Entertainment Network (India) Limited v. Ash Kapadia
Claim Number: FA1012001364939
Complainant is Entertainment Network (India) Limited (“Complainant”), represented by Hemant Singh of INTTL Advocare, India. Respondent is Ash Kapadia (“Respondent”), represented by Bipin Kapadia, Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <radiomirchi.us>, registered with GoDaddy.com, Inc.
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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on December 23, 2010; the Forum received a hard copy of the Complaint on December 27, 2010.
On December 27, 2010, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <radiomirchi.us> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On December 29, 2010, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 18, 2011 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”).
Having received no Response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On January 24,2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Ralph Yachnin as Panelist.
Respondent has submitted correspondence which has been taken into consideration.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the Policy, the Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <radiomirchi.us> domain name is identical to Complainant’s RADIO MIRCHI mark.
2. Respondent does not have any rights or legitimate interests in the <radiomirchi.us> domain name.
3. Respondent registered and used the <radiomirchi.us> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Entertainment Network (India) Limited, is a division of the Times of India Group of Companies and controls the radio broadcast business under the trademark RADIO MIRCHI. Complainant’s radio broadcast under the RADIO MIRCHI mark is the only private FM brand in all four metros of India and has 32 total radio stations. Complainant owns trademark registrations for the RADIO MIRCHI mark with the Britain and Northern Ireland Trade Marks Registry (“BNITMR”), the Singapore Registrar of Trademarks (“SRT”), and the United States Patent and Trademark Office (“USPTO”), among others
BNITMR
Reg. No. 2,318,476 issued December 13, 2002;
SRT
Reg. No. T02/19503B issued December 20, 2002; and
USPTO
Reg. No. 3,424,979 issued May 13, 2008.
Respondent, Ash Kapadia, registered the <radiomirchi.us> domain name on May 24, 2003. The disputed domain name does not resolve to an active website.
Paragraph 15(a) of 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."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that 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 name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Given the similarity between the Uniform Domain Name Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
Complainant owns trademark registrations for the RADIO MIRCHI mark with the BNITMR, the SRT, and the USPTO, among others
BNITMR
Reg. No. 2,318,476 issued December 13, 2002;
SRT
Reg. No. T02/19503B issued December 20, 2002; and
USPTO
Reg. No. 3,424,979 issued May 13, 2008.
The Panel finds that these trademark registrations with the trademark authorities of Britain and Northern Ireland, Singapore, and the United States serve as conclusive evidence of Complainant’s rights in the RADIO MIRCHI mark pursuant to Policy ¶ 4(a)(i). See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that the complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world); see also Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under UDRP ¶ 4(a)(i)); see also KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of paragraph 4(a)(i) of the Policy whether the complainant’s mark is registered in a country other than that of the respondent’s place of business).
Complainant alleges that Respondent’s <radiomirchi.us> domain name is identical to Complainant’s RADIO MIRCHI mark because the only differences are the omission of the space between the terms and the addition of the country code top-level domain (“ccTLD”) “.us.” The Panel finds that deleting the space between terms does not affect the confusingly similar analysis or prevent the disputed domain name from being deemed identical to Complainant’s mark. See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”); see also George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that eliminating the space between terms of a mark still rendered the <gwbakeries.mobi> domain name identical to the complainant’s GW BAKERIES mark). The Panel also finds that the addition of the ccTLD is irrelevant in distinguishing between a disputed domain name and Complainant’s mark. See Lifetouch, Inc. v. Fox Photographics, FA 414667 (Nat. Arb. Forum Mar. 21, 2005) (finding the respondent’s <lifetouch.us> domain name to be identical to the complainant’s LIFETOUCH mark because “[t]he addition of “.us” to a mark fails to distinguish the domain name from the mark pursuant to the [usTLD] Policy”); see also Mattel, Inc. v. Unknown, FA 490083 (Nat. Arb. Forum July 11, 2005) (“The domain name [<Barbie.us>] is identical to the trademark “Barbie,” as it uses the trademark in its entirety. The only difference is the addition of the country code “us” which for this purpose is insufficient to distinguish the domain name from the trademark.”). Therefore, the Panel finds that Respondent’s <radiomirchi.us> domain name is identical to Complainant’s RADIO MIRCHI mark for the purposes of Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant argues that Respondent does not possess rights and legitimate interests. The Panel finds that Complainant has put forth the sufficient prima facie case against Respondent demanded by Policy ¶ 4(a)(ii) so that the burden to show such rights and interests has now transferred to Respondent. Respondent has not chosen to respond to the Complaint, however. The Panel finds that Respondent’s silence indicates that Complainant’s allegations are true and that Respondent possesses no rights and legitimate interests in the disputed domain name. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under [UDRP] ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights and legitimate interests”); see also Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent’s failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”). The Panel elects to consider the evidence in record, however, in light of the Policy ¶ 4(c) factors to determine if Respondent has any rights or legitimate interests in the disputed domain name.
There is no evidence in the record to conclude that Respondent owns any service marks or trademarks that reflect the <radiomirchi.us> domain name. Therefore, the Panel finds that Respondent does not have rights or legitimate interests pursuant to Policy ¶ 4(c)(i). See Meow Media Inc. v. Basil, FA 113280 (Nat. Arb. Forum Aug. 20, 2002) (finding that there was no evidence that the respondent was the owner or beneficiary of a mark that is identical to the <persiankitty.us> domain name); see also Pepsico, Inc. v. Becky, FA 117014 (Nat. Arb. Forum Sept. 3, 2002) (holding that because the respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)).
Complainant asserts that it has not authorized, licensed or otherwise consented to Respondent’s use of Complainant’s RADIO MIRCHI mark in the <radiomirchi.us> domain name. The WHOIS information for the disputed domain name identifies the registrant as “Ash Kapadia,” a name with no relation to the disputed domain name. The Panel thus holds that Respondent is not commonly known by the disputed domain name and consequently lacks rights and legitimate interests according to Policy ¶ 4(c)(iii). See 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 Electromatic Equip't as the registrant of the disputed domain names and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute); see also Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark).
Complainant contends that Respondent’s <radiomirchi.us> domain name does not resolve to an active website. The Panel finds that failing to make active use of the disputed domain name is not consistent with a bona fide offering of goods or services according to Policy ¶ 4(c)(ii) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iv). See Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where the respondent failed to submit a response to the complaint and had made no use of the domain name in question); see also Hewlett-Packard Co. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005) (“The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to [UDRP] ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to [UDRP] ¶ 4(c)(iii).”).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
When conducting a Policy ¶ 4(a)(iii) analysis, the Panel finds that it may consider the totality of the circumstances without being limited to the enumerated factors in Policy ¶ 4(b). See Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples of [bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive.”); see also Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding that the criteria specified in 4(b) of the UDRP is not an exhaustive list of bad faith evidence).
Complainant asserts that the website resolving from Respondent’s <radiomirchi.us> domain name is not in active use and displays no content. The Panel finds that Respondent’s failure to actively use the disputed domain name is evidence of bad faith registration and use according to Policy ¶ 4(a)(iii). See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith).
The Panel finds Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <radiomirchi.us> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: February 4, 2011
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