WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Ogaan India Private Limited v. Mehboob Alam
Case No. D2000-0720
1. The Parties
The Complainant is Ogaan India Private Limited, an Indian Company incorporated under the Indian Companies Act 1956 and having its registered office and principal place of business in New Delhi, India.
The Respondent is Mehboob Alam with a postal address at Redesign Software Inc. 250 First Street, Jersey City, NJ 07302, U.S.A.
2. The Domain Name(s) and Registrar(s)
The dispute concerns the domain name <ogaan.com> (the said Domain Name) registered with Network Solutions, Inc. (the Registrar) of 505 Huntmar Park Drive, Herndon, VA 20170, U.S.A.
3. Procedural History
On July 3, 2000 the Complainant submitted a Complaint electronically to the World Intellectual Property Organization Arbitration and Mediation Center (the WIPO Center) for a decision in accordance with the Uniform Domain Name Dispute Resolution Policy (the Policy), 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). On July 6, 2000 it submitted the hardcopy of the same to the WIPO Center.
On July 6, 2000, the WIPO Center acknowledged receipt of the said Complaint.
On July 6, 2000 the WIPO Center sent a Request for Registrar Verification to the Registrar. On July 13, 2000 the Registrar confirmed by e-mail to the WIPO Center that it was the Registrar of the said Domain Name and also that the current registrant of the said Domain Name was the Respondent.
On July 14, 2000, having found that the Complainant had satisfied the formal requirements of the Policy, the Rules and the Supplementary Rules, the WIPO Center sent the Notification of Complaint and Commencement of Administrative Proceeding (the Notification) by post/courier, facsimile and e-mail to the Respondent and transmitted electronically copies of the said documents to the Complainant, ICANN and the Registrar. The said Notification particularized the formal date of the commencement of this administrative proceeding as July 14, 2000 and required the Respondent to submit a Response to the Complaint within 20 calendar days from the date of receipt of the Notification, failing which the Respondent would be considered to be in default.
The Respondent failed to file the Response with the WIPO Center by the last date i.e. August 2, 2000. On August 3, 2000 the WIPO Center sent the Notification of Respondent Default to the Respondent and copied it to the Complainant via e-mail. The Complainant elected to have the dispute decided by a single-member panel (the Panel). On August 10, 2000, the WIPO Center appointed Mr. Hariram Jayaram to be the panelist after receiving a Statement of Acceptance and Declaration of Impartiality and Independence from him and sent a Notification of Appointment of Administrative Panel and Projected Decision Date to the Complainant and the Respondent and copied it to the Panel by e-mail. On the same day, the WIPO Center sent a Transmission of Case File to the Panel, with an electronic version of a Model Form of Administrative Panel Decision.
The Panel finds that the WIPO Center has discharged its obligations and responsibility under the Rules. The Panel will hereby issue its Decision based on the Complaint, the Policy, the Rules and the Supplementary Rules, without the benefit of any Response from the Respondent.
4. Factual Background
In 1989 one Kavita Bhartia, a director of the Complainant, coined the name OGAAN from the Sanskrit word "ogana" (meaning waves) to be used in connection with a new kind of fashion wear. Wicker Waves Private Limited, a company incorporated under the Indian Companies Act, 1956 set up a division within the company for the use of the said word OGAAN in its trading activities. The first OGAAN boutique opened in 1989 at Hauz Khas in New Delhi. Since then, the Complainant has opened additional outlets in Calcutta and another in New Delhi. It plans to open other boutiques in Bombay, Bangalore and Madras. In 1994, the Complainant ventured into the export of ready made garments by floating a wholly owned subsidiary, Ogaan Exports Private Limited. In 1996 it set up a separate company, Ogaan Publications Private Limited which launched the fashion magazine ELLE in India. In 1995 Wicker Waves Private Limited underwent a change of name to Ogaan India Private Limited. The essential activity of the Complainant is the operation of a chain of exclusive up-market boutique outlets under the name OGAAN to sell a wide range of clothes, accessories such as, shawls, scarves, stoles, knits, bags, belts, silver and costume jewelry. Ever since the initial launch in 1989, the Complainantís business under the trade mark and trade name OGAAN has been growing at a steady pace with an expanding base of customers. The Complainant has made substantial investments in the advertising and promotion of its OGAAN business and products, particularly in the print media. It has advertised for recruitment of personnel in leading national dailies such as the Times of India and the Hindustan Times and the name OGAAN is prominently displayed and used in such advertisements. The word OGAAN being a rare, unique and coined word derived from the Sanskrit word Ďoganaí, enjoys substantial public recognition and goodwill as the exclusive trade mark and trade name of the Complainant. At the Indian Trade Marks Registry the Complainant has applied for registration of the word OGAAN as a trade mark in classes 3, 14, 18, 24, 25 & 26. The aforesaid applications are pending since 1992. The Complainant is also the Registrant of the domain name <ogaanindia.com> containing the word OGAAN and has a corresponding web site. It had opted for the domain name <ogaanindia.com> because of the earlier registration of the said Domain Name by Biznet India of F-76, Preet Vihar, Delhi.
Prior to the issuing of the Complaint, the Complainant entered into negotiations with Mr. Jay Bansal of Biznet India, who offered to sell the said Domain Name for a consideration. While the negotiations were still underway, Biznet India transferred the said Domain Name to the Respondent. The Respondentís said Domain Name resolves to a web site which features the face of a woman but contains no further links to any other relevant information on the Respondentís business. A Whois search carried by the Complainant shows that the Respondent is in the software business operating under the trade name Redesign Software Inc.. The Respondent has registered 15 other domain names which do not have any nexus or connection with the Respondentís business.
5. Partiesí Contentions
Essentially the contentions of the Complainant are that OGAAN is its trade mark and trade name and the Respondent has adopted an identical word for the said Domain Name; that the Respondent has no rights or legitimate interests in the said Domain Name and that the said Domain Name has been registered and is being used by the Respondent in bad faith.
In view of the fact that the Respondent has not filed his Response, the Panel is in no position to make out his contentions.
6. Discussion and Findings
6.1 Effect of Respondentís Default
By paragraph 5(b)(i) of the Rules, it is expected of the Respondent to:
"[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain nameÖ"
In the event of a default, under paragraph (14)(b) of the Rules:
"Öthe Panel shall draw such inferences therefrom as it considers appropriate."
As stated by the panel in Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddyís Antiques WIPO Case No.D00-0004 (February 16, 2000):-
"Respondentís failure to present any such evidence or to deny complainantís allegations allows an inference that the evidence would not have been favorable to respondent."
In the instant administrative proceeding, the Respondentís default entitles the Panel to conclude that the Respondent has no evidence to rebut the assertions of the Complainant. It enables the Panel to proceed to make a finding in favour of the Complainant.
6.2 Elements to be proven
However, paragraph 4(a) of the Policy envisages that for the Complaint to succeed, the Complainant must establish that:
i) the Respondentís domain name is identical or confusingly similar to a trademark 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 Respondentís domain name has been registered and is being used in bad faith.
The panel in Cortefiel, S.A. v. Miguel Garcia Quintas WIPO Case No.D2000-0140 (April 24, 2000) notes that under the Policy, even if the respondent is in default,
"Öthe complainant must prove that each of these three elements are present."
6.3 Identical or Confusingly Similar
The Complainant claims rights in OGAAN. It has filed a number of applications in various classes for the registration of OGAAN as a trade mark in India. The applications are pending and as a result the Complainant will not be able now to rely on rights which it may derive on registration. However, the Complainant has established first use of the invented word OGAAN. It has also shown long and substantial use. Through such use, the Complainant has become the owner of the common law trade mark. Ownership of the trade mark may be national in scope and the association of the trade mark with the Complainant may well be confined to India. However, under the Policy all that is required of the Complainant is to establish his rights in the trade mark and the extent of the geographical area in which the rights accrue, does not matter. The Panel has compared the said Domain Name with the Complainantís trade mark OGAAN and finds that the second level domain (the SLD) Ogaan is identical letter-by-letter to the Complainantís trade mark.
The Panel also notes that the SLD is also identical with the word OGAAN, which is a component of the Complainantís trade name, Ogaan India Private Limited. The Complainantís domain name is <ogaanindia.com> and the Respondent has a prominent part of this domain name in the said Domain Name.
6.4 Respondentís Rights or Legitimate Interests in the Domain Name
Under paragraph 4(c) of the Policy, the Respondent may demonstrate his rights and interests in the said Domain Name by showing:
i) his use of, or demonstrable preparations to use, the said Domain Name or a name corresponding to the said Domain Name in connection with a bone fide offering of goods or services before any notice to him of the dispute; or
ii) he (as an individual, business, or other organization) has been commonly known by the said Domain Name, even if he has acquired no trade mark or service mark rights; or
iii) he is making a legitimate noncommercial or fair use of the said Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark at issue.
There is no evidence of use or demonstrable preparation to use the said Domain Name on goods or services on the part of the Respondent. His web site is passive/dormant and makes no reference to any business activity, which may reasonably be a base for his rights in the said Domain Name. The Complainant has not licensed or otherwise permitted the Respondent to use the word OGAAN.
OGAAN is not the Respondentís legal name. The Respondent, a natural person, is not commonly known as OGAAN. He is not carrying on any business under the said name. The Respondent cannot have a legitimate claim to the said Domain Name because the SLD <ogaan> used with the top level domain (the TLD) <.com> suggests a commercial enterprise which utilizes the said Domain Name for its business activities.
Further, the Respondent is said to be in the software business but his web site merely features the face of a woman and the said Domain Name. It contains nothing which may justify a legitimate noncommercial or fair use of the said Domain Name.
6.5 Registration and Use in Bad Faith
As stated by the panel in World Wrestling Federation Entertainment, Inc. v. Michael Bosman WIPO Case No. D99-0001 (January 14, 2000) in order for the Complainant to succeed:
"... the name must not only be registered in bad faith, but it must also be used in bad faith."
The Complainant must prove that the Respondent registered and also used the said Domain Name in bad faith in order to establish Ďbad faithí on the part of the Respondent.
By paragraph 4(b) of the Policy, the circumstances indicating registration and use of a domain name in bad faith include the registration or acquisition of the domain name primarily for the purpose of selling or transferring the domain name registration to the Complainant, the owner of the trademark, for valuable consideration. There will also be bad faith registration and use if the domain name has been registered to prevent the owner of the trade mark from reflecting the mark in a corresponding domain name, provided that the registrant has engaged in a pattern of such conduct.
The registration of the said Domain Name and the subsequent offer to sell the same to the Complainant for a consideration are indicative of registration and use of the said Domain Name by Biznet India in bad faith. The Respondent acquired the said Domain Name from Biznet India while negotiations for its sale were continuing between the Complainant and Biznet India. The Respondent should have been aware of the negotiations for the transfer of the said Domain Name to the Complainant. His acquisition of the said Domain Name from Biznet India is tainted with bad faith.
By Biznet India registering the said Domain Name, the Complainant was prevented from registering his trade mark as the corresponding domain name. By the Respondent remaining as the current registrant, the Complainant continues to be deprived from registering the said Domain Name. It has been compelled to effect registration of an alternative domain name <ogaanindia.com>. The Respondentís registration of 15 other domain names which have no nexus or connection with his business shows a pattern of conduct aimed at preventing others from making bona fide use of the desirable domain names which may correspond to their trade marks.
The said Domain Name is not being been used in relation to an active web site. Nevertheless as stated by the panel in Telstra Corporation Ltd. v. Nuclear Marshmallows WIPO Case No. D2000-0003 (February 18, 2000):
"Öthe concept of a domain nameÖbeing used in bad faithÖis not limited to positive action; inaction is within the concept."
The existence of the said Domain Name furnishes the Respondent with an instrument of fraud and deception. The Respondent has the potential to activate his web site in such a manner as to divert the Complainantís customers to his web site. When this occurs, the goods and services, if any, of the Respondent may be passed off as those of the Complainant.
For all the foregoing reasons, the Panel finds that the Complainant has proved each of the three elements of paragraph 4(a) of the Policy. The Panel requires that the said Domain Name be transferred to the Complainant.
Dated: August 23, 2000