Trent Limited v Nilesh Kumar Pandey Pandey

WIPO Case No. D2023-3604

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Trent Limited v. Nilesh Kumar Pandey Pandey

Case No. D2023-3604

1. The Parties

The Complainant is Trent Limited, India, represented by Fidus Law Chambers, India.

The Respondent is Nilesh Kumar Pandey Pandey, India.

2. The Domain Name and Registrar

The disputed domain name <zudioshopping.online> is registered with Hostinger, UAB (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 28, 2023.

On August 28, 2023, the Center transmitted by email to the Registrar a request for registrar verification in

connection with the disputed domain name. On August 29, 2023, 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 (Privacy Protect, LLC) and contact information in the Complaint.

The Center sent an email communication to the Complainant on August 29, 2023, providing the

registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit

an amendment to the Complaint. On August 29, 2023, two brief emails were received from Respondent.

The Complainant filed an amended Complaint on August 31, 2023.

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 September 6, 2023. In accordance with the Rules,

paragraph 5, the due date for Response was September 26, 2023. Although no formal Response was filed

with the Center, the Respondent sent further email on September 6, 2023.

The Complainant sent emails on September 8 and 12, 2023, regarding the possibility of settlement

negotiations. On September 14, 2023, the Proceedings were suspended. On September 19, 2023, the

Complainant sent an email to the Respondent (copying the Center, stating that “if you are willing to settle the

present dispute, we request you to kindly sign the enclosed document at the place marked ‘Respondent’ and

send the scanned version of the document to us by September 22, 2023 (Friday).”

page 2

On September 25, 2023, the Complainant sent an email to the Center stating that it had tried to settle the

dispute with the Respondent on several occasions during the suspension period. However, it had not

received any response from the Respondent. In the absence of any effective settlement, the Complainant

requested the reinstatement of the WIPO dispute proceedings. On October 2, 2023, the proceedings were

reinstituted. The Response due date was recalculated to October 14, 2023. No official Response was filed.

As such on October 17, 2023, the Center transmitted its Commencement of Panel Appointment Process

email.

The Center appointed Meera Chature Sankhari as the sole panelist in this matter on November 3, 2023. 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.

4. Factual Background

The Complainant is a part of TATA group of companies and was originally incorporated as Lakme Limited

(“Lakme”) in 1952 and in 1998, it came to be known as Trent Limited. The Complainant is the registered

proprietor of the trademark ZUDIO in classes 24, 25 and 35 since 2015, and is doing business in the field of

apparel retailing. The Complainant also owns domain name registrations <zudio.com> and <zudio.in>

registered since September 15, 2011, and October 20, 2015, respectively.

The Respondent is Nilesh Kumar Pandey. The disputed domain name was registered on June 28, 2023.

The website at the disputed domain name was active at the time of the filing of this Complaint, and

redirected consumers to third-party Amazon product listings. The disputed domain name currently resolves

to an inactive page.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that owing to its long, continuous and extensive use of the mark ZUDIO since at

least 2016, the general public and members of trade now recognize and associate the goods and services

under the ZUDIO trademarks with the Complainant and none other. The Complainant also claims to have

spent substantial time, effort, and money advertising and promoting the trademark ZUDIO.

The Complainant states that the disputed domain name <zudioshopping.online> was registered on June 28,

2023, i.e., several years after the Complainant secured its rights in the trademark ZUDIO. The disputed

domain name leads to a website that is made to appear like a blog about the Complainant’s products but

included hyperlinks to third party websites, offering products for sale. These hyperlinks redirect users to

third-party product listings on Amazon for potential purchases. The Respondent, as an Amazon affiliate,

earned commissions on purchases made through the embedded weblinks on their website. The

Complainant contends that the Respondent intended to gain illicit profit from the Complainant’s trademark,

ZUDIO.

The Complainant further asserts that the Respondent uses the customized links, under the Amazon affiliate

marketing program and is thus profiting from each purchase made through these links, while also misleading

and diverting the customers of the Complainant’s trademark, ZUDIO. The Complainant neither sells

products on Amazon nor has it authorized any third parties to do so, making the linked product listings

unauthorized and counterfeit. Such indiscriminate linking to unauthorized Amazon products tarnishes the

Complainant’s ZUDIO trademark’s reputation and goodwill.
page 3

B. Respondent

The Respondent did not submit any reply to the Complainant’s contentions. However, the Respondent sent

two emails, i.e., dated September 6, 2023, and September 10, 2023. In the email of September 6, 2023, the

Respondent stated that “I don’t intend to do anything wrong.” On September 10, 2023, he wrote “Please

forgive me if I have made any mistake... I did not intend to do anything wrong”.

6. Discussion and Findings

To transfer the disputed domain name from the Respondent, the Complainant must prove the following

elements as per paragraph 4(a) of the Policy:

(i)        that the disputed domain name is identical or confusingly similar to a trademark or service mark in

which the Complainant has rights; and

(ii)       that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii)      that the disputed domain name has been registered and is being used in bad faith.

Paragraph 15(a) of the Rules instructs the Panel to decide a complaint “on the basis of the statements and

documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that

it deems applicable”.

Further, since the Respondent has not submitted its response in the case at hand, this Panel finds it

appropriate case to “decide the dispute based upon the complaint” as per paragraph 5(f) of the Rules read

with paragraphs 14(a) and 14 (b) of the Rules.

Having considered the Complainant’s case and the evidence available, the Panel finds as follows.

A. Identical or Confusingly Similar

The Complainant owns registered trademarks for its ZUDIO as well as the two “zudio” domain name

registrations. The disputed domain name consists of the word ZUDIO, which forms a significant part of it.

Per section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition

(“WIPO Overview 3.0”), “where a domain name incorporates the entirety of a trademark, or where at least a

dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be

considered confusingly similar to that mark for purposes of UDRP standing”.

The addition of the term “shopping” does not prevent a finding of confusing similarity between the disputed

domain name and the Complainant’s trademark ZUDIO, per section 1.8 of the WIPO Overview 3.0.

Per section 1.11.1 of the WIPO Overview 3.0, the applicable Top Level Domain (“TLD”) in a domain name

(e.g., “.com”, “.club”, “.nyc”; here .”online”) is viewed as a standard registration requirement and as such is

disregarded under the first element confusing similarity test.

Given the above, the Panel finds that the disputed domain name is confusingly similar to the Complainants’

trademark ZUDIO and with that the Complainant has satisfied the elements required in paragraph 4(a)(i) of

the Policy.

B. Rights or Legitimate Interests

The Complainant has established statutory as well as common law rights in and to its trademark ZUDIO, and

has supported the same through documentary evidence. Moreover, the Complainant has submitted that it

has no affiliation with the Respondent and that it has neither permitted nor licensed the use of its ZUDIO

mark to the Respondent.

page 4

The Panel finds that a prima facie case is made by the Complainant, pursuant to which, the burden shifts to

the Respondent to come forward with appropriate response and relevant evidence demonstrating rights or

legitimate interests in the disputed domain name.

The Respondent has failed to put forth any evidence establishing its rights over the word “zudio” or the

disputed domain name. Further, there is nothing on the record to show that the Respondent is known as the

disputed domain name.

Given the above, this Panel finds that the Complainant has established that the Respondent has no rights or

legitimate interests in the disputed domain name (see Deutsche Lufthansa AG v. Mustermann Max, Muster

AG, WIPO Case No. D2015-1320; and Legacy Health System v. Nijat Hassanov, WIPO Case No.

D2008-1708).

The Complainant is therefore deemed to have satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Panel concurs with the Complainant’s contention that the Respondent registered the domain name

using the Complainant’s trademark ZUDIO and was redirecting users to third-party Amazon product listings

to profit from the renown of the trademark commercially. The Complainant has established both statutory

and common law rights in the trademark ZUDIO. The Complainant’s ZUDIO trademark is widely popular

throughout India. The Respondent who is based in India is likely to have knowledge of the said trademark of

the Complainant, its business and reputation. Therefore, the Respondent’s registration of the disputed

domain name <zudioshopping.online>, using the term “shopping” clearly indicates the bad faith and ill-

intentions of the Respondent to mislead and divert the Complainant’s customers who could easily have

mistaken the disputed domain name as the Complainant’s online platform.

UDRP paragraph 4(b) provides that the following non-exclusive scenario constitutes evidence of a

respondent’s bad faith: “by using the domain name, the respondent has intentionally attempted to attract, for

commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion

with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s

website or location or of a product or service on the respondent’s website or location”. The Panel finds that

the above circumstances are present in this case. The Respondent’s bad faith intention is further

demonstrated in hiding his identity by using a privacy service at the time of registration of the disputed

domain name. See section 3.6 of the WIPO Overview 3.0.

For all the foregoing reasons, the Panel concludes that the disputed domain name has been registered and

is being used in bad faith pursuant to paragraph 4(b)(iv) 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, <zudioshopping.online> be transferred to the Complainant.

/Meera Chature Sankhari/

Meera Chature Sankhari

Sole Panelist

Date: November 8, 2023