WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Funskool (India) Ltd. v. funschool.com Corporation
Case No. D2000-0796
1. The Parties
The Complainant is Funskool (India) Limited.
Its address is Tarapore Towers, VI Floor, 826, Anna Salai, Chennai-600 002, India.
The Complainant is represented in this Administrative Proceeding by Jacob Kurian, Advocate, 18, Harrington Road, Chetpet, Chennai-600 031, India.
The Respondent is Funschool.com Corporation of 980 Industrial Ave, Palo Alto, CA 94303, United States of America. A further address given is 1942, Zanker Road, San Jose, CA 95112, United States of America.
The Respondent is represented in this Administrative Proceeding by Jay H. Begler, of Buchanan Ingersoll PC, 140 Broadway, 35th Floor, New York, NY 10005, United States of America.
2. The Domain Name and Registrar
The domain name in dispute is "funskool.com".
The registrar is Network Solutions Inc. 505 Huntmar Park Drive, Herndon, Virginia 20170-5139, U.S.A.
3. Procedural History
The Complainant lodged its Complaint by e-mail communication to the WIPO Arbitration and Mediation Center (WIPO) on July 14, 2000. A hard copy of the Complaint was received by WIPO on July 20, 2000. WIPO acknowledged receipt of the Complaint on July 14, 2000. On July 20, 2000, WIPO requested verification from the Registrar of the domain names in dispute. The Registrar of the domain name is Network Solutions Inc. The Registrar reported on August, 31, 2000, that the registrant of "funskool.com" was "funschool.com Corporation", US. The administrative, contact, technical contact, zone contact, billing contact details of the Respondent, are: Boinapalli, Sashi of Red Fort Technologies Inc., 970 Industrial Avenue, Palo Alto, CA 94303, U.S.A., with the e-mail address of "firstname.lastname@example.org". [The telephone number of the contact was given as (877) 892 8558 and the fax number as (212) 656 1307].
At the time of the Registrarís report, "funskool.com" was in "Active" status.
On August 28, 2000, a Notification of Complaint and Commencement of the Administrative Proceeding was sent by WIPO. The notification informed the recipient of the formal date of commencement of the administrative proceeding, that being August 23; the last day for sending the Response to the Complaint. On September 14, 2000, the Response of the Respondent was received by WIPO, which acknowledged receipt of the Response on September 19, 2000.
In its Complaint, the Complainant asked for an administrative decision by a Sole Panelist. But in its Response, the Respondent asked for a panel of three. WIPO accordingly appointed a Panel of three Panelists.
The Administrative Panel, consisting of Austin NeeAbeohe Evans Amissah of 1 Westgate Terrace, London SW10 9BT, United Kingdom as Presiding Panelist; Jonathan Hudis of Oblon, Spivak, McClelland, Maier & Neustadt, PC, 1755 Jefferson Davis Highway Ė Fourth Floor, Arlington, Virginia 22202, USA as Panelist; and Maninder Singh of Singh & Singh, Advocates, F-12, Jangpura Extension, New Delhi Ė 110014, India as Panelist, was appointed on November 16, 2000, and the case file to date was duly transmitted by courier to members of the Administrative Panel.
In the opinion of the Administrative Panel this Panel is properly constituted.
The language of the proceeding is English.
The scheduled date for the submission of a decision by the Panel is November 30, 2000.
4. Factual Background
The Complainant is a company incorporated under the Indian Companies Act 1956. It has its principal place of business at Tarapore Towers, VI Floor, 826 Anna Salai, Chennai Ė 600 002, India. The Complainant has registered the trademark "funskool" with respect to 3 different sets of goods in India under the Indian Trade Marks Act, 1958. The first of the 3 registrations were made with effect from September 1, 1986. The other 2 were both made with effect from August 20, 1987. The Complainant had intended to register the domain name "funskool.com" and to operate a website under its own name "Funskool" to take advantage of the opportunities available through the Internet. But a search of the Network Solutions Inc. database showed that the Respondent company had registered not only "funschool.com" but had also registered "funskool.com" as domain names, thus blocking the Complainant in its desire to register its name as a domain name. The Complainant has brought the administrative proceeding alleging that the Respondent has registered and is using as a domain name a name identical to the Complainantís name and registered trademark; that the Respondent has no right or legitimate interest in respect of the domain name in question, namely: "funskool.com"; and that the Respondent registered and is using the disputed domain name in bad faith.
5. Partiesí Contentions
The Complainantís contention is that it is a company registered under the name Funskool (India) Ltd. under the Company laws of, and based in, India. It has registered the trademark "FUNSKOOL" in India under the Trade and Merchandise Marks Act 1958, of India. The first registration of the "FUNSKOOL" trademark was effective from September 10, 1986, [Trade Mark Registration No. 460061B], with respect to Toys, Playthings, Kiddie Rides, Drive Games, Adult and Childrenís Games, Educational-Aid Games and Games of Skill and all other games for amusement including Board Games (other than ordinary playing cards) and accessories, parts and fittings for use therewith] The second registration of the "FUNSKOOL" trademark was effective from August 20, 1987, [Trade Mark Registration No. 477205], and was obtained in respect of Paper and Paper articles, Cardboard and Cardboard articles, printed matter, newspaper and periodicals, books, bookbinding materials, paint brushes, typewriters and office requisites (other than furniture), instructional and teaching material (other than apparatus), playing cards, printers type and cliches (stereotype). The third registration of the "FUNSKOOL trademark was also effective from August 20, 1987, [Trade Mark Registration No. 477208], and was obtained with respect to Clothing, including boots, shoes and slippers. Certificates of all three trademark registrations were exhibited by the Complainant.
The Complainant asserts that "Funskool" is its name and also its house mark and most important trademark. The Complainant also asserts that it is one of the largest and most well known companies in India in connection with educational aid games, board games and all types of childrenís games and toys, etc. The Complainant claims to have a foreign collaboration with Hasbro Inc. USA, which it says is one of the largest toy manufacturing companies in the world. The Complainant does not elaborate on the nature of this foreign collaboration, nor does it provide any written proof of such collaboration.
The Complainant also states that it was incorporated under its present name in 1986, and started commercial production and sale of its products under the "FUNSKOOL" mark in 1988. Thus for 14 years Complainant claims it has been using that mark continuously in connection with its activities; and it claims to have spent substantial amounts in advertising and popularizing the trademark "funskool" in connection with its products and services, especially with respect to educational aid games and activities for children. The sales, according to the Complainant have crossed Rs. 180 million per year. Due to the alleged substantial advertisement and sales it claims it claims to have made, the trademark or service mark "Funskool" has allegedly acquired considerable goodwill and reputation and is associated by the trade and public exclusively with the Complainant and its products and activities in India and many countries around the world.
According to the Complainant, it first learned of the existence of a possibly related company to the Respondent in 1998, when a company was incorporated in India under the name "funschool.com" (India) Pvt. Ltd. (hereafter described as "Funschool (India)). Due to the confusion and passing off likely to take place from use of such a similar name the Complainant brought a civil action in a Court in India and obtained an interim injunction against Funschool (India). Funschool (India) then changed its name to Red Fort Technologies Pvt. Ltd. According to the Complainant, in the course of the legal proceedings in India, Funschool (India) claimed that the Respondent in this proceeding was its parent company and that the Respondent was the owner of the domain name "funschool.com". No documentary proof of the Indian proceedings was attached to the Complaint.
The Complainant asserts that it intended to register "funskool.com" as a domain name and operate a website under the "Funskool" name to take advantage of the opportunities available through the Internet. However a search of the Network Solutions Inc. database showed that the Respondent company had not only registered "funschool.com" as a domain name but that it had also registered and blocked the Complainantís name by registering the domain name "funskool.com". The Complainant charges that this had clearly been done to prevent the Complainant from obtaining registration of its own name as a domain name and also to take advantage of the Complainantís worldwide reputation and goodwill.
The Complainant asserts that the domain name "funskool.com" held by the Respondent is identical to the trademark "Funskool", which has been registered as a trademark by the Complainant. The Complainant further asserts that the Respondent has no right or legitimate interest in respect of the domain name in question, which is the Complainantís name and registered trademark, and that the Respondent has registered and is using the domain name "funskool.com" in bad faith. Finally, the Complainant asserts that the Respondent has adopted the domain name "funskool.com" to attract, for commercial gain, Internet users to the domain name in question, by creating a likelihood of confusion with the Complainantís and registered trademark, "Funskool". Internet users may be led to believe that the Respondentís website is affiliated to, sponsored or endorsed by, the Complainant. This is all the more significant in this case, says the Complainant, as the users are mainly children and are easily deceived, confused and misled.
For the reasons given, the Complainant requests the Administrative Panel appointed to issue a decision that the contested domain name, that is, "funskool.com", to be transferred to the Complainant.
The Respondent makes the clarification that its name is "funschool.com" Corporation", not "funskool.com Corporation". The Respondent contends that in January 1997, it decided to begin an Internet content business under the name "funschool.com". It considered the choice of name particularly appropriate because the website was devoted to school age children. The Respondent obtained clearance to use the name "funschool.com" from the office of the Secretary of State in California, where the Respondent Company is incorporated. Thereafter, Respondent filed for and obtained a registration from the United States Patent and Trademark Office for the name "funschool.com". The Respondent exhibited the details of the United States Patent and Trademark Office registration of the trademark.
With regard to the allegation by the Complainant that the Respondent had registered and is using a domain name which is identical or confusingly similar to the Complainantís trademark, the Respondentís short answer is that "Ö while the Complainant may possess rights in India, it cannot use the mark "FUNSKOOL" in the United States. To do so would infringe the Respondentís rights."
In answer to the Complainantís case that the Respondent had no rights or legitimate interests in the domain name, the Respondent states that its adoption of the domain name "funskool.com" was legitimate and not tied to any effort to capitalize on the Complainantís goodwill, which, the Respondent states is non-existent in the United States and most countries. Given that the primary audience for the Respondentís content consists of school-age children, the Respondent "determined that many of them might misspell Ďfunschoolí by using the alternate form Ďfunskoolí". According to the Respondent, it was not uncommon in the English language to use the word "skool" in place of school. And that registration of the "funskool.com" domain name would cause users who misspell "school" to be sent automatically to Respondentís website. After considering similar case situations, the Respondent determined that for defensive purposes Ė to protect "funschool.com" from its near equivalent, namely, "funskool.com" Ė Respondent would and did register the domain name now disputed.
The Respondent objects that the burden of proving the Respondentís lack of legitimate interest in adopting the "funskool.com" domain name lies on the Complainant, and that the Complainant has failed to satisfy that burden of proof. The Respondent further asserts that self-serving allegations by a Complainant, made without supporting proof, are insufficient for this purpose. GA Modefine S.A. v. Sparco P/L (Case No. D.2000-0419) is cited as authority for this proposition.
With regard to the Complainantís submission that the registration by the Respondent of "funskool.com" was in bad faith, Respondent states that at the time it sought to register "funschool.com" and thereafter, it was not aware of Complainant. That while the Complainant attempts to imply a global business, in fact its primary operational base is in India. "A review of Westlaw (a computerized database containing news stories from virtually all major papers) confirms scant overseas activities." [see date of review: 9/12/00]. Further, the Complainant has not exported products bearing the "FUNSKOOL" mark to the United States. That the Complainant itself does not even mention the United States as a market. The Respondent further contends that while the Complainant alleges spending substantial amounts in advertising and promotion of its "FUNSKOOL" trademark, it has not alleged any spending relative to the United States, nor has the Complainant presented evidence of advertising and promotion in that country. The Respondent further asserts that no evidence has been submitted at all, which directly or indirectly supports a "world wide reputation". On the other hand the Complainant itself has alleged that it has sold goods in a few countries. "Moreover, while Complainant may seek to use the "funskool.com" domain name, such use in the United States would be enjoined as a violation of Respondentís trademark rights."
The Respondent finally contends that the Complainantís evidence of bad faith fails to meet the legal criteria established in the Policy. In support of that contention the Respondent refers to paragraph 4(a)(iii) of the Policy, and the case of World Wrestling Federation Entertainment, Inc. v. Michael Bosman (Case no. D99-0001), and concludes that it is clear from the evidence presented that the Respondentís motivation in registering "funskool.com" was not to cause confusion with the Complainant, who has no presence in the United States, but rather to ensure that individuals who want to go to Respondentís website, "but inadvertently type "SKOOL" instead of "SCHOOL" get to the Respondentís Web Site".
6. Discussion and Findings
As provided in paragraph 2 of the Internet Corporation for Assigned Names and Numbers (ICANN) Uniform Domain Name Dispute Policy (hereafter referred to as "the Policy"), by applying to register a domain name, the applicant represents, among other things that to its knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party and that the registrant will not knowingly use the domain name in violation of any applicable laws or regulations. The provision also places the responsibility for determining whether its domain name registration infringes or violates someone elseís rights on the applicant for registration.
As also provided in paragraph 4 of the Policy, the applicant for a domain name registration is required to submit certain types of dispute to a mandatory administrative proceeding. The applicable disputes are listed in sub-paragraph (a) of paragraph 4. It reads as follows:
You are required to submit to mandatory administrative proceeding in the event that a third party (a "complainant") asserts to the applicable Provider, in compliance with the Rules of Procedure, that
(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.
In the administrative proceeding, the complainant must prove that each of these three elements is present.
It is clear from the provisions of paragraph 4 of the Policy that where a Complainant challenges the registration or use of a domain name, to succeed, the Complainant has to establish all three elements specified in paragraph 4(a) above. Thus, if the Complainant fails to establish any one of the three elements upon which the Complainant has the burden of proof, its Complaint should be denied.
The Respondentís registration of the "Funskool" name as a domain name has been challenged by the Complainant in terms of paragraph 4(a) of the Policy. The Respondent is accordingly obliged to submit to a mandatory administrative proceeding.
The Complainantís case in the proceeding has been fully set out under section 5 of this Decision under the heading "Parties Contentions".
For the purposes of evaluation of the Complainantís case it is only necessary to draw attention to the following highlights. The Complainant has alleged and has adduced supporting evidence in the case file that it presented that it is a company incorporated under the laws of India. FUNSKOOL is its business name. The Complainant had registered and traded under the mark FUNSKOOL from September 1986. Its business includes trading in toys, playthings and games of all sorts for children and adults, educational-aid games and games of skill etc. The Complainant has registered other trademarks for other products, none of which seems to be in the same line of business as the Respondents. The trademark registrations were made in India. According to the Complainant, its products bearing the trademark "Funskool" have been sold all over India and have also been exported to various countries abroad, including Russia and Sri Lanka. There is no proof attached to the Complaint, which would support these assertions. The Complainant claims to have a foreign collaboration with the American Corporation, Hasbro Inc., which is one of the largest toy manufacturing companies in the world. The Complainant, however, does not specify the nature of the collaboration. The Complainant also states that it had spent substantial amounts in advertising and popularizing the trademark "Funskool" in connection with its products and services especially with respect to the educational aid games and activities for children. Further, the Complainant states that the sales for these products have exceeded Rs.180 million per year. At the exchange rate of Rs.47 to the US dollar, this works out at about US$ 3.8 million. Due to its advertisement and sales, the trademark or service mark "Funskool", says the Complainant, has acquired considerable goodwill and reputation and is associated by the trade and public exclusively with the Complainant and its products and activities in India and many countries in the world. No documentary proof of these assertions has been submitted. When in 1998, a company was incorporated in India under the name "funschool.com (India) Pvt. Ltd.", due to the confusion and passing off likely to take place from use of such a similar name, the Complainant brought an action against that Indian registered company and obtained an interim injunction against it, whereupon, that company changed its name to Red Fort Technologies Pvt. Ltd. In the course of the legal proceedings the Indian Company claimed that the Respondent is the owner and user of the domain name "funshool.com" Complainant has not submitted documentary proof of these assertions either.
The Respondentís answer to the case made out by the Complainant is simply that the Complainantís trademark "Funskool" is an Indian trademark the rights in which do not extend to the United States. The Complainant, therefore, has no rights whatever, which could be infringed or damaged by a Unites States corporation. It is correct that the name of the Respondent is "funschool.com", and that this was registered as a domain name. The Respondent, however, decided also to register as a domain name "funskool.com" because of the tendency of children often to spell "school" as "skool". So that those who erroneously spelt "school" as "skool" should be automatically directed to its website. The Respondent also states that in the English language, the spelling of "school" as "skool" is not uncommon. The Respondent, therefore, states that the adoption and registration of the name "funskool.com" is an outgrowth of the adoption, registration and use of "funschool.com." Relying on the first come first served basis for registration of domain names, the Respondent puts forward the defense that:
"Ö while the Complainant may possess rights in India, it cannot use the mark FUNSKOOL in the United States. To do so would infringe Respondentís rights."
It is against this background that the present case has to be considered. But before reaching that point, it is necessary to consider briefly the issue of the burden and weight of proof, which lies on the Complainant. As pointed out earlier, the burden of proving the three ingredients required by the Policy is placed on the Complainant. To what degree must it discharge this burden in order that an Administrative Panel may properly decide that the applicable standard has been discharged? That is the question as to the weight. Anglo-American law, which on this matter would apply to both India and the United States, the countries where both Complainant and Respondent respectively, were incorporated, has two standards of proof: proof beyond reasonable doubt, which is the standard which generally applies to criminal trials, and proof on a balance of probabilities, which is a lower test, which applies in civil cases. Unlike in a criminal case where the tribunal of fact has to be satisfied of the case of the prosecution beyond such doubt as could be described as reasonable (not merely fanciful), the standard in the civil case is to consider whether on balance the plaintiffís or defendantís case is more probable. This proceeding being in the nature of a civil proceeding, the civil standard of proof should apply.
Whether or not the Complainant has a trademark or service mark, which is identical or confusingly similar to the disputed domain name
Thus we come to the first element which the Complainant must prove, namely, whether the domain name, which is the subject of dispute, identical or confusingly similar to a trademark or service mark in which the Complainant has rights. It is important to keep in mind that the disputed domain name is "funskool.com". It is not "funschool.com". In support of its assertion on this issue, the Complainant puts forward its trademark registrations of the name "FUNSKOOL" is India made in 1986 and 1987. The Complainant has said that it has traded under this name since its incorporation. The Respondent does not dispute this, what it does is to dispute the extension of the rights, which the Complainant says it has to the United States. To decide this point, the simple question which has to be determined is whether the trademark in question must necessarily be effective in the country of incorporation of the Respondent, in this case, the United States. The question is relevant because the acquisition of a domain name of the ".com" type, which is the type in issue in this case, confers a right, which is global in effect. As explained in the English case of British Telecommunications plc. and Another v. One in a Million Ltd. and Others  4 All ER 476 at page 480, the name ".com" (distinguished from names like ".edu", ".gov" and ".org") means that the organization is question is an international commercial organization. In the Sanlam Case [Case No. D2000-0895] referred to earlier, the Presiding Panelist had occasion to make the following remarks, which bear repetition here:
"The registration of the domain name prevents the person who has the trademark even in one country from registering that mark as a domain name to promote its business as long as the existing registration of the other continues. It may be that the person who first registered the domain name had no knowledge of the existence of the mark, or has some right derived from some other source, in which case different considerations would arise. But if the person has that knowledge, and nevertheless chooses to register and use for commercial gain the trademark or service mark which is well known internationally of another country, even though not officially registered in his country, he must justify the registration and use of the domain name, if challenged, or he runs the risk of offending against the Policy.
It is well to bear in mind that domain names being of an international nature, they should be considered from an international perspective. The very use in a name with the ".com" designation indicates that the domain name is an international commercial organization."
The Policy places no limitation on the operative extent of a trademark, which the Complainant must show the disputed domain name to be identical or confusingly similar to. If the intention had been that the Complainantís right to complain about registration and use of a domain name which is identical or confusingly similar to its trademark had to be limited to a trademark recognized by the law of the Respondentís country of incorporation or residence, the Policy would have said so expressly. Were it otherwise, two possible results would follow: a person in a powerful country like the United States could register and use domain names identical or confusingly similar to any or all trademarks or service marks, however successful overseas, and claim that whatever be their trade or service mark rights outside the United States, they do not apply to the United States and therefore he is entitled to register that name for his own purposes, including its sale to the owner of the trademark or service mark or diversion of international customers of the owner of the mark to the registrantís website in the United States. Yet the use of the domain name in a website has consequences which are global in effect. Whether a respondent to a complaint protests its intention to target only customers within its own national market or not the availability of its material is by the very nature of the Internet is global and not national in effect. The alternative possibility if the argument that a trademark for the purposes of these Administrative Proceedings must be limited to trademarks recognized in the country of incorporation or residence of the residence is that, a person in a country, however insignificant or obscure, can follow the same procedure by registering the trademark or service mark of well-known international companies and get away with a plea that the trademark or service mark does not apply to his country. That would mean that trademarks and service marks, the validity of which is, in principle, regulated by national laws, must be placed at the mercy of such domain name registrants who may choose to use the name on a global basis to the detriment of the owner of the trademark or service mark, would be intolerable. The Panel is conscious of the fact that it is not a national administrative tribunal but an international one.
Whether a disputed domain name is identical or confusingly similar to a trademark or service mark is a question of fact which ought to be answered without reference to whether the trademark or service mark is operative in the country of residence or incorporation of the registrant of the domain name. That such interpretation must be adopted is consistent with and supported by the fact that two other stringent hurdles, apart from the identical or confusingly similar nature of the trademark have been placed in the way of the Complainant succeeding even if the Complainant surmounts this first one. A Complainant in an Administrative Proceeding calling for the transfer or cancellation of the domain name may fail to obtain a decision in his/its favor on other grounds which the Policy obliges him/it to prove, but not on the issue that the domain name is identical or confusingly similar to an existing trademark or service mark. Looked at in that light, the disputed domain name in this case, "funskool.com" is confusingly similar to the trademark, in which Complainant appears to have rights. However, the Complainant has not submitted proof of the breadth or extent of its trademark rights outside of the Country of India.
Whether or not the Respondent has any right or legitimate interest in the domain name
The next element which the Complainant must satisfy the Panel on in terms of paragraph 4(a) of the Policy is proof by it that the Respondent has no right or legitimate interest in respect of the domain name. With respect to this test, as the "Funskool" name is confusingly similar to the domain name in dispute, once the Complainant alleges that the Respondent has no right or legitimate interest in respect of that name and gives some prima facie proof that the name is not generic, or that the Respondent has no obvious right or legitimate interest in the use of the name, the onus shifts on to the Respondent to lead evidence in support of the claim that it has a right or legitimate interest in respect of that name. Indeed, the examples given in the Policy of circumstances which could show that a Respondent has a right or a legitimate interest in the use of the domain, which will presently be stated, have been framed to indicate how a Respondent could demonstrate to the Panel his right or interest, rather than in a manner for guidance of a Complainant obliged to disprove the circumstances. It is this sense of a shift in the onus of adducing evidence that the Presiding Panelist in the case of Sanlam Limited v. Selat Sunda Incorporated [Case No. D2000-0895] used the summary expression that the onus of proving this ingredient lies on the Respondent.
Paragraph 4(c) of the Policy gives the examples, obviously intended not to be exhaustive, of the facts which a Respondent could advance in resisting an allegation that it had no rights or legitimate interests in respect of a domain name. They illustrate the type of defenses that a Respondent could raise. They are as follows:
"(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) if you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Can the Respondent avail itself of any of these defenses in the circumstances of this case?
Taking Example (ii) first, the defense, which should be established, is whether the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if it has acquired no trademark or service mark rights. The Respondent does not show this. What the Respondent appears to show is that as it is known by the name "funschool.com Inc."; and as in the English language, "school" is commonly spelt, especially by children making a mistake, as "skool"; it is therefore entitled to register the "funskool.com" domain name. The Respondent also says that it adopted the name because as it traded in childrenís games, incidentally, as also does the Complainant, the children often make a mistake in spelling "school" as "skool" and therefore the Respondent wanted such enquiries with the wrong spelling to be automatically diverted to its website. One is left to wonder how the Respondent got to know that children in search of its website had been spelling "Funschool" as "Funskool". The best that can be said for the Respondent is that both words are pronounced in an identical manner.
Example (i) posits a situation where the Respondent, before notice to it of the dispute between the Parties, had used, or made demonstrable preparations to use, the domain name, or a name corresponding to the domain name, in connection with a bona fide offering of goods or services. A problem, which the Complainant faces in connection with this second test, arises from the obvious similarity in the pronunciation of its name and trademark "Funskool" to the Respondentís name of "funschool.com". The similarity is so obvious that when a company in India was registered not with a name identical to the Complainantís own, but with the name "funshool.com (India) Pvt. Ltd.", the Complainant says that it took action to secure an injunction against that company, as it says in its Complaint, "Due to the confusion and passing off likely to take place from use of such a similar name". The respondent company in that case was obliged to change its name. Just as the Complainant could complain in the action in India that a company with the word "Funschool" in its name is likely to confuse the public on account of the similarity of that name to the Complainantís own name of "Funskool", and get an order restraining the continuation of the company under that name, so also can a person who can claim that its name under which it has been doing business is "funschool.com" say that the Complainantís name is so similar to that companyís own name and registered domain name as to cause confusion to its customers. And it is in this respect that the principle of first come first served becomes of crucial importance in domain name registrations.
Now, paragraph 4(c)(i) of the Policy excuses not only users of, or persons who had made demonstrable preparations to use, the identical domain name before the Respondent had notice of the current dispute but also those who had been using or had made demonstrable preparations to use a domain name which corresponds to that domain name. It is here that the Respondent can claim, as it does, that it had been using a name, that is "funschool.com" which corresponded to the domain name "funskool.com" in association with the bona fide offering of goods and services before knowing of the present dispute. Indeed, the Respondent can, on the basis of the facts adduced, go further and say that it was using even the identical domain name "funskool.com" in such context before it became aware of the present dispute. On that claim, the questions, which arise for consideration are:
(a) When did the Respondent become aware of the present dispute?
(b) Whether the Respondent was using the "funskool" name in association with a bona fide offer of services and goods before it became aware of this dispute.
With respect to when this dispute started, the Complainant states in its Complaint that it is when it intended to register the domain name "funskool.com" and operate a website under its own name "Funskool" to take advantage of the opportunities available through the Internet that it discovered that, "Ö a search of the Network Solutions Inc. database showed that the Respondent company had not only registered its own name "funschool.com" as a domain name but that it had also registered and blocked the Complainantís name by registering the domain name "funskool.com"í." It would appear that the database search was conducted in July 2000. There is no evidence of the Complainant attempting to contact the Respondent before this UDRP proceeding was brought. The Respondent opens its Response with the words that, "On August 28, 2000, Respondent received Notification of Complaint and Commencement of Administrative Proceeding from WIPO Arbitration And Mediation Center (ĎCenterí) by e-mail informing the Respondent that an administrative proceeding has been commenced by the Complainant..." That is consistent with WIPOís own record in the Case File.
The crucial question, therefore, is whether the Respondent was using, or had made demonstrable preparations to use, the "funskool" name in association with a bona fide offer of services and goods before it became aware of this dispute. It is correct that except for the statement in the Response that the Respondent had in January 1997, decided to begin an internet content business under the name "funschool.com", the Respondent does not indicate in the body of its Response that this decision was ever translated into fact. But one exhibit (Exhibit C) submitted by the Respondent to show that the website was devoted to school children comes to the Respondentís rescue. Exhibit C, is an article purporting to have been written on August 9, 1999, in praise of "funschool.com" as a popular games station to children and women. Presuming that this date is correct, then clearly the Respondent was offering some bona fide service under a name similar to "Funskool" some considerable time before the dispute in this case was started. On this issue, the Complainantís case must fail.
That being the case, it is not necessary to consider Example (iii), which is merely another possible defense which the Respondent could raise on the question of its right or legitimate interest in the disputed domain name.
Whether or not the Respondent has Registered and is Using the Domain Name in Bad Faith
In view of this decision that the Respondent has shown that it was using a name corresponding name to the disputed domain name before it received notice of the present dispute, it is not necessary to further consider the third element on which the Complainant must satisfy the Panel. For the purposes of any future consideration of the ICANN Policy by paragraph 4(a)(iii) of the Policy the appearance of usage by a Respondent in the bona offering of goods and services under the same or a corresponding name to the disputed trademark on the one hand and registration and use that the domain name in bad faith should be touched upon. In this regard paragraph 4(b) of the Policy gives a number of circumstances, but without limitation, which if found by the Panel would amount to registration and use of a domain name in bad faith. They are as follows:
(i) circumstances indicating that you have registered or you have 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 trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainantís mark as the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.
Respondent admits that it was aware of the name and trademark of the Complainant at the time that it registered the domain name in dispute. There is the case, which the Claimant brought against the company, which was registered, in India under the name of "funschool.com" (India) Ptv. Ltd". The mere fact that the defendant to the action which arose therefrom is alleged by the Complainant to have stated that its principle was a company in the US with the Respondentís name exactly, may not by itself be a reason for attributing to the Respondent responsibility for the events in India. But there is also the fact alleged by the Complainant, but not supported by documentary evidence, that when the interim injunction was granted, the affected Indian company changed its name to Red Fort Technologies Pvt. Ltd. Now, from the extract from the "WHOIS" record of the registration of "funskool.com" domain name which is exhibited in the Respondentís own Response, the "Administrative Contact, Technical Contact, Zone Contact, Billing Contact" is given as "Boinapalli Sashi (SB3319) "email@example.com", Red Fort Technologies Inc. Ö". [emphasis supplied] The record in the "WHOIS" databank was created on October 2, 1998, the very year of the action in India. The name of the company originally incorporated in India is the same as the Respondentís, the name to which the company registration is changed is the same as the corporation in California, US of Boinapalli Sashi, the administrative contact for the Respondent. It cannot be a coincidence that the company against which the interim injunction was given and the Respondent share these similarities. Moreover, in the field of games, whether for children or adults, the Complainant and Respondent are competitors. There is, therefore, prima facie evidence which would support a claim that, having lost the registration of the name it originally intended for the Indian company to the Complainant, the Respondent had, in its belief that the Complainantís trademarks did not extend to the United States, in turn taken the subsequent step to register the disputed domain name for the purpose of disrupting the business of a competitor. Whether this is the primary purpose or an equal or subsidiary purpose is a matter for argument. The question is whether the sense in which the expression bona fides is used in connection with the offer of goods and services in paragraph 4(c)(i) is used in the same as when used in paragraph 4(b) of the Policy. It would, nevertheless, seem as if the possible inferences that could be drawn from the history and competitive character of the Parties, if correct, give some grounds for concern about the Respondentís bona fides with respect to paragraph 4(b) in this case. These observations are made to illustrate a problem area in the examples given in the Policy.
With respect to this decision, however, the Respondent had been offering a bona fide service under a name corresponding to the domain name "funskool.com" before it had notice of the current dispute. Additionally, the Complainant has not come forward with sufficient evidence of the Respondentís bad faith registration and use of the contested domain name. This case must end, therefore, in the refusal of the Complainantís request for a transfer of the domain name to it.
For the above reasons, the Complainantís request for the transfer to it of the disputed domain name is refused.
A. N. E. Amissah
Dissenting Decision of Maninder Singh
6. Discussion and Findings
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(1) That the domain name registered by the Respondent is identical or confusingly similar to a service mark or trade mark in which the Complainant has rights; and
(2) That the Respondent has no legitimate interests in respect of the domain name; and
(3) That the domain name has been registered and used in bad faith.
Identical and confusing similarity
The record clearly shows that the contention of the complainant that the domain name "funschool.com" registered by the respondent is identical and/or confusingly similar to its trademark 'funskool' in which the complainant has rights, is correct.
The following facts which have been stated by the complainant in the complaint have not been denied by the respondent:
(a) The complainant has in its favor two registrations under the Trademarks Act in India, the first being September 10, 1986, in class 28 and the second being dated August 20, 1997, in class 25 for the mark "funskool".
(b) The respondent had, in the year 1998, incorporated a company in India with the corporate name "funschool.com" (India) Pvt.Ltd.". The complainant had initiated legal proceedings against the respondent for using the name "funschool". The respondent gave up its corporate name "funschool.com" (India) Pvt.Ltd." and changed the name of its company to "Red Fort Technologies Pvt. Ltd."
(c) The respondent has registered two domain names, i.e., (i) "funschool.com" and (ii) "funskool.com". The respondent has created a link between these two domain names. Whenever anyone types "funskool.com" on the net, he automatically gets connected to "funschool.com".
The above-mentioned facts are not denied by the respondent. The existence of the hyperlink between the above-mentioned two domain names registered by the complainant is also correct, as it is the actual position on the net.
The respondent in its reply has contended that it has obtained a trade mark registration for "funschool.com" from the United States Patents and Trademarks Office and further stated that Attachment D to the response is a print-out from the United States Patent and Trade Marks Office detailing the registration. Since the Attachment D was only a website print-out and not a copy of the certificate of registration, I had endeavored to open the website of USPTO when, to my surprise, I found that the USPTO had declined the application of the complainant for trade mark registration for "funschool" on November 3, 2000. It would be relevant to notice here that this material fact has not been disclosed by the respondent in its response.
The respondent in its response has relied upon the provisions of Section 1115 of the Lanham Act (the Federal Trademark Act) for claiming exclusivity of rights for the user of the mark for which registration has been obtained. I am afraid that this provision, in view of the admitted facts of the present case, does not help the respondent. It is well settled that mere registration of a trademark is no defense in an action for passing off. Similarly, for registration of a domain name, it is not necessary for an applicant to establish that the products/services of the applicant are sold/provided all over the world. The concept of different territories which is well accepted in the law governing trade mark registrations is completely unknown and incompatible in the case of registration of domain names. It is sufficient for any applicant to continue to have entitlement for the registration of the domain name if it establishes that the applicant has some rights and/or legitimate interest in the domain name. In other words, for establishing rights and legitimate interests in a particular domain name, an applicant is not required to establish worldwide reputation of its products/services. Thus, the contention of the respondent that the complainant has not provided any evidence of sale of its products in America and, as such, it has no right or legitimate interests in the domain name "funskool.com", simply deserves to be rejected. I am further of the view that the respondent is also not entitled for the benefit of the well accepted concept of 'honest concurrent user' inasmuch as the registration of domain name "funskool.com" by the respondent for the mere use as a hyperlink (after the respondent was fully aware of the business activities of the complainant and had given up the corporate name of "funschool.com" (India) Pvt.Ltd.") is obviously for attracting internet users to its website by creating a confusion.
Under these circumstances, I am clearly of the opinion that the respondent has no legitimate interest in the domain name "funskool.com", which is admittedly the registered trademark of the complainant since 1986, and is being used by the respondent only as a hyperlink. It is, thus, clear that it is the complainant who has the rights and legitimate interest in the domain name "funskool.com".
I am inclined to accept the reasons given by the complainant for establishing that the registration by the respondent is in Bad Faith. The respondent does not deny the statement of the complainant that on being objected to through legal proceedings in India, the respondent had given up its corporate name "funschool.com" (India) Pvt.Ltd." in the year 1998, by changing its corporate name to "Red Fort Technologies Pvt.Ltd.". It is also a matter of record that the respondent was aware of the existence of the trademark of the complainant viz., "funskool" before it registered the above-mentioned two domain names. It is also true that the second domain name, i.e., "funskool.com" is actually being used as a hyperlink for taking Internet users to the website of the respondent, viz., "funschool.com". It is also available on the website of USPTO from where the respondent has taken a print-out for claiming the benefit of registration, that its application for registration for the trade mark "funskool" stands rejected by USPTO. This material fact has not been disclosed by the respondent. Thus, in my view, the registration of the respondent is in Bad Faith.
I respectfully disagree with the views of the other members of the Panel. I, as a member of the Panel appointed in this case, am of the view that the Respondent's domain name "funskool.com" should be transferred to the Complainant.
Dated: November 30, 2000