1. The Parties The Complainant is ITC LIMITED of Kolkata, India, represented by Mohan Associates, India.
The Respondent is Salvin Jose, Glitz IT Solutions of Kerala, India, represented by Tomy Paul Mampilly, India.
2. The Domain Names and Registrar The disputed domain names and are registered with 1&1 Internet AG (the “Registrar”).
3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 20, 2015. On October 20, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On October 22, 2015, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On October 30, 2015, the Center received the amended Complaint and the Respondent’s email communication.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 5, 2015. In accordance with the Rules, paragraph 5, the due date for Response was November 25, 2015. The Response was filed with the Center on November 24, 2015.
The Center appointed Harini Narayanswamy as the sole panelist in this matter on December 3, 2015. 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.
4. Factual Background The Complainant, ITC Limited is a leading Indian multi-business enterprise. Its major areas of business include fast moving consumer goods (FMCG), hotels, paperboard and specialty papers, packaging, agri-business and information technology. It uses the trademark ITC as its house mark and as its trade and corporate name. The Complainant has registered rights in its ITC mark and the ITC logo that it displays on its products. The Complainant also owns several ITC formative domain names.
The Respondent is an independent information technology consultant for Irinjalakuda Town Co-Operative Bank (hereinafter referred to as “the bank”). The Respondent registered the disputed domain name on December 11, 2006 and the disputed domain name on January 25, 2012.
5. Parties’ Contentions A. Complainant The Complainant states it was incorporated on August 24, 1910 under the name Imperial Tobacco Company, and is presently known as ITC Limited. The Complainant’s business portfolio includes a wide range of goods and services such as: food, personal care, tobacco and related products, clothing, educational, stationary, paperboards and specialty papers, packaging, agri-business, information technology, safety matches and incense sticks.
The Complainant states its market capitalization is about forty billion USD and its turnover is eight billion USD and it has been rated as among India’s top 500 largest corporations by Fortune magazine during the years 2010 and 2011 and has also featured in “Asia Fab 50” list by Forbes magazine in 2012. It is named among India’s 50 biggest Non-Financial Companies by the magazine Business World in 2011 and 2012. “Business Today” has listed the Complainant as among India’s most valuable companies in 2012, 2013 and 2014. It was named as the “Most Admired Company” in 2014 by Fortune. Its CEO Mr. Y.C. Deveshwar, has been ranked as the 7th best performing CEO in the world by Harvard Business Review in 2013. In a study conducted by the Boston Consulting Group in 2010, it was ranked as 6th largest “sustainable value creator” among consumer goods companies during the period 2005 – 2009.
In the agri-business area, the Complainant states it is one of India’s largest exporters of agricultural products and its “e-Choupal” initiative has been a transformational tool for Indian farmers with the use of Internet. The Complainant states that it directly employs about thirty-two thousand people and states that its value chain generates six million sustainable livelihoods. The Complainant states that it follows the path of sustainable development with a low carbon foot print. It has five lakh shareholders and it is the first company to voluntarily seek a corporate governance rating.
The Complainant states it operates its main website from the domain name , and its portfolio of two hundred and fifty domain names include the domain names: , , , , and . The Complainant states that it has used the ITC mark since 1910 and the mark has vast reputation and goodwill. The sales turnover under the mark is in billions of dollars, while its promotional expenses are in millions of dollars. The Complainant states it has coined and created the ITC term or word and that it has gained immense global reputation due to extensive use. The Complainant has provided a list of numerous awards that it has received to show wide recognition of its mark.
The Complainant bases the dispute on the grounds that: the disputed domain names are confusingly similar to a mark in which it has rights. The Respondent has no rights or legitimate interests in the disputed domain names. The disputed domain names have been registered and are being used in bad faith. The Complainant requests for the transfer of the disputed domain names.
B. Respondent The Respondent submits that the present dispute ought to have been filed against Irinjalakuda Town Co Operative Bank Ltd as the Respondent is an information technology consultant who has registered the disputed domain names on behalf of his client, the bank. He states that he has registered the disputed domain names in his name for running the bank’s websites. He has submitted an affidavit stating that the disputed domain names and the related websites are exclusively owned and used by the bank and he has no connection with the disputed domain names other than this.
The Respondent states the disputed domain names are being used legitimately by the bank for its daily banking activities. He states that the bank has fourteen branches operating in Thrichur district in the state of Kerala. Employees of the bank have email identities with their names and designations using the disputed domain names. The Respondent has filed evidence that the bank is registered as a co-operative society and started functioning from July 19, 1918. The bank is presently an Urban Development Bank under the Banking Regulation Act 1949 and is approved and licensed by the Reserve Bank of India. The Respondent adds that the bank has been ranked first among sixty Urban Co-operative banks in Kerala and has achieved a turnover of 1606 Crores INR for the year 2015 - 2016. Further, the bank can apply to be a scheduled bank as it has crossed the Rs.750 Crores deposit mark and has launched the RUPAY CARD debit card for its customers. In the year 2011-2012, the volume of its business was 3587.30 million INR and its net profit was INR 1,68,20,325.32.
“ITC Bank” is an abbreviation for Irinjalakuda Town Co-operative Bank, and was adopted for ease of use instead of the full name, states the Respondent. As evidence of use of the mark, the Respondent has filed email communications of the bank with other banks, the bank’s application forms selling insurance products with Life Insurance Corporation of India showing the bank’s device mark ITC BANK printed on the forms. The Respondent has also filed promotional expenses for its mark in electronic, print and other media. The Respondent has also filed copies of bank’s payment forms, receipt forms, blank cheque leaf and letter head all of which displays the device mark of the bank ITC BANK. The Respondent has also filed “Google Adwords Over view” reflecting the name of the bank and disputed domain names. The Respondent states that the bank has filed a trademark application of its device mark ITC BANK bearing number 2191712, dated August 17, 2011.
The disputed domain names are not registered with an intention to misrepresent or to misappropriate the Complainant’s mark argues the Respondent. The Respondent states that the bank is a genuine user of the ITC BANK mark since 1918 and has no intention to challenge the established ITC trademark of the Complainant. The Respondent further argues that the Complainant has no business in the area of finance or banking, but operates in the areas other than banking such as consumer goods, hotels, paperboards, packaging, agri-business and information technology. The Respondent states that the Complainant’s ITC mark is an abbreviation of Indian Tobacco Company Ltd. and its device mark has the words “Enduring Values”, that is distinctive of the Complainant’s products.
The Respondent denies that the disputed domain names are identical or confusingly similar with the Complainant’s trademark as there has been no confusion among Internet users for the past nine years. The Respondent argues that the Complainant ought to have checked the banks websites are genuine and ought to have initiated trademark infringement remedies against the bank for using of the disputed domain names. The Respondent states that the disputed domain names are being used for banking services and not for mala fide use, and the bank has used the websites for the last nine years, has been in existence for 97 years and presently has thirty thousand individual members. The Respondent further argues that the Complainant had initially started its business as Imperial Tobacco company in 1910, however, only from 2001 the Complainant adopted ITC, whereas the bank started using “ITC Bank” since 1918, much earlier than the Complainant adopted its trade name ITC Limited.
The Respondent further states that the rights and legitimate interests in the disputed domain names belong to the bank. The logo of the bank and the logo of the Complainant are different argues the Respondent. The bank has not made any false representations and the Respondent adds that he did not register the disputed domain names for the purpose of selling, renting or otherwise transferring it to the Complainant for valuable consideration or engaged in a pattern of such conduct.
The Respondent states that the parties are not competitors and the disputed domain names are not registered to disrupt the Complainant’s business or to attract Internet users to its website by creating a likelihood of confusion with the Complainant’s mark. The Respondent requests for dismissing the present Complaint and allowing the bank to retain ownership of the disputed domain names that are being used for genuine banking activities. The Respondent also requests the bank be permitted to file a response and for the Complainant to file a complaint against the bank.
6. Discussion and Findings To obtain the remedy of transfer of the disputed domain name, the Complainant has to establish three requirements set out under paragraph 4(a) of the Policy. These are:
(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 lacks rights or legitimate interests in the disputed domain name; and
(iii) The disputed domain name was registered and is being used in bad faith by the Respondent.
A. Identical or Confusingly Similar
The first requirement under paragraph 4(a) of the Policy requires the Complainant to establish the disputed domain names are confusingly similar to a trademark or a service mark in which it has rights.
The Complainant has established its rights in the ITC trademark. It has submitted evidence of its trademark registrations and evidence of extensive recognition of its ITC mark. Some of the Complainant’s trademark application numbers are: 2627967, in class 44, dated November 15, 2013 and trademark application number 2627889, in class 16, dated November 14, 2013. The Panel finds the disputed domain names contain the Complainant’s ITC trademark in its entirety with the word “bank”.
It is well established that the addition of a generic word with a trademark in a disputed domain name does not lessen the confusing similarity of the domain name with the trademark. The Panel finds, that the Complainant has successfully established the first requirement under paragraph 4(a) of the Policy, that the disputed domain names are confusingly similar to trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
The second element under paragraph 4(a) of the Policy requires the Complainant to make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain names. Once the Complainant has made a prima facie showing that the Respondent lack rights, the Respondent has the opportunity to rebut the Complainant’s contentions and demonstrate any rights or legitimate interests in the disputed domain name.
Paragraph 4 (c) of the Policy has provided a non-exhaustive list that a respondent may rely on to demonstrate rights or legitimate interests in a domain name that is in dispute. These are:
(i) Before any notice of the dispute, Respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) Respondent (as an individual, business or other organization) has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent has based his arguments primarily under the provisions of paragraph 4(c)(i). The Panel finds the central basis of the Respondent’s defense is that he is holding the disputed domain names on behalf of his client, the bank, who is the beneficial owner and the user of the disputed domain names. The bank is not a party to this dispute, and by definition, a “respondent” under the Rules, is the registrant or the holder of the disputed domain name. Therefore the bank cannot be termed a respondent in these proceedings. The Respondent’s rights or legitimate interests are dependent on the bank’s legitimate rights and interests in the disputed domain names, as the bank has allowed the Respondent to hold the disputed domain names for its use.
In similar cases with comparable fact patterns, it was found that the respondent did not lack legitimate rights in the disputed domain name when it was used by the respondent’s client for a bona fide offering of goods and services. See ETC Euro Continental Transit v. John D. Coryat, WIPO Case No. DBIZ2002 00171, (Where the respondent, a computer technical consultant, registered domain names on behalf of his client and rented it to his client to process electronic commerce transactions. The contents of the sites linked to the disputed domain name was used with a bona fide offering of goods and services and it was found that the complainant had failed to make a prima facie case that the respondent lacked rights or legitimate interests).
The terms “legitimate” under paragraph 4(a)(ii) and “bona fide” under 4(c)(i), are interpreted in a wider sense by panels under the Policy. The term “legitimate” refers not merely to the nature of the Respondent’s business but also refers to the legitimate adoption of a domain name. See The New England Vein & Laser Center, P.C. v. Vein Centers for Excellence, Inc., WIPO Case No. D2005-1318 (The term legitimate in paragraph 4(c) of the Policy refers to the Respondent’s entitlement to the domain name selected rather than to the legality of the business).
The Panel notes from the documents and evidence filed by the Respondent, that the bank is running a legitimate banking business. The Panel also notes that the Complainant has not objected to the bank’s business under its full name: Irinjalakuda Town Co-Operative Bank. The Complainant has only disputed the ITC mark being used in the disputed domain names by the Respondent. The key questions or issues to determine under the circumstances, is whether the bank’s adoption of the abbreviated form of its name ITC BANK as a trademark was bona fide and was adopted in good faith and whether the use of the letters ITC in the disputed domain names is legitimate and based on the bank’s bona fide adoption of the ITC BANK name / mark.
The complexities of finding facts under the given circumstances however are: first, it is necessary that the rights or legitimate interests of the bank need to be established prior to determining whether the Respondent has any rights or legitimate interests; second, some of the submissions made by the parties are unsupported by evidence and material presented by the parties. For instance, both parties have made submissions regarding the adoption and use of the abbreviated short forms of their names from the inception of their respective businesses. However, the evidence presented by parties does not clearly establish this fact.
The Complainant has claimed that it has used the ITC trademark from 1910. The Respondent has stated that ITC BANK has been used by the bank since 1918. However, both parties have not provided evidence of use of the shortened or abbreviated form of their names from the time of inception of their respective businesses. While the Complainant has claimed use of the ITC mark from 1910, by its own admission it has officially adopted and changed its trade name to ITC Limited only from the year 2001. The Panel however notes that the Complainant has submitted copies of trademark registration and renewal documents for the ITC trademarks that predate 1995.
The Respondent has claimed that the bank has used the ITC BANK mark since 1918, however the documents filed by the Respondent on behalf of the bank shows the bank probably started using the ITC BANK abbreviation some time around 2011-2012. Although the first disputed domain name was registered in 2006, the evidence provided by the Respondent shows the ITC BANK abbreviation has been used in its communications with other banks only after the registration of the disputed domain names.
The Respondent has put forward some very compelling arguments and has filed documents as evidence of alleged legitimate use of the disputed domain names by the bank and also evidence of use of ITC BANK mark by the bank. However, the Panel finds that the bank’s statement showing its promotional expenses and advertisement expenses for ITC BANK mark shows figures only from the year 2012 -2013. The correspondence and other documents filed by the Respondent show dates post the registration of the disputed domain names. It is likely that, the bank, being in business for about the same span of time as the Complainant, and is almost as old as the Complainant, but in a different area of business, has adopted ITC BANK in good faith.
The observations made by the Panel and the discussion here are by no means a finding of the rights or legitimate interests of the Respondent or of the bank. The Panel has merely highlighted issues that have been presented by the parties. However, due to the complexity of facts and circumstances in the case, there are grey areas, and it is not within the Panel’s ambit to obtain the required clarity by merely calling upon the parties to furnish more documents. A more detailed finding of facts is required to determine whether the bank has adopted the ITC BANK abbreviation in good faith.
The facts being what they are, it is not feasible for the Panel to render a conclusive finding under the Policy regarding the Respondent’s rights or legitimate interests or the lack of it due to the reasons discussed. It should be recalled that the Policy was designed for the resolution of disputes regarding clear-cut cases of cybersquatting. It naturally remains open for the parties, at their discretion, to pursue this matter before a court to determine these issues.
The Panel finds, in the light of all that has been discussed, that the second element under paragraph 4(a) of the Policy has not been established in these proceedings.
C. Registered and Used in Bad Faith
In view of the discussion in the previous section, it is not necessary to discuss whether the Respondent has registered the disputed domain names in bad faith and has used them in bad faith.