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SBI Cards and Payment Services Private Limited v. Domain Active Pty. Ltd. [2005] GENDND 557 (25 July 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

SBI Cards and Payment Services Private Limited v. Domain Active Pty. Ltd.

Case No. D2005-0271

1. The Parties

The Complainant is SBI Cards and Payment Services Private Limited of Haryana, India, represented by Rodney D. Ryder, Preconcept, India.

The Respondent is Domain Active Pty. Ltd., of Clayfield, Australia.

2. The Domain Name and Registrar

The disputed domain name <sbicards.com> is registered with Fabulous.Com Pty. Ltd.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 16, 2005. On March 16, 2005, the Center transmitted by email to Fabulous.Com a request for registrar verification in connection with the domain name at issue. On the next day, Fabulous.Com 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. 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”).

In accordance with the paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 24, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was April 13, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 2, 2005.

The Center appointed Irina V. Savelieva as the Sole Panelist in this matter on May 17, 2005. 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 paragraph 7 of the Rules.

On June 2, 2005, the Panel issued Procedural Order No. 1 for the Complainant to present additional documentation with respect to the Complainant’s trademark rights. Following additional correspondence the Complainant presented an additional submission, which was communicated to the Panel on July 15, 2005.

4. Factual Background

The Complainant, SBI Cards and Payment Services Private Limited, was established in 1998, by GE Capital Services, the largest issuer of private label credit cards in the world, and State Bank of India (SBI), the largest Indian bank. SBI has been in existence for over two-hundred years.

The Complainant offers a range of credit cards: SBI Classic Card, SBI Gold Card, SBI International Card, SBI Doctors Card. It also has a number of City Affinity Cards  (SBI Kolkata Card, SBI Mumbai Card, SBI Delhi Card, SBI Hyderabad Card, SBI Bangalore Card). SBI Cards and payment Services Private Limited markets and distributes SBI Cards. The Complainant’s credit cards are available in 42 cities across India – the largest distribution network in the country. In 2002, the Complainant sales reached 1 million cards.

Since 1998, the Complainant has been using the mark “SBI CARDs” in relation to all its stationery articles and sales promotion materials as well as advertisement and related business information.

The Complainant, SBI Cards and Payment Services Private Limited owns several registered and unregistered trademarks containing the words “SBI Card” in India. The Complainant has the domain name <sbicard.com> which is used for its official website.

The Respondent, Domain Active Pty. Ltd., Clayfield, Australia has registered the disputed domain name <sbicards.com> on August 23, 2002. The disputed domain name <sbicards.com> is currently used by the Respondent in relation to banking and financial information.

5. Parties’ Contentions

A. Complainant

(a) The disputed domain name <sbicards.com> is identical to the registered and unregistered trademarks containing words “SBI CARD”:

- The Complainant has registered and unregistered trademarks containing the words “SBI CARD” known throughout the world.

- The mark “SBI CARD” had been in extensive, continuous and uninterrupted use since 1998 in relation to the Complainant’s business: including letterheads, visiting cards, order forms, bill books, application forms, brochures, catalogues, price lists, advertising materials.

- The mark “SBI CARD” has acquired distinctiveness and is associated by consumers in India as the mark of the Complainant denoting its goods, services and business.

- The mark “SBI CARD” is a common law trademark,

- The extensive use of the mark “SBI CARD” by the Complainant, its group companies and subsidiaries in India means that the mark has acquired the status of a “well known mark” under Article 6bis of the Paris Convention.

- The Complainants submits that the disputed domain name is identical to the trademark of the Complainant, as the difference is merely the additional letter ‘s’ to make the word plural.

(b) The Respondent has no rights or legitimate interests in respect of the disputed domain name:

- The Respondent is not, either as an individual, business or other organisation commonly known under the name “SBI card”.

- The Complainant has not licensed or otherwise permitted the Respondent to use its trademark “SBI CARD” or to apply for any domain name incorporating this mark.

- The Complainant submits that the Respondent does not have rights or legitimate interests in the disputed domain name.

(c) The domain name was registered and is being used in bad faith:

- The Respondent clearly knew of the Complainant’s prior rights when registering the disputed domain name.

- The Respondent has an active website misusing the Complainant’s trade name and trademark.

- There is no disclaimer of any linkage with the Complainant on the website.

- Internet users are mislead since any consumer would be likely to associate the Respondent’s website with the Complainant and its goods/services.

- Consumers are further mislead and would be induced to believe that the Respondent has connections with the Complainant (direct nexus or affiliation) and that the Respondent is carrying out activities endorsed by the Complainant and offered at the same level of quality and reliability.

- The Respondent appears to be in the business of registering domain names, developing websites and subsequently putting the sites up for sales (through its website at “www.domainactive.com”.

- The Complainant submits that the Respondent has registered and is using the disputed domain name in bad faith.

B. Respondent

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

6. Discussion and Findings

The Respondent was given notice of this proceeding in accordance with the Rules. The Center discharged its responsibility under paragraph 2(a) of the Rules to employ reasonably available means calculated to achieve actual notice to the Respondent of the Complaint.

However, as noted, the Respondent failed to file a Response to the Complaint and has not sought to answer the Complainant’s assertions, evidence or contentions in any other manner. The Panel finds that the Respondent has been given a fair opportunity to present its case, and the Panel will proceed to a decision on the Complaint.

The Respondent’s default does not automatically result in a decision in favour of the Complainant. The Complainant must still prove the elements required by the Policy. In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the domain name, the Complainant must prove that each of the three following elements are satisfied:

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

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

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

Pursuant to paragraph 15(a) of the Rules the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, in accordance with paragraph 14(b) of the Rules, the Panel may draw such inferences as it considers appropriate from the Respondent’s failure to reply to the Complainant’s assertions and evidence or to otherwise contest the Complaint. In the circumstances, the Panel’s decision is based upon the Complainant’s assertions and evidence and inferences drawn from the Respondent’s failure to reply.

Identical or Confusingly Similar

The Complainant has registered the trademark SBI CARD in India No. 976444 in class 16 (Supplementary Submission dated July 1, 2005). The Panel was not provided with any further information such as the date of registration and the priority date. Registration certificates for the trademarks SBI CARD & SBI LOGO in class 9, SBI CARD in class 9, SBI CARD (label) in class 16 and SBI CARD FOR DOCTORS for class 9 have been submitted by the Complainant. The Panel was not provided with information concerning the dates of application for the above trademarks.

The Complainant also submits that the mark SBI CARD is a common law mark which had been in extensive and uninterrupted use since 1998, on all types of printed and advertising materials by the Complainant, its group companies and subsidiaries in India and other countries. The Complainants believes that the mark “SBI CARD” is a well-known mark under Article 6bis of the Paris Convention in those countries.

The Panel finds that the Complainant has registered the trademark SBI CARD, however, the Panel is not aware of the date of registration or application. As for the unregistered trademark SBI CARD being in extensive use since 1998, the Panel accepts it as a common law trademark. Based on numerous WIPO cases, the Panel believes that paragraph 4(a)(i) of the Policy does not require a trademark to be registered by a governmental authority, the reference to the “rights” in this paragraph includes both registered and unregistered trademarks, in particular it should be accepted with respect to well-known business and other names in common law countries (See Emmanuel Vincent Seal trading as Complete Sports Betting v. Ron Basset, WIPO Case No. D2002-1058, Jones Apparel Group Inc. v. Jones Apparel Group.com, WIPO Case No. D2001-1041, Phillip Berber v. Karl Flanagan and KP Enterprises, WIPO Case No. D2000-0661, Consitex S.A. v. Mr. Hugo Bazzo, WIPO Case No. D2003-0520, Savino Del Bene Inc. v. Graziano Innocenti Gennari, WIPO Case No. D2000-1133, Adobe Systems v. Domain OZ, WIPO Case No. D2000-0057, CSA Int’l v. Shannon, WIPO Case No. D2000-0071 and many others). The name SBI CARD should be regarded as protected by common law in India following the approach of other common law countries. The first criteria for a common law trademark may be identified as goodwill or reputation attached to the goods or services, which is associated in the mind of the purchasing public with a particular business.¹

The Panel finds that the Complainant has proved rights in a registered and unregistered (common law) trademark SBI CARD.

The Panel finds that the disputed domain name is identical to the Complainant’s trademark SBI CARD. The fact that the disputed domain name has one additional letter ‘s’ to make the word plural, in the Panel’s view, does not change the overall situation.

The Panel agrees with the Complainant’s arguments that the disputed domain name may be directly associated in the minds of the consumers with the Complainant’s trademarks.

The Panel refers to a number of past UDRP decisions, which confirm that incorporating a trademark in its entirety can be sufficient to establish that a domain name is identical or confusingly similar to a registered trademark (Toyota France and Toyota Motor Corporation v. Computer-Brain, WIPO Case No. D2002-0002 and Toyota Jidosha Kabushiki Kaisha d/b/a Toyota Motor Corporation v. S&S Enterprises Ltd, WIPO Case No. D2000-0802).

The Panel infers the Complainant has satisfied its burden of proof under paragraph 4(a)(i) of the Policy.

Rights or Legitimate Interests

The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name.

Even though the Respondent has not filed a Response to the Complaint and has not contested the Complainant’s assertions, it is up to the Panel to consider whether the Respondent’s use of the disputed domain name demonstrates rights or legitimate interests in the domain name.

According to paragraph 4(c) of the Policy the following circumstances, if proved, demonstrate a rRspondent’s rights or legitimate interests in a domain name:

(i) Respondent used or demonstrably prepared to use the domain name or corresponding name in connection with a bona fide offering of goods or services prior to notice of the dispute; or

(ii) Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if it has not acquired trademark rights; or

(iii) 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 complainant’s marks.

A respondent may elect to show rights and legitimate interests, non-exhaustively, by producing proof under paragraphs 4(c)(i)-(iii) of the Policy. By not responding to the Complainant’s contentions, the Respondent in this proceeding has never attempted to show its rights and legitimate interests.

Firstly, there is no evidence that before any notice of a dispute with the Complainant, the Respondent was using the disputed domain name for a legitimate offer of goods and services. The Respondent does not use the domain name in connection with the bona fide offering of goods and services, for example, according to the standards set out in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903.

According to the documents submitted by the Complainant and a subsequent verification by the Panel, the home page of the website under the disputed domain name <sbicards.com> displays a list of websites related to various credit cards (e.g. Egg card, MINT card and others) as well as a list of associated offers (Annex I to the Complaint). The website itself does not offer any goods or services, it provides merely links to other websites.

The Panel finds no evidence that Respondent was using or is using the disputed domain name for a legitimate offering of goods and services.

Secondly, as for the Respondent’s proof under paragraph 4(c)(ii) of the Policy there is no evidence that the Respondent has been commonly known by the disputed domain name.

The Complainant contends that the Respondent is not commonly known by the disputed domain name and there is no information to the contrary.

The Panel recalls that the Respondent registered the disputed domain name on August 23, 2002 (Annex A to the Complaint). The Complainant’s product “SBI card” and associated services are known since 1998, and it is a mark well known in India and in other countries.

The Panel believes that the Respondent knew about the Complainant’s name and common law trademark “SBI CARD” at the time of disputed domain name registration.

Afterwards, regarding these facts, it is the Panel’s view that the Respondent probably registered the disputed domain name with awareness of the Complainant’s products and services and its quality and reputation.

Thus, the Panel finds that the Respondent’s use of the disputed domain name does not constitute a bona fide offering of services under paragraph 4(c)(i) the Policy.

The Panel finds the Complainant has carried out its burden of proof to show that the Respondent has no rights or legitimate interests in the disputed domain name.

Bad Faith

Paragraph 4(b) of the Policy provides that the following circumstances are deemed to be evidence that a respondent has registered and is using a domain name in bad faith:

(i) circumstances indicating that the respondent has registered or has 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 the complainant, for valuable consideration in excess of its 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 the respondent 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 its website or location or of a product or service on its website or location.

The Complainant contends that the Respondent has violated the bad faith provision of the Policy because the disputed domain name was registered and used primarily for the purpose of confusing the public and diverting public attention from the Complainant’s official website to the Respondent’s website for potential commercial gain.

According to the evidence submitted by the Complainant, the home page under the disputed domain name <sbicards.com> displays a list of websites related to various other credit cards, and another list with links related to offers (Annex I to the Complaint).

The Panel finds that the Respondent’s website could have attracted potential attention from the public because of its affiliation with the Complainant’s products and services. At the same time it has created a risk of confusion with the Complainant’s products and trademark as to the source, sponsorship, affiliation or endorsement of its website.

In addition, the fact that the name “SBI CARD” is associated with quality and reliability and that the Respondent’s website is linked to various websites not necessarily of the same standards, leads the Panel to believe that it may affect the Complainant’s business reputation.

The Panel’s independent verification has shown that the current use of the Respondent’s website “www.sbicards.com” is practically the same. It is therefore clear that the Respondent continues using the disputed domain name for a website.

The Panel finds that the Complainant presented circumstantial evidence that the Respondent was and is in violation of the provisions of paragraph 4(b)(iv) of the Policy.

The Panel holds that the Respondent “has registered the disputed domain name in bad faith”. The Respondent does not conduct any legitimate business activity using the disputed domain name. The Respondent must have known the Complainant’s product and should have been aware of the trademark SBI CARD. These findings, together with the finding that the Respondent has no rights or legitimate interests in the domain name, lead the Panel to conclude that the disputed domain name has been registered by the Respondent in bad faith.

The fact that the Respondent’s use of the disputed domain name has created a likelihood of confusion with the Complainant’s product and trademark under paragraph 4(b)(iv) of the Policy indicates that the disputed domain name has been used and is still being used in bad faith.

In addition, the Panel accepts the argument of the Complainant that the Respondent appears to be in the business of buying and selling domain name through it website “www.domainactive.com”. Therefore, the Panel holds that 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 and is engaging in a pattern of such conduct (paragraph 4(b)(ii) of the Policy).

The Panel finds the Complainant has shown that the Respondent registered the disputed domain name in bad faith.

7. Decision

The Panel decides that the Complainant has proven each of the three elements in paragraph 4(a) of the Policy. In accordance with paragraph 4(i) of the Policy and paragraph 15 of the Rules, the Panel orders that the disputed domain name <sbicards.com> be transferred to the Complainant.

Irina V. Savelieva
Sole Panelist

Dated: July 25, 2005