INDIAN CASES WIPO

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accordance with the Rules, paragraph 5(a), the due date for Response May 5, 2010. TheResponse was filed with the Center on May 5, 2010.

The Center appointed Lynda J. Zadra-Symes, Harini Narayanswamy and Alan L.Limbury as Panelists in this matter on June 2, 2010. The Panel finds that it was properly

constituted. Each member of the Panel has submitted the Statement of Acceptance andDeclaration of Impartiality and Independence, as required by the Center to ensurecompliance with the Rules, paragraph 7.

On May 27, 2010, Complainant filed a Request to File a Reply as well as a Reply insupport of its Complaint together with a declaration from an Executive Director of Complainant stating that “Our company has been using the IIFL mark since 2007” andsubmitting a “daily report” dated October 4, 2007 and a brochure entitled India – Software dated November 2 2007. Complainant also submitted with its Reply several

pages from “http://in.reuters.com” referencing “India Infoline Ltd. (IIFL.BO)” andexcerpts from audited financial results for the year ended September 30, 2007 and

December 2007, with the headline “IndiaInfoline – It's All About Money, Honey!” inwhich the small print at the end of the document lists IIFL Asia Pty Ltd in Singapore as awholly owned subsidiary of Complainant.

On June 8, 2010, Respondent filed a Response to the arguments in Complainant's Reply.Although the Policy makes no express provision for Supplemental Filings by either party,except in response to a deficiency notification or if requested by the Center or the Panel,the Panel in its discretion has considered the Supplemental Filings from both parties inthis case.

4. Factual Background

Complainant is a provider of financial services, including equity research, equities andderivatives trading, commodities trading, portfolio management services, mutual funds,life insurance, fixed deposits, goi bonds and other small savings instruments to loan

products and investment banking.

Complainant is the owner of the following Indian trademark registration for a logo designthat includes the letters IIFL:

Registration No. 1639738, registered on January 9, 2008, for use in connection withinvestment banking, institutional equities and wealth management.

Complainant owns the domain names: <iifl.in>, <iiflcap.com>, <iifw.com>, which itasserts that it has used since 2007. As evidence of use of the mark IIFL, Complainantsubmitted one undated page from www.bloomberg.com referencing “IIFL: IN IndiaInfoline Ltd,” two pages from “www.reuters.com” printed April 8, 2010, referencing“India Infoline Limited (IIFL.BO),” one advertisement stating “India Infoline is the best

broker in India, Says FinanceAsia Country Awards (June 2007 – May 2008),” anadvertisement for Enterprising India Global Investors' Conference, February 3 rd – 5 th 2010



and an announcement for an “offering of Anant Raj Industries Ltd. February 2008”listing IIFL as “sole placement advisor.” Complainant did not submit any materialsevidencing its use of the mark IIFL prior to 2007.

The disputed domain name was registered on July 28, 2003. Respondent acquired the

domain name in September 2007.

5. Parties' Contentions

A. Complainant

Complainant contends that the disputed domain name is confusingly similar to theComplainant's IIFL service mark, that Respondent's business cannot be consideredlegitimate and that Respondent is trying to exploit the goodwill associated with theComplainant's mark. Complainant further contends that Respondent is a career cybersquatter who is the registered owner of more than 1,400 domains. Complainant

further contends that, even if Respondent did not have Complainant in mind when he firstregistered the disputed domain name, Respondent's current and recent use of the disputeddomain name to advertise financial services indicates bad faith registration of thedisputed domain name.

B. Respondent

Respondent contends that Complainant's trademark registration is for a complexgeometric pattern of triangles adjacent to a reverse-color image of the letters IIFL in serif font, that Complainant only recently adopted the brand IIFL in 2009 and did not submitany evidence that it had developed rights in the mark IIFL prior to 2007. Respondent

submitted a page from Complainant's website at “www.indiainfoline.com” displaying anannouncement dated March 16, 2010 with the heading “India Infoline group's brandidentity now is IIFL.” The announcement states, in pertinent part:

“To cut a long story short we have shortened our name to IIFL. Short is great. But as far as the quality of our customer service, research and compliance is concerned, it willremain great as ever. So the next time you see IIFL, please remember that it is your ownIndia Infoline. While we have shorted our brand name to IIFL, the company's name willremain India Infoline. . . .”

Respondent also submitted a screen capture of a television advertisement published on

Complainant's website at “http://www.indiainfoline.com/Videos/Promo-Videos/IIFL-Rebranding-TVC/40020442”, which Complainant began running in April 2010 stating“India Infoline group's brand identity is now” followed by the registered IIFL logo.

Respondent contends that he acquired the disputed domain name in 2007 upon theexpiration of a prior registration for the same domain name that was originally registeredin 2002. Respondent further contends that his practice of registering domain names is notan illegitimate activity and that at the time the disputed domain name was registered it



did not correspond to any known trade or service mark used or registered byComplainant. Respondent contends that he is a Canadian resident and was unaware of Complainant's services in India. Since becoming aware of Complainant's claim,Respondent has taken the disputed domain name out of automated status and directed the

pay-per-click system not to provide financial links. Accordingly, Respondent contends

that the disputed domain name has not been registered or used in bad faith.

Furthermore, Respondent submitted an email from a “Harshad Apte” that he received onSeptember 14, 2007, just after he registered the domain name. Mr. Apte stated

“I am Harshad from Bombay, India.

As part of our final project in Commerce graduation studies we have to

create websites for our projects.

Our project is on Innovations in Freelancing landscape for which we

wanted the domain www.iifl.com”

I understand that you own the domain.

I want to find out if you would be willing to sell the particular domain.”

Respondent did not reply to this email because he was not interested in selling thedisputed domain name. During the course of responding to the Complaint, Respondentdiscovered that Harshad Apte is an officer of Complainant (as listed in a June 2009 press

release attached as an exhibit). Thus, the evidence appears to indicate that Complainanthas been aware of Respondent's domain name since he first acquired it in September 2007.

6. Discussion and Findings

A. Identical or Confusingly Similar

Complainant's registered trademark is for a design mark that includes the letters IIFLaccompanied by a design. The registration is effective from January 9, 2008. Thedisputed domain name incorporates the designation IIFL, the dominant portion of

Complainant's registered mark, in its entirety.

Accordingly, the Panel finds that the disputed domain name is confusingly similar to atrademark in which the Complainant has rights.

B. Rights or Legitimate Interests



Complainant contends that Respondent is a “career cybersquatter” because he hasregistered 1400 domain names. Respondent admits that he registers domain names for speculative purposes and associates such domain names with a pay-per-click revenuesystem. Respondent contends, however, that registering domain names is not anillegitimate activity unless there is evidence of abusive bad faith registration for the

purpose of profiting from the service marks or trademarks of others.

Complainant does not identify any domain names owned by Respondent that have beenfound to be registered or used in bad faith.

The WHOIS records indicate that the disputed domain name was first registered in 2003,and Respondent acknowledges that he acquired the registration in September 2007.

Complainant did not submit any evidence of use of the IIFL trademark prior to 2007, andonly very minimal evidence of use since that date, most of which are recent stock quotations by third parties using “IIFL: IN” and “IIFL.BO” as stock ticker symbols. Such

use is not demonstrative of Complainant's use of those terms as a trade or service mark.The Medicis Pharmaceutical Corporation v. MRX Technologies, Inc., and Neil Gerardo,WIPO Case No. D2002-0462 ; Staten Island Bancorp, Inc. and SIB MortgageCorporation v. Ifg Inc. , WIPO Case No. D2003-0384 .

There is no evidence that, at the time the disputed domain name was acquired byRespondent, Complainant was using the designation IIFL as a trademark or servicemark.Rather, the record indicates that Complainant only recently re-branded itself as IIFL andinvested significant advertising expenditures in that rebranding effort in 2009 and 2010.

Without evidence of bad faith, registering domain names is not an illegitimate activity

under the Policy. GLB Servicos Interativos S.A. v. Ultimate Search Inc. (aka Ult. Search Inc.), WIPO Case No. D2002-0189 ; Dial-aMattress Operating Corp. v. Ultimate Search ,WIPO Case No. D2000-0764 . Although the current use of the disputed domain name(discussed further below) has given the Panel pause for thought with respect to assessingwhether Respondent could be said to have present rights or legitimate interests in thedisputed domain name, it is ultimately unnecessary for the Panel to enter a finding under the second element of the Policy, in light of its finding below under the third element.

C. Registered and Used in Bad Faith

1. Registration in Bad Faith

When a domain name is registered before a trademark right is established, the registrationof the domain name is not normally considered to have been in bad faith because theregistrant could not have contemplated the complainant's non-existent right. John Odedba ODE and ODE – Optimum Digital Enterprises v. Intership Limited , WIPO Case No.D2001-0074 ; Digital Vision, Ltd. v. Advanced Chemill Systems , WIPO Case No. D2001-0827 ; PrintforBusiness B.V. v. LBS Horticulture, WIPO Case No. D2001-1182 .

http://www.wipo.int/amc/en/domains/decisions/html/2002/d2002-0462.html
























In this case, the evidence indicates that Respondent acquired the disputed domain namein September 2007 prior to Complainant establishing unregistered, common lawtrademark rights in the mark IIFL. Although abbreviations of a trademark may in certaincircumstances acquire trademark protection (see, e.g., Research In Motion Limited v.

Privacy Protect.org/berry store, hery santosa , WIPO Case No. D2009-0469 ),

Complainant has failed to submit sufficient evidence to establish that it had acquiredrights to the mark IIFL as an abbreviation of its trademark when Respondent acquired thedisputed domain name in 2007. Indeed, the evidence submitted indicates thatComplainant only recently focused its advertising efforts on “re-branding” itself under the mark IIFL. There is no evidence in the record from which the Panel could reasonablyinfer that Complainant's trademark was known to or anticipated by Respondent at thetime he registered the disputed domain name.

The cases on which Complainant relies for a finding of bad faith registration, such asCity Views Limited v. Moniker Privacy Services / Xander, Jeduyu, ALGEBRALIVE ,WIPO Case No. D2009-0643 and Octogen Pharmacal Company, Inc. v. Domains By

Proxy, Inc. / Rich Sanders and Octogen e-Solutions , WIPO Case No. D2009-0786 , havenot been generally accepted by panelists within UDRP jurisprudence. See EastmanSporto Group LLC v. Jim and Kenny , WIPO Case No. D2009-1688 ; Validas, LLC v.SMVS Consultancy Private Limited , WIPO Case No. D2009-1413 ; Camon S.p.A. v.

Intelli-Pet , LLC, WIPO Case No. D2009-1716 ; and Tata Communications International Pte Ltd (f/k/a VSNL International Pte Ltd) v. Portmedia Inc. / TRUEROOTS.COM c/o Nameview Inc. Whois , WIPO Case No. D2010-0217 .

Therefore, the Panel finds that Complainant has failed to establish that Respondentregistered the disputed domain name in bad faith.

2. Use In Bad FaithRespondent was aware that the disputed domain name was linked to websites providingfinancial services. Respondent asserts that, since he became aware of Complainant'sclaim, he has taken the disputed domain name out of automated status and directed the

pay-per-click system not to provide financial links. Respondent admits, however, that hedoes not rely on his post dispute actions to absolve him from a finding of bad faith use.

Under the Domain Name Registration Agreement, the Registrant has a continuing duty toensure that the domain name is not used in violation of third party trademark rights.Paragraph 12 of the Registration Agreement provides: “To the best of your knowledgeand belief neither the registration of your domain name or the manner in which youintend to use the domain name will directly or indirectly infringe, or conflict with thelegal rights of a third party including their intellectual property rights.”

The use of automated systems or allowing the registrar to place links on the websitelocated at the domain name does not absolve the Respondent from a finding of bad faithuse. See e.g., Villeroy & Boch AG v. Mario Pingerna , WIPO Case No. D2007-1912 .





















Respondent is in contractual control of the disputed domain name and its website andtherefore is responsible for the links placed on that website.

The Panel finds that Respondent's failure to abide by his continuing duty to ensure thatthe disputed domain name is not used in violation of third party intellectual property

rights constitutes bad faith use.

The Panel finds, however, that Complainant has failed to establish that Respondentregistered the disputed domain name in bad faith.

7. Decision

For all the foregoing reasons, the Complaint is denied.

Lynda J. Zadra-Symes

Presiding Panelist

Harini NarayanswamyPanelist

Alan L. LimburyPanelist

Dated: June 16, 2010

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INDIAN CASES WIPO