National Arbitration Forum

 

DECISION

 

Interbond Corporation of America, d/b/a Brandsmart U.S.A. v.

IndiaMART InterMESH limited and

P.Ltd, MFI Trade Link

 

Claim Number: FA0812001239625

 

PARTIES

Complainant is Interbond Corporation of America d/b/a Brandsmart U.S.A. (“Complainant”), represented by Scott R. Austin of Roetzel & Andress, LPA, Florida, USA.  Respondents are IndiaMART InterMESH limited and P.Ltd, MFI Trade Link (“Respondents”), both of India.  Respondent IndiaMART InterMESH limited is represented by Mr. Manu T.R. or DSK Legal, India.

 

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <made-from-india.com> and <indiamart.com>.  The regisrar for both domains names is Network Solutions, Inc.

 

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

 

David H. Bernstein as Panelist.

 

PROCEDURAL HISTORY

The National Arbitration Forum received a hard copy of the Complaint on December 22, 2008.  The Complaint named Brandsmart, Inc. as the respondent, sought transfer of the two disputed domain names, <made-from-india.com> and <indiamart.com>, and named IndiaMART InterMESH limited and P.Ltd, MFI Trade Link as the Registrars of the domain names, respectively.  In the Complaint, Complainant did not complain about the registration and use of the domain names per se, but rather, complained only about two particular web pages:  www.made-from-india.com/traderoom/brandsmart-inc and www.indiamart.com/brandsmart.

 

The National Arbitration Forum determined that the actual registrar of these domain names is Network Solutions, Inc. and, accordingly, sent Network Solutions, Inc. a request for registrar verification.  On December 22, 2008, Network Solutions, Inc. confirmed by e-mail to the National Arbitration Forum that the <indiamart.com> and <made-from-india.com> domain names are registered with Network Solutions, Inc. and that the current registrants of the names are IndiaMART InterMESH limited and P.Ltd, MFI Trade Link, respectively.  Network Solutions, Inc. also verified that each Respondent is bound by the Network Solutions, Inc. registration agreement and has thereby agreed to resolve domain name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On December 29, 2008, the National Arbitration Forum notified Complainant of deficiencies in the first Complaint, including that the Complainant named the wrong party as the Respondent and appeared to have improperly included multiple respondents in this proceeding.

 

On January 5, 2009, Complainant filed its Amended Complaint, purporting to address the deficiencies noted by the Forum.  The Amended Complaint, filed against IndiaMART InterMESH limited and P.Ltd, MFI Trade Link, argued that the Respondents “are affiliated with and under the control of a New York corporation, Brandsmart, Inc.”

 

On January 6, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 26, 2009 by which each Respondent could file a Response to the Complaint, was transmitted to Respondents via e-mail, post and fax, to all entities and persons listed on Respondents’ registration as technical, administrative and billing contacts, and to postmaster@indiamart.com and postmaster@made-from-india.com by e-mail.

 

E-mailed Responses were received in electronic form from both Respondents, and also from Brandsmart, Inc., the party improperly named as Respondent listed in the first Complaint, on January 6, 2009.  All three of these Responses were deemed deficient by the National Arbitration Forum pursuant to Rule 5 because a hard copy of the Response was not received prior to the Response deadline (although IndiaMART InterMESH limited did subsequently submit a hard copy of its Response). 

 

On February 4, 2009, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David H. Bernstein as Panelist.

 

Before turning to the merits, the Panel has considered the procedural issues raised by this case, including the inclusion of multiple respondents, the submission of a Response by a non-party (Brandsmart, Inc.), and whether to accept the Responses sent electronically and either not in hard copy or sent in hard copy but received after the deadline for Response.

 

Although UDRP proceedings may be filed against multiple domain names, the Rules provide that multiple domain names can be included in one case only if they are controlled by the same party.  See Rule 3(c) ("The complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder.") (emphasis added).  The domain names do not need to have the identical registrant listed in the WHOIS information, but Complainant does need to establish that there is one party that effectively controls both domain names in order to include more than one domain name in a single complaint.  See Supplemental Rule 1(d)(i). 

 

Complainant has failed to establish that these two domain names are registered, owned, or otherwise controlled by the same party.  Although the evidence suggests that Brandsmart, Inc. may have been sponsoring web pages on the websites of both Respondents,[1] Complainant has submitted no evidence whatsoever that the Respondents themselves are related.  To the contrary, Respondents appear to be competitors, each of whom uses its domain name for a business-to-business website that allows companies from India to promote their goods and services. 

 

For this reason alone, the Complaint is plainly improper.  However, rather than dismiss the Complaint for this reason, which might result in the Complainant’s filing of two new actions against the two Respondents separately, the Panel has elected to exercise its discretion to address the merits.  Not only is that appropriate from an efficiency standpoint (since the Panel has already formed conclusions based on its review of the file), but also, it is appropriate so that the Panel can fulfill its obligation to consider whether the Complaint was brought in bad faith, in which case the Panel should enter a finding of reverse domain name hijacking.  See Rule 15(e).

 

Before turning to the merits, the Panel must also consider whether to accept and consider the various Responses. 

 

Normally, a non-party would lack any standing to participate in a UDRP proceeding.  Here, though, Complainant filed its initial Complaint against Brandsmart, Inc., and even in the Amended Complaint, it is clear that Complainant is addressing its arguments to the web pages posted by Brandsmart, Inc., rather than to the domain names registered by the Respondents.  As such, it may be appropriate for a Panel to consider the factual and legal arguments of Brandsmart, Inc.

 

However, Brandsmart, Inc. has not certified its Response to be true, as expressly required by the Rules.  See Rule 5(viii).  If consideration of its Response would have affected the result in this matter, the Panel could have asked Brandsmart, Inc (which appeared pro se) to resubmit its Response with the necessary certification.  E.g., Visual Gis Engineering SL v. Tripathi, WIPO Case No D2006-0079 (March 23, 2006) (inviting pro se respondent to resubmit its Response with the necessary certification).  Because that would not have made a difference in this case (since Brandsmart, Inc.’s Response was a simple email and, in any event, as discussed below, Complainant has not made even a prima facie showing of entitlement to relief) and would only have resulted in further delay and expense to the parties, it is more efficient and expeditious for the Panel to simply disregard the Response. Accordingly, the Panel disregards the submission of Brandsmart, Inc.[2]

 

Similarly, the Response from P. Ltd, MFI Trade Link (which consisted of a series of e-mails) was not certified.  Here, too, the most efficient and expeditious approach is to disregard the Response, rather than require this Respondent to resubmit its e-mails with the necessary certification.

 

The other Respondent, IndiaMART InterMESH limited, did submit a certified Response.  Nevertheless, even though the electronic version was received within the deadline for response, the hard copy was not received at the offices of the National Arbitration Forum  until after the deadline passed and thus the National Arbitration Forum indicated that the Response was deficient.  The Panel disagrees with this conclusion.  The deadline for Response is twenty days from the date of commencement of the administrative proceeding.  As long as the Response is sent within that twenty day period, it should be considered timely.  The Panel disagrees with the National Arbitration Forum’s interpretation of the Rules that requires both the e-mail and hard copy Response to be received  by the National Arbitration Forum within twenty days.  Because IndiaMART InterMESH limited did send its Response by e-mail within the twenty days, and because it also sent a copy of its Response in hard copy (which was received by the National Arbitration Forum on January 27, 2009, one day after the deadline for submission of the Response), the Panel finds that the Response was timely submitted.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondents to Complainant.

 

PARTIES’ CONTENTIONS

Complainant asserts that it has trademark rights in the service mark BRANDSMART U.S.A.  In the first Complaint, it argued that the domain names are confusingly similar to its trademark, not based on the domain names per se, but rather on the URLs for specific webpages within Respondent’s websites -- <indiamart.com/brandsmart/> and <made-from-india.com/traderoom/brandsmart-inc./>.  In the Amended Complaint, Complainant states:  “Due to similarity between brandsmartusa.com and indiamart.com and made-from-india.com, the offending domain names are likely to cause confusion, to cause mistake, to cause dilution to the value of the trademarks owned by Complainant and to deceive as to the affiliation, connection, or association of Respondents with Complainant.”

 

Complainant contends the Respondents do not have any rights or legitimate interests in the disputed URLs and are solely using them to mislead customers, not for any bona fide offering of good and services.  The totality of Complainant’s argument regarding this factor are:  “Respondents are not using the offending domain names in connection with any bona fide offering of goods or services, and has no legitimate noncommercial or fair use for the domain names.  Respondent’s only use is to confuse consumers and prospective consumers of Complainant who show initial interest confusion in mistakenly going to respondent’s websites.”

 

With respect to the bad faith factor, Complainant contends:  “Respondents’ intent is clearly to misleadingly divert consumers to tarnish and dilute Complainant’s marks and reputation, possibly making commercial gain through its illegal affiliation with Complainant’s products. . . .  By using the domain names, Respondents have intentionally attempted to attract, possibly for commercial gain, Internet users to Respondents’ website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondents’ website or comments.”

 

As noted above, the only Response accepted by the Panel is that of Respondent IndiaMART InterMESH limited.  Respondent argues that the claims made by the Complainant are outside the scope of the UDRP because the content on the webpage at issue was posted by a third party customer, Brandsmart, Inc., and the dispute over the rights to use the term “Brandsmart” on the web page and in the URL is between Brandsmart, Inc. and the Complainant.  Respondent further contends that the UDRP is limited to bad faith or abusive domain name registration and does not cover the situation described in the Amended Complaint where a third party places allegedly infringing material on a domain name owner’s website.  Respondent maintains that it has never authorized any third parties to use on its website marks known to be infringing of third parties’ rights.

 

Turning to the three prongs of the Policy, Respondent IndiaMART InterMESH limited contends that its domain name <indiamart.com> is neither identical nor confusingly similar to the marks BRANDSMART or BRANDSMART U.S.A.  Respondent asserts that it is one of the largest business-to-business entities in India, covered frequently in the media, and that it has registered its trademark INDIAMART, and that its mark also has acquired secondary meaning.  It also argues that it is making bona fide use of the domain name and that, given its widely recognized business purpose, the registration and use of the domain name is in good faith.

 

 

FINDINGS

Complainant, Interbond Corporation of America d/b/a Brandsmart U.S.A., is a retailer of electronics and appliances with physical locations in Florida and Georgia and a website at <brandsmartusa.com>.  Complainant has registered the name BRANDSMART U.S.A. with the United States Patent and Trademark Office.

 

Respondent IndiaMART InterMESH limited, a business incorporated in India, operates an online business-to-business marketplace at <indiamart.com> which allows third-party businesses to register and conduct business over the Internet with each other.  Respondent registered the <indiamart.com> domain name on March 8, 1996 and holds several Indian registrations of the trademark INDIAMART.

 

Although the Panel has not accepted the Response of Respondent P.Ltd, MFI Trade Link, based on a review of P.Ltd, MFI Trade Link’s website, it appears that this Respondent also operates an online business-to-business marketplace, at <made-from-india.com>, which allows third-party businesses to register and conduct business over the Internet with each other.  Respondent P.Ltd, MFI Trade Link registered the <made-from-india.com> domain on July 9, 2007.

 

Although not a party, the Panel notes that Brandsmart, Inc. appears to have created individual web pages on each of the Respondent’s websites.  In both cases, the URL including the term “brandsmart.”  In addition, as result of Brandsmart, Inc.’s subscription to Respondents’ services, the term “brandsmart” appeared in several places throughout the Respondents’ websites in reference to Brandsmart, Inc.[3]

 

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

 

Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

 

(1)   the domain names registered by the Respondents are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2)   the Respondents have no rights or legitimate interests in respect of the domain names; and

(3)   the domain names have been registered and are being used in bad faith.

 

Identical and/or Confusingly Similar

 

Complainant has shown that it has registered, and thus owns, the trademark BRANDSMART U.S.A.  Complainant cannot, however, show that the domain names are identical or confusingly similar to that trademark. 

 

Complainant’s initial Complaint focused on the URLs of the two web pages to which Complainant objected.  Those URLs included the term “brandsmart,” but that that term was used after the slash following the gTLDs, not as part of the domain names.  In the Amended Complaint, Complainant focused instead on the domain names themselves, but it robotically repeated the same conclusory allegations – that the domain names <indiamart.com> and <made-from-india.com> are confusingly similar to the trademark BRANDSMART U.S.A. – even though that allegation is nonsensical once the URLs are disregarded.  The only similarity between <indiamart.com> and BRANDSMART U.S.A. is the dictionary word “mart,” which is generic for a marketplace; as for the other domain name, <made-from-india.com>, there is no overlap whatsoever between the domain name and Complainant’s trademark.

 

The Panel thus funds that the domain names are not confusingly similar to the Complainant’s trademark.  In fact, they are so obviously dissimilar that the Panel can only conclude that the Complaint was filed in bad faith.

 

Rights or Legitimate Interests

 

Without any factual argument, Complainant asserts in conclusory fashion that Respondents are not using the domain names in connection with any bona fide offering of goods or services.  However, a cursory examination of Respondents’ websites shows that both are used as marketplaces for manufacturers to advertise their goods and services from India.  Given that the domain names are quite descriptive of the services offered on the websites (they are marts at which products and services from India are advertised), the Panel concludes that Complainant has failed to show that Respondents lack rights or legitimate interests in these domain names.

 

Complainant nevertheless argues that the Respondents are using the domain names to cause consumer confusion.  In support of this argument, Complainant complains about the web pages on which the BRANDSMART trademark appears, and says that “[t]he content of the websites of the offending domain names are likely to cause confusion, to cause mistake, to cause dilution to the value of the trademarks owned by Complainant and to deceive as to the origin, sponsorship or approval of Respondent’s comments or commercial activities by Complainant.”  However, Complainant has provided no evidence whatsoever that Respondents control the content on these web pages; to the contrary, it is apparent to the Panel that the website operators are providing a forum for third parties to advertise their goods and services.  Complainant has thus failed to show that Respondents are responsible for the use of the BRANDSMART mark on the particular web pages of which Complainant complains.   

 

Finally, Respondent IndiaMART InterMESH limited has submitted trademark registration certificates, various promotional materials, and news articles, all of which establish its rights and legitimate interests in the <indiamart.com> domain name. As to this Respondent, this evidence further establishes its rights and legitimate interests in its domain name.

 

Registration and Use in Bad Faith

 

Complainant contends that Respondents have “intentionally attempted to attract, possibly for commercial gain, Internet users to Respondents’ website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondents’ website or comments.”  Complainant also argues that Respondents are attempting to profit off of the goodwill associated with Complainant’s BRANDSMART U.S.A. mark, which in turn is tarnishing and diluting Complainant’s mark and reputation.  Beyond these conclusory allegations, Complaint offers no allegations of fact to support these contentions, and it appears to the Panel that no such facts exist.  Once again, Complainant’s contentions are focused solely on the allegedly infringing activity of a third-party, Brandsmart, Inc., and do not in any way address any alleged bad faith by these Respondents with respect to the registration and use of the disputed domain names by the Respondents.

 

Reverse Domain Name Hijacking

 

Paragraph 15(e) of the Rules states, in relevant part:

 

"If the Panel concludes that the dispute is not within the scope of Paragraph 4(a) of the Policy, it shall so state. If after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding."

 

A finding of Reverse Domain Name Hijacking should be made when the Panel finds that a complaint has been filed in bad faith in an attempt to deprive a domain name registrant of its domain name.  Rule 1.  In this case, the Panel finds such bad faith conduct .

 

For the reasons discussed above, it is plain to the Panel that this Amended Complaint is wholly lacking in any merit whatsoever.  It is procedural and substantively deficient.  Even after the National Arbitration Forum noted the procedural deficiencies of the Complaint, Complainant, through counsel, proceeded to file an Amended Complaint that continued to make arguments unsupported by law or fact.  And, when the National Arbitration Forum noted that the Respondents were in default, Complainant’s counsel wrote to the National Arbitration Forum to inquire whether, because of the defaults, the domain names could simply be transferred automatically, evidencing a hope that the domain names would be transferred based on some procedural default, notwithstanding the insufficiency of the merits of the Amended Complaint.

 

A finding of Reverse Domain Hijacking is warranted where the Complainant “knew or should have known at the time it filed the Complaint that it could not prove one of the essential elements required by the Policy.”  Carsales.com.au Ltd. v. Flanders, D2004-0047 (WIPO Apr. 8, 2004); see also Futureworld Consultancy, Pty Ltd v. On-line Advice, D2003-0297 (WIPO July 18, 2003).  Complainant, which was represented by counsel, should have known that it had no ability to prove any of the three required elements.  In fact, the Amended Complaint, which consists almost entirely of legal conclusions without any allegations of fact to support them, makes little, if any, attempt to prove any of the required elements.  Nor could it.  For example, the assertion that the two disputed domain names – <indiamart.com> and <made-from-india.com> – are confusingly similar to the trademark BRANDSMART U.S.A. is utterly frivolous as a matter of fact.  Similarly, any attempt to argue that confusing similarity can be based on the URLs in their entirety is wholly unsupported by law.  Equally frivolous is the contention that these two Respondents, who appear to operate marketplaces at which Indian manufacturers can promote their goods and services, lack rights in their domain names.  Complainant made no effort whatsoever to even argue that the registration of Respondents’ domain names was in bad faith.  And, Complainant’s complaint about the use of the domain names focused only on a third party’s web page on each of the Respondent’s website, rather than any conduct or use by the Respondent itself.  It should have been patently obvious to the Complainant and its counsel that Complainant possessed neither the evidence nor an argument to prevail on any of the three elements, let alone all three.

 

In light of the gross insufficiency of the Amended Complaint, a finding of Reverse Domain Name Hijacking may have been appropriate even if Complainant appeared pro se.  However, in this case, Complainant was represented by counsel.  On its website, the Roetzel & Andress firm specifically promotes its intellectual property practice, and Scott R. Austin, Complainant’s counsel, personally promotes his experience in UDRP proceedings.  Given that Complainant was represented by competent counsel with claimed experience in UDRP proceedings, and that its counsel should have known better, there can be no excuse for the extensive deficiencies in the Complaint and Amended Complaint.  Rather, the Panel can only conclude that the Complaint and Amended Complaint were filed in bad faith in an effort to hijack the Respondents’ domain names.

 

Accordingly, the Panel specifically finds that the Complaint and Amended Complaint were filed in bad faith, and thus enters a finding of Reverse Domain Name Hijacking.

 

DECISION

Having failed to establish any (let alone all three) of the elements required under the Policy, the Panel concludes that relief shall be DENIED.  Furthermore, the Panel enters a finding of Reverse Domain Name Hijacking in this case.

 

 

 

David H. Bernstein, Panelist
Dated: February  18, 2009

 

 

 

 

 

 

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