WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Margadarsi Marketing Private Ltd. v. BitraNet India
Case No. D2000-1209
1. The Parties
1.1 The Complainant in this administrative proceeding is Margadarsi Marketing Private Limited, with its principal place of business at Eenadu Complex, Somajiguda, Hyderabad Ė 500 082, India.
1.2 The Respondent is BitraNet India, BitraNet Internet Services Pvt. Ltd., Road No.10, Banjara Hills, Hyderabad, Andhra Pradesh Ė 500 034, India.
2. The Domain Name and Registrar
The domain names in dispute are as follows:
The above domain names are registered with Network Solutions Inc. based in Herndon, Virginia, United States of America.
3. Procedural History
3.1. A Complaint was received by the WIPO Arbitration and Mediation Center by email on September 13, 2000, and in hard copy on September 18, 2000.
3.2. On September 18, 2000, a request for Registrar verification was transmitted to the Registrar, Network Solutions, Inc. ("NSI") requesting it to: (1) confirm that the domain names in issue are registered with NSI; (3) provide the full contact details [i.e., postal address(es), telephone number(s), facsimile number(s), e-mail address(es)] available in the Registrarís Whois database for the registrant of the disputed domain names, the technical contact, the administrative contact and the billing contact, (4) confirm that the Uniform Domain Name Dispute Resolution Policy (the "Policy") is in effect, and (5) indicate the current status of the domain names.
3.3. On September 28, 2000, NSI confirmed by reply e-mail that the domain names in question were registered with NSI and were currently in active status. The Registrar also forwarded the requested Whois details, and confirmed that the Policy is in effect.
3.4. The WIPO Center determined that the Complaint satisfies the formal requirements of the Policy, the Rules for Uniform Domain Name Dispute Resolution Policy (the "Uniform Rules") and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"). The Panel has independently determined and agrees with the assessment of the WIPO Center in this regard. The Complainant paid on time and in the required amount the fees for a sole Panelist.
3.5 No formal deficiencies having been recorded, on September 29, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification") was transmitted to the Respondent (with copies to the Complainant, NSI and ICANN), setting a deadline of October 18, 2000, by which time the Respondent could file a response to the Complaint. On October 2, 2000, the Complainant requested that in the light of certain developments, it be permitted to amend the complaint. On being informed by the Center that an amendment could result in a revised notification and an extension of the due date for the response, the Complainant by an email dated October 5, 2000, clarified that it sought only to provide supplementary information and not amend the complaint.
3.6 In view of the fact that the earlier notification had involuntarily omitted one among the seven domain names listed in the complaint, the Center on October 11, 2000, issued a revised notification of the complaint and stated that in view of the revised notification, the new date of commencement would be October 11, 2000, and the new due date for the filing of the response would be October 30, 2000. The revised commencement notification was transmitted to the Respondent by e-mail to the e-mail addresses indicated in the Complaint and specified in NSIís confirmation. In addition, the Complaint was sent by express courier to the postal address given. Having reviewed the communications records in the case file, the Administrative Panel finds that the WIPO Center has discharged its responsibility under Paragraph 2(a) of the Uniform Rules "to employ reasonably available means calculated to achieve actual notice to Respondent."
3.7 In view of the deadlines stipulated in the Policy and Rules and the absence of exceptional circumstances, the Center declined the request of the Respondent, (made via letters dated October 28, 2000, and October 31, 2000,) that it be granted additional time for filing its response. On October 31, 2000, not having received any response, the WIPO Center sent the parties a formal Notification of Respondent Default.
3.8 On November 13, 2000, in view of the Complainantís designation of a single Panelist, the WIPO Center appointed the undersigned to serve as the sole Panelist.
3.9 In view of the fact that the Respondent had requested for additional time to substantiate the fact that it did have a company called M/s Kalanjali Technologies ltd., the panel decided to grant the Respondent three days time to submit such evidence and the Complainant three days time to respond to such evidence. In view of this time granted to the parties, the due date for the decision was extended by six days to December 3, 2000. Despite this opportunity, no documents were submitted by the Respondent.
4. Factual Background
4.1 The Complainant was incorporated on August 12, 1974, in India as Margadarsi Marketing Private Limited with the object of marketing and promoting sales of various third party products and publications. The Complainant is a part of "Eenadu-Margadarsi Group", a reputed group of companies, engaged in publishing, television, broadcasting, financial services, foods, film production and distribution as well as a variety of other business. The Group publishes the largest circulated Telugu language daily "Eenadu" and an English daily "Newstime".
4.2 In 1992, the Complainant started a handicrafts division bearing the name KALANJALI. This division was set up with a view to promote the sale and export of handicrafts, silks, cottons and textiles of genuine Indian craftsmanship under the brand KALANJALI. In pursuance of this objective, the Complainant invested a huge amount in setting up a showroom called KALANJALI in the city of Hyderabad, India.
4.3 Since its inception, the Complainant has extensively advertised its products and showroom as well as made a substantial investment in stocking goods in its showroom. The Complainant has also started doing exports of various goods since April 1993, under the trademark KALANJALI . Additionally, the Complainant has also made several trademark applications under various classes for the trademark KALANJALI during the course of 1998.
4.4. The Respondent has registered the seven domain names indicated in the complaint.
5. Partiesí Contentions
A. The Complainantís contentions are as follows:
5.1 Although the whois records pertaining to the seven domain names reflect slight variations in the names and contact details of the registrant/ administrative contact, a close comparison of the whois records would lead one to conclude that all the domain names are registered by the same person i.e. the Respondent in the present proceedings.
5.2. The domain names in issue are identical or confusingly similar to the trademark KALANJALI in which the Complainant has a statutory right as well as a right in common law, by virtue of a long and continuous user. In support of itís contention, the Complainant has submitted evidence to demonstrate that it has, since the year 1992, advertised the trademark KALANJALI extensively through both print as well as visual media. Apart from this, it has also applied for trademark registrations for the word KALANJALI in various classes. The Complainant contends that although the term KALANJALI is a Sanskrit word meaning "offering of art", it has through extensive advertising come to be associated with the business and goods of the Complainant.
5.3. The Respondent has no rights or legitimate interests in support of the said domain names;
5.4. The impugned domain names were registered and are being used in bad faith.
5.5. The Complainant has further delineated its contentions under three broad heads as below:
Identical or confusing similarity
5.6. As regards the domain names registered by the Respondent, the Complainant contends that the suffix of the trademark of the Complainant incorporated in the domain names i.e. "india", "handicrafts", "arts" and "online" are terms whose capacity to distinguish the domain names from the relevant trademark of the Complainant i.e. KALANJALI is limited. On the contrary, the said suffixes are suggestive of the business of the Complainant. Thus, despite the presence of the suffixes, the domain names are confusingly similar to the Complainantís trademark.
5.7. The Complainant has not licensed or in any way authorized the Respondent to use its trademark KALANJALI. Further none of the domain names resolve to fully active websites. The first domain name, "kalanjali.com" resolves to a partially active website purporting to sell certain products/services. Although the website is titled "Indiaís first handicrafts e-commerce site", the index page merely lists out a series of offerings without elaborating on them. Although these listings give the impression of having embedded hyperlinks, this is not so. The source code of the Respondentís website also does not reveal any connection with commerce in handicrafts, making it evident that there are no demonstrable preparations to use the domain names in connection with a bonafide offering of goods/ services. The other domain names (2 to 7) do not resolve to active websites either. Hence the Respondent cannot be said to have any rights/legitimate interests in respect of any of the impugned domain names.
5.8. The Complainant contends that by registering seven domain names incorporating the trademark of the Complainant, the Respondent has prevented the Complainant from reflecting its trademark in corresponding domain names. The Complainant relies on Sanrio Company Ltd. And Sanrio, Inc. Vs. Neric Lau Ė WIPO Case D2000-0172 and Stanel Works and Stanlry Logistics, Inc. Vs. Cam Creek. Co., Inc. Ė WIPO D2000-0113 in this regard, wherein it has been held that the registration of several domain names incorporating various combinations of the Complainantís trademark amounts to a "pattern" of conduct aimed at preventing the Complainant from using itís trademark in cyberspace.
5.9. The fact that the Respondent has engaged in a "pattern" of such conduct (i.e. preventing a trademark owner from reflecting itís trademark in a corresponding domain name) is further evidenced by the fact that the Respondent has registered domain names incorporating the trademarks of other well known entities as well, such as "satyaminforway.net", "satyaminfoway.com", "ibmonline.net", "hclonline.com", "satyamnet.com" and "satyamnet.net".
5.10 By registering the impugned domain names, the Respondent is seeking to trade on the goodwill associated with the Complainantís trademark and drive traffic to its website. The fact that of the seven domain names, only one is active suggests that the domain names have been registered in bad faith. The Complainant relies upon Telstra, WIPO Case No.D2000-0003 in this regard, wherein it has been held that "inactivity" or "passive" use of the domain names is indicative of "bad faith". Apart from this, the Complainant asserts that although the websites are currently inactive, the Respondent may in future activate them to offer services in direct competition with the Complainant.
5.11 For the reasons as above mentioned, the Complainant contends that the domain names in question have been registered and are being used in bad faith.
B. The Respondentís contentions are as follows:
5.12 The Respondent contends that it has a company by the name of M/s Kalanjali Technologies Ltd. dealing with all handicraft products, arts, culture etc., both in India and abroad. Furthermore, the term "Kalanjali" is a Sanskrit (an Indian language) word and is "generic". Since there are no trademark registrations in respect of the term "Kalanjali", no person has the exclusive right to use such term. The Respondent also claimed that there were a lot of websites that used the name "Kalanjali". The Respondent stated that apart from the use of the name "Kalanjali", which it had a perfect right to use, it did not appropriate any other property belonging to the Complainant, such as the Complainantís logo etc. The Respondent however was willing to transfer the domain name "kalanjalihandicrafts.com" in view of the fact that the Complainant was involved in handicrafts business.
6. Discussions and Findings
Paragraph 4(a) of the Policy requires the Complainant to prove the following:
a) that the domain name registered by the Respondent is identical and confusingly similar to a trademark or service mark in which the Complainant has rights; and
b) that the Respondent has no legitimate interests in respect of the domain name; and
c) that the domain name has been registered and is being used in bad faith.
Each of these requirements will be dealt with separately.
A. Complainantís trademark rights; identical/confusing similarity
According to the Respondent, the word KALANJALI is a generic word in the Sanskrit language. The Respondent allegedly deals in handicraft products, art, culture etc. in India and abroad and the argument is perhaps that the word is generic of the products dealt in by the Respondent.
The word KALANJALI means "offering of art" as per Paragraph 13 of the Complaint. The genericness of a word cannot be determined in a vacuum but must be done with reference to specific goods or services. Therefore, the word BREAD may be generic for bread but may be a good and valid trademark for wristwatches. The Complainant deals in handicrafts such as boxes, coasters, penholders, trays, statues, candle holders, butter dishes etc.
None of these products which the Complainant deals in are known as KALANJALI and therefore, the word KALANJALI cannot be generic of them.
The word KALANJALI cannot even be said to be directly descriptive since it is not a word in currency but belongs to Sanskrit which is a classic Indian language much like Latin.
According to J. Thomas McCarthy on Trademarks and Unfair Competition, the word in a classic or dead language can be a valid trade mark - the fact that lexicographers or devotees of antiquity may recognize the word is irrelevant to the fact that the word is totally unfamiliar to the ordinary consumer. [See Collyrium, Inc. Vs. John Wyeth & Bro., Inc., 167 Misc. 231, 3 N.Y.S.2d 42 (1938) (COLLYRIUM), Telechron, Inc. Vs. Telicon Corp., 198 F.2d 903, 94 U.S.P.Q. 363 (3d Cir. 1952) (TELECHRON), Le Blume Import Co. Vs. Coty, 293 F. 344 (2nd Cir. 1923) (LíORIGAN).]
In my view, the word KALANJALI is at best a "suggestive" mark since it requires a certain imagination to connect it to the goods of the Complainant. According to McCarthyís Law on Trade Marks and Unfair Competition, the more imagination that is required on the customerís part to get some direct description of the product from the term, the more likely the term is suggestive, not descriptive. Moreover, McCarthy talks of the "competitorís need" test, wherein he asks the question -is the suggestion made by the mark so remote and subtle that it is really not likely to be needed by competitive sellers to describe their goods?
These tests are also pretty much the law in India. Under Indian law, if a trade mark is directly descriptive, it may not be registered under Section 9 of the Trade and Merchandise Marks Act, 1958, unless it is used and there is evidence of acquired distinctiveness. If on the other hand the trademark is indirectly descriptive, it would register without such evidence of acquired distinctiveness. Therefore, Indian law would regard indirectly descriptive marks on the same footing as American trademark law would regard "suggestive" marks.
Indian law also talks about marks, which are required by bonafide competitors for their own need since they are descriptive of the nature and character of the goods. This test is similar to the competitorsí need test discussed above. Consequently, in my view, applying both the "imagination" and the "competitors need" tests, I view the word KALANJALI as a "suggestive" mark.
Even if the mark were descriptive, the Complainant has used the mark for a period of 8 years and there is sufficient material on record to indicate that the mark has acquired a high degree of reputation and renown.
At the outset, I would like to mention that the 7 domain names in question appear to be registered in different names. The Complainant has alleged several factors, which show that they are all owned by one and the same person, namely the Respondent. These factors include:
a) Common email addresses and fax numbers of the administrative contacts;
b) Registrations on the same date;
c) The use of one domain name as the registrant of another.
In its responses dated October 28, 2000, and October 31, 2000, the Respondent does not deny ownership of each of the domain names in question and I therefore hold that they all belong to one and the same entity, i.e. the Respondent (hereinafter referred to as "the Respondent").
Each of the 7 domain names registered by the Respondent contain the word KALANJALI as an essential feature and are therefore confusingly similar to the trademark of the Complainant.
B. Rights/Legitimate Interests
The Respondent has taken the plea that it has a company by the name of Kalanjali Technologies Limited to deal with handicraft products in India and abroad. According to the Respondent, the word KALAJALI is a generic word and many web sites use that name. The Respondent further states in its reply dated October 28, 2000, that it will be providing all support documents by November 15, 2000.
Since the records sent to me by the Center did not have any documents in support of the Respondentís case, I considered it appropriate to give the Respondent an additional opportunity to file documents. The period for filing the documents expired on November 23, 2000, and no such documents were filed.
The Respondent has further submitted that there are many web sites, which use the name KALANJALI and claims to have enclosed a list with separate HTML files. No such list was received by the Center and despite the opportunity I had given, the Respondent has not submitted such a list.
Therefore, I am unable to appreciate the Respondentís plea that many web sites use the word KALANJALI. Consequently, I must decide this case on the basis that the Respondent had no documents within its possession and power in support of any of the points raised by it.
Even assuming that the Respondent has a company, the mere incorporation of a company, without anything more, would not give the Respondent a legitimate interest particularly if the company were incorporated after the trade mark KALANJALI has been used by the Complainant. There is no record, which indicates that the Respondent had incorporated its company at a prior point of time.
The Complainant has relied upon snap shots of the index page of the Respondent website "www.kalanjali.com". According to the Complainant, this website ostensibly contains links to several pages titled, "Products", "Gallery", "Arts" etc. However, neither the Respondentís website "www.bitranet.com" nor the infringing website "www.kalanjali.com" contain any information to show a genuine link between the Respondentís business and handicrafts. The remaining 6 domain names are all passive. Under the circumstances and in view of the fact that the Respondent has not, despite additional time being given, filed any documents to support his legitimate interest, I hold that the second ingredient of Paragraph 4(a) of the Policy stands satisfied.
C. Bad Faith
There is clear bad faith since the Respondent hails from the same city as the Complainant and has adopted an identical mark KALANJALI not only as a part of its several domain names but also used it as a trade mark on its web site (Annexure ĎKí) in relation to identical goods. Therefore, in my view, this would be a classic case of passing off and there can be no justification for the Respondentís adoption of the Complainantís mark.
For all of the foregoing reasons, the Panel decides that the domain names registered by Respondent are identical to the trademark in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the domain names at issue, and that the Respondentís domain names have been registered and are being used in bad faith. Accordingly, pursuant to Paragraph 4(i) of the Policy, the Panel requires that the registration of the impugned domain names be transferred to the Complainant.
Dated: December 3, 2000