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
The Complainant submits as follows:
- The Complainant is a company incorporated under the Companies Act, 1956, having registered office at Bangalore, which is 100% owned by Verse Innovation Ltd. The Complainant is the Registered owner of the trade mark NewsHunt and has been continuously using said mark since February 2009 in association with news aggregation and digital publishing services. The mark NewsHunt is a coined term and was filed for Trademark protection by the complainant.
- The Complainant is a global leader in the area of design and development of computer software and mobile applications. The complainant in Feb 2009 launched a news aggregation and digital publication software application titled NewsHunt with the objective of providing latest news updates, study materials for competitive examinations, digital versions of magazine and ebooks. The Complainant is the first company from India to develop mobile application with the technology to display various Indian languages.
- Ever since its launch in February 2009, the Complainant’s mobile application under the mark NewsHunt has continuously gained widespread recognition and popularity among the public and is often considered by its users as the best news aggregation application in India. The Complainant’s services and NewsHunt is available in India as well as internationally including Sri Lanka, Bangladesh, UAE and Africa. The Complainant under its mark NewsHunt offers access to around 500 + Newspapers in 13 different languages and publishes digital versions of various news magazine. Due to the unmatched quality and extensive promotional measures taken by the complainant for the promotion of its services under mark NewsHunt, the services and the said trade mark has received overwhelming response from the consumers throughout the world. The mobile application under the mark NewsHunt has been downloaded more than 10 million times through Google Play Services indicating its popularity among the public at large. Further, the Complainant’s services under the mark NewsHunt has the largest market share among similar services with over 20 million monthly active users and over 2.5 billion page views monthly.
- The complainant’s out of the box innovation and services under the mark NewsHunt has received several awards and accolades including without limitation the following:
GSMA Global Mobile Awards 2013: Best Publishing Product or Service.
Opera App Awards 2012: Top Entertainment App in Java & Symbian Apps.
Android App Expo: Won Second Prize for Best App at Google Development App Expo 2013.
Nielsen top ten mobile applications from in India. Only one in News Category.
India Digital Awards 2012: Top Mobile App NewsHunt.
Navteq Global LBS Challenge, 2011: Grand Prize Winner.
NASSCOM Emerge App Fame, 2011: Top 7 Mobile Apps.
Mobile India: Winner, Mobile India Entrepreneur Demo Showcase, 2010.
Best Mobile App, AppJam Bangalore, 2010.
- Right from the time, when the Trademark NewsHunt has been introduced into the market, the Complainant has been taking all necessary and vigilant steps to secure the ownership rights over the said Trademark. The Complainant being an IP savvy organization has promptly applied and registered the trademark NewsHunt in the applicable trade mark classes. The Trademark NewsHunt has been registered in India by the Complainant in classes 38 and 42 vide application no 1907413 and 1907414 respectively, the same is annexed by the Complainant.
- By Virtue of its extensive advertising and continuous and extensive use since February 2009, the mark NewsHunt of the complainant has acquired substantial recognition and among the relevant consumers, making the mark well known under the provisions of the Indian Trade Marks Act.
- Furthermore, the complainant is also the registered owner of the domains www.newshunt.in and www.newshunt.com and is continuously using these domains to promote it services.
- The Complainant was shocked to know the existence of the impugned Domain Name <huntnews.in> of the Respondent, that is, engaged in News Aggregation. After taking notice about the impugned Domain name, the Complainant, through its lawyers sent an email dated 19 Jan 2016 to the Respondent as well as a cease and desist notice dated 27 Jan 2016 requesting the Respondent to cease and desist from using the said infringing domain name for its services. However, the Respondent had ignored all such requests from the Complainant and had not even responded to the legitimate requests of the Complainant.
The Respondent submits as follows:
- The Respondent is a company involved in the business of providing investments for higher growth, internet-based companies across various sectors. The Company was founded in 2010 and has till date provided investment for a numerous companies. The Respondent is known for working with technology and e-commerce companies across industries and has been lauded for their term’s decades worth of experience in startups and global expertise in such matters.
- The Respondent, as part of its growing business plans registered the impugned domain name <huntnews.in> to provide it’s online news reporting services through the said domain. The Respondent’s news reporting website has been designed to provide snippets of news on a wide array of topics, i.e. headlines, entertainment, sports, technology, relationships, economics, etc. The respondent’s domain name can be accessed from anywhere around the world and through any electronic device capable of browsing the World Wide Web and is available in Hindi and English.
- The impugned domain name is a combination of two generic terms i.e. “hunt” and “news” which describes how the website extensively searches or the best news for its readers. It comes as a shock to the Respondent that the present complaint has been filed against it in light of the fact that there are several third-party news reporting websites on the World Wide Web providing its services using the words “hunt” and “news”.
- As regards the Complainant’s email dated 19th January 2016 and cease and desist notice dated 27th January 2016, the Respondent clarifies the WHOIS email address is not in active use and there is not regularly checked. Thus, the Respondent states that it had no knowledge of the notice of the Complainant’s email dated 19th January 2016 or the cease and desist notice 27th January 2016. It was only in May 2016 that the Registrar of the disputed domain name, i.e. MarkMonitor informed the Respondent of the locks placed on the disputed domain name, could the Respondent investigate into the matter and became aware of the present proceedings and the email correspondence sent to the Complainant’s email dated 19th January 2016 and cease and desist notice dated 27th January 2016. Regardless, the Respondent denies the allegations of Trademark Infringement set out in the email and submits that the contents of the aforesaid email and cease and desist letter given the fact that the Respondent’s use of generic terms “hunt” and “news” for its news reporting website is purely descriptive of the services of the Respondent is offering through the disputed domain name <huntnews.in>.
- That it is a settled proposition of law that words or phrases which describe the character of a proprietor’s goods or services cannot be monopolized by a single person, and therefore no action will lie for infringement or passing off of such marks by one proprietor against another. The only exception to this proposition is where such mark has acquired secondary meaning through use of such descriptive terms, evidence of which is wholly absent in the present case. Thus, the use of the descriptive words “hunt” and “news” in a domain name cannot be protected in favor of one registrant against another as these are words common to the trade of news reporting, and the likelihood of confusion is diminished absolutely since such a mark lacks all distinctiveness.
Complainant’s submission under Rejoinder:
- The Complainant denies and disputes all averments, statements, contentions, submissions and claims made by the Respondent in the Response dated 25th May, 20l6 except for what are matters of record.
- The Complainant is not aware about the nature of business or services offered by the Respondent as stated in the Response. It is specifically pointed out that no information relating to the nature of services offered by the Respondent is provided as part of the impugned domain for verifying these claims. Even if this is true, it does not justify the registration and infringing use of the domain name <huntnews.in> by the Respondent in any manner. It is specifically pointed out that even though the Respondent claims to be founded in 2010, the impugned domain <huntnews.in> was registered by the Respondent only in July, 2015. A copy of the Whois records of the impugned domain name is annexed as Annexure.
- Contrary to this, the Complainant is a pioneer in the field of news aggregation and digital publication business. The Complainant had launched its mobile application under its well known mark NewsHunt in February 2009 and for the last seven years the services offered by the Complainant under the said mark has witnessed immense success among the public. The Complainant’s services under the mark NewsHunt is available internationally including India, Sri Lanka, Bangladesh, UAE and Africa. The fame and reputation of the mark NewsHunt has grown from heights to heights since its inception due to the quality of services offered by the Complainant and the mark NewsHunt is exclusively associated by the public with Complainant alone and none else. The Complainant humbly submits that the popularity and success of the trade mark NewsHunt is evidenced by the numerous number of awards and accolades received by the Complainant.
- Further, the Complainant humbly submits that the activities and services offered by the Complainant under the mark NewsHunt are widely reported by the media. The aforementioned awards, accolades and media reports as well as the fact that the Complainant’s mobile application under the mark NewsHunt has been downloaded more than 10 million times from Google Play Store indicates clearly that the mark NewsHunt has acquired substantial recognition among the public and that the Complainant’s mark NewsHunt qualifies to be called a well-known mark under the provisions of Indian Trademarks Act, 1999. Google Analytics report indicating the market presence and growth of the Complainant’s services under the mark NewsHunt.
- The Complainant denies and disputes that the impugned domain name <huntnews.in> was registered by the Respondent as part of its growing business plans for providing online news reporting services. It is specifically denied that the impugned domain name is a combination two generic terms “hunt” and “news” which is combined together to describe how the website extensively searches for the best news. It is humbly submitted that the Respondent has no reason whatsoever in adopting the impugned domain which is an inverted version of the well-known mark NewsHunt of the Complainant. As seen from the Whois records, the Respondent has registered the impugned domain only in July 2015, i.e., six years after the Complainant has commenced its services under the mark and domain NewsHunt. Since the Respondent is engaged in offering news reporting aggregation services, it is highly unlikely that the Respondent is unaware about the market presence and popularity of the well-known mark NewsHunt. The Respondent has utterly failed in providing any valid reason for adopting the impugned domain name for its services, other than the concocted claims relating to descriptive use of the inverted version of the Complainant’s trademark NewsHunt There is no evidence on record to suggest that the Respondent is actually known under the mark HUNTNEWS.
- Even the Whois records the name of the Respondent is mentioned as TMT Investment and not as HUNTNEWS. Furthermore, the Respondent has explicitly stated that the Respondent is not known among the public by the mark or domain HUNTNEWS. In the absence of any valid and reasonable statement regarding the reasons for adopting the impugned domain name it may be assumed that it was adopted by the Respondent with the sole intention of creating confusion amongst the public and thereby diverting the traffic from the Complainant’s application or website to the domain <huntnews.in> [See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept.21, 2006].
- The Complainant denies and disputes that the Respondent had no knowledge about the Cease and Desist Notice issued by the Complainant. It is denied that the Respondent was aware about the present proceeding only in May 2016 (specific date is not provided by the Respondent) when MarkMonitor informed the Respondent about the locks placed on the impugned domain. The Complainant reiterates that even if these statements are considered as true, the Respondent cannot claim lack of information regarding this proceeding as hard copies of the Legal Notice and the complaint were forwarded to the Respondent’s address as provided in the Whois Records.
- The delivery acknowledgements/status of the courier or post sent to the Respondent is attached as Annexure. It is humbly submitted that the Respondent has deliberately refrained from making any claims with regard to the delivery of hard copy of the Legal Notice and the Complainant and is claiming lack of information for delaying this proceeding. Additionally, if the statements of para 5 of the Response is taken as true, the impugned domain is liable to be suspended or cancelled by this honourable Tribunal with immediate effect as the Respondent is clearly in violation of Section 1 and Section 2 of the Terms and Conditions of the .IN Registry. Furthermore, it is a well settled position that the act of providing incomplete or inaccurate contact information to the concerned Registrar would amount to bad faith on the part of the registrant. (See Miss Universe L.P., LLLP v. Domainsrin Case No. D2010-1643, Ceyx Technologies v. Ceyx.com Case No. D2001-0681).
- The Complainant denies that the Respondent’s domain name consists of the generic words “hunt” and “news” and that the said domain is used in a descriptive manner to identify the news reporting services offered through the impugned domain. Contrary to what has been stated by the Respondent, it is humbly submitted that the impugned domain is confusingly and/or deceptively similar to the trademark NewsHunt of the Complainant, as the domain name of the Respondent is only an inverted version of the well-known mark NewsHunt, formulated by interchanging the order of the words NEWS and HUNT. The Respondent has not given any legitimate reason whatsoever for adopting the impugned domain. It is humbly submitted that the Respondent is merely trying to take undue advantage of the goodwill and reputation of the Complainant’s trademark by registering and using the confusingly similar domain <huntnews.in>.