INDRP/1162 – Disputed domain name: Lyft.in
Summary: Complainant is US-based transportation network company – Fastest growing Startup, listed on NASDAQ – Ride-sharing and carpooling inter-city long-distance car rides – Company adopted the brand LYFT in 2013 – Disputed Domain Registered by Respondent on July 7, 2014 – Respondent was based in US from 2011-16 – Response filed, claiming use as fitness website with keyword ‘lyftin’ – Well known status of Complainant mark upheld – No legitimate use could be proved, hence Bad Faith
In the matter of:
185 Berry St. Suite 5000
San Francisco, California
United States of America Complainant
444 Washington Blvd
New Jersey -07310
United States of America Respondent
1. THE PARTIES
1.1 The Complainant in these proceedings is Lyft. Inc., a company organized and existing under the laws of the State of Delaware having its office at 185 Berry St., Suite 5000, San Francisco, California, United States of America. The Complainant is represented by its attorneysFIDUS Law Chambers of F-12, Ground Floor, Sector 8, Noida-201301.
1.2 The Respondent in these proceedings is Abhiram Yalamanchili of 444 Washington Blvd, New Jersey -07310, USA.
2. DISPUTED DOMAIN NAME AND REGISTRAR
2,1 This dispute concerns the domain name lyft.inwhich was registered on July 7, 2014 (the ‘disputed domain name’). The Registrar with which the disputed domain name is registered isGoDaddy.com, LLC (R101-AFIN), 14455 North Hayden Road, Suite 219 Scottsdale, AZ 85260-6993, United States of America.
3. PROCEDURAL HISTORY
3.1 The arbitration proceeding is in accordance with the .IN Domain Name Dispute Resolution Policy (.INDRP), adopted by the National Internet Exchange of India (NIXI).
3.2 NIXI vide its email dated November 1, 2019 requested availability of Ms. Divya Balasundaram to act as the Sole Arbitrator in the matter. The Arbitrator indicated her availability and submitted the Statement of Acceptance and Declaration of Impartiality and Independence in compliance with the JNDRP Rules of Procedure on November 02, 2019.
3.3 Arbitrator was appointed vide NIXI’s email of November 08, 2019. Meanwhile, Arbitrator received an email from Respondent on November 7, 2019, with his reply.
3.4 Arbitrator sent an email on November 8, 2019, serving formal notice of the Complaint upon the Respondents and calling for a response within 15 days. Reply was received on November 17, 2019, by email and by email of November 25th, Complainant’s counsel requested time to file rejoinder which was granted till December 5, 2019.
3.5 The rejoinder was received by email on December 5th and accordingly, pleadings were completed in the matter. The arbitrator sent an email on December 9, 2019, stating that the pleadings are complete and the award would be passed.
3.6 The language of these proceedings is English.
4. COMPLAINANT’S TRADEMARK RIGHTS AND BASIS OF COMPLAINT
4.1 The Complainant has submitted that the complaint is based on the adoption and use of the registered trademark LYFT by the Complainant and, ownership and use of the domain name <lyft.in>.
4.2 The Complainant is a transportation network company founded by college graduates Logan Green and John Zimmer. They got an idea to launch a company called “Zimride” in 2007 (founded as Bounder Web, Inc., the name was changed to Zimride, Inc. in 2008). This company focused on linking drivers with passengers on Facebook Connect for ride sharing and carpooling inter-city long distance car rides.In 2012, “LYFT” was launched as a service of Zimride for shorter trips within cities. In 2013, the company officially changed its name to Lyft, Inc.
4.3 The Complainant operates an on-demand ride-sharing network for transportation and facilitates peer-to-peer ridesharing by connecting passengers who require a ride with drivers who have cars via its mobile phone application platform, among other services. The Complainant was founded with the mission to improve people’s lives through on-demand transportation services and provide a viable alternative to car ownership.
4.4 The Complainant’s services are carried out under the trademark LYFT, which is a unique word associated exclusively with the Complainant across the world.
4.5 The Complainant was ranked #19 in The Unicom List 2016 carried out by Fortune Magazine for successful start-ups that, at that time, were valued at $ 1 billion or more. In March 2019, the Complainant starting trading on the NASDAQ stock exchange after becoming a public company via an initial public offering (IPO), in which it was valued at over USD 24billion. Complainant’s revenue has crossed USD 2 billion in 2018, representing huge growth.
4.6 The Complainant is a leader in the peer-to-peer ride sharing sphere and is the fastest growing on-demand network in the transportation segment in the United States and has delivered over one billion rides. The Complainant has established one of the largest transportation networks in the United States of America and Canada. The Complainant currently operates in over 300 markets across the United States and Canada, each with its own unique user network.
4.7 The Complainant has a number of strategic partnerships to offer access to autonomous vehicles on the LYFT platform. The Complainant is a socially conscious organization and has organized and participated in several philanthropic activities.
4.8 The Complainant owns a website under its domain name www.lyft.com, which has been owned and operated by the Complainant since 2012. The Complainant also operates additional LYFT-formative websites, such as www.lyftbusiness.com, which the Complainant registered in 2017.
4.9 The Complainant’s mobile application under the trade mark LYFT has been downloaded over 10 million times on the Google Play Store, and is available on the Apple iTunes Store, where it has a rating of 4.9 out of 5 based on almost 5.5 million user ratings. The mobile application of the Complainant under the trade mark LYFT has more than 30 million monthly downloads and more than 1 billion total downloads (including updates).
4.10 The Complainant has a strong presence on social media. The LYFT trademarks and trade name have also been extensively showcased in numerous major international newspapers magazines and media outlets having circulation and readership in India as well as in prominent Indian news media publications. Hence, the Indian public is well aware of the Complainant’s trade mark LYFT and associates the same with the Complainant and none else.
4.11 The Complainant is the registered proprietor of the trade mark LYFT and LYFT comprising trade marks in several major jurisdictions around the world including but not limited to Argentina, ARIPO, Australia, Benelux, Brazil, China, Colombia, Costa Rica, Denmark, EUIPO, Germany, Hong Kong, Indonesia, Ireland, Israel, Italy, Japan, Macau, Malaysia, Mexico, New Zealand, Norway, Peru, Republic of Korea, Russian Federation, Saudi Arabia, Singapore, Spain, Sweden, Switzerland, Taiwan, Thailand, Turkey, United Arab Emirates, United States of America and Vietnam. The Complainant is also the registered proprietor of the trade mark LYFT and its variations in India.
4.12 The Complainant’s rights in its trademark LYFT have also prima facie been recognized by the Hon’ble Delhi High Court in Lyft, Inc. Vs. Goer Techno Infra Private Limited CS(COMM) 461 of 2019.
5. THE RESPONDENT
5.1 In August 2019, the Complainant became aware of the domain <Iyft.in>, registered in the name of the Respondent in July 2014.
5.2 The registrant of the impugned domain is Abhiram Yalamanchili, a person of Indian origin and is currently working as a software engineer at Mastercard. He has attended the Pennsylvania State University in the United States of America between 2011 and 2016, graduating with a Bachelor’s degree in Computer Science. The Respondent claims to be “A technology savvy professional”.
6. LEGAL GROUNDS
6.1 The Respondent’s domain name is identical to the trademark/ trade name in which the Complainant has rights.
6.2 The disputed domain /URL < lyft.in > registered by the Respondent is identical to the Complainant’s trademark LYFT. Further, the disputed domain is deceptively similar to the official website administered by the Complainant i.e., www.lyft.com.The disputed domain name <lyft.in> is identical to the Complainant’s trademark and trade name LYFT since it incorporates the word LYFT in full and merely adds the country code top-level domain (ccTLD) “.in”.
6.3 It is submitted/ without prejudice, that regardless of the reason for the inclusion of the ccTLD in the disputed domain name, due to the fame and reputation of the distinctive trademark LYFT, the first impression in the minds of the consumers shall be that the Respondent’s website originates from, is associated with, or is sponsored by the Complainant.
6.4 The Respondent has no rights or legitimate interests in the domain name.
6.5 The Complainant has never assigned, granted, licensed, sold, transferred or in any way authorized the Respondent to use or register domain names comprising its trademark LYFT,
6.6 The Respondent is not commonly known by the disputed domain name or any name containing the Respondent’s trademark LYFT.
6.7 The domain is merely parked and no actual website is hosted on this domain name. The Respondent has neither used not made any demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods and services.
6.8 Hence it is submitted that the Respondent is not using the disputed domain for a bona fide offering of services, not making legitimate non-commercial or fair use of the Complainant’s trademark under the Policy.
6.9 The domain name was registered or is being used in bad faith.
6.10 The Respondent has passively held the disputed domain name since registering it in 2014. The Respondent has simply warehoused the disputed domain name and has not made any bona fide use of the disputed domain name in over five years. Given the distinctiveness and reputation of Complainant’s LYFT trademark, the only conclusion that can be drawn is that the Respondent registered the domain name in bad faith to hold such for profit.
6.11 Further, as per the Respondent’s own claims, he was studying in the United States of America at the time of the registration of this domain. It is a matter of record that the Complainant has been using its trademark LYFT in the United States of America extensively since 2012, and therefore the Respondent is likely to have been exposed to the Complainant’s trademark at the time of the registration of the impugned domain name and was likely to have been aware of the Complainant’s trademark LYFT.
6.12 Further, given that the Respondent was studying computer sciences at the time of registration of the impugned domain and is now working as a Software Engineer, it is apparent that the Respondent is in the same or at least overlapping field of activity as the Complainant, i.e. technology platforms and digital innovation. Therefore, the Respondent is deemed to be aware of the Complainant and its trademark LYFT. There is no other reason or explanation for the Respondent to register the impugned domain, especially given that the trademark LYFT is a unique word exclusively associated with the Complainant.
7. RESPONSE FROM RESPONDENT
7.1 The Respondent has countered the various allegations of the Complainant. Whilst he agrees that the disputed domain name is identical to Complainant trademark and domain name, he denies the other elements essential to the Policy especially the allegations of bad faith.
7.2 The Respondent states that the disputed domain name was purchased a long time ago while pursuing bachelor’s degree. Respondent wanted to create a fitness website lift.in and as it wasn’t available, he adopted lyftin as lyft.in.
7.3 Respondent was not aware of Complainant nor its trademark LYFT at the time of the registration of the impugned domain. Complainant’s business was available in Respondent’s college in 2016 only.
7.4 Respondent did not create any content nor posted it on lyft.in that has anything remotely similar to the company LYFT which would mislead any customer.
7.5 At the time of registering lyft.in/ Respondent experimented with other domains and concepts to help students with their daily lives.
7.6 The allegation of the Complainant that technology platforms and digital innovation are overlapping and hence Respondent would have knowledge of Complainant is invalid as the two terms are completely different.
7.7 Respondent received offers to sell the domain but did not entertain such offers, which shows he is not acting in bad faith. The Respondent also did not any company or person to sell the domain lyft.in.
7.8 Respondent has stated that he would consider letting go of the domain lyft.in by not renewing it after its current expiration date and by giving an assurance that no content including not related to LYFT will be placed on the domain if the Complainant agrees to drop this case.
8. RETOINDER BY COMPLAINANT
8.1 The Complainant has filed its rejoinder refuting the contentions of the Respondent.
8.2 The Complainant states that there is no proof that Respondent purchased the disputed domain when he was building a fitness Website. In the absence of any evidence, it cannot be said that the Respondent has any rights or legitimate interests in the disputed domain.
8.3 The Respondent’s alleged business plans admittedly did not come to fruition, hence, the Respondent has never used, nor has any intention to use the disputed domain for any bona fide^ offering of goods or services. Accordingly, the Respondent cannot claim that he is commonly known by the disputed name, or that he has any legitimate interests therein.
8.4 The other domains owned by the Respondent are not the subject matter of the present dispute and bear no relevance herein,
8.5 The Complainant and its trademark LYFT had gained a strong and substantial reputation in the United States of America at the time of registration of the impugned domain. Respondent’s assertions that the Complainant was an unknown brand at the time of the registration of the impugned domain are baseless.At the very least, the Respondent had constructive notice of the Complainant’s trademark rights.
8.6 If the Respondent had simply performed a basic web search for the trademark LYFT prior to registration of the domain, he would have certainly come across the Complainant and its said trademark.
8.7 The presence of offers of purchase of the domain name shows that the Respondent was aware that the domain held by him had some monetary value, yet he did not give up the domain.lt is possible that the Respondent was awaiting better offers for the purchase of the domain, therefore no favorable conclusions in the Respondent’s favor can be drawn from these averments.
8.8 Even if the Respondent did not attempt to sell the domain to the Complainant or any third parties, or place any content on the website, these facts by themselves do not prove that the Respondent’s actions were bona fide.
8.9 The Complainant has asserted that he will consider letting go of the disputed domain by not renewing it after its expiration date (in July 2020) and not putting up any content on it, provided that the Complainant withdraws the present complaint. The intention of the Respondent to continue passively holding the domain name, despite admitting that he has never used the domain, nor has any intention to use the domain until its expiry is probative of his bad faith.
9. DISCUSSION AND FINDINGS
9.1 The Arbitrator has reviewed the Complaint and all the Annexures filed by the Complainant as well as the reply from the Respondent and the rejoinder. The Arbitrator finds that the Arbitral Tribunal has been properly constituted.
9.2 The Arbitrator finds that the Complainant has satisfactorily established all the elements necessary to maintain its complaint. The disputed domain name is identical to the trademark/ trade name LYFT of the Complainant.
9.3 The Respondent is not commonly known by the disputed domain name nor has any authorization/permission from Complainant. There is no use of the same with a bona fide offering of goods and services. Hence I find that the Respondent has no rights or legitimate interests in the domain name.
9.4 With regard to the adoption of the disputed domain name, the reasoning offered by the Respondent is not only unsubstantiated but also vague. If ‘liftin’ was unavailable, he could have considered ‘lifting’ or even ‘lyfting’. Also, since Respondent was based in the USA and wanted to help students based in USA, registering a .in domain name doesn’t add up.
9.5 The Complainant has filed several documents showing publicity given to its LYFT service and mark between the period 2012 to 2014, before the registration of the disputed domain name. Merely because the Complainant’s business was available in Respondent’s college only from 2016 onwards, it does not mean that Respondent could not have had an awareness of the LYFT mark. Further, a basic Internet search would have shown up the Complainant’s business and activities.
9.6 The Respondent has passively held the disputed domain name since registering it in 2014. Now, despite a constructive knowledge of Complainant’s rights, Respondent still wishes to hold onto it until its expiration in July 2020, although he has no other right or interest in it, and this holding on is unwarranted. Hence/ bad faith on part of Respondent, partly in the adoption and more wholly in the warehousing of it and holding onto it currently, stands established.
10.1 It is hereby ordered in accordance with paragraph 10 of the INDRP that the disputed domain name <lyft.in> be transferred to the Complainant.
10.2 No order as to costs.
Date: December 11, 2019