Bennett, Coleman & Co. Ltd. v Domain Administrator, Times Media Limited

WIPO Case No. D2025-0145

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Bennett, Coleman & Co. Ltd. v. Domain Administrator, Times Media Limited

Case No. D2025-0145

1. The Parties

The Complainant is Bennett, Coleman & Co. Ltd., India, represented by Inttl Advocare, India.

The Respondent is Domain Administrator, Times Media Limited, United Kingdom (“UK”), represented by

Taylor Wessing LLP, UK.

2. The Domain Name and Registrar

The disputed domain name <timesnow.com> (the “Disputed Domain Name”) is registered with MarkMonitor

Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 15, 2025. connection with the Disputed Domain Name. On January 21, 2025, 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.

The Center verified that the 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 January 22, 2025. In accordance with the Rules, paragraph
5, the due date for Response was February 11, 2025. The Response was filed with the Center on February
11, 2025.

The Center appointed Flip Jan Claude Petillion, Matthew Kennedy, and Debrett G. Lyons as panelists in this matter on April 3, 2025. 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.

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4. Factual Background

The Complainant, Bennett, Coleman & Co. Ltd., is a media, entertainment, and communication company based in India. It publishes a newspaper that has been titled “The Times of India” since 1838. A subsidiary of the Complainant operates an English-language news channel named “Times Now” which, according to information submitted by the Respondent, was launched in 2005.

The Complainant is the owner of various registered trademarks, including: 

-	TIMES, word mark registered in India under No. 573824 on May 22, 1992 in class 9;
-	TIMES NOW, word mark registered in India under No. 1306893 on September 3, 2004 in class 9;
-	NOW, word mark registered in India under No. 1716887 on July 31, 2008 in class 35; and
-	TIMES NOW, UK word mark registered under No. UK00003145599 on June 17, 2016 in classes 38
and 41.

The Complainant also appears to operate a website linked to the domain name <timesnownews.com>. The Complainant also operates social media accounts named “Times Now”. Its account on X (Twitter) has over 10 million followers and its Facebook page has over 7 million followers.

The Respondent, Times Media Limited, is a media company based in the United Kingdom. The Respondent
and its predecessors have produced a newspaper under the name “The Times” since 1788. The

Respondent is the owner of various registered trademarks, including:

-	THE TIMES, UK word mark registered under No. UK00000987867 on February 23, 1972 in classes 9
and 16;
-	TIMES, word mark registered in India under No. 305423 on May 14, 1975 in class 9.

The Respondent registered the Disputed Domain Name on August 1, 2001. The Disputed Domain Name appears to be inactive.

On September 5, 2024, the Complainant sent a cease and desist letter to the Respondent, who apparently did not respond.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer

of the Disputed Domain Name.    

Notably, the Complainant contends that the Disputed Domain Name is identical to a trademark in which it

claims to have rights. 

The Complainant further claims that the Respondent has no rights or legitimate interests in respect of the

Disputed Domain Name.  In summary, the Complainant contends that:

- It is evident from the inactivity of the website that the Respondent has no legitimate interests in the

Disputed Domain Name. The Respondent’s intention is solely to attract commercial gains by exploiting the goodwill of the Complainant. The Respondent has neither used nor prepared to use the Disputed Domain Name;

- the Respondent has no legitimate interest in using the Complainant’s TIMES NOW mark;

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- the Respondent is neither commonly known by the Disputed Domain Name (as an individual,

business, or organization) nor has the Respondent acquired any trademark or service mark rights pertaining

to it; and

- the Respondent does not have any affiliation with the Complainant in any capacity.

Finally, the Complainant claims that the Disputed Domain Name was registered and is being used in bad
faith.  According to the Complainant: 

- the Respondent primarily aims to traffic the Disputed Domain Name, the proprietary and legitimate legal rights wherein vest with the Complainant alone;

- the Respondent has registered and continues to keep the Disputed Domain Name registered primarily

for the purpose of interfering with and disrupting the business of the Complainant. The inactiveness of the prejudicially affect the business activities of the Complainant;

- the mere act of registration by the Respondent of the Disputed Domain Name containing the entire trademark of the Complainant in itself constitutes passing off and thus, prima facie shows that it has been registered in bad faith;

- the Respondent did not reply to the Complainant’s cease & desist letter. This indicates the mala fide

intention of the Respondent to retain the Disputed Domain Name without any legitimate and/or bona fide
intention to use and with the ulterior motive of extorting money from the Complainant;

- the Respondent could transfer or sell the Disputed Domain Name to some competing interest of the Complainant who may further develop the website at the Disputed Domain Name and damage the goodwill and reputation of the Complainant.

B. Respondent

The Respondent contends that the Disputed Domain Name will not be confused with the Complainant’s trademarks as the TIMES mark has long been associated as the distinctive part of the trademarks registered and used by the Respondent.

According to the Respondent, the Complainant, who has the burden of proof, failed to show why the Respondent should be considered as having no rights or legitimate interests in respect of the Disputed Domain Name. The Respondent has a clear and legitimate vested interest in its TIMES brand, which has been present in the UK since at least 1788, well before the inception of the Complainant’s group. As this is the only distinctive element in the Disputed Domain Name, the Respondent has rights and/or legitimate interests in respect of it.

The Respondent further claims it has not registered and used the Disputed Domain Name in bad faith as, according to the Respondent:

- the Complainant has not furnished evidence, for example, of the Respondent seeking to sell the

Disputed Domain Name to the Complainant or any competing interest of the Complainant. On the contrary,
the Respondent’s internal records indicate that the Complainant in or around May 2017 communicated to the

Respondent an interest in owning the Disputed Domain Name;

- the Respondent has a bona fide interest in TIMES-formative marks and in the Disputed Domain

Name, which is formed of the word “times” and the descriptive and non-distinctive word “now”;

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- the Complainant does not show use of its TIMES NOW mark at the time of registration of the Disputed

Domain Name. Given the Respondent’s longstanding and reputable TIMES brand and TIMES-formative sub-brands, there is a clear commercial rationale to owning the Disputed Domain Name that is centred on the Respondent’s own commercial activities, and not those of the Complainant.

Finally, the Respondent claims that the Complaint was filed in bad faith, and it constitutes an abuse of the administrative proceeding. The Respondent claims that the Complainant is well aware of the Respondent and must have known that the Respondent was not a cybersquatter. According to the Respondent, the

Complainant filed a Complaint alleging bad faith despite being alerted to the fact that registration of the Disputed Domain Name pre-existed the date of filing of the Complainant’s trademarks for the TIMES NOW brand. Therefore, the Complainant filed a Complaint that it knew (or ought to have known) could not succeed.

6. Discussion and Findings

Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules, and any rules and principles of law that

it deems applicable. 

The onus is on the Complainant to make out his case and it is apparent, both from the terms of the Policy 

and the decisions of past UDRP panels, that the Complainant must show that all three elements set out in 

paragraph 4(a) of the Policy have been established before any order can be made to transfer the Disputed 

Domain Name. As the UDRP proceedings are administrative, the standard of proof is the balance of 

probabilities. 

Thus, for the Complainant to succeed it must prove, within the meaning of paragraph 4(a) of the Policy, that: 

(i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the 

Complainant has rights;  

(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and 

(iii) the Disputed Domain Name has been registered and is being used in bad faith. 

The Panel will therefore deal with each of these requirements. 

A. Identical or Confusingly Similar

To prove this element, the Complainant must first establish that there is a trademark or service mark in which it has rights. The Complainant has established that there are trademarks in which it has rights. The Complainant’s TIMES NOW trademarks have been registered and used in several countries in connection to the Complainant’s media activities.

WIPO Overview 3.0”), section 1.11.1.

The Panel observes that the Disputed Domain Name incorporates the entirety of the Complainant’s TIMES disregarded when considering whether the Disputed Domain Name is confusingly similar to a trademark in which the Complainant has rights. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“

In light of the above, the Panel finds that the Disputed Domain Name is identical to a trademark in which the
Complainant has rights. The Complainant has established the first requirement under the Policy.

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B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. 

As established by previous UDRP panels, it is sufficient for the Complainant to make a prima facie showing that the Respondent has no rights or legitimate interests in the Disputed Domain Name in order to place the burden of production on the Respondent. WIPO Overview 3.0, section 2.1.

However, in this case, the Panel finds that the Complainant failed to make such a prima facie showing. In the Panel’s view, the Complainant knew of the Respondent’s prior rights in the TIMES and THE TIMES marks. According to the Respondent’s uncontested evidence, both parties had dealings in various forms prior to the present proceedings:

- between 2000 and 2010, the Complainant licensed content from the Respondent for publication in the Complainant’s newspapers;

- the Respondent invoked THE TIMES trademarks in oppositions against trademark applications of the Complainant, including in 2007;

- an email dated May 17, 2017 suggests that the Complainant contacted the Respondent with a view to acquire the Disputed Domain Name.

Although a respondent’s trademarks do not automatically confer rights and legitimate interests for the purposes of the Policy, it is clear in the present case that the Respondent’s trademarks were not obtained as a pretext to prevent the Complainant’s exercise of its rights. WIPO Overview 3.0, section 2.12.

The Panel finds that the Respondent has rights and legitimate interests in the Disputed Domain Name, which combines its TIMES mark with the descriptive word “now”. Moreover, the Panel observes that the Complainant does not provide any evidence of use of its TIMES NOW mark on or before the registration date of the Disputed Domain Name. In the Panel’s view and on the evidence presented, the Respondent could therefore not target or suggest any affiliation with such mark when registering the Disputed Domain Name.

The fact that the Disputed Domain Name is inactive does not change the above conclusion.

In view of the above, the Panel finds that the Complainant has not established the second requirement under

the Policy. 

C. Registered and Used in Bad Faith

Under paragraph 4(a)(iii) of the Policy, the Complainant must prove that the Disputed Domain Name was registered in bad faith and that it is being used in bad faith.

In this case the Panel does not need to consider or decide this issue, given its decision on the second element above and the fact that a successful complaint must establish all three elements under paragraph

4(a) of the Policy. 

For the sake of completeness, the Panel will nevertheless add the following:

- nothing in the evidence presented points to a bad faith registration of the Disputed Domain Name

given the Respondent’s prior rights in the TIMES and THE TIMES marks and the absence of any proof of
use by the Complainant of its TIMES NOW marks on or before the registration of the Disputed Domain
Name;

- the Complainant’s claim that the Respondent’s primarily aims to traffic the Disputed Domain Name is unsupported. On the contrary, the Respondent’s evidence indicates that more than 5 years ago, the

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Complainant communicated to the Respondent an interest in owning the Disputed Domain Name. There is no trace of any offer made by the Respondent to sell the Disputed Domain Name, either to the Complainant or anyone else;

- in the circumstances of the present case, the Panel finds that the passive holding of the Disputed

Domain Name does not support a finding of bad faith either.

D. Reverse Domain Name Hijacking 

Paragraph 15(e) of the Rules provides that, if “after considering the submissions the panel finds that the complaint was brought in bad faith, for example in an attempt at RDNH or was brought primarily to harass the domain-name holder, the panel shall declare in its decision that the complaint was brought in bad faith

and constitutes an abuse of the administrative proceeding”. 

For this purpose, paragraph 1 of the Rules defines “Reverse Domain Name Hijacking” to be “using the Policy
in bad faith to attempt to deprive a registered domain name holder of a domain name”.   

Reasons articulated by panels for finding RDNH as stated in the section 4.16 of WIPO Overview 3.0 include: (i) facts which demonstrate that the complainant knew it could not succeed as to any of the required three elements – such as the complainant’s lack of relevant trademark rights, clear knowledge of respondent rights or legitimate interests, or clear knowledge of a lack of respondent bad faith (see generally section 3.8) such as registration of the disputed domain name well before the complainant acquired trademark rights, (ii) facts which demonstrate that the complainant clearly ought to have known it could not succeed under any fair interpretation of facts reasonably available prior to the filing of the complaint, including relevant facts on the website at the disputed domain name or readily available public sources such as the WhoIs database, (iii) unreasonably ignoring established Policy precedent notably as captured in this WIPO Overview – except in limited circumstances which prima facie justify advancing an alternative legal argument, (iv) the provision of false evidence, or otherwise attempting to mislead the panel, (v) the provision of intentionally incomplete material evidence - often clarified by the respondent, (vi) the complainant’s failure to disclose that a case is a UDRP refiling, (vii) filing the complaint after an unsuccessful attempt to acquire the disputed domain name from the respondent without a plausible legal basis, (viii) basing a complaint on only the barest of allegations without any supporting evidence.

The mere lack of success of a complaint is not in itself sufficient for a finding of RDNH. In the present case, however, the Panel finds the following circumstances to be particularly relevant.

The Complainant is professionally represented in this matter and, in the opinion of the Panel, knew or ought to have known that it could not succeed as to the second and third elements of the Policy for the reasons set out above. In particular:

- the Complainant was aware of the Respondent and its rights in the TIMES and THE TIMES marks, but

omitted to mention this. The Complainant also knew (or should have easily found out) that the Disputed legitimate interests in respect of the Disputed Domain Name. Despite this, the Complainant alleged that there was a lack of any plausible interpretation for the registration of the Disputed Domain Name by the Respondent;

- the Complainant made frivolous claims about the Respondent’s alleged intention to extort money from

the Complainant;

In these circumstances, the Panel finds that the Complaint has been brought in bad faith. Accordingly, the name hijacking.

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7. Decision

For the foregoing reasons, the Complaint is denied.

/Flip Jan Claude Petillion/ Flip Jan Claude Petillion Presiding Panelist

/Matthew Kennedy/ Matthew Kennedy Panelist

/Debrett G. Lyons/
Debrett G. Lyons
Panelist
Date: April 26, 2025