Decisión del Panel Administrativo nº D2014-0954 of WIPO Arbitration and Mediation Center, August 18, 2014 (case Puravankara Projects Limited v. Shiva Malhotra)
| Resolution Date | August 18, 2014 |
| Issuing Organization | WIPO Arbitration and Mediation Center |
| Decision | Transfer with dissenting opinion |
| Dominio | Generic Domains |
Complainant is Puravankara Projects Limited of Kamataka, India, represented by K & S Partners, India.
Respondent is Shiva Malhotra of Wollstonecraft, New South Wales, Australia, self-represented.
The disputed domain name [purva.com] is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 4, 2014. On June 5, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, the Registrar transmitted by email to the Center its verification response confirming Respondent as the registrant and providing contact details. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amendment to the Complaint on June 20, 2014.
The Center verified that the Complaint together with the amendment 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceeding commenced on June 23, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was July 13, 2014. The Response was filed with the Center on July 13, 2014.
The Center appointed Frederick M. Abbott, Andrew F. Christie and Gérald Page as panelists in this matter on July 28, 2014. The Panel finds that it was properly constituted. Each member of 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.
The Panel takes note that by email dated June 19, 2014, the Center advised Complainant of its preliminary acceptance of its refiled Complaint, and that a determination as to whether the Complaint should be accepted and a decision rendered would be in the hands of the panel to be appointed.
The Panel observes that the Complaint filed by Complainant is against the same Respondent in regard to the same disputed domain name as a previous UDRP case, Puravankara Projects Limited v. Shiva Malhotra,[WIPO Case No. D2013-0260], decided on March 25, 2013. The Complaint in that previous proceeding was filed on February 7, 2013. Previous UDRP decisions have considered the circumstances under which refiled complaints may be accepted or rejected (see [WIPO Overview of WIPO Panel Views on Selected UDRP Questions], Second Edition (“WIPO Overview 2.0”), [para. 4.4], including reference to Creo Products Inc. v. Website In Development,[WIPO Case No. D2000-1490]). Each proposed refiling is assessed on its individual merits and in its specific context by the panel appointed to decide, as a preliminary matter, whether the refiling should be accepted.
Complainant was unsuccessful in persuading the panel who rendered the previous determination (the “previous panel”) that the disputed domain name was the subject of abusive registration and use within the meaning of the Policy. That previous panel determined that Complainant had rights in a trademark, and that the disputed domain name was identical to that trademark. That previous panel further determined that Complainant had established that Respondent lacked rights or legitimate interests in the disputed domain name.
The previous panel was not persuaded that Respondent’s registration and use of the disputed domain name constituted bad faith. The specific grounds for that determination are discussed in Section 4, infra. The concluding observation was: “The Panel has sufficient doubts as to the Respondent’s intentions to recommend that if the Respondent’s future use of the Domain Name should suggest that the Respondent’s motivation at the outset was, as the Complainant has contended, in bad faith, the Complainant should be permitted to re-file the Complaint. In so recommending the Panel recognises that whether or not a re-filed complaint is to be accepted is a matter for the Center and the panel selected to decide the case” (Puravankara Projects Limited v. Shiva Malhotra, supra) [italics added].
As detailed below in Section 4, Complainant has submitted along with its Complaint new evidence of acts post-dating the previous panel determination that Complainant alleges justify the instant refiling and a new determination against Respondent. A majority of this Panel regards that new evidence as sufficient to warrant a finding that Respondent registered and used the disputed domain name in bad faith. That alone suggests that the evidence of acts occurring after the previous determination are sufficient to justify the refiling, bearing in mind that such evidence was not available to Complainant when it filed its original complaint in the previous case. The dissenting Panelist does not share the majority’s assessment of the new evidence submitted by Complainant in the sense of warranting a finding that Respondent registered and used the disputed domain name in bad faith. Nonetheless, the dissenting Panelist considers that the express recommendation of the previous panel regarding the instant refiling should, while not dispositive, be at least taken into account when assessing whether a refiling should be accepted. Whether or not ultimately persuasive, the new evidence submitted by Complainant concerns acts that post-date the previous determination. While in the dissenting Panelist’s view this evidence weakly supports a refiling and is not persuasive as to bad faith, in light of the recommendation of the previous panel it is not sufficiently without basis to preclude acceptance of the refiling. The dissenting Panelist here accepts the refiled Complaint, but finds against Complainant on the merits.
The Panel accepts Complainant’s refiled Complaint.
The Panel adopts the Factual Background of the previous panel in so far as it relates to matters occurring prior to or contemporaneous with the filing of the complaint in that proceeding. That Factual Background is repeated here:
The Complainant is an industrial company incorporated in India in 1986 and engaged in the fields of property construction and development. It is based in Bangalore. From the financial reports and other company literature annexed to the Complaint it is apparent that the Complainant is in a substantial way of business and has a number of subsidiary or associated companies whose company names commence with the name, “Purva”.
The Complainant’s trading activity is confined largely to India. “The Company operates primarily in India and there is no other significant geographical sector.” [Paragraph 32 of the Notes to the Complainant’s Financial Statements for the year ending March 31, 2012.]
The Complainant is the registered proprietor of two Indian trade mark registrations for the word mark PURVA, namely:
No. 1182590 dated March 12, 2003 in class 19 for “building material, natural and artificial stone, cement, lime, mortar, plaster and gravel, peipes (sic) of earthenware or cement and other items used for construction purposes included in class 19”
No. 1266091 dated February 9, 2004 in class 37 for “building construction repair, installation services”.
The Complainant is also the registrant of a number of domain names comprising or incorporating the name, “purva”. However, its principal operating website appears to be connected to its domain name, [puravankara.com]. At that website details appear of the Complainant’s development projects, most of which have names incorporating the name “Purva” (e.g. “Purva Vantage”, “Purva Grande”, “Purva Riviera”). The website also features details of the Complainant’s “Purva Interiors”, “Purva Value” and Purva Advantage” services, the last of which features a Purva Advantage Card entitling the holders, owners of a “Purva Home”, to various benefits.
The Domain Name was first registered on March 28, 2000. It is not known who the original registrant was, but it appears from the Internet Archive WayBackMachine that between 2002 and April 2005 it was being used to connect to a website of the Complainant. The Respondent claims to have acquired it by way of an online auction organized by Namejet in May 2012.
On December 24, 2012 the Respondent, through his company, AsiaPacific Tec Pty. Ltd., applied to the Australian Trade Mark Registry for registration of PURVA as a trade mark in class 35 for “retailing of goods (by any means)”. The application is pending.
On January 16, 2013 the Complainant visited the Respondent’s website. The Domain Name was connected to a Pay-Per-Click (“PPC”) free parking page hosted by the Registrar featuring eleven primary advertising links. The links most obviously relating to the Complainant’s field of activity are five in number, one headed “New Projects in Bangalore”, one headed “Architects in Bangalore” and three links associated with home/interior decoration and design. In addition, there is another Bangalore-related link headed “Packaging Boxes Bangalore”. The five remaining links are one headed “Tooth Jewelry”, one headed “Novelty Gift Items”, another, meaningless to the Panel, appearing in Chinese script and two relating to domain name services, one being a link to the Registrar’s “Official Site”. Further visits to the Respondent’s website were made by the Complainant on January 25, 2013 and January 28, 2013 as described in section 6E below.
As noted in the discussion of refiling, the previous panel determined that Complainant owns rights in...
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