gTLDs (.com, .net, .org, etc) are subject to Domain Name proceedings under UDRP before WIPO, while for .IN Domain Names, it is INDRP by .IN Registry / NIXI, based in New Delhi. The proceedings wre brought by IT Web Capital Limited before NIXI through us (Cylaw Solutions / DomainLawyer).
The Complainant submitted that it is one of the world’s leading hosting services provider engaged in providing website and cloud hosting services across the globe including India and Germany. These products/services have been sold under the mark “SITEGROUND” for the last 15 years, which includes Website Hosting, WordPress Hosting, Cloud Hosting, Reseller Hosting and so on.
IT WEB CAPITAL LTD (hereinafter referred to as Complainant) is the registered proprietor of trademark “SITEGROUND” in various jurisdictions and top-level domain name Siteground.com. It has been using it in connection with its on-going business. The Complainant considers their trade/service name/mark an important and extremely valuable asset and thus in order to protect the same, have secured trademark registrations for the mark “SITEGROUND” in India as well as globally.
The registration and the use of the confusingly similar disputed domain is a direct infringement of the legitimate rights held by the Complainant in the mark “SITEGROUND”. When it already owned and operates on gTLDs and ccTLDs as well – Siteground.com, Siteground.net on 22 March 2004; Siteground.org on 7 July 2004 Siteground.uk on 12 June 2014; Siteground.co.uk on 06 Aug 2009; Siteground.de on 29 January 2015; Siteground.es on 11 November 2014; Siteground.it on 02 January 2015; Siteground.us on 06 March 2005; Siteground.bg on 09 April 2008 and so on.
Moreover, Complainant always had common rights in the mark as well, having been openly, continuously and extensively used since 2004. By virtue of long and extensive use and promotion, the “SITEGROUND” trademark has become well-known mark. The Complainant has painstakingly built up a good reputation worldwide and has invested substantial amounts of resources in advertising its products under the trademark “SITEGROUND” in various international publications, internet resources, other print, and visual media and also through fairs, exhibitions and events.
The Complainant submitted that the:
a) Respondent has no connection with the Complainant or any company licensed by the Complainant;
b) Respondent is not commonly known by the disputed domain name or the trademark;
c) Respondent was not and is not authorized by Complainant to register, hold or use the disputed domain name.
Further, Complainant alleged that the disputed domain name “SITEGROUND.IN” at present has been parked by the Respondent to display PPC links of competing Hosting companies like HostGator.in, AWS.Amazon.com, IN.Godaddy.com/Web/Hosting, GSuite.Google.com/Sites, and ServDiscount.com. That there is a likelihood that an actual or potential visitors to the web page of the Disputed Domain Name will be induced to believe that the Complainant has licenced trademarks to the Respondent or has authorized the Respondent registered the disputed domain name or the Respondent has some connection with the Complainant in terms of a direct nexus or affiliation with the Complainant or has been authorized by the Complainant, which indicates bad faith and no legitimate purpose on behalf of the Respondent can be proved.
The Respondent, being well aware of the Complainant’s business and practice of securing country-code domain names, has specifically held on to the registration of the said domain name with a view to putting the complainants through unnecessary losses and harassment. That any use of the impugned domain name by the Respondent would necessarily be in bad faith.
That during these INDRP proceedings, as soon as NIXI issued notice as to the appointment of Hon’ble Arbitrator in the matter on 11 July 2019. Respondent emailed back the next day talking about his ability to catch the domain name faster as he is a Domain Businessman and asked for money by stating that this domain is not cheap and registration fees are not enough, as follows:
“Dear Good morning, I hope this message finds you well 😉
I’m writing to you regarding a few doubts :
1. why you think the contents on my website is threats to your clients ? all of the contents are from google.com, I do not think that’s theats.
2. As i know, this domain is already exited for many years.why you did nothing in the past years if you think this domain is a theat ?
3. And I think you should catch this domain fatser than me if you really care about this domain, not email me after i cacthed it.
4.I do not want to do anything illegal.
5.I’m a domain businessman, so if you are interested in this domain, I can give you a kind price , please feel free to contact with me.
In fact, I have partnerships with many domain negotiators, because we know further legal action cost a lot of money.
And I am very glad to give you a nice offer, but this domain is not cheap one, registration fees is not enough. it also cost me a lot of money to use catch service to get this domain. only few domains can be sold successful.
Looking forward to your Collaboration and have a nice day
That is, firstly it proves knowledge on behalf of the Respondent of the complaints mark and moreover, the clear intention of Respondent is to make money from the sale of the domain in excess of the out of pocket expenses and proves that reason for holding the Domain Name by the Respondent is not legitimate.
Decision: The Tribunal has examined each and every one of the Complainant’s contentions but has considered it unnecessary to express a view on each of them. Bearing in mind all the evidence before it, the Tribunal is of the view that the email of 11 of July 2019 from the Respondent is clear evidence that the domain is not useful to the Respondent but is instead an example of cyber-squatting and bad faith within the meaning of paragraph 6 of the INDRP Policy. The rights of the Complainant in the name are undisputed.
In the Tribunal’s view, this is a case in which the registration in the name of the Respondent should be canceled forthwith. The Domain name should be transferred to the Complainant. Costs follow the outcome. The Respondent is ordered to pay the cost of the proceedings at rupees fifty thousand only.
Read the Complete decision at: https://www.indrp.com/indrp-1124-disputed-domain-name-decision-siteground-in-transfer
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