THE NATIONAL INTERNET EXCHANGE OF INDIA [NIXI]
ADMINISTRATIVE PANEL DECISION
Eterno Infotech Pvt. Ltd. V Zheng Wei <www.HuntNews.in>
SOLE ARBITRATOR: ANKUR RAHEJA, FCS LLB MCA
Dispute Domain Name: HuntNews.in
Discussion and Findings:
C. Registration and Use of a Domain Name in the Bad Faith
- For the purposes of Paragraph 4(iii), the following circumstances, in particular but without limitation, if found by the Arbitrator to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the Registrant has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant, who bears the name or is the owner of the trademark or service mark, or to a competitor of that Complainant, for valuable consideration in excess of the Registrant’s documented out-of-pocket costs directly related to the domain name; or
(ii) the Registrant has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Registrant has engaged in a pattern of such conduct; or
(iii) by using the domain name, the Registrant has intentionally attempted to attract Internet users to the Registrant’s website or other on-line location, by creating a likelihood of confusion with the Complainant’s name or mark as to the source, sponsorship, affiliation, or endorsement of the Registrant’s website or location or of a product or service on the Registrant’s website or location.
- Undoubtedly, the Respondent is also operating in the same business of news aggregation, it is highly unlikely that the respondent was unaware of the well-known mark NewsHunt as the disputed domain name <huntnews.in> itself indicates that the Respondent was well aware about the Complainant’s mark and business.
- For any startup online, it is quite normal, given the introduction of the Respondent Company, to do some research before launching a new product or service. The foremost being Google Search and searching for keywords ‘news hunt’ or ‘hunt news’ on Google Search Engine, does provide for result that of the Complainant on the first page itself. Further, this is a duty cast upon the Registrant/Respondent in terms of clause 3(b) of the INDRP Policy as well. Therefore, it can be presumed that the Respondent had the knowledge of the existence of the Complainant’s news aggregation website and it’s mark at the time of registration of the impugned domain name. It has been laid down in the INDRP matter of ITC Limited v Travel India [INDRP Case No 065] that registration of Domain Name which is identical to a trademark, with actual knowledge of the trademark holder’s rights, is strong evidence that the domain name was registered in bad faith. Also in the matter of The Caravan Club v. Mrgsale, FA 95314 it was held that registration of a well-known trademark by a party with no connection to the owner of the trademark and no authorization or legitimate purpose to utilize the mark reveals bad faith.
- Furthermore, the Respondent being working with technology and e-commerce companies across industries and has been lauded for their term’s decades worth of experience in start-ups and global expertise in such matters, cannot be assumed to have no knowledge of the Complainant’s mark. The registration of the disputed domain <huntnews.in> name by the Respondent by inversion of the words “Hunt” and “News” in the Domain Name and using it for similar services of news aggregation, does indicate the opportunistic behaviour and bad faith of the Respondent, given the facts already under first two clauses herein-above.
- The Respondent’s adoption of the disputed domain name <huntnews.in> shows the malafide intent on its part to earn undue advantage by capitalizing on the goodwill and reputation of the Complainant’s well-known mark NewsHunt. In the matter of Sharman License Holdings, Limited v. IcedIt.com, WIPO Case No D2004-0713, where it was held that, deliberately using a misspelling variation in the Respondent domain name constitutes a further factor of the Respondent’s bad faith in registering and using the domain name at issue and further demonstrates that the domain name of the respondent was designed to attract the commercial gain, Internet users to the sites at issue by creating likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the site of the products offered thereon.
- Given the media recognition and popularity of the Complainant’s App, which has over 10 million (1 crore) downloads on Android Play Store. The use of substantially similar or identical mark that too for similar goods or services, by use of the disputed domain name, the Respondent has intentionally attempted to attract Internet users to the said website, by creating a likelihood of confusion with the Complainant’s Trademark as to the source, sponsorship, affiliation, or endorsement of the said website and of the news services on the Respondent’s website. It has been held that “where a domain name is found to have been registered with an intention to attract Internet users by exploiting the fame of a well-known trademark, it constitutes bad faith registration”. [Lego Juris V Robert Martin, INDRP/125 – lego.co.in]
- The Complainant relies upon the award of EthinicGrocer.com, Inc. v. Latingrocer.com, FA 94384, where the panelist noted that Respondent being a competitor of the Complainant, knew of the Complainant’s marks and in addition, minor degree of variation from the Complainant’s marks suggests that the Respondent registered the names primarily for the purpose of the respondent’s competing business. This is evidence of registration of the domain name is in bad faith.
- In the UDRP matter of Gigglesworld Corporation v. Mrs Jello [Case No. D2007-1189] by using the disputed domain names for services that target the same general audience as Complainant, Respondent has entered this business arena as Complainant’s competitor. Complainant has provided evidence of actual customer diversion. The fact that the parties are in this sense competitors weighs in favor of imputing knowledge or inferring that Respondent was in fact aware of Complainant’s mark notwithstanding its denial of such knowledge. See, e.g., HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager, WIPO Case No. D2007-0062; Promatic International Limited v. Name Administration Inc., WIPO Case No. D2006-0673. Further, in TM Acquisition Corp. V. DVD Internet Marketing, Claim Number: FA0206000114517, where the panelists held that, “Because Respondent competes in the same industry as Complainant it can be inferred that Respondent registered the domain name primarily for the purpose of disrupting the business of Complainant, thus, exhibiting bad faith registration”.
- In the matter of mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc. [Case No. D2007-1141], it was held that for Respondent’s claim that it was not specifically familiar with Complainant’s trademark, even if the Panel would credit that assertion, that assertion is not enough to avoid a finding of bad faith registration. Although there may be no obligation that a domain name registrant conduct trademark or search engine searches to determine whether a domain name may infringe trademark rights, a sophisticated domainer who regularly registers domain names for use as PPC landing pages cannot be willfully blind to whether a particular domain name may violate trademark rights. In this context, a failure to conduct adequate searching may give rise to an inference of knowledge.
- Respondent’s contends of using the disputed domain nme <huntnews.in> due to its descriptive nature and that it has been investing more and more financial and human resources for the maintenance and upkeep of the said domain name. Further, that the Respondent’s website operates as its owns news reporting agency and provides its own stories, hence variance exists in the manner which the parties operate their websites.
- The Respondent’s contentions fail given the facts submitted by the Complainant and the observations of the Arbitrator. The Complainant submits that during the last few months of 2015, the Complainant has observed certain illegitimate activities in its mobile application that indicated that the contents offered by the Complainant are copied by some third party entities. To track the illegal activity, the Complainant had added a specific digital fingerprint to all contents published in its website and application, in order to identify and monitor the parties who are trying to illegally copy the contents published by the Complainant, as a result the news copied from the Complainant’s website on to the impugned website do carry the words Dailyhunt at the bottom. The copies of over 100 such article have been annexed by the Complainant with the rejoinder.
- The said Annexures provide the reference to the news sources at the bottom only, as printed for evidence in the month of June 2016 only, after the above references on top right as shown in Annexure I (attached herewith the award) were already removed. Further, no such bottom reference at the end of the news appear for any other News but taken from Dailyhunt.in, which proves the theory of Digital Fingerprinting of the Complainant.
- The details as to references removed from the top right on the detailed news page have already been provided above, in terms of the observation of the Arbitrator, the screenshot of the same has been annexed with the award. While currently, no such reference appears on any detailed news page at the Disputed Domain Name <huntnews.in>, as the Respondent has deliberately removed such references before responding to the complainant and falsely tried to show itself as making bonafide use of the Domain Name, in good faith. But as per the UDRP matter before National Arbitration Forum (NAF) of MB Financial Bank, N.A. v. MBBANK – Claim Number: FA0602000644517 – “the proper record for review of this dispute should be based on the website at the Domain Name as it existed on the date the Complaint was filed, not on the post hoc website that the Respondent created after the fact.” That is, website as it existed on the date the Complaint was filed, that is, with reference sources needs to be considered.
- More bad faith is further inferred by the fact that all the news sources though not visible to the eyes of a normal Internet user, are available in Google Search results [Annexure III (a) herewith] and furthermore many of the pages do not have any proper news appearing but just the source code on the pages [Annexure III (b) herewith], which contains the following links with some hexadecimal code such as %3C, %20, %22 and so on but the proper URLs are as follows:
- Complainant rightly points out in the Annexures of the screenshots submitted from the Disputed Domain, that the news snippets copied from the Complainant’s application has been listed in the impugned Website as “88% readers also read” at the bottom of every news page. This is proved with the help of source code annexed as Annexure II (b) with this award, which shows under heading – ‘More News’ – the first news titled ‘World Press Freedom Day: A tribute to freedom of press and expression’ – 38% users also read. The source code of this related news refers to Complainant’s website http://dhunt.in/18Ljr, which on visiting redirects to exact news at http://m.dailyhunt.in/news/india/english/a-n-n-news-epaper-annnews/world-press-freedom-day-a-tribute-to-freedom-of-press-and-expression-newsid-52808705, which proves the contentions of the Complainant that not only the detailed news but also some of the related news links is the content owned by the Complainant.
- In the circumstances, the Arbitrator concludes that the Complainant has established the requirement of paragraph 4 (iii) of the Policy i.e. both registration and use of the Domain Name in bad faith.