WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Maruti Udyog Limited v. Subba Raju
Case No. D2000-1036
1. The Parties
The Complainant is Maruti Udyog Limited, a company registered under the Indian Companies Act 1956 and having its registered address at 11th Floor, Jeevan Prakash, 25, Kasturba Gandhi Marg, New Delhi – 110001, India.
The Respondent is Subba Raju of Subba Raju Penmethsa, 36661 Grand River, # 203, Farmington Hills, MI 48335, United States of America.
2. The Domain names and Registrar
The dispute concerns the domain names "maruticars.com" and "maruticar.com" registered with Register.com, Inc. of 575, 8th Avenue, 11th Floor, New York, NY 10018, United States of America.
3. Procedural History
On August 12, 2000, the Complainant submitted a complaint by e-mail 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 August 16, 2000, the Complainant submitted the hardcopy of the complaint to the WIPO Center.
On August 12, 2000, the Complainant claims to have sent or transmitted a copy of the complaint to the Registrar by courier/e-mail. However, on August 23, 2000, while confirming by facsimile to the WIPO Center that it was the Registrar of the
domain name "maruticars.com" and that the registrant was the Respondent, the Registrar denied having received a copy of the complaint.
On August 28, 2000, the WIPO Centre submitted the copy of the complaint to the Registrar. It also sent the Notification of Complaint and Commencement of Administrative Proceeding (the Notification) by post/courier, facsimile and e-mail to the Respondent and transmitted by e-mail copies of the said documents to the Complainant. In addition, the WIPO Center sent copies of the Notification to the Internet Corporation for Assigned Names and Numbers (ICANN) and the Registrar. The Notification set August 28, 2000, as the formal date of the commencement of this administrative proceeding and required the Respondent to submit a response to the complaint within 20 calendar days from the date of the Notification pursuant to paragraph 5 of the Rules, i.e. by September 18, 2000.
On September 2, 2000, the Complainant, through its authorized representative, sought to amend the complaint to include the domain name "maruticar.com" as an additional disputed domain name, besides the domain name "maruticars.com".
On September 8, 2000, the WIPO Center informed the Complainant’s authorized representative that while the Complainant could amend the complaint, it should follow the same procedure as if it was submitting a new complaint and this would entail the sending of the amended complaint to the Registrar and the Respondent.
There would be a need for the WIPO Center to re-notify the case to the Respondent.
On September 11, 2000, the WIPO Center further informed the Complainant’s authorized representative that the complaint, as unammended, had already been notified to the relevant parties and the case had already commenced; any amendment would be subject to the approval of the Panel and in the interest of the Complainant it should withdraw the case and re-submit a new case.
On September 15, 2000, the Complainant’s authorized representative informed the WIPO Center that the Complainant was not interested in withdrawing its case. The Complainant asked the WIPO Center to forward its case for amendment to the Administrative Panel (the Panel) for its decision. It also confirmed that the request for amendment had already been forwarded to the Respondent and the Registrar.
On September 18, 2000, the Respondent sent a response to the complaint to the WIPO Center. On September 25, 2000, the WIPO Center acknowledged receipt of the response by e-mail.
In its complaint the Complainant elected to have the dispute decided by a single-member Administrative Panel and in the event the Respondent designated a three-member Administrative Panel the Complainant nominated Mr. David P. Plant, Mr. Geert Glas and Professor Charles Gielen as its candidates to the Administrative Panel. In his Response, the Respondent elected to have the dispute decided by a three-member panel.
On November 15, 2000, the WIPO Center appointed Mr. Hariram Jayaram to be presiding panelist, Mr. Jeffrey Kaufman and Mr. Pravin Anand as the panelists after receiving the Statements of Acceptance and Declarations of Impartiality and Independence from them and sent the 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.
On December 6, 2000, the Panel after due deliberation informed the WIPO Center by e-mail that it was prepared to allow the amendment for the inclusion of the additional domain name "maruticar.com" in the complaint. However, the Complainant should submit an amended complaint with the amendments underlined or italicized within five days. On receipt of the amended complaint, the Respondent should be given twenty (20) days to submit his amended response.
On December 7, 2000, the WIPO Center informed the Complainant and the Respondent of the decision of the Panel to allow the Complainant to amend its complaint within five days and the Respondent to submit his response within twenty days.
On December 12, 2000, the Complainant submitted its amended complaint to the WIPO Center by e-mail. On the same day, the WIPO Center received the amended complaint in hardcopy via facsimile from the Complainant.
On December 13, 2000, the WIPO Center sent the amended complaint and the Limited Notification of Complaint and Commencement of Administrative Proceeding relating to the new domain name "maruticar.com"(the additional Notification) by facsimile and e-mail to the Respondent and transmitted by e-mail copies of the additional Notification to the Complainant. The WIPO Center also sent copies of the additional Notification to the Internet Corporation for Assigned Names and Numbers (ICANN) and the Registrar. The additional Notification set December 13, 2000, as the formal date of the commencement of this administrative proceeding and required the Respondent to submit a response to the amended complaint within 20 calendar days from the date of the additional Notification i.e. by January 1, 2001.
On January 2, 2001, the Respondent submitted his additional response to the amended complaint to the WIPO Center by e-mail and on January 4, 2001 the hard copies.
The Panel finds that the WIPO Center has discharged its obligations and responsibilities under the Rules and that the Panel is properly constituted and appointed.
The Panel will hereby issue its decision based on the statements and documents submitted and in accordance with the Policy, the Rules, the Supplementary Rules and any principles of law, which the Panel deems to be applicable.
4. Factual Background
The Complainant asserts that the word MARUTI is its well-known tradename. On June 14, 1971, Maruti Limited was incorporated under the Indian Companies Act 1956 and carried on the business of inter alia manufacture of automobiles and bus bodies. On October 30, 1980, the Central Legislature (Parliament) of India passed the Maruti Limited (Acquisition & Transfer of Undertakings) Act 1980, to acquire the undertaking of the said company. On February 24, 1981, the Complainant was incorporated under the Indian Companies Act 1956 as a Government company for the modernization of the Indian automobile industry and the production of fuel-efficient vehicles. It is now popularly known as MARUTI and its issued paid up capital is Rs.1322.92 million.
The Complainant is the proprietor of the word mark MARUTI. It was registered under the Indian Trade and Merchandise Marks Act 1958 under No. 319710B on October 25, 1976 in Class 12 for vehicles, bus bodies, automobile parts and fittings and is valid until October 25, 2004. The Complainant has applied for the registration of the said word mark in Class 9 for audio systems for vehicles. It has also applied for the registration of the trademark MARUTI with the wing device in Class 4 for industrial oils, greases and lubricants. The Complainant also claims to have a registration in India for the trademark MARUTI with the wing device. The said trademarks are also registered in Poland, Italy, Portugal, Malta, Nigeria, Sri Lanka, Argentina, Nepal, Hungary, France, Australia, Uruguay, Ethiopia, Zimbabwe, Kenya, South Africa, Sudan and Egypt. The trademark MARUTI is perceived as a leading name in the automobile industry.
The Complainant is a market leader for the passenger car segment. Since December, 1983, it has sold 2.9 million vehicles in India and in 36 other
countries. In India, its market share is more than 50%, making it the largest producer of passenger cars. Its most popular small car is known as Maruti-800. It has expended large sums of money in promoting and publicizing its trademarks since 1983. The trademarks have regularly appeared in many newspapers and magazines having widespread reach and circulation. They have also appeared in the electronic media. The Complainant has used the trademark MARUTI on its stationery articles including letterheads, visiting cards, order forms, bill books and envelopes and on all its promotional materials such as brochures, catalogues and price lists. It displays the word mark MARUTI prominently on its products. It intends to use the word mark MARUTI on its goods and services associated with garage keepers; suppliers of and dealers in petrol, electricity and other motive power for motors; iron founders; mechanical engineers and manufacturers of machinery.
The Complainant provides up to date information about itself as well as its products through its websites "marutiudyog.com", "maruti.net", "marutizen.com", "marutiesteem.com", "marutibaleno.com", "marutiomni.com", "marutigypsy.com" and "marutiwagonr.com". It alleges that the domain names "maruticars.com" and "maruticar.com" are confusingly similar to its trademarks and the Respondent has adopted them to divert the customers and tarnish the trademarks of the Complainant.
The Respondent says that he is a computer software engineer. He would like to use his experience and do business in the field of computers and related fields. He is not in any of the fields of activities in which the Complainant is involved. He claims that he has registered the domain names "maruticars.com" (Maruti Computer Aided Resource Solutions) and "maruticar.com" in good faith. He says that he has used the name of Maruti, which is not a proprietary name of any one. Maruti is the name of a popular Hindu god in India and it is used as a first name by millions of Indians and has also been used with regard to business activities for more than a century. The Complainant is claiming proprietary rights on the use of the Hindu god’s name and is attempting to appropriate the centuries old name for its exclusive use. The Complainant is alleging misuse of the Maruti brands’ reputation. In fact, the Complainant is hurting the Respondent’s religious sentiments and beliefs.
5. Parties’ Contentions
The Complainant says that it is the owner of the word mark MARUTI and the trademark MARUTI with the wing device. It has registered and made long and substantial use of the said trademarks. The domain names "maruticars.com" and "maruticar.com" of the Respondent are identical and confusingly similar to its said trademarks. The Respondent has no legitimate interests in the domain names "maruticars.com" and "maruticar.com" and has registered them in bad faith.
The Respondent indicates that ‘maruticars’ is an abbreviation of Maruti Computer Aided Resource Solution. He asserts that he has registered the domain names "maruticars.com" and "maruticar.com" in good faith for its computer related activities or services. He claims that Maruti is not the proprietary name of a particular person.
6. Discussion and Findings
When the complaint was filed, the Complainant made reference only to "maruticars.com" as the disputed domain name registered by the Respondent. After the commencement of the Administrative Proceeding the Complainant has sought to amend its complaint by including "maruticar.com" as the additional domain name in dispute because "maruticar.com" is also registered with Register.com, Inc. in the Respondent’s name. The Respondent has been given the opportunity to respond to the amended complaint and he has submitted his additional response to the WIPO Center on January 2, 2001.
The Panel has taken the view that the amendment requested by the Complainant should be allowed because in addition to "maruticars.com", the Complainant is merely asking the Panel to include for decision, an additional disputed domain name which is very similar i.e., "maruticar.com". The parties concerned, as requested by the Panel have followed the procedures for the making of the amendment to the complaint and the submission of the response. In order to save time and costs for all the parties it is desirable to consider these singular and plural versions of the similar second level domain names "SLD" together in a single decision.
6.2 Elements to be Proved
Under paragraph 4(a) of the Policy, the Complainant must prove each of the following elements in order to succeed in its complaint:
(i) The Respondent’s domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in the domain names; and
(iii) the Respondent’s domain names have been registered and are being used in bad faith.
6.3 Identical or Confusingly Similar to Complainant’s Trademarks
The Complaint claims rights in the word mark MARUTI and the trademark MARUTI with the wing device. It has registered them in several countries, particularly India, in Class 12 for vehicles and their parts. The Complainant has made extensive use of the said trademarks on a number of goods, especially small cars. There can be no doubt that the Complainant enjoys goodwill in the word MARUTI from its use on the motor vehicles. When it comes to the goods, motorcars, even though MARUTI is the name of an Indian or a personal name, the word MARUTI has acquired a secondary meaning and indicates the motorcars connected exclusively with the Complainant. The Panel has compared the domain names "maruticars.com" and "maruticar.com" with the Complainant’s trademarks MARUTI and MARUTI with the wing device and finds that the domain names "maruticars.com" and "maruticar.com" are confusingly similar to the Complainant’s trademarks.
6.4 Respondent’s Rights or Legitimate Interests in the Domain Name
Under paragraph 4 (c) of the Policy, the Respondent may demonstrate his rights and legitimate interests in the domain names "maruticars.com" and "maruticar.com" by showing:-
(i) his use, of or demonstrable preparations to use, the domain names or a name corresponding to the domain names in connection with a bona fide offering of goods or services before any notice to him of the dispute; or
(ii) he has been commonly known by the domain names, even if he has acquired no trademark or service mark rights; or
(iii) he is making a legitimate non-commercial or fair use of the domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent alleges that its registration of the domain name "maruticars.com", to stand for Maruti Computer Aided Resource Solutions, is for the purpose of providing computer related activities or services.
There is no evidence of use or demonstrable preparation to use the domain names "maruticars.com" and "maruticar.com" for the services as alleged. Both his websites are passive or dormant and there is nothing on record to indicate that the Respondent has provided the services for which the domain names "maruticars.com" and "maruticar.com" have been registered.
The Respondent explains that the expression ‘CARS’ means Computer Aided Resource Solutions. There is no evidence on record to indicate that the word ‘CARS’ is used commonly or generally in the computer industry or information technology industry to express services. The Respondent has additionally registered the domain name "maruticar.com". There is no explanation for the choice of the expression ‘CAR’. Dropping the letter ‘s’ standing for ‘solutions’ does in fact lead to an incomplete version of ‘Computer Aided Resource Solutions’. All these factors indicate that the domain names "maruticars.com" and "maruticar.com" have no nexus or connection with the intended services, if any, of the Respondent.
6.5 Registration and Used in Bad Faith
It is required of the Complainant to prove that the Respondent has registered and used the domain names "maruticars.com" and "maruticar.com" in bad faith.
The neologisms ‘maruticars’ and ‘maruticar’ consist of a combination of two words put together having an obvious meaning to, at least Indian consumers. The domain names would refer to cars under the brand name MARUTI. The use of "maruticars.com" or "maruticar.com" is bound to create confusion resulting in the Internet users associating the domain names "maruticars.com" and "maruticar.com" with the business of the Complainant and visiting the websites of the Respondent under the mistaken belief that they are websites of the Complainant. The Respondent ought to have known this. The Panel has no alternative but to conclude that there is bad faith in the choice and registration of the domain names "maruticars.com" and "maruticar.com".
The domain names "maruticars.com" and "maruticar.com" are not being used in relation to any active website, judging from the documents made available to the Panel. Nevertheless, as stated by the Panel in Telstra Corporation Ltd. v Nuclear Marshmallows WIPO Case No. D2000-0003 (February 18, 2000):
"… the concept of a domain name…being used in bad faith… is not limited to positive action; inaction is within the concept".
The Respondent has the potential to activate his websites in such a manner as to confuse and divert the Complainant’s customers to his websites. When this occurs, the services, if any, of the Respondent have the potential of being taken as those provided by the Complainant.
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 domain names "maruticars.com" and "maruticar.com" be transferred to the Complainant.
Jeffrey Kaufman Pravin Anand
Dated: January 30, 2001