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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Bharti Airtel Limited, Bharti Enterprises, Bharti Global Limited v. Marketing Total S.A.

Case No. D2007-0734

 

1. The Parties

The Complainants are Bharti Airtel Limited, Bharti Enterprises and Global Limited, New Delhi, India; New Delhi, India, represented by Singh & Singh Advocates, India.

The Respondent is Marketing Total S.A., Charlestown, West Indies, Saint Kitts and Nevis.

2. The Domain Name and Registrar

The disputed domain name <bhartiairtel.com>is registered with DomainDoorman, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 19, 2007. On May 22, 2007, the Center transmitted by email to DomainDoorman, LLC a request for registrar verification in connection with the domain name at issue. On May 22, 2007, DomainDoorman, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainants filed an amendment to the Complaint on May 30, 2007. The Center verified that the Complaint together with the amendment to 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 Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 15, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was July 5, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 6, 2007.

The Center appointed Francine Tan as the sole panelist in this matter on July 17, 2007. 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.

In the amended Complaint filed on May 30, 2007, the Complainants were identified as Bharti Airtel Limited and Bharti Global Limited. The Panel, however, noted that the certificates of registration and copies of trademark applications annexed to the amended Complaint identified other entities, namely Bharti Telecom Limited, Bharti Tele Ventures Limited, Bharti Overseas Trading Company, Bharti Broadband Network Limited and/or Bharti Enterprises Pvt Ltd as the registered proprietors/applicants of the respective marks and not Bharti Airtel Limited. Accordingly, on August 2, 2007, the Panel issued an Administrative Panel Procedural Order No. 1 requesting a further amendment to the Complaint for purposes of clarifying the ownership of the trademarks and/or the relationship between the different companies within the group. The Panel also requested the furnishing of clearer copies of a number of the annexures to the Complaint.

On August 9, 2007, the Complainants’ representative filed with the Center an electronic copy of a further Amended Complaint. The Center confirmed receipt on August 10, 2007 of the further Amended Complaint, and notified the Respondent that it had till August 14, 2007 to file a reply.

The Respondent did not submit any reply.

 

4. Factual Background

The 1^st Complainant, Bharti Airtel Limited, was formerly known as Bharti Tele-Ventures Limited. The 2^nd Complainant, Bharti Enterprises, was formerly known as Bharti Overseas Trading Company. The 3^rd Complainant, Bharti Global Limited, is the offshore company of the 1^st Complainant. All three Complainants belong to the Bharti group of companies.

The 1^st Complainant is a leading private sector provider of telecommunications services in India. As at September 30, 2006, it had an aggregate customer base of 27,061,349 GSM mobile and 1,631,278 broadband and telephone (fixed line) customers. The business of the 1^st Complainant is structured into two main strategic groups – the Mobility Leaders Business Group and the Infotel Leaders Business Group. The former provides GSM mobile services across India in 23 telecom circles, while the latter provides broadband and telephone services, long distance services and enterprise services. All these services are provided under the trade name “Bharti Airtel Limited” and the trademark AIRTEL.

The 1^st Complainant is the registered proprietor, beneficial owner and user of the trademark AIRTEL in India. In a survey of the Economic Times (ET) released on February 9, 2006, the 1^st Complainant was rated amongst the top five ET 500 Companies. It also received a few awards pursuant to the Advertising Agencies Association of India Awards in December 2004. AIRTEL has been listed as a “Superbrand” in the International Brands Hall of Fame (July 2003).

The mark AIRTEL was conceived, invented, and adopted by the 1^st Complainant in 1994 and has been widely publicized all over India. A significant number of trademarks incorporating the word Airtel have been registered by the 1^st Complainant in Classes 9, 16 and 38.

The 3^rd Complainant has applied for registration of the AIRTEL trademark in the European Community in Classes 9, 35, 36, 38, 41 and 42.

The Complainants and their subsidiary companies have several websites incorporating the words “airtel”, e.g. “www.airtelworld.com”, “www.airtel.in”, and “www.airtelkol.com”. They sell and offer their goods and services through these websites.

The 2^nd Complainant is the registered proprietor in India of the mark BHARTI. The 1^st and 2^nd Complainants have applied for registration of various marks incorporating the word Bharti in India in Classes 5, 9, 16 and 28. The Complainants have also registered various domain name registrations incorporating the word “Bharti”, e.g. <www.bharticellular.com>, <www.bhartimobile.org>, <www.bhartimobile.com>, <www.bhartimobile.info>, etc. Significant amounts of money have been expended by the Complainants in advertising and promoting their activities under the name and trademark BHARTI.

In January 2006, the 1^st Complainant (formerly known as Bharti Tele-Ventures Limited) decided to adopt a new corporate name, Bharti Airtel Limited. Subsequent thereto, the Complainants took steps to protect the joint trademarks, BHARTI and AIRTEL, by way of domain name and trademark registration. In terms of domain name registration, the Complainants registered domain names such as <bhartiairtel.net>, <bhartiairtel.in>, <bhartiairtel.org>, <bhartiairtel.co.in>, etc. On January 19, 2006, the Complainants discovered that the domain name <bhartiairtel.com> had been registered by a third party. The 1^st Complainant filed a Civil Suit before the Delhi High Court against the registrant and the registering authority. The High Court granted an ex parte interim injunction order in the Complainant’s favour and restrained the defendants from using the domain name or any other domain name consisting of the marks BHARTI and AIRTEL till the next hearing date. However, in the meantime, the 1^st Complainant discovered that the domain name <bhartiairtel.com> had been transferred to the Respondent in these proceedings.

The links on the website of the Respondent have sponsored links to other websites offering other goods and services, including cellular phone services and the sale of cell phones, all of which are closely related to the goods and services offered by the Complainants.

 

5. Parties’ Contentions

A. Complainants

The Complainants contend that:

1. The domain name is identical and deceptively similar to the corporate name of the 1^st Complainant and is also similar to the Complainants’ two main trademarks, i.e BHARTI and AIRTEL.

The mark AIRTEL is not a dictionary word and is exclusively identified with the 1^st Complainant and is distinctive of its goods and services. AIRTEL has become a household name and is a well-known trademark in India. The mark BHARTI is the prominent feature of the Complainants’ trade and corporate names and is also synonymous with the Complainants’ business and is associated exclusively with them.

2. The Respondent has no rights or legitimate interests in the domain name.

The Complainants are the proprietors of the marks AIRTEL and BHARTI. The domain name in dispute is a combination of these two unique marks which are well known in India and which form the 1^st Complainant’s company name. The Complainants therefore have a legitimate interest in the domain name. The Respondent is in no way connected to the Complainants and the registration of the domain name violates the Complainants’ statutory and common law rights. The Respondent’s registration and use of the domain name would give rise to a dilution of the Complainants’ trademarks.

3. The domain name has been registered and used in bad faith.

The Respondent has no right to use the marks BHARTI and AIRTEL and is in fact using the marks fraudulently. The Respondent has no connection with the Complainants and is passing off the website and domain name as being connected with the Complainants. The domain name may be misused by the Respondent in that irreparable harm may be caused to the Complainants and their business; the domain name could be used to host a website defaming the Complainants; and consumers may presume that the website hosted by the Respondent belongs to the Complainants especially since it provides links to other competing sites offering goods and services which are similar to those of the Complainants.

The Complainants request that the Administrative Panel direct that the domain name be transferred to the 1^st Complainant.

B. Respondent

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

 

6. Discussion and Findings

Notwithstanding the Respondent’s default, pursuant to paragraph 4(a) of the Policy, the Complainants have to show:

(i) That the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainants have rights; and

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

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

All three elements have to be satisfied by the Complainants before an order for the transfer of the domain name can be made.

A. Identical or Confusingly Similar

In this case, it is clear that the Complainants have rights to the trademarks AIRTEL and BHARTI. The 1^st Complainant is also known by the name Bharti Airtel. The Panel is accordingly of the view that the domain name <bhartiairtel.com> is confusingly similar to the Complainants’ marks. In addition, Internet users would, understandably, be misled into thinking that the domain name has a connection with the 1^st Complainant or with the other companies within the BHARTI group of companies (See Konica Corporation, Minolta Kabushiki Kaisha aka Minolta Co., Ltd v. IC, WIPO Case No. D2003-0112; Audi AG v. Hans Wolf, WIPO Case No. D2001-0148).

The Panel finds that the first element in paragraph 4(a) of the Policy has been satisfied.

B. Rights or Legitimate Interests

For the purposes of paragraph 4(a)(ii) of the Policy, it is sufficient for the Complainants to show a prima facie case. The Panel is of the view that a prima facie case has been established in this case. The Respondent has not proffered any evidence to the contrary to show that it has rights or legitimate interests in the disputed domain name.

The Panel therefore finds that the second element in paragraph 4(a) of the Policy has been satisfied.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out certain circumstances which, if found by the Panel to be present, shall be evidence of the registration and use of the domain name in bad faith. One of these circumstances reads as follows:

“by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.”

The printout of the website’s homepage does show that the disputed domain name is used in the manner alleged by the Complainants. In the absence of any response from the Respondent, the Panel can only infer that the Respondent must have known of the Complainants and their trademarks. In fact, the Panel believes it would be very difficult for the Respondent to explain how it conceived the domain name “bhartiairtel” independently without reference to the Complainants’ marks and trade name which appear to be well known in India. The registration of the domain name was therefore made in bad faith. Further, one can also make an inference of bad faith use where a website with a domain name that is identical or confusingly similar to the trademark(s) of the complainant is used by the respondent to provide sponsored links to competitors of the complainant.

The Panel therefore finds that the third element in paragraph 4(a) of the Policy has been satisfied.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <bhartiairtel.com> be transferred to the 1^st Complainant, Bharti Airtel Limited.

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Francine Tan
Sole Panelist

Dated: August 22, 2007