WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Maruti Udyog Limited v. Tella Rao

Case No. D2000-0518

 

1. The Parties

Complainant: Maruti Udyog Limited of 11th Floor, Jeevan Prakesh, 25, KasturbaGandhi Marg, New Delhi Ė 110001, India

Respondent: Tella Rao of 2133, Glencoe Hills Dr #9, Ann Arbor, MI 48108 USA

 

2. The Domain Name(s) and Registrar(s)

Domain Name: maruti.com

Registrar: Network Solutions

 

3. Procedural History

The Complaint was filed on May 29, 2000. WIPO verified that the Complaint satisfies the Rules and the Supplemental Rules and that payment was properly made. The panelist is satisfied this is the case.

The Complaint was properly notified in accordance with Rules, paragraph 2 (a) and a Response was filed by the Respondent within the extended deadline of July 3, 2000.

The administrative panel was properly constituted. The undersigned panelist submitted a Statement of Acceptance and Declaration of Impartiality and Independence. A deadline was set of July 24, 2000, for the decision.

However, on July 11, 2000, a further submission was made by the Complainant exhibiting further documentation. Due to allegations made by the Respondent in the Response which constituted exceptional circumstances in the view of the panel, namely that the Complainant had attempted to hijack the Respondentís name by e-mails in an attempt to change ownership of the Domain Name at Network Solutions without the Respondentís consent, the panelist decided to accept this submission and the Respondentís comments thereon. The panel gave the Respondent until July 11th to file its further Response and a revised deadline of July 18, 2000, was set for the decision.

In the event the supplementary submissions of the Complainant and Respondent did not affect the panelís decision.

 

4. Factual Background

The Complainant is the owner of registered trademarks for MARUTI in many countries worldwide including India.

 

5. Partiesí Contentions

A. Complainant

The Complainant states that:

i) The word MARUTI is a well-known corporate name exclusively associated with the Complainant.

ii) The company Maruti Limited was incorporated in India in 1971, and the trademark MARUTI has been used with respect to vehicles, bus bodies, automobile parts and fittings there since 1976. On October 30, 1980, the Central Legislature (Parliament) of India passed the Maruti Limited (Acquisition and transfer of undertaking) Act 1980, which acquired the undertaking of this company. The Complainant was incorporated in 1981, as an Indian government company to modernize the Indian automobile industry and production of fuel-efficient vehicles.

iii) The Complainantís total issued and paid up equity is Rs 1322.92 Million. Since December 1983, the complainant has sold 2.9 million vehicles including domestic sales of 1,547,184 vehicles and export of 103,642 vehicles to 36 countries. The trademark MARUTI is displayed prominently on the Complainantís products. The Complainant is also the owner of several other domain names containing the MARUTI mark.

iv) A man of average intelligence and imperfect recollection would be confused between the domain name and the Complainantís trademark MARUTI as they are identical.

v) The Respondent has no trademarks, rights or legitimate interests in respect of the domain name at issue due to the Complainantís "long prior use" of its mark. Maruti is not the legal name of the Respondent and he is not doing business under the name.

vi) The Respondent is of Indian origin. He has deliberately and intentionally attempted to create a likelihood of confusion for Internet users with the trademark and the websites of the Complainant as to the source, sponsorship, affiliation and endorsement to get financial gain. He has also deliberately appropriated and traded upon the Complainantís considerable goodwill and reputation. The Respondent has made false representations to the Registrar that his registration would not violate the trade mark rights of any third party. The Respondent has another domain name containing the trademark of another Indian Company herohonda.com and this constitutes a pattern of conduct. The Respondent is the owner of about 50 domain names. The Respondent has not used the domain name to offer goods and services. The Respondent has registered the name for sale or to prevent the Complainant reflecting its name in a corresponding domain name. The domain has been registered and used in bad faith.

vii) The Complainant admits it made a request to Network Solutions to transfer the name, but denies an attempt to hijack the name by seeking to change the ownership details without authorization.

viii) The Complainant points to the herohonda.com case where the domain name was transferred to the Complainant.

B. Respondent

i) The word Maruti means Lord Hanuman, a Hindu god.

ii) The Respondent is of Indian origin and by religion a Hindu.

iii) 83% of the Indian population (total population about 1 billion) are Hindus and almost all Hindus worship the god Maruti.

iv) People entering the domain name maruti.com may be searching for information relating to the god Maruti or an individual named Maruti.

v) It is very common among Hindu people to name their babies after their god. The Respondent has produced lists of Indian names for babies from sites on the Internet, which contain the name Maruti. The Respondentís family believes in the god Maruti. The Respondentís nephew was named after the god Maruti. His name is Maruti Srinivas Tella and pictures of him are currently displayed on the site at maruti.com. He is the first child in the family. He has produced a birth certificate, which reads Sri Tella Maruti Srinivas born in 1989, in Tanuku. The Maruti name is carried from one generation to another in the Respondentís family.

vi) The Respondent has registered a series of domain names reflecting his familyís first names including maruti.com, veena.com, purna.com, vimala.com, lavanya.com as available. He has produced copies of birth certificates and other documents including usage of these names. All the above names are very common names among Hindus. Since the rest of his family are not computer literate the Respondent registered all the names. The Respondent could not register other family memberís names as they were already taken. The maruti.com site was activated on March 22, 1999, before the case started.

vii) The Respondent has not attempted to sell the Domain Name or his other family names and intends to use them in the near future.

viii) The Respondent is likely to name his future baby boy Maruti too and will maintain the site for them until one of them takes care of the site on their own.

ix) There are thousands of Indians in the world whose business or personal names start with Maruti. The following are examples of domain names, which have been registered by third parties: maruticomputers.com; marutiinc.com; marutionline.com; emaruti.com; imaruti.com; mymaruti.com; marutisoft.com; marutitech.com; maruticars.com; marutiorganics.com; marutiworld.com; maruticourier.com; maruticonsultants.com.

x) The Respondent checked the domain name Maruti against the US trade marks system at the time of registration and found no registrations. He is located in a completely different part of the world to the Complainant and registered for family or his own business purposes e.g. the site would make a good name for a portal site.

xi) The Respondent is involved in building fan club sites for software users and is involved in operating several fan sites including sapfans.com; erpfans.com; baanfans.com and oraclefans.com. Based on the success of the software fan clubs the Respondent wanted to build a fan club web site for American Honda cars and tried to register hondafans.com in mid 1998, but it was not available. Hence the Respondent registered Herohonda.com considering "Honda as the Hero of all the cars" for such a fan site. The other domain names that the Respondent holds are generic.

xii) The Complainant can continue its business with its current domain name marutiudyog.com, the site it has used since 1997.

xiii) The Complainant attempted several times to hijack the Domain Name maruti.com owned by the Respondent using e-mail fraud. The Respondent warned the Complainant to stay away from the Domain Name but the Complainant attempted repeatedly to change the administrative contact of the domain name from RT7272 (the Respondentís NIC handle, to GBM 50 (the Complainantís NIC handle). The Respondent on the advice of Network Solutions upped his security level at the Registry. The Respondent has produced a copy of the e-mail send by bghosh@maruti.co.in to Network Solutions in this regard.

xiv) The Complainant is attempting a reverse domain name hijack here using the policy in bad faith to take the name from the Respondent.

 

6. Discussion and Findings

According to paragraph 4(a) of the Uniform Dispute Resolution Procedure Policy, the Complainant must prove that:

i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and

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

iii) The Domain Name has been registered and is being used in bad faith.

A. Identical or confusing similarity

It is prima facie obvious that the Domain Name is virtually identical to the Complainantís MARUTI mark and therefore that they are confusingly similar. The panelist however doubts from the evidence, including the press reports submitted by the Complainant itself that the mark Maruti is exclusively associated with the Complainant. It does appear from the evidence to be the name of an Indian god used commonly in peopleís names in India.

B. Rights or legitimate interest of the Respondent

The Respondent has produced evidence that he has registered the domain name due to the name of a member of his family for family purposes, which would be fair use in the circumstances. He has not used the site for commercial purposes and there is no suggestion of tarnishment of the Maruti name or mark. The panelist is not satisfied that the Respondent does not have any rights or legitimate interest in the name.

C. Bad Faith

Paragraph 4 (b) of the Rules sets out four non exclusive criteria which shall be evidence of the registration and use of a domain name in bad faith as follows:

i) the Respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trade mark or service mark or to a competitor of that complainant for valuable consideration in excess of the Respondentís documented out-of-pocket costs directly related to the domain name; or

ii) the Respondent has registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or

iii) the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

iv) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site or other on-line location, by creating a likelihood of confusion with the complainantís mark as to the source, sponsorship, affiliation, or endorsement of its web site or location or of a product or service on its web site or location.

There is no evidence that the Respondent has tried to sell the name. He owns other domain names including trademarks but maintains that they are for fan sites, which could be in some circumstances a legitimate interest. "Oraclefans.com" owned by the Respondent may well be such an example. In the herohonda.com case, case no D2000-0365, the panelist held that use as a fan site was not a right or legitimate interest in that case. However, this case, maruti.com, does not involve a fan site and in my view can be distinguished. Whilst it is no doubt inconvenient for the Respondent that the domain name does not point to its site, there is no evidence of an intention to prevent the Complainant from reflecting its mark in a corresponding domain name or that the site has been used to confuse or to disrupt the business of the Complainant. I cannot, therefore find bad faith under the Rules.

I also note the allegation of bad faith by the Respondent against the Complainant. There is a dispute as to whether the Complainant attempted to hijack the Domain Name by altering the ownership details at NSI without consent. The Respondent does appear to have some documentary evidence of this. If such a claim were not true I would have expected the Complainant to produce evidence from Network Solutions in its favor. This does not reflect well on the Complainant.

 

7. Decision

In light of the foregoing the panelist decides that, although the domain name is virtually identical to the Complainantís trade mark MARUTI, the Respondent does not have no rights or legitimate interest in respect of the Domain Name and there is no proof that the Domain Name was registered or used in bad faith.

The Complainant having failed to provide the evidence necessary to satisfy all three limbs of section 4 (a) of the Policy, the COMPLAINT IS HEREBY DISMISSED.

 


 

 

Dawn Osborne
Presiding Panelist

Dated: August 14, 2000