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Naidu Hall v. Trademark [2005] GENDND 1582 (30 September 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Naidu Hall v. Trademark

Case No. D2005-0773

1. The Parties

The Complainant is Naidu Hall, Pondy Bazaar, T. Nagar, Chennai, Tamil Nadu, India, represented by Global Business Solutions, Chennai, India.

The Respondent is Trademark, Georgetown, Grand Cayman, Cayman Islands, United Kingdom of Great Britain and Northern Ireland.

2. The Domain Name and Registrar

The Disputed Domain Name <naiduhall.com> is registered with Dotster, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 19, 2005. On July 20, 2005, the Center transmitted by email to Dotster, Inc a request for registrar verification in connection with the domain name in issue. On July 29, 2005, Dotster, Inc transmitted by email to the Center its verification response advising that the Registrant is listed as Trademark and providing the contact details for the administrative billing and technical contacts. The Center verified that the 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”).

Consequently, 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 August 4, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was August 24, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 25, 2005.

The Center appointed Charné Le Roux as the sole panelist in this matter on September 15, 2005. The Panel finds that it was properly constituted. The Panel has submitted a 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

The Complainant is the owner of the trade mark NAIDU HALL registered in India in 1965 in respect of brassiers. It also owns registered trademarks in India for the marks NAIDU HALL label registered in 1978, in respect of various items of clothing and an unregistered trademark for NH SERIES BY NAIDU HALL in respect of the same type of goods. The Complainant has been carrying on business under the name NAIDU HALL since 1939, in Chennai, India. It has registered and used the domain name <naiduhall.com> and associated website from April 6, 1998 until April 6, 2003.

The erstwhile owner of the Disputed Domain Name, Mr. Peppler, registered the Disputed Domain Name on June 21, 2003. On July 12, 2004, not long after communication was received by the Complainant’s representatives in connection with enquiries made with the Registrar at the time into the Disputed Domain Name, the same was transferred to the Respondent. The Disputed Domain Name is currently connected to a website which features a search engine containing various categories of links, including links entitled Bras, Swimwear, Undergarments, Blouses, Wedding Dress, etc. These links appear to lead to separate pages of various other websites, many of which advertise or display information about the relevant goods.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it is a well-known manufacturer of ready-made garments, sari’s and clothing for more than 16 years under the trade mark NAIDU HALL. It contends that it has five showrooms in Chennai, India and that it has been exporting its goods to various countries around the world. It contends that since the inception of its trade mark, is has been regularly and extensively using the trade mark in connection with the goods and services related thereto and that the trade mark NAIDU HALL has come to exclusively identify the Complainant and that it is well-known in India.

The Complainant contends that the Disputed Domain Name is identical to its NAIDU HALL trademark and that it is designed to lead a consumer to the Respondent’s website.

The Complainant also contends that the Respondent lacks rights or a legitimate interest in the Disputed Domain Name in that:

a the trade mark NAIDU HALL has no meaning in the English language and is not descriptive, therefore that the only reason for its registration by the Respondent was because it is a popular trade mark of the Complainant in India;

b the Complainant has not licensed or permitted the Respondent to use its trademark in any way or to use the Disputed Domain Name;

c the website to which the Disputed Domain Name resolves offers competing goods to that sold by the Complainant under its trade mark and therefore that the Respondent intends by the use and registration of the Disputed Domain Name, to attract internet traffic intended for the Complainant’s business with the ulterior motive of trying to capitalize on the Complainant’s goodwill and reputation.

The Complainant furthermore contends that the Respondent acquired and uses the Disputed Domain Name in bad faith. The Complainant indicates that:

a the Respondent has not provided any evidence to show preparations to use the Disputed Domain Name in connection with the bona fide offering of goods and services, rather that it is providing competing goods under an identical trade mark;

b the Respondent’s registration of domain names of well-known trade marks of third parties is evidence of the Respondent’s bad faith;

c the Respondent presumably receives commercial gain from the sponsored links on the website attached to the Disputed Domain Name;

d the Respondent is aware of the connection between the Complainant and the city of Chennai, India where the Complainant operates from and must have been aware of the Complainant’s rights in its trade mark by using Chennai as a link and that it is thus attempting to use the reputation and the name of Complainant to attract clients to its site.

The Complainant requests that the Disputed Domain Name be transferred to it.

B. Respondent

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

6. Discussion and Findings

i. Procedural Matters

a Jurisdiction of the Panel

The Panel’s jurisdiction has not been placed in dispute and the Panel finds that the dispute is properly within the scope of the Policy and that it is within its jurisdiction to adjudicate the issues in this case.

b Default of the Respondent

The Respondent has not reacted to the Complaint but this does not relieve the Complainant of the burden of proof. The Respondent’s failure to deny the Complainant’s allegations and the evidence submitted by the Complainant do however, in terms of the Rules, permit the Panel to draw appropriate inferences.

ii. Substantive matters

Paragraph 4 of the Policy requires that the Complainant proves each of the following three elements in order for the Disputed Domain Name to be transferred:

a. that the Disputed Domain Name registered by the Respondent is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and

b. that the Respondent has no rights or legitimate interests with respect to the Disputed Domain Name; and

c. that the Disputed Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel finds that the Complainant has proven that it owns rights in the trademark NAIDU HALL. The Complainant clearly owns appropriate registered trademarks incorporating NAIDU HALL and has clearly made use of the trade mark NAIDU HALL in promoting its goods.

The Panel also finds that the Disputed Domain Name is identical to the Complainant’s NAIDU HALL trademark.

B. Rights or Legitimate Interests

The panel in Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624, summarized the burden of proof in respect of paragraph 4(a)(ii) of the Policy, namely that once the Complainant has asserted that the Respondent has no rights or legitimate interests, the burden of proof shifts to the Respondent. The Respondent must then make more than an assertion that it has rights or legitimate interests and must provide factual evidence in support of its claim. Paragraph 4(c) of the Policy provides circumstances whereby the Respondent may demonstrate its rights or legitimate interests in a domain name.

The Complainant in this matter has made the required assertion to which the Respondent has not reacted. The Panel finds that the Respondent’s failure to file a response has demonstrated a lack of legitimate interest. See Time Out Group Ltd. v. Marc Jacobson, WIPO Case No. D2001-0317.

Furthermore, on the facts of this matter, the Respondent uses the Disputed Domain Name to promote the sale of goods in direct competition with the Complainant. The Panel finds that internet users will be attracted to the website linked to the Disputed Domain Name by the NAIDU HALL trade mark and that they will access the website because they are interested in the Complainant’s goods. It would appear that the Respondent’s only interest in the Disputed Domain Name is to derive a benefit from the goodwill that attaches to the Complainant’s trade mark and to share in revenues obtained from the diverted traffic.

The Panel finds that the Complainant has discharged its onus in proving that the Respondent does not have rights or a legitimate interest in the Disputed Domain Name.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides a non-exclusive list of factors, any one of which may demonstrate bad faith. The Complainant contends that the Respondent registered the domain names of other well known third parties. See National Football League Players Association, Inc. v. Cayman Trademark Trust d/b/a Trademark, WIPO Case No. D2005-0234 in which reference is made by the panel to over thirty UDRP decisions where the Respondent was found to have registered and used challenged domain names in bad faith. In that regard, paragraph 4(b)(ii) of the Policy provides that where a Respondent has registered a domain name in order to prevent the owner of a trade mark or service mark from reflecting the mark in a corresponding domain name, provided that it has engaged in a pattern of such conduct, the conduct constitutes evidence of the registration and use of a domain name in bad faith.

Paragraph 4(b)(iv) of the Policy is also relevant in that it provides that bad faith may be evidenced by use by the Respondent of a domain name with the intention to attract, for commercial gain, internet users to the Respondent’s website or other online location, by creating the likelihood of confusion with the Complainant’s trade 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 Panel finds that the registration by the Respondent of domain names that incorporate the trade marks of other parties as shown by the Complainant constitutes an attempt to prevent the Complainant from reflecting its trade mark in a corresponding domain name and an engagement in a pattern of such conduct. It is clear that the Respondent’s intention in continuing with its conduct is to frustrate the Complainant from exercising its rights. The Panel is critical of the Respondent’s conduct in persisting with the registration and maintenance of domain names that include the trade marks of third parties despite decisions against it by other panels to transfer such domain names.

The Panel also finds that the Respondent is intentionally diverting Internet users to its website by exploiting the NAIDU HALL trademark of the Complainant and that the Respondent is engaging in such conduct in order to reap a commercial benefit.

Consequently, the Panel holds that paragraphs 4(b)(ii) and 4(b)(iv) of the Policy have been satisfied and thus, that the Complainant has discharged its onus in showing that the Respondent has registered and used the Disputed Domain Name in bad faith. Having found for the Complainant on the basis of paragraphs 4(b)(ii) and 4(b)(iv) of the Policy, the Panel does not consider it necessary to deal with the additional evidence of bad faith.

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(ii) of the Policy and 15 of the Rules, the Panel orders that the domain name, <naiduhall.com> be transferred to the Complainant.

Charné Le Roux
Sole Panelist

Date: September 30, 2005