Bharti Airtel Limited v Mujeeb Rahman, Airtel Electronics

WIPO Case No. D2022-0048

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Bharti Airtel Limited v. Mujeeb Rahman, Airtel Electronics,
Airtel Technical Solutions

Case No. D2022-0048

1. The Parties

The Complainant is Bharti Airtel Limited, India, represented by Inttl Advocare, India.

The Respondents are Mujeeb Rahman, United Arab Emirates (UAE), Airtel Electronics, UAE, and

Airtel Technical Solutions, UAE (all together named as the “Respondent”).

2. The Domain Name and Registrar

The disputed domain name <airteluae.com> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 6, 2022. connection with the disputed domain name. On January 7, 2022, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint.

The Center sent an email communication to the Complainant on January 12, 2022 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on January 17, 2022.

The Center verified that the Complaint together with the amended 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 paragraph 5, the due date for Response was February 6, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Commencement of Panel Appointment Process on February 9, 2022.

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The Center appointed Nayiri Boghossian as the sole panelist in this matter on February 11, 2022. The Panel
finds that it was properly constituted. 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 Complainant filed a supplemental filing on February 18, 2022 informing of further trademark registrations by the Complainant for AIRTEL in the UAE.

4. Factual Background

The Complainant is a telecommunication company with headquarters in India. It provides mobile services, telephone and broadband services. The trademark AIRTEL was incorporated in the Complainant’s company name in 2006. The trademark AIRTEL was conceived and adopted in 1994. It is registered in India and elsewhere. Examples of its registration in India is registration number 648684 registered on December 14, 1994 and registration number 1623142 registered on November 21, 2007. The Complainant owns the following trademark registrations for AIRTEL in other countries:

- United Kingdom registration No. 3627102 registered on April 15, 2021;

- Singapore registration No. 0802482E registered on September 19, 2008;

- UAE registration No. 112906 registered on September 30, 2012.

The Complainant has many domain name registrations including its trademark. The trademark is also widely well-known in India and has a reputation beyond India. The Complainant also has operations in the Middle East including the UAE. The Complainant has a subsidiary company registered in the UAE. There is a sizeable Indian population in the UAE.
present on social media. The Complainant has promoted its trademark extensively throughout the world.

The Respondents are an individual located in the UAE, as confirmed by the Registrar, and Airtel Electronics, domain name providing IT solutions covering IT products and services as well as CCTV. The Panel notes that the Complainant identified Airtel Electronics, UAE, and Airtel Technical Solutions, UAE as part of the Respondent’s details available on the website at the disputed domain name.

The Respondent registered the disputed domain name on February 19, 2019.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. The disputed domain name incorporates the Complainant’s trademark in its entirety. The addition of the abbreviation “UAE” does not distinguish the disputed domain name from

the Complaint’s trademark. Instead it leads to an assumption that the disputed domain name is the
Complainant’s website for the UAE. The disputed domain name is also confusingly similar to the
Complainant website “

The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not authorized by the Complainant to use its trademark nor is it affiliated with the Complainant. The trademark AIRTEL is distinctive and unique and associated with the Complainant and its services to the extent that it has acquired a secondary meaning.

The Complainant contends that the disputed domain name was registered and is being used in bad faith.
The disputed domain name was registered and is being used in bad faith as the intention behind registration

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is to take advantage of the Complainant’s trademark and attract Internet traffic for commercial gain. There is
an intention to prevent the Complainant from registering its trademark in a domain name. The Respondent
knew of the Complainant’s trademark as it is well-known. Also, the Respondent is using the same color
combination of red and white and older logos of the Complainant.

The Complainant sent on February 18, 2022 a number of documents showing that applications for the registration of trademarks have been filed in the UAE on February 16, 2022. These documents have no bearing on the decision reached for a variety of reasons; 1. The documents do not show what trademark is being applied for; 2. Assuming the applications are for the trademark AIRTEL, these are filed 3 years after the registration of the disputed domain name; 3. A trademark for AIRTEL in the UAE had already been made available by the Complainant; 4. The ownership of the trademark AIRTEL has been proven through a number of trademark registrations submitted by the Complainant as part of the Complaint.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant owns trademark registrations for the trademark AIRTEL. The Panel is satisfied that the
Complainant has established its ownership of the trademark AIRTEL. The disputed domain name
incorporates the Complainant’s trademark AIRTEL in its entirety. It is established by prior UDRP panels that
when a domain name incorporates a complainant’s registered trademark, such incorporation is sufficient to
establish identity or confusing similarity for the purposes of the Policy even if other terms are added as part
of the disputed domain name. E.g., Oki Data Americas, Inc v. ASD, Inc., WIPO Case No. D2001-0903
(“Oki Data”).

The addition of the letters “UAE” does not alter the fact that the disputed domain name is confusingly similar to the Complainant’s trademark. The gTLD “.com” should generally be ignored when assessing confusing similarity as established by prior UDRP decisions.

Consequently, the Panel finds that the disputed domain name is confusingly similar to the trademark of the

Complainant and that the Complainant has satisfied paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, a complainant must make at least a prima facie showing that a respondent does not have any rights or legitimate interests in the disputed domain name. Once such showing is made, the burden of production shifts to the respondent. In the instant case, the Complainant

asserts that the Respondent is not affiliated with nor authorized by the Complainant to use its trademark. Therefore, the Complainant has established a prima facie case and the burden of production shifts to the Respondent to show that it has rights or legitimate interests.

The Panel finds it necessary to assess whether there is a bona fide offering of goods or services as the Airtel Electronics, Airtel Technical Solutions, providing IT services, but the Panel has no information about these “entities”, and whether these are real companies or not. Even if these are real companies, the Panel finds that the selection and use of such company names would not be sufficient to demonstrate that the

disputed domain name resolves to a website through which IT products and services are being advertised.
In this respect, the Panel notes prior UDRP decision which explains that “The use of a domain name which is
identical or confusingly similar to the Complainant's trademark with an intention of deriving advantage from
user confusion and diverting Internet users to other commercial sites does not confer legitimate rights on the
Respondent”. See Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case

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Respondent is legitimately commonly known by the disputed domain name. The Panel explains under element three below how the Respondent is attempting to create confusion in order to diver internet users to its site in order to sell its products and services, and such use cannot give rise to rights or legitimate interests in the disputed domain name.

Moreover, the Panel finds that the nature of the disputed domain name carries a risk of implied affiliation with
the Complainant. See section 2.5.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP

Questions, Third Edition (“WIPO Overview 3.0”).

Consequently, the Panel finds that the Complainant has met the requirement under the Policy of showing
that the Respondent does not have any rights or legitimate interests in the disputed domain name.

Accordingly, the Complainant has satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Respondent must have known about the Complainant’s business and trademark for the main following reasons: 1. The logo appearing on the website to which the disputed domain name resolves contains an arch similar to that used by the Complainant and the combination of colors white and red is similar to the Complainant’s website. 2. The disputed domain name resolves to a website offering IT solutions covering IT products and services. Although not identical to the Complainant’s products and services, they do fall within the technology field, which is the Complainant’s field. 3. The disputed domain name reproduces the Complainant’s trademark AIRTEL in its entirety, adding “UAE”. 4. As mentioned in the Complainant’s pleading, there is a sizeable Indian population in the UAE. Furthermore, it is known that members of this population work in the IT industry. Therefore, it is highly likely that the Respondent would be very much aware of the Complainant’s well-known trademark.

The Panel finds that more likely than not that the Respondent registered the disputed domain name in the knowledge of the Complainant’s trademark and business and with the intention of taking unfair advantage of the Complainant’s goodwill attaching to that trademark.

It is the Panel’s view that the Respondent has used the Complainant’s trademark, together with other elements, e.g. the device of arch and the colors white and red, in order to create confusion in the minds of consumers for the purpose of attracting Internet traffic for commercial gain.

The nature of the disputed domain name suggests affiliation with the Complainant as it incorporates the Complainant’s trademark in full. The use of the abbreviation “UAE” reinforces the impression that the disputed domain name is the Complainant’s website for the UAE market. As such, the disputed domain name suggests affiliation with the Complainants in order to attract consumers for commercial gain.

Such conduct falls squarely within the meaning of paragraph 4(b)(iv) of the Policy, and accordingly, the

Panel finds that the Complainant has satisfied paragraph 4(a)(iii) of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name, <airteluae.com> be transferred to the Complainant.

/Nayiri Boghossian/
Nayiri Boghossian
Sole Panelist
Date: February 21, 2022