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Consumer Unity and Trust Society v. Administrator Incharge [2004] GENDND 478 (10 April 2004)

1. The Parties

The Complainant is Consumer Unity and Trust Society of Jaipur, India represented by Pavan Duggal & Associates, India.

The Respondent is Administrator Incharge, CUTS, Middlesex, Herts, U.K.

2. The Domain Name and Registrar

The disputed domain name is <cuts.org> and it is registered with Tucows, Canada.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 16, 2004. On February 17-18, 2004, the Center transmitted by email to Tucows a request for registrar verification in connection with the domain name at issue. On February 18, 2004, Tucows transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. On verification of the Complaint, it was found that the name of the Respondent given in the Complaint was different from that contained in the record of the registrar. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed electronically an amendment to the Complaint on February 24, 2004, and a hard copy on March 1, 2004. The Center verified that the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 2, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was March 22, 2004. The Respondent was informed that if his response was not received by that date, he would be considered in default. The Center would still appoint an Administrative Panel to review the facts of the dispute and to decide the case. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 24, 2004.

The Center appointed Dr. Vinod K. Agarwal as the Sole Panelist in this matter on April 1, 2004. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

From the Complaint and the various annexure to it, the Administrative Panel has found the following facts:

Complainant's activities

The Complainant "Consumer Unity and Trust Society" is a non-profit making consumer protection organization. Since, it is not a commercial organization, it does not have any trademark. However, it has been using the service mark "CUTS" since 1984. The Complainant is a registered body. Its main objects are (i) consumer protection, which includes accountability, regulatory reforms, etc., (ii) trade and development, (iii) competition, investment and regulatory policies, (iv) sustainable production and consumption, including consumer safety, and (v) rural consumers and women's empowerment. The Complainant works with several international, regional and national organizations in the field of consumer protection, such as Consumers International, the International Center for Trade and Sustainable Development, South Asia Watch on Trade, Economics and Environment, etc.

Respondent's Identity and Activities

The Respondent did not reply to the Complainant's contentions. Hence, the Respondent's activities are not known.

5. Parties Contentions

A. Complainant

The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are applicable to this dispute.

In relation to element (i), the Complainant contends that it is registered with the Government as Consumer Unity and Trust Society, abbreviated as "CUTS". Amongst the consumers worldwide it is known as CUTS. It has a number of Centers for various activities in different countries by names which have either the prefix or suffix CUTS. It is also accredited with two UN organizations. Thus, the domain name <cuts.org> is substantially similar or identical to the name and service mark of the Complainant.

In relation to element (ii), the Complainant contends that the Respondent (as an individual, business, or other organization) has not been commonly known by the domain name <cuts.org>. Further, the Respondent is not making a legitimate or fair use of the said domain name for offering goods and services. The Respondent registered the domain name for the sole purpose of earning a profit by selling the domain name and misleading the general public and the members of the Complainant. The Complainant has relied on the decision in the case of Alcan Inc. v. Digicom Technologies Inc. (WIPO Case No. D2003-0388) wherein the Panel has held that, in that particular case, there was no evidence to suggest that the respondent had ever used, or demonstrated preparations to use, the disputed domain name in connection with a bona fide offering of goods and services. Thus, it was proved that there were no legitimate rights or interests of the respondent in the domain name.

Regarding the element at (iii), the Complainant contends that the main object of registering the domain name <cuts.org> by the Respondent is to earn profit by selling it and to mislead the general public and the customers of the Complainant. The domain name in dispute was registered through Mr. Pradeep S. Mehta, Secretary General, CUTS in the name of the Complainant since 2000. The last renewal was made by the Complainant on November 25, 2003, with Register.com. However, on January 4, 2004, the Complainant found that the said site has been registered by a new registrant, namely, Marketing Manager, Cuts Marketing Solutions. On January 12, 2004, the data was changed further and the registrar has changed. The new registrar was Tucows.com. Subsequently it was parked at SEDOPARKING.Com for the purpose of sale. On January 15, 2004, an announcement was made at the same site that the domain name <cuts.org> is available for sale for 2,500 Euros.

B. Respondent

The Respondent did not reply to the Complainant's contentions.

6. Discussion and Findings

According to paragraph 4(a) of the Policy, the Complainant must prove that:

(i) The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) The Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) The domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The present dispute pertains to the domain name <cuts.org>. The name of the Complainant is Consumer Unity and Trust Society. It may be abbreviated as "cuts". The Complainant has five programmatic centers and three resource centers: CHD:CUTS - Center for Human Development; CART:CUTS - Center for Consumer Action Research & Training; CSPAC:CUTS - Center for Sustainable Production and Consumption; CITEE:CUTS - Center for International Trade, Economics and Environment; C-CIER:CUTS - Center for Competition, Investment and Economic Regulation; CUTS:ARC - Africa Resource Center; CUTS:LRC - London Resource Center, etc. The Centers of the Complainant are located at four places in India and in Lusaka, Zambia; Nairobi, Kenya and London, U.K. The Complainant is accredited to the United Nations Conference on Trade and Development and the United Nations Commission on Sustainable Development. The domain name <cuts.org> indicates a relationship between the Complainant's name and service mark and the domain name in question.

There is no doubt that the domain name is confusingly similar to the mark of the Complainant. The Panel finds that the domain name is confusingly similar to the name and service mark of the Complainant.

B. Rights or Legitimate Interests

According to Paragraph 4(c) of the Policy, the Respondent may demonstrate its rights to or legitimate interest in the domain name by proving any of the following circumstances:

(i) before any notice to the Respondent of the dispute, the Respondent's use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) the Respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights; or

(iii) The Respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Respondent has not filed any response in this case. Based on the default and the evidence in the Complaint, it is presumed that the above circumstances do not exist in this case and that the Respondent has no rights or legitimate interests in the disputed domain name. See also Pavillion Agency Inc. et al v. Greenhouse Agency Ltd. et al, WIPO Case No. D2000-1221. "CUTS" is the name and service mark of the Complainant. It is evident that the Respondent can have no legitimate interest in the domain name. Further, in view of the fact that the Complainant has not licensed or otherwise permitted the Respondent to use its name or service mark or to apply for or use the domain name incorporating said name and that nobody would use the word CUTS unless seeking to create an impression of an association with the Complainant, the Panel finds that the Respondent has no rights or legitimate interests in the domain name.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration or use of the domain name in bad faith:

(i) Circumstances indicating that the Respondent 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 is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or

(ii) The Respondent 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 it has engaged in a pattern of such conduct; or

(iii) The Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) By using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, internet users to its website or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website or location or of a product or service on its website or location.

The contention of the Complainant is that the present case is covered by the first circumstance. The Complainant has furnished evidence of the fact that the Respondent has advertised on the site that the domain name in question <cuts.org> is available for sale and has invited offers for the same. Also, the Respondent has so far not activated the site. Panels have held in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 and in a number of other cases, that in some cases "inaction" may constitute bad faith use of the domain name. Further, it has been held in United States Trust Company of New York v. Big Picture Media (WIPO Case No. D2000-1652) that the purpose of registration of a domain name may be discerned from subsequent use made of it. The Respondent's failure to make commercial use of the disputed domain name and offer to sell to any one including the Complainant leads to the conclusion that Respondent has registered the domain name in bad faith.

A representative of the London Center of the Complainant made a bid to the Respondent to buy the domain name. The final purchase amount agreed between the representative and the Respondent was 1,800 Euros. The Complainant has contended that this amount is far in excess of the registration of the domain name and this in itself is evidence of the Respondent's malafide intention.

This and other information submitted by the Complainant leads to the presumption that the domain name in dispute was registered and used by the Respondent in bad faith. The Panel agrees with the said contention of the Complainant and concludes that the registration of the domain name amounts to the registration and use of the domain name in bad faith.

7. Decision

In light of the forgoing findings, namely, that the domain name is confusingly similar to the mark in which the Complainant has a right, that the Respondent has no rights or legitimate interests in respect of the domain name, and that the domain name was registered in bad faith and is being used in bad faith, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Administrative Panel orders that the domain name <cuts.org> be transferred to the Complainant.