Navi Technologies Limited v Smart Coins, Smartcards Tech
WIPO Case No. D2025-0074
•21-02-2025
| ARBITRATION AND MEDIATION CENTER |
ADMINISTRATIVE PANEL DECISION
Navi Technologies Limited v. Smart Coins, Smartcards Tech
Case No. D2025-0074
1. The Parties
The Complainant is Navi Technologies Limited, India, represented by Saikrishna & Associates, India.
The Respondent is Smart Coins, Smartcards Tech, India.
2. The Domain Name and Registrar
The disputed domain name <cardsnavi.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 9, 2025.
On January 9, 2025, 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 disclosing registrant and contact information for the disputed domain name,
which differed from the named Respondent (GoDaddy.com, LLC, DomainsByProxy.com) and contact
information in the Complaint. The Center sent an email communication to the Complainant on January 10,
2025, 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 15, 2025.
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
Complaint, and the proceedings commenced on January 15, 2025. In accordance with the Rules, paragraph
5, the due date for Response was February 4, 2025. The Respondent did not submit any response.
Accordingly, the Center notified the Respondent’s default on February 5, 2025.
The Center appointed Shwetasree Majumder as the sole panelist in this matter on February 7, 2025. The
Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and
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Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the
Rules, paragraph 7.
4. Factual Background
The Complainant is an Indian private limited company incorporated on December 10, 2018, under the Indian Companies Act, 2013. The Complainant provides financial products and services inter alia for lending, insurance and asset management purposes. The Complainant owns the websites at <navi.com>, <navifinserv.com>, <navimutualfund.com>, <naviinsurance.com>, which contain information on the financial products and services offered by the Complainant under its brand “NAVI”. The Complainant has numerous trademark registrations for NAVI and its iterations in India and globally, namely, the Russian Federation, United Kingdom (UK), European Union, etc. Registration Certificates of Indian trademark registrations held by the Complainant are annexed as Annexure 7 of the Complaint. Registration Certificates of the global trademark registrations held by the Complainant are annexed as Annexure 8 of the Complaint. The details of a few are mentioned below:
| - | NAVI – Indian Registration No. 4545839 in Class 36 registered on June 26, 2020. |
| - | NAVI – Indian Registration No. 4116813 in Class 09 registered on March 14, 2019. | |
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February 28, 2023.
| - | NAVI – UK Registration No. UK00003595564 in Class 36 registered on June 25, 2021. |
| - | NAVI – EUIPO Registration No. 018398839 in Class 36 registered on June 12, 2021. |
The Complainant also owns several domain names that contain the Complainant’s registered trademark
NAVI as an integral part; a few of which are mentioned below:
| - | <navi.com> |
| - | <navifinserv.com> |
| - | <navimutualfund.com> |
| - | <naviinsurance.com> |
| - | <navi-finserv.in> |
| - | <creditlinenavi.com> |
| - | <navicreditcard.co.in> |
| - | <navipaylater.com> |
The Complainant has mentioned a list of the domain names owned by them in the Complaint and their respective WhoIs records are annexed as Annexure 9 with the Complaint.
The disputed domain name <cardsnavi.com> was registered on March 16, 2024 and the Complainant alleges that it amounts to an unauthorized use of their trademark NAVI by the Respondent. At one point in time, the disputed domain name resolved to a website offering payment services.
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 and confusingly similar to the Complainant’s registered and well-recognized trademark NAVI as the disputed domain name subsumes the trademark NAVI in its entirety. The Respondent has merely incorporated a generic/ non-distinctive/
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descriptive term “cards” as a prefix which does not make it sufficiently dissimilar to the Complainant’s
trademark NAVI. In this regard the Complainant has put their reliance on Instagram, LLC v. Super Privacy
Service LTD c/o Dynadot / Edmunds Gaidis, WIPO Case No. D2021-0401, Royal Multisport Private Limited.
v. Deepak Jawade, WIPO Case No. D2023-0048 and LEGO Juris A/S v. Domain Administrator, Rich
Premium Limited / c/o WHOIStrustee.com Limited, WIPO Case No. D2014-1565.
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain
name. The Complainant submits that the Respondent has no proprietary or contractual rights in the
Complainant’s trademark NAVI in whole or in part. The Complainant submits that the Respondent is not
commonly known by the disputed domain name, nor does the Respondent engage in any business or
commerce under the trademark and/or trade name NAVI. The Respondent’s lack of rights and legitimate
interest is further substantiated by the fact that the Respondent has not made any legitimate use of the
disputed domain name since its registration on March 16, 2024. The Complainant further argues that there
is no evidence whatsoever of the Respondent’s independent use of, or demonstrable preparations to use,
the disputed domain name, in connection with a bona fide offering of goods and/or services other than those
offered by the Complainant under the NAVI trademarks. In this regard the Complainant has put their reliance
on SGII, Inc. v. New Ventures Services, Corp., WIPO Case No. D2019-2748, Facebook, Inc. v. S. Demir
Cilingir, WIPO Case No. D2018-2746 and F. Hoffmann-La Roche AG v. WhoisGuard Protected,
WhoisGuard, Inc. / Samantha Park, WIPO Case No. D2018-2495.
The Complainant contends that the Respondent has registered the disputed domain name in bad faith. The
Complainant submits that the Respondent has registered the disputed domain name solely with an ulterior
motive to make monetary profits by providing a space for advertisement of third-party websites in the same
industry as the Complainant. The Complainant further submits that the lack of any legitimate, good faith use
suggests the Respondent’s strong bad faith. The Complainant also submits that the disputed domain name
was registered on March 16, 2024, much after the Complainant’s adoption of the trademark NAVI since
2019. In this regard the Complainant has put their reliance on Overstock.com, Inc. v. Metro Media, WIPO
Case No. DME2009-0001, Sodexo v. Domain Privacy, Above.com Domain Privacy, WIPO Case No.
D2021-0592, Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 and
Ferring B.V. v. Domain Administrator, Fundacion Privacy Services LTD., WIPO Case No. D2021-0784.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7.
The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy.
WIPO Overview 3.0, section 1.2.1.
WIPO Overview 3.0, section 1.8.
Although the addition of other term “cards” may bear on assessment of the second and third elements, the domain name and the mark for the purposes of the Policy.
The Panel finds the first element of the Policy has been established.
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B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.
Although the overall burden of proof in UDRP proceedings is on the Complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1.
The Panel agrees with the Complainant that the Respondent has no right or any legitimate interest in respect of the disputed domain name as the Respondent has no trademark or license rights or any authorization to use the trademarks of the Complainant. The Complainant is the registered proprietor of the trademark NAVI in several jurisdictions. As such, the trademark NAVI has become highly distinctive of the Complainant’s goods and services. The Respondent is in no way related to the Complainant or its business activities nor has the Complainant entered into any agreement granting the Respondent any right, license or authorization to make use of its registered trademark NAVI.
Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise.
The Panel finds the second element of the Policy has been established.
C. Registered and Used in Bad Faith
The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.
In the present case, the Panel notes that the Respondent has no demonstrable intention of bona fide use of the disputed domain name, on the contrary it was used to resolve to a website using the Complainant’s trademark and offering similar services to the Complainant’s services. The Panel further notes that this website displays the Complainant’s own address at the contact address and therefore, the Respondent seems to be impersonating the Complainant. The Panel finds that it is more likely than not that the Respondent has registered the domain name primarily for the purpose of disrupting the business of the Complainant.
Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1.
Panels have held that the use of a domain name for illegitimate activity here, impersonation/passing off, constitutes bad faith. WIPO Overview 3.0, section 3.4. Having reviewed the record, the Panel finds the Respondent’s registration and use of the disputed domain name constitutes bad faith under the Policy.
The Panel finds that the Complainant has established the third element of the Policy.
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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 <cardsnavi.com> be transferred to the Complainant.
/Shwetasree Majumder/
Shwetasree Majumder
Sole Panelist
Date: February 21, 2025
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