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 (ii) – The Respondent has no legitimate interests in respect of the disputed domain name
- The Respondent has no legitimate interests or rights with respect to the mark HUNTNEWS and that the impugned Domain was registered with the sole intention of capitalizing on the goodwill and reputation of the Complainant’s mark NEWSHUNT.
- A search conducted in the online database maintained by the Indian Trademark office has uncovered that the Respondent has never applied or registered for the Trademark protection of the impugned Domain Name of the mark HuntNews. Further, a search conducted in the Google and other search engines for the mark HuntNews do not provide any search results other than the impugned domain. The Complainant submits that the impugned domain name and the mark HUNTNEWS is not the word coined by the Respondent for its services but an inverted version of the Registered Trademark of the Complainant.
- The Respondent has no legitimate or genuine interests in using an inverted version of the Registered Trademark of the Complainant. The Complainant had never authorized or permitted the Respondent to use the inverted version of its registered Trademark. The Complainant states that the sole reason for the registration and use of impugned domain name by Respondent is to pass off the services under the said Domain name as associated with the Complainant and to gain undue profits from such infringing uses.
- The impugned website merely contains contents aggregated from multiple news providers and does not show any information about the purpose of the business of the Respondent. Further, the name of the Respondent or its contacts details or nature of services provided by the Respondent are nowhere mentioned in the impugned website. The use of the impugned website by the Respondent does not amount to bona fide use of the impugned domain name. The act of anonymously using a confusing similar domain name indicates that the Respondent is acting with mala fide intent to capitalize on the popularity of the well-known mark of the Complainant by creating a false association with the Complainant and attracting internet traffic to its website.
- The said proposition regarding not demonstrating the use of the Domain Name for the bona-fide offering of the goods and the services was also upheld in the case Pfizer Inc. v. Deep Soni and Akash [WIPO Case No. D2000-0782].
- The Complainant in the present proceedings have made meritless averments in their complaint against the Respondent has the rights to use the disputed domain name <huntnews.in> to provide its news reporting services. The Respondent reiterates that the impugned domain name consists of a phrase which describes the purpose and characteristics of the services which are offered by the Respondent through the impugned domain name. It is settled law proposition in the Trademark law that a mark which is descriptive of the services or character of the services provided by the proprietor of the mark cannot enjoy Trademark protection. Moreover, a catena of precedents have held that when certain words or phrases are commonly used amongst traders in connection with their trade, such words or phrases cannot be granted an exclusive right.
- The Respondent has never sought trademark registration for the disputed domain name for the purpose of operating their news reporting website knowingly fully well of the descriptive nature of the mark. Hence, drawing a clear inference to the fact that the Respondent does not intend to appropriate any Trademark rights from the disputed domain name. A natural consequence of the “Hunt News” mark being descriptive is the fact that no trademark rights accrue to the Complainant’s domain name or trademark NewsHunt, which is a mere re-arrangement of the descriptive terms. This is a well-settled proposition upheld globally and in Indian Courts.
- The Respondent is entitled to use the disputed domain name for its business in light of the fact that it perfectly describes the purpose of the disputed domain name and provides an unambiguous understanding of the Respondent’s services. The disputed domain name was not coined or formulated as a mark with a high propensity of being distinctive in the trade of providing news services, given its extensive in the trade.
- The Respondent also reasserts that given the highly descriptive nature of the mark “hunt News” no trademark rights can accrue to the Complainant, hence no need for authorization ever arises, rendering the Complainant’s averments completely baseless.
- Conclusively, accessing the website under the impugned domain names makes it clear that the domain name is operating bonafidely and offering up-to-date and the latest news stories from across the world and in a wide array of topics. The Respondent has invested a substantial amount of monetary and human resources to run the impugned domain name and provide its readers a high end news reporting service. Furthermore, the Respondent has even provided a feedback form for its readers and reviewers so the Respondent can enhance the quality of it website. All of these factors are key indicators of the Respondents bona fide offering of the news reporting services through the impugned domain name.
Complainant under Rejoinder:
- The complainant denies and disputes all averments, statements, contentions, submissions and claims made by the Respondent in paragraphs V(2)(a) to V(2)(e) of the Response. It is denied that the complainant had made any meritless averments against the Respondent in the complaint. It is denied that the impugned domain consists of a phrase which describes the services which are offered through the said website, contrary to what has been stated in these paragraphs by the Respondent,it is reiterated that the impugned domain is an inverted version of the well-known trademark NewsHunt of the Complainant. The Complainant humbly submits that it has never granted any permissions or license to the Respondent to use its registered trademark or inverted version of its Trademark. The Respondent’s inexplicable claim that it is entitled to use the disputed domain for its business as the impugned domain describes the purpose of services falls flat, both legally and factually.
- The Complainant humbly submits that the Respondent has utterly failed in providing adequate reasons for adopting the impugned domain. It is specifically pointed out that the Respondent is never known or called under the impugned domain or mark HUNTNEWS. A mere perusal of the Whois Records of the impugned domain indicates that it was registered in the name of the company, TMT Investment and that mark HUNTNEWS was never used to identify the said domain. In the UDRP matter of Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept.21, 2006), finding that the respondent was not commonly known by the <shoredurometer.com> and <shoredurometers.com) domain names because the WHOIS information listed Andrew Kaner c/o Electromatic a/k/a ElectromaticEquip’t as the registrant of the disputed domain name and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute.
- Further, it is agreed that the mark HUNTNEWS is used only as part of the disputed domain in the said website. The contents of the website indicate clearly that the Respondent identifies itself as India News and not HUNTNEWS. The Respondent has admitted that it is known by India News rather than HuntNews, which proves that it is not commonly known by the mark HUNTNEWS or the domain <huntnews.in> and hence fails to prove that it has any legitimate right or interest in the said domain.
- Complainant relies in RMO, Inc. v Andy Burbidge [National Arbitration Forum Claim Number: FA0103000096949], Tercent Inc. v. Yi, [National Arbitration Forum, FA 139720,] and Reed Elsevier Properties Inc. and Reed Elsevier Inc. v. Weekly publishers [NAF Claim Number: FA0303000151536].
- It is denied that the website operating under the impugned domain is operating in a bonafide manner and that the Respondent has invested a substantial amount of monetary and human resources to run the impugned domain. Contrary to this, a perusal of the impugned website indicates that the website merely contains contents aggregated from multiple news providers and does not even provide any details whatsoever about the business of the Respondent. It is reiterated that no details about the Respondent or how the Respondent can be contacted are made available in the impugned website. Unlike what has been claimed in the Response, the Feedback form provided in the impugned website does not even provide contact details for the users to contact the Respondent in the event of any issue. It is humbly submitted that the Respondent has registered a confusingly and/or deceptively similar domain with the sole intention of diverting the traffic or users of the Complainant by creating confusion among the public. The Respondent has not provided an appropriate reason for adopting the impugned domain other than making inexplicit claims about descriptiveness of the terms ‘HUNT and NEWS’. Moreover, the fact that the mark or domain HUNTNEWS is not reflected anywhere else in the said website clearly indicates that the said domain was adopted with mala fide intent to ride upon the goodwill and reputation of the well-known mark NewsHunt and to divert the users of the Complainant to its own website.
- Hence, in light of the aforementioned facts and circumstances, it is reiterated that the Respondent has no legitimate rights or interests in using the impugned Domain Name <huntnews.in>.