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
Clause 4 (iii) – The disputed Domain Name has been registered or is being used in Bad FaithComplainant:
- The registration of the impugned domain name indicates the opportunistic behaviour and bad faith of the Respondent. Given the worldwide fame and popularity of the Complainant’s trademark or any substantially similar or identical mark that too for similar goods or services, unless to create a false impression of association with the Complainant or to attract business from the Complainant or to divert the public from the Complainant’s domain or business to the impugned domain.
- The Respondent’s act of adopting an inverted version of the registered trademark of the Complainant for similar good or services, is with the malafide intent of disrupting the business of the Complainant. And by registering the impugned domain name, the Respondent is intentionally attempted to attract the Complainant’s users to the impugned website [Sharman License Holdings, Limitd v. IcedIt.com, WIPO Case No D2004-0713].
- The malafide intention of the Respondent to gain illegal profits is well evidenced by his action of registering the impugned domain name that is confusingly similar to that of well-known mark of the Complainant. As 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 of the Complainant. The Respondent’s act of registering the inverted version of the well-known mark NewsHunt as a domain name itself indicates that the Respondent was well aware about the Complainant’s mark and business. The Respondent’s adoption of the impugned domain name 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. [EthinicGrocer.com, Inc. v. Latingrocer.com, NAF Claim # FA 94384 and TM Acquisition Corp. V. DVD Internet Marketing, NAF Claim Number: FA0206000114517]
- The respondent’s website despite showing evidences of regular updates, is not accessible beyond the main page, therefore it can be concluded that the Respondent is not using the disputed domain name actively and is holding the website passively, which is a clear indication of the bad faith of the respondent. No details of the Respondent, including without limitation contact addresses, phone numbers, email ids, or the nature of business of the Respondent or even any elements that state that the impugned domain name is used by the Respondent or what are the exact services rendered by the Respondent is included in the said website. Moreover, no adequate details are provided on WHOIS search database. Hence, the Complainant submits that use of the impugned domain name can on no manner be considered as a legitimate use of the impugned domain under Section 7 of the INDRP. Contrary to this Respondent has registered the domain name only as an attempt to opportunistically trade on Complainant’s NewsHunt mark and accompanying goodwill.
- The Complainant as per the procedure had sent cease and desist notice to the Respondent requesting them to cease and desist from using the impugned domain name <huntnews.in>. A copy of the said cease and desist notice is marked and submitted as Annexure to the Complaint. The Complainant states that the Respondent had chosen to ignore the legitimate request from the Respondent and had not even responded to the request made by the Complainant. This utter disregard of the Respondent for the legitimate legal rights of the Complainant itself is an indicator of the bad faith of the Respondent.
- In light of the aforementioned, the Complainant humbly states that the Respondent’s action of registering and using the impugned domain <huntnews.in> is in bad faith and is with the sole intention of capitalizing on the goodwill, reputaion and popularity of the well-known mark of the complainant.
- The Respondent’s <huntnews.in> domain is purely descriptive of the news reporting services it offers for its readers and any similarity, if any, of the mark that arises is due to the commonality of use of the words “hunt” and “news” for other news reporting and news aggregation websites. In such cases, the law is clear on the fact that no trademark rights can accrue to words or phrases which are commonly used by other traders in the relevant field.
- The Respondent submits that by virtue of its registration of the disputed domain name, it had no intention of disrupting the Complainant’s or any of the news reporting agencies which are operating through domain names using the word “hunt” and “news” conjunctively. The Respondent has been operating under the bona fide belief that the disputed domain name is providing its services through a descriptive phrase that states to a potential visitor of its website that the Respondent’s website hunt for news. In contrast to the Complainant’s defamatory and baseless averments the Respondent has been investing more and more financial and human resources for the maintenance and upkeep of the said domain name.
- The Complainant’s averments have only been made to provide misleading base of accounts. There is no confusion that can arise as regards the source of the services the Respondent offers due to the ubiquitous nature of the words that have been used to describe a news reporting website. 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.
- It is reiterated that since the mark used in the Respondent’s domain name is descriptive, no trademark rights can accrue can accrue in the mark, which further eliminating any chance of any undue advantage being gained by the Respondent from the Complainant or any of the other news reporting agencies which operate through domain names using the words “hunt” and “news” conjunctively. The aforesaid proposition would still apply even where the words in the phrase are rearranged. Therefore, the arrangement of the words “hunt” and “news” in the Respondent’s and Complainant’s domain names makes little different since the mark still remains descriptive of news reporting services.
- The Respondent has established that its registration of the impugned domain name is for a bona fide offering of news reporting services for its readers and at no point intended to mislead any of the visitors of its domain name that it is in any manner related to the Complainant. The Complainant has presented an inaccurate picture of how the disputed domain name looks, feels and functions. The Respondent’s website is very much accessible to everyone and can be viewed with all the content, logos, pictures and other related media. Furthermore, the Respondent constantly works on bringing the latest news to its readers by publishing articles and news snippets on all recent developments and hot news. To clarify the impugned domain name has a homepage with several tabs of categories for its visitors to choose and pick articles from once an article is chosen the visitor has option of reading the latest article which sits at the top or keep scrolling down on the same page to view relatively older articles. Furthermore, such a presentation of news (i.e. scrolling for continuous news) has replaced the pagniation system of cicking on the next page for further reatuls on various news reporting websites, such as www.qz.com and www.sroll.in.
- It is submitted for utmost clarity the Registrant has not registered the disputed domain name to misguide or mislead the consumer, user, visitor of the impugned domain name but has registered the domain to provide a bona fide news reporting service.
- The Respondent further clarifies that it is no fly-by-night operator squatting on the disputed domain name to eventually transfer it to the Complainant for monetary compensation. The Respondent has also never attempted to register any trademark which is identical or confusingly similar to any of the Complainant’s trademarks or in fact used any such identical or confusingly similar trademark in course of its trade.
Complainant under Rejoinder:
- The complainant denies and disputes all averments, statements, contentions, submissions and claims made by the Respondent under Paragraph V(3)(a) to V(3)(g) of the Response. It is denied that the Respondent registration of the impugned domain would not amount to disruption of business of the Complainant. Contrary to what has been pointed out but Respondent, the Complainant humbly 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. After observing the illegal copying of data from its website and application, the Complainant has added a specific digital fingerprint to all contents published in its website and application. The main objective of implementing the digital fingerprint was to identify and monitor the parties who are trying to illegally copy the contents published by the Complainant. The said digital fingerprint is visible on all pages published by the Complainant and is visible in the event the same pages are copied and published by any third party. The Complainant was shocked to realize that the Respondent has blatantly copied the news snippets from its applications and had made those contents available to public through the confusingly similar domain <huntnews.in>. The screenshots of contents copied from the Complainant and published by the Respondent is attached. The digital watermark of the Complainant under the associated mark Dailyhunt is clearly visible in the all pages of Annexures indicating clearly that the Respondent has blatantly copied the contents from the Complainant’s application.
- It is humbly submitted that the act of blatantly copying copyrighted contents from the Complainant’s application and making it available to the public through the confusingly or deceptively similar website is itself indicative of the malafide intention of the Respondent.
- In light of the aforementioned facts, it is humbly reiterated that the impugned domain name was adopted by the Respondent with the sole intention of diverting traffic from the Complainant application to the Respondent’s confusingly similar website. This is evident from the fact that, the news snippets copied from the Complainant’s application has been listed in the impugned Website as “88% readers also read”. The specific screenshots of such references taken from a particular date is marked and attached hereto as Annexure. The contents of Annexure prove beyond doubt that actual user or traffic diversion from the complainant’s website or application happened due to the presence of the confusingly similar domain name <huntnews.in> that hosts the contents copied from the Complainant’s mobile application. In light of the aforementioned facts and circumstances it is humbly submitted that the Respondent’s use of the impugned domain name is in bad faith.
- Moreover, it is humbly submitted that the Respondent has registered the confusingly similar domain name <huntnews.in> even after being aware about the existence of the well-known mark NewsHunt at the time of registration of the said domain. It is evident from the blatant copying committed by the Respondent that the Respondent was fully aware about the existence of the Complainant who holds the largest market share in India with respect to news aggregation services. It is a well-settled position that the act of registering a domain name similar to that of a well-known mark by a party who has no connection with the said mark would amount to bad faith. In 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.
- The complainant humbly reiterates that the Respondent’s act of adopting an inverted version of the registered trademark of the complainant for similar goods or services is with the malafide intent of disrupting the business of the complainant. [Reed Elsevier properties Inc. and Reed Elsevier Inc. v. Weekly Publishers NAF Claim Number: FA0303000151536]. Additionally, the complainant also place its reliance on the specific cases cited in the complaint, i.e. Sharman License Holdings, Limited v. IcedIt.com, WIPo case No. D2004-071, EthnicGrocer.com, Inc v Lutingrocer.com, FA 94384, TM Acquisition corp. V. DW Internet Marketing, claim Number: FA02060001145).
- The complainant denies and disputes that the look and feel of the Respondent’s domain is similar to the websites www.qz.com or www.scroll.in. A comparison of these websites with the impugned domain clearly indicates that they are completely different from the impugned domain. A perusal of the cited websites clearly indicates that the domain name qz.com (quartz) or scroll.in is used throughout the website to identify the website and services offered by these registrants. Moreover, a specific and detailed about us page describing the nature of services provided by these entities as well as a contact information page is also included as part of these websites. Contrary to this, in the impugned website, the mark HUNTNEWS is used only as part of the domain. The impugned websites identifies itself as “India News” and not as HUNTNEWS. Further, no specific information about the nature of services offered through the said website or contact information of the Respondent is provided in the said website. In light of these facts and submissions, it is humbly reiterated that the impugned website offers news aggregation and news reporting services to the public in an anonymous manner under a domain name that is confusingly similar to that of the well known mark NewsHunt of the Complainant.
- In light of the aforementioned facts, circumstances and submissions, the Complainant humbly submits that the impugned domain <huntnews.in>, is registered in bad faith.