BODHISATVA ACHARAYA
LL.M
A R B I T R A T O R
Appointed by the .IN Registry-National Internet Exchange of India.
In the matter of: -
Vodafone group Pic
Vodafone House
The connection
Newbury
RG14 2FN,England.
Through
It's authorized Representatives: -
Gunjan P a h a r i a
Managing Partner
ZeusIP, Advocates,
Tel. + 1 1 4182 4 3 3 1 , Fax: +11 4182 4334
E-mail- g p a h a r i a @ Z e u s i p . c o m
And
Mel Jones
Solicitor,
V o d a f o n e G r o u p Services L i m i t e d , E n g l a n d .
Tel +44 7825 4 5 2 8 5 3 , Fax-+44 1635 580857
E-mail - mel.jones@vodafone.com Complainant.
Versus
Rohit Bansal
29,Carlyle Avenue
Southall
UB1 2LN
England.
T e l : + 4 4 7 8 1 3 9 8 7 7 3 0 , fax + 4 4 7 8 1 3 9 8 7 7 3 0
E-mail: rohit8282@yahoo.co.uk .Respondent
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1. The Parties:
The Complainant is Vodafone Group Plc, ("Complainant") Vodafone House. The Connection, Newbury,
RG14 2FN England., Represented by Ms. Gunjan Paherai, Managing Partner, ZeusIP, Advocates and also
represented by Mel Jones Soliciter,Vodafone Group Services limited.
The Respondent is Rohit Bansal ("Respondent") with an address. 29,Carlyle Avenue, Southall, UBI
2LN,England & E-mail: rohit8282@yahoo.co.uk
2. The Domain Name, Registrar & Registrant:-
The disputed Domain Name vodafone.co.in is registered with Direct Information Pvt.Ltd., Dba Public
Domain Registry.com ("The Registrar") and the registrant is Rohit Bansal ("Respondent").
3. Procedural History-
The Complaint was filed to the .IN Registry, following the Clause 4 of the policy and rules of .IN
Registry and .IN Registry appointed "BODHISATVA ACHARAYA" ("The Arbitrator") as
sole Arbitrator under Clause 5 of its Policy. The Arbitrator submitted his statement of acceptance and
Declaration of Impartiality and Independence then the complaint was produced before "The Arbitrator" on
19th Oct.2007."
A notice was issued to the Respondent on 19 Oct.2007 in his e-mail address with a deadline of 7 days to
submit his reply but due to a clerical mistake in the e-mail address of the respondent it was not severed
because the e-mail address of Respondent was typewrote as r o h i t 8 2 8 2 @ y a h o o . c o m instead of rohit8282@yahoo.co.in.
rd
Once again the same Notice was sent to Respondent on 3 Nov.2007 on his correct e-mail address at rohit8282@yahoo.co.uk w
Respondent did not file any reply regarding the complaint.
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At last final notice w a s sent to the R e s p o n d e n t on 6 / 1 2 / 2 0 0 7 t h r o u g h e-mail with a deadline of 5 days to reply
regarding the complaint then on 9 . 1 2 . 2 0 0 7 Arbitrator received an e-mail from R e s p o n d e n t mentioning that " h e
h a d n o p r o b l e m t o transfer this website o n p a y m e n t o f r e a s o n a b l e a m o u n t from C o m p l a i n a n t a n d h e
further said t h a t h e will transfer the o w n e r s h i p o f t h e website i f t h e C o m p l a i n a n t w i t h d r a w t h e
c o m p l a i n t a n d f o r this p u r p o s e h e w a s seeking m o r e time t o receive t h e reply o f c o m p l a i n a n t . "
A l o n g w i t h this e-mail, Arbitrator received an e-mail from the o n e representative M e l Jones, Solicitor of
C o m p l a i n a n t mentioning that the Complainant h a s given m a n y opportunities to transfer the D o m a i n N a m e and
n o w he see no reason to delay in the Arbitrator's decision.
H e n c e the Arbitrator has issued t h e Decision after crossing the deadline on 1 1 / 1 2 / 2 0 0 7 that w a s given to the
R e s p o n d e n t in t h e last e-mail on 9 / 1 2 / 2 0 0 7 by the Arbitrator.
4. Factual Background:
(a) T h e Complainant, Vodafone, founded in 1982, is the leading m o b i l e telecommunications c o m p a n y in
the w o r l d a n d it is operating various companies u n d e r the Trade m a r k of Vodafone in 68 countries
w o r l d w i d e a n d h a d 2 0 0 million subscribers worldwide too.
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(b) On 8 m a y 2 0 0 7 ; t h e Complainant announced the completion of its acquisition of Hutchinson
Essar. Limited (Hutch) the leading mobile telecommunications network in India a n d it will lead to the
adoption of the C o m p l a i n a n t ' s branding (including use of its trade marks) by H u t c h in India.
(c) T h e Complainant is t h e owner of over 6 0 0 trademarks registration featuring. V O D A F O N E , alone or in
connection with other w o r d s and/or designs through out the world.
(d) In India the trademark " V O D A F O N E " registered in the n a m e of C o m p l a i n a n t in class 9 u n d e r the
T r a d e m a r k N o . - 1 0 3 1 2 1 0 6 on 30th July 2 0 0 1 , in respect of all the g o o d s , which is mentioned in the
certificate of Registration of T r a d e Mark.
(e) In India again the t r a d e m a r k , " V O D A F O N E " had b e e n registered in the n a m e of Complainant in,
Class 3 8 u n d e r the T r a d e M a r k N o . - 1 2 4 7 7 4 1 o n 4 t h N o v e m b e r 2 0 0 3 i n respect o f all the goods
which are mentioned in the certificate of Registration of Trade Mark.
The Complainant submitted both the aforementioned Trade M a r k Certificate with the Complaint.
(f) C o m p l a i n a n t ' s n a m e . " V O D A F O N E " and its other trademarks are well k n o w n through out the
w o r l d and a n u m b e r of d o m a i n n a m e s h a s b e e n registered w i t h the Complainant and it s h o w s
the w o r d " V O D A F O N E " as "Vodafone.com.", "vodafone.co.uk" and "vodafone.in." and the
Complainant h a s had totake. steps to prevent the unauthorized uses of its trademark in d o m a i n
names. Page-3
(g) T h e Complainant submitted the copies of the Decisions of the various eases, decided by
W I P O , for the d o m a i n n a m e s related to the trademark V O D A F O N E .
t h
(h) T h e R e s p o n d e n t registered the d o m a i n n a m e vodafone.co.in o n 2 5 M a y 2 0 0 6 .
(i)After h a v i n g the k n o w l e d g e regarding the registration of the d o m a i n n a m e , the complainant contacted the
respondent by e-mail with a request to transfer the d o m a i n n a m e to the complainant in exchange for
r e i m b u r s e m e n t of R e s p o n d e n t ' s reasonable registration costs.
(j) T h e R e s p o n d e n t replied through his various e-mails that he w o u l d transfer the d o m a i n n a m e in exchange
for reimbursement of his costs w o r t h £ 4 5 0 0 against his expenses on maintaining t h e website.
st
(k) On 2 1 F e b r u a r y , 2 0 0 7 the complainant replied by his e-mail that the requested amount w a s not a
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reasonable amount then again 2 7 February, 2 0 0 7 . t h e Respondent replied that h e had spent around
£ 6 0 0 0 o n the website a n d h e also mentioned that " t h e a m o u n t o f m o n e y b o t h o f u s a r e g o i n g t o w a s t e
in t h e legal p r o c e d u r e s . "
5. Parties Contentions:
(i) Complainant
C o m p l a i n a n t c o n t e n d s that-
• T h e R e s p o n d e n t ' s domain n a m e is identical a n d confusingly similar to a n a m e , trademark or
service m a r k in which the complainant has rights;
• T h e R e s p o n d e n t has no rights or legitimate interests in respect of d o m a i n n a m e ;
• T h e R e s p o n d e n t ' s domain n a m e h a s been registered or is b e i n g used in bad faith; and
• T h e domain n a m e be transferred to t h e complainant.
(ii) Respondent-
R e s p o n d e n t has not submitted any p r o p e r response h o w e v e r various deadlines were given to h i m
to file his reply at last he had replied to the Arbitrator that he wants m o r e time to discuss the
a m o u n t of reimbursement with the complainant b u t no m o r e time w a s granted to h i m after
11/12/2007.
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6. Discussion & F i n d i n g s ; -
U n d e r the Paragraph 4 of t h e Policy ( I N D R P ) it is stated, any p e r s o n w h o considers that a registered
domain n a m e conflicts with his legitimate rights or interests then he may file a complaint to t h e
. I N R e g i s t r y and the complainant m u s t p r o v e the following premises:
(i) T h e R e s p o n d e n t ' s d o m a i n n a m e is identical or confusingly similar to a n a m e , trademark or
service m a r k in w h i c h complainant has rights;
(ii)The R e s p o n d e n t h a s no rights or legitimate interests in respect of the d o m a i n n a m e ; and
(iii)The R e s p o n d e n t ' s domain n a m e has b e e n registered or is being u s e d with b a d faith.
IPENTICAL OR CONFUSINGLY SIMILAR DOMAIN N A M E TO A N A M E , TRADE
M A R K OR SERVICE MARK IN WHICH THE COMPLAINANT HAS RIGHTS: POLICY
4(i): -
T h e disputed domain n a m e is vodafone.co.in. T h e C o m p l a i n a n t is the holder and the owner of the
registered Trade M a r k " V O D A F O N E " a n d the C o m p l a i n a n t submitted two certificates of
Registration of T r a d e M a r k issued by the Registrar of the Trademark on behalf of G o v t . of India
and the complainant h a s provided statements to support the conjecture 1hat the disputed d o m a i n
n a m e a n d the n a m e , trademark and service mark of the complainant are confusingly similar on the
other h a n d the respondent has n o t filed any reply for the same.
Therefore the Arbitrator agrees with the Complainant that t h e m a r k V O D A F O N E is key w o r d for
its Trade N a m e and Trade M a r k in doing business in the m o b i l e Telecommunication service
t h r o u g h o u t the w o r d and it is also p r o v e d by the Complainant that the d i s p u t e d n a m e is only to
m a k e a confusion to the c o n s u m e r s while the Complainant has rights with the Trade M a r k and
D i s p u t e d name.
H e n c e t h e C o m p l a i n a n t h a s established the element (i) of the p a r a g r a p h 4 of Policy.
R E P O N D E N T ' S R I G H T S . O R L E G I T I M A T E I N T E R E S T S I N D O M A I N N A M E : P O L I C Y - 4 (ii):
As p e r the records p r o d u c e d by the complainant before the A r b i t r a t o r , it is clear that the
R e s p o n d e n t has neither b e e n affiliated n o r authorized by the complainant to use any m a r k
including the w o r d V O D A F O N E . M o r e o v e r 'the R e s p o n d e n t h a s not supplied any material
evidence to p r o v e his rights or Legitimate interests in the dispute d o m a i n name.
H e n c e the arbitrator finds that t h e complainant satisfies the element (ii) of the P a r a g r a p h 4 of the
Policy.
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THE RESPONDENT'S DOMAIN NAME REGISTERED OR USED IN BAD FAITH: POLICY -4 (iii):-
Lastly the Arbitrator has to contemplate the point that the domain name has been registered and is being used in
bad faith by the Respondent. It is clear from the facts and the records, produced by trie Complainant, that the
Complainant's trademark "VODAFONE" is well known to the whole world and the Respondent was fully aware
not only Complainant's Trade Mark importance but also fully aware about the registration of the Complainant's
trade mark in India because the real story was fabricated after the registration of the Complainant's trade mark
herein India.
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Upon becoming aware of the Domain Name registration to the Respondent, on, 12 February 2007, the
th
Complainant contacted to the Respondent by e-mails. On 20 February, 2007 in his reply to the Complainant, the
th
Respondent demanded a sum of £4500 on behalf of his expenses and in the e-mail sent by the Respondent on 27
February 2007 the Respondent had increased the amount up to £6000. In addition to this, when the last notice was
sent to Respondent by the Arbitrator, Respondent replied that," A discussion is going on in between Respondent
and Complainant to decide the money in transferring the domain name." It is also an important point to
contemplate that the Respondent has not filed any sufficient and appropriate answer why lie registered the domain
name identical to the Complainant's Trademarks.
Now It is the view of the Arbitrator that the disputed Domain Name has been registered intentionally only for the
sole purpose of selling it to Complainant and only for making money from the Complainant. These
circumstances have established the element (i) of paragraph 6 of the policy. Thus the Arbitrator finds that
the Respondent's performance was ab initio in bad faith.
Hence the Complainant has established the element (iii) of paragraph 4 of the policy.
7- D e c i s i o n
In the light of the circumstances and facts discussed above, Arbitrator decides," The Disputed Domain Name is
identical and confusingly similar to the registered trademark of Complainant in which the Complainants has rights
and the Respondent has no right or legitimate interests in respect of the Domain Nams and the Respondent's
Domain Name has been registered or is being used in bad faith."
Consequently the Arbitrator decides that the Domain Name "vodafone.co.in" shall be transferred to the
Complainant.