned domain name is associated with the Complainant. The Complainant has cited the decisions in the cases Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, WIPO Case No. D2001-Q026 and Lockheed Martin Corporation v. Aslam Nadia, INDRP/947 in support of its arguments.
The Complainant has contended that even a basic internet search of the term ‘Havells’ would have alerted the Respondent of the Complainant/s’ extensive ownership and rights over the HAVELLS mark.
The Complainant has contended that their mark HAVELLS has received extensive unsolicited media attention, having been prominently featured in numerous publications with local, national and international audiences. The Complainant has submitted that the HAVELLS brand is extremely valuable and is one of the major factors contributing towards the net value of the Complainant.
The Complainant has once again reiterated that a WIPO Panel as well as courts in India and Turkey have declared HAVELLS to be a Veil-known’ mark. Therefore, the Complainant has contended that by virtue of such orders/decisions, the HAVELLS mark has acquired the status of a well-known mark under Section 11 (6) of the Indian Trade Marks Act, 1999 as well as Article 6 bis of the Paris Convention. The Complainant has further contended that moreover, the profile and popularity of the Complainant under the trade/service name/mark HAVELLS has been continuously increasing since the date of adoption and use of the mark. The Complainant has contended that at present, the Complainant’s trade name/mark is a name to reckon with and has acquired enormous goodwill not only in India but in several other countries across the globe due to its extensive use, advertisements, publicity and awareness throughout the world. Therefore, registration of a domain name identical or confusingly similar to a ‘well-known’ trademark is a clear indicator of bad faith.
The Complainant has relied on the following decisions in support of its arguments:
• Yahoo! Inc. v. Jorge O. Kirovsky, WIPO Case No. D2000-0428;
• Kabushiki Kaisha Toshiba v Shan Computers, WIPO Case No. D2000-0325;
• Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226;
• Nike, Inc. v. B. B. de Boer, WTPO Case No. D2000-1397;
• Havells India Limited, QRG Enterprises Limited v, Whois Foundation, WIPO Case No. D2016-1775
The Complainant has contended that at present, the domain name <havellsindia.in> is being held by the Respondent. That this is in bad faith and a clear attempt to take advantage of the Complainant’s goodwill and reputation. That this is an attempt to misuse the domain name by the use of a simple domain name extension variant and the addition of the country name ‘India’. The Complainant has further contended that the mark/name HAVELLS is understood and associated by people globally and in India as the mark/name of the Complainant. That on account of the high degree of inherent and acquired distinctiveness, which the mark/name HAVELLS is possessed of, the use of this mark or any other phonetically, visually or deceptively similar mark, by any other person would result in immense confusion and deception in the trade, leading to passing off. That the name/mark HAVELLS has acquired unique importance and is associated with the Complainant, and a mere mention of the said name/mark establishes an identity and connection with the Complainant and none else.
The Complainant has contended that the Respondent has registered the impugned domain name in bad faith for the following reasons:
i. The mark HAVELLS, having been extensively used in relation to the business of the Complainant, has acquired distinctiveness and is understood and associated by consumers in India [and elsewhere] as the mark of the Complainant, denoting their goods, services and business. Any incorporation of the said mark in a domain name is bound to be in bad faith. The Respondent clearly knew of the Complainant’s prior rights when registering the domain name. This by itself constitutes “bad faith”.
ii. More specifically, the general public would be induced to believe that the Respondent has some connection with the Complainant in terms of a direct nexus or affiliation with the Complainant, and that the Respondent is carrying on activities that have been endorsed by the Complainant and the services or products that are sought to be offered by the Respondent are at the same level of quality and reliability as that offered by the Complainant and its group of companies.
The Complainant has contended that the Respondent has provided incomplete WHOIS contact details. As per Section 2 of the ‘Terms & Conditions for Registrants’ issued by the .IN Registry, domain name registrants are mandated to provide complete and accurate contact details, Thus, the Complainant has contended that the blatant disregard and violation of the Terms & Conditions by the Respondent constitutes strong evidence of bad faith.
The Complainant has contended that the Complainant and the Respondent are primarily based in India, and it is thus inconceivable that the Respondent did not know of the Complainant’s well-known mark HAVELLS, which is regularly featured in news articles, news segments and advertisements on the internet and elsewhere. That it is inconceivable that the Respondent while registering the disputed domain in the year 2018 was unaware of the well-known mark HAVELLS which has been actively and continuously used in India since 1942. The Complainant has further contended that the very fact that the domain name contains the Complainant’s coined and well-known registered trademark HAVELLS alongwith the geographical term ‘India’, i.e. the primary place of business of the Complainant since 1942, clearly establishes that the Respondent had actual knowledge of the Complainant and their well-known mark HAVELLS. Thus, in light of the Respondent’s presumed knowledge of the Complainant’s rights, the Complainant has contended that it is reasonable to infer that the Respondent registered the disputed domain name in bad faith with the intention to take undue advantage of these rights in some manner.
The Complainant has relied on the following decisions in support of its arguments:
• Cellular One Group v. Paul Brien, WIPO Case No. D2000-0028;
• Faconnable SAS v. Names4Sale, WIPO Case No. D2001-1365;
• Vakko Holding Anonim Sti. v. Esat 1st, WIPO Case No. D2001-1173;
• Maori Television Service v. Damieu Sampat, WIPO Case No. D2005-0524;
• Kelemata S.p.A. v. Mr. Bassarab Dungaciu, WIPO Case No. D2003-0849;
• Havelis India Limited, QRG Enterprises Limited v. Whois Foundation WIPO Case No. D2016-1775.
The Complainant has contended that it is notable that the Respondent has registered an Indian Country Code Top Level Domain [ccTLD] which is identical to the Complainant’s mark HAVELLS. The Complainant has additionally contended that since India is the home country of the Complainant, and the HAVELLS mark has been used in India since several decades, it is apparent that the Respondent, who is an Indian and resides in India, registered the disputed domain name to cash-in on the reputation of the Complainant’s mark.
The Complainant has contended that it would be extremely difficult, if not impossible, for the Respondent to use the disputed domain name as the name of any business, product or service for which it would be commercially useful without violating the Complainant/s’ rights. Thus, the disputed domain name was registered in bad faith. The Complainant has cited the decision in the case The Ritz Carlton Hotel Company LLC v, Nelton! Brands Inc., ENDRP/250 (December 30,2011) in support of its arguments.
The Complainant has contended that since their trademark is so distinctive and famous, the Respondent must have had actual knowledge of the trademark prior to registering the disputed domain name. The Complainant has contended that it has a long and well-established reputation in their mark HAVELLS through its exclusive use in the electrical goods sector. Therefore, by registering the disputed domain name with actual knowledge of the Complainant’s trademark, the Respondent has acted in bad faith by breaching its service agreement with the Registrar because the Respondent registered a domain name that infringes upon the intellectual property rights of another entity, which in the present scenario is the Complainant’s.
The Complainant has cited the decisions in the cases: Ray Marks Co. LLC v. Rachel Ray Techniques Pvt. Ltd., INDRP/215 (July 9,2011) and Kenneth Cole Production Inc. v. Viswas Infomedia, INDRP/93 (April 10, 2009) in support of its arguments.
The Complainant has contended that the disputed domain name does not have a functional website hosted thereon, and that such passive holding of the domain name by the Respondent amounts to bad faith under the present circumstances. The Complainant has cited the decision in the case Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 in support of its arguments.
The Complainant has contended that on account of the high degree of inherent and acquired distinctiveness of which the mark HAVELLS is possessed, the use of this mark or any other phonetically, visually or deceptively similar mark, by any other person would result in immense confusion and deception in the trade. Therefore, any use of the impugned domain name by the Respondent would necessarily be in bad faith.
The Complainant has cited the decision in the case Xpedia Travel.com, D2000-0137 and Goodfoodguide.net, WIPO Case No. D2000-0019 in support of its arguments.
The Complainant has further referred to additional prior judgements in resepct of salient arguments in this regard, as follows:
• Guerlain S.A. v. Peikang, WIPO Case No. D2000-0055 and Veuve Clicquot Ponsardin, Maison Fondee en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163- Bad faith is found where a domain name “is so obviously connected with such a well-known product that its very use by someone with no connection with the product suggests opportunistic bad faith”.
• Charles Jourdan Holding AG v. AAIM, WTPO Case No. D2000-0403 – If a respondent registers a domain name “…given the relative notoriety of the Complainant’s mark as well as the ease for any user on the Internet to assess on its own whether or not the registration and use of a domain name is likely to encroach on another ‘s tights… “, then the finding will be that such egistration
constitutes an act of bad faith.
• With regard to Famous Names, successive UDRP panels have found Bad faith registration where:
o Complainant’s name was famous at the time of registration: Cho Yong Pil v. Sinwoo Yoon, WIPO Case No. D2000-0310
o Bad faith registration and use [generally]: “Registration of a well-known trademark by a party with no connection to the owner of the trademark and no authorization and no legitimate purpose to utilize the mark reveals bad faith”: America Online Inc. v. Chinese ICQ Network, WTPO Case No. D2000-0808; thecaravanclub.com, NAF/FA95314
o The very use of domain name by Respondent who had no connection whatsoever with Complainant’s mark and product suggests opportunistic bad faith: America Online Inc. v. Chinese ICQ Network, WIPO Case No. D2000-0808
The Complainant has contended that the Respondent has obtained registration for the disputed domain name in bad faith for either or all of the following motives:
a. The domain name could be used by the Respondent to extract huge sums of money from the Complainant who has legitimate interest in the said domain name. This is evident as the Respondent is not operating any website on the disputed domain name.
b. The Respondent desires to cash-in on the reputation of the Complainant’s mark by using the domain name for advertisements or setting up a business.
c. The Respondent can transfer or sell the domain name to some competing interest of the Complainant, who may damage the goodwill and reputation of the Complainant/s by inserting prejudicial material in relation to the Complainant’s companies. This will lead to complete tarnishment of the Complainant’s image if valuable property like this domain name falls into the hands of competing interests.
The Complainant has put forward the following issues as being material towards a finding of bad faith on part of the Respondent in treh present matter:
i. the Complainant/s’ trademark has a strong reputation and is widely known on a global basis;
ii. the Respondent and Complainant/s are based in India;
iii. taking into account the nature of the disputed domain name, which would inevitably associate the disputed domain name closely with the Complainant/s’ group of domains and companies in the minds of consumers, no plausible actual or contemplated active use of the disputed domain name by the Respondent would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant/s’ rights under trademark law;
iv. the Respondent may be engaging in other similar cyber-squatting and fraudulent activities.
v. The Respondent registered the domain name recently on February 03, 2018.
In view of all the above, the Complainant has submitted that the Respondent’s registration of the disputed domain name meets the bad faith elements set forth in the INDRP.
Other Legal Proceedings
The Complainant has submitted that there are no other legal proceedings that have been commenced, are continuing, or have terminated with regards to the disputed domain name.
Reliefs claimed by the Complainant (Paragraph 10 of the INDRP read with Paragraph 3(b)(vii) of the INDRP Rules of Procedure)
The Complainant has claimed for the disputed domain name, i.e. <havellsindia.in> to be transferred to the Complainant by means of the present Complaint, as well as costs to be awarded in their favour.
7. Respondent’s Contentions
As mentioned in the Factual Background of the matter, despite being duly served with a copy of the Domain Complaint as filed and thereafter granted adequate time to respond to the same, along with a grace period after expiry of the initial response period, the Respondent had not submitted any response thereto, or in fact any communication of any kind to either the Complainant, NIXI or the Arbitrator in respect of the matter.
8. Discussion and Findings
In a domain complaint, the Complainant is required to satisfy three conditions as outlined in Paragraph 4 of the .IN Domain Name Dispute Resolution Policy, i.e.:-
i. The Registrant’s domain name is identical and confusingly similar to a name, trade mark or service mark in which the Complainant has rights;
ii. The Registrant has no rights and legitimate interest in respect of the domain name;
iii. The Registrant’s domain name has been registered or is being used in bad faith.
i. The Registrant’s domain name is identical or confusingly similar to a name, trade mark or service mark in which the Complainant has rights (Paragraph 4(i) of the .IN Domain Name Dispute Resolution Policy)
The Complainant has established its rights in the trademark HAVELLS as derived from its business name, i.e. Havells India Limited, by virtue of its numerous trademark registrations for the same in jurisdictions worldwide, including in India. The first trademark registration for HAVELLS in the name of the Complainant in India dates back to 1955, while use of the same by the Complainant for its services worldwide dates back to 1942. The Complainant has placed copies of the registration certificates of some of the trademark registrations obtained by them in India on the record, all of which pre-date the registration of the Respondent’s domain name,
It is well established that trade mark registration is recognized as prima facie evidence of rights in a mark. The Complainant, by filing documents of its registered trademarks has established that it has prior statutory rights in the mark HAVELLS in jurisdictions around the world.
The Complainant has also submitted that it has registration of its own domain www.havells.coni since 1997, wherein it advertises its various goods and services, inter alia under its HAVELLS marks.
The Complainant has, in support of its arguments, further pointed out that the disputed domain name, www.haveUsindia.in, incorporates its trademark HAVELLS in its entirety and may, therefore, be said to be identical/confusingly similar to the Complainant’s aforementioned trademark.
The Complainant has submitted that Respondent has intentionally adopted a domain name identical/ confusingly similar to the Complainant’s popular trademark HAVELLS with a view to attracting internet users and consumers for commercial gain by abusing the goodwill and reputation associated with the Complainant’s aforementioned mark such that the lay public consumers may easily, though erroneously, infer affiliation, association or sponsorship of the Respondent’s activities by the Complainant.
The Complainant has established that it did not at any time license or otherwise authorize the respondent to register the disputed domain name or carry out its activities under the Complainant’s trademark HAVELLS.
The Complainant has referred to several WIPO decisions as well as Panel decisions under the INDRP, as has been mentioned above, in favour of its contentions and arguments.
The Complainant has submitted a number of annexures, as described above, to establish the availability, extent of use and popularity of its HAVELLS marks in India as well as worldwide.
It may be stated that the disputed domain name <havellsindia.in> is confusingly identical/similar to the Complainant’s trade mark HAVELLS and completely incorporates the said trade mark of the Complainant. It has been held by prior panels deciding under the INDRP that there exists confusing similarity where the disputed name incorporates the Complainant’s trade mark, such as Kenneth Cole Productions v. Viswas Infomedia JNDRP/093, Indian Hotel Companies Limited v, Mr, Sanjay Jha, INDRP/148 <Gingerhotels.co.in>, Carrier Corporation, USA v. Prakash K.R. INDRP/238 <Carrier.net.in>, M/s Merck KGaA v. Zeng Wei INDRP/323 <Merckchemicals.in>, Colgate-Palmolive Company &Anr. v. Zhaxia INDRP/887 <Colgate.in>and The Singer Company Limited v. Novation In Limited INDRP/905 <‘singer. co.in>.
In view of the aforesaid, the Arbitrator accepts that the Complainant’s rights in its trademark HAVELLS under Paragraph 4(i) of the INDRP has been established.
ii. The Registrant has no rights and legitimate interest in respect of the domain name (Paragraph 4(ii) and Paragraph 7 of the .IN Domain Name Dispute Resolution Policy)
The disputed domain name incorporates in entirety the mark HAVELLS which is identical to the Complainant’s trademark HAVELLS in which the Complainant has statutory rights by virtue of having valid and subsisting prior trademark registrations in India as well as several jurisdictions around the world, and having become popular and well known in India.
The Complainant has further contended, with substantiating arguments, that there is no credible or legitimate reason for the Respondent to have adopted a domain name identical/ deceptively similar to the Complainant’s trademark HAVELLS other than to ride on the goodwill and reputation accumulated by the Complainant’s mark by the time of the Respondent’s registering the disputed domain name, and derive unjust enrichment therefrom by causing consumer confusion.
On the other hand, the Respondent has not submitted any registration certificates for the mark ‘HAVELLS’ or ‘HAVELLSINDIA’, or in fact any evidence of its rights to the aforesaid marks. The Respondent has not been able to establish any of the conditions pre-requisite for considering a registrant’s rights and legitimate interests in a domain name as set out under Paragraph 7 of the INDRP.
The Complainant has established a prima facie case of its rights in the mark HAVELLS, and has referred to several WIPO decisions as well as decisions by adjudicating Panels under the INDRP, as has been mentioned above, in favour of its contentions and arguments. Therefore, in accordance with the holding of previous panels, the evidentiary burden shifted to the Registrant (Respondent) to rebut the showing by providing evidence of its rights or interests in the domain name, which it has failed to do in the current proceedings.
The Complainant has no relationship with the Respondent and has not permitted or licensed the Respondent to use or register the disputed domain name.
Use of such a confusingly and deceptively identical/similar domain name by the Respondent is likely to mislead and misrepresent to the general public and members of the trade as to the source, sponsorship, affiliation or association of the activity being carried on through the website.
In view of the aforesaid, the Arbitrator accepts the Complainant’s claim that the Respondent has no rights or legitimate interests in the disputed domain name in accordance with Paragraph 4(ii) and 7 of the 1NDRP.
iii. The Registrant’s domain name has been registered or is being used in bad faith (Paragraph 4(lii) and Paragraph 6 of the INDRF)
The Respondent is not making any fair and non-commercial use of the disputed domain name as on date. The Respondent has in fact not even hosted an active website at the disputed domain, which must necessarily lead to a finding inter alia as (partially) satisfying the provisions as laid down under Paragraph 6(ii) of the INDRP, i.e. that the Registrant has registered the (disputed) domain name in order to prevent the rightful owner of the trademark from reflecting the same in a corresponding domain name. However, it is pertinent ot mention here that it is not clear from the Complainant’s submissions whether the present Respondent has engaged in similar behaviour previously.
In any case, the Respondent’s use of the disputed domain name has not been revealed to have been bona fide.
It is pertinent to mention, also, that the Respondent has not submitted any reply nor rebuttal to the Complainant’s contentions, or evidence in support of its bona fide use of the disputed domain name.
In view of the aforesaid, the Arbitrator concludes that the Complainant has .satisfactorily proved the requirements of Paragraph 4 (iii) and Paragraph 6 of the lNDRP.
9. Decision
Based upon the facts and circumstances and further relying on the materials as available on the record, the Arbitrator is of the view that the Complainant has statutory and proprietary rights over the trade mark HAVELLS and variations thereof. The Complainant has herein been able to prove conclusively that:
i. The Registrant’s domain name is identical and confusingly similar to a name, trade mark or service mark in which the Complainant has rights;
ii. The Registrant has no rights and legitimate interest in respect of the domain name;
iii. The Registrant’s domain name has been registered or is being used in bad faith.
The Arbitrator therefore allows the prayer of the Complainant and directs the .IN Registry to transfer the domain <havellsindia.in> to the Complainant.
The Award is accordingly passed and the parties are directed to bear their own costs.
Lucy Rana, Sole Arbitrator
Date: February 18,2019.
Place: New Delhi, India.
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