WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Indya.com Portal Pvt.Ltd. v. Akram Ali, V.M. Hardware

Case No. D2000-1489

 

1. The Parties

Indya.Com Portal Pvt Ltd, Registered Office at No.58, Microland House, L.V. Complex, Koramangala 7th Block, Bangalore Ė 560 095, India (Complainant).

Mr Akram Ali, V. M. Hardware, No:494, Jumma Masjid Road, OPH Road, Bangalore, Karnataka 560 008, India (Respondent).

 

2. The Domain Names and Registrar

The Respondent is the registrant of the following domain names: <indyanews.com>, <indyanews.net> and <indyanews.org>.

Dotster, Inc (a wholly owned subsidiary of Columbia Analytical Services, Inc), 1338, Commerce Avenue, Longview, WA 98632, USA is the Registrar of the said domain names.

 

3. Procedural History

The Complaint in this case was filed by e-mail on October 31, 2000 and in hardcopy on November 13, 2000 with the WIPO Arbitration and Mediation Center (the "Center").

The Center has found that the Complaint satisfies the formal requirements of the Uniform Domain Name Dispute Resolution Policy, the Rules for Uniform Domain Name Dispute Resolution Policy and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy.

On November 10, 2000 the Center transmitted a request to Dotster, Inc, to verify the following facts:

- To confirm that a copy of the Complaint was sent to Dotster, Inc;

- To confirm that <indyanews.com>, <indyanews.net> and <indyanews.org> are registered with Dotster, Inc;

- To confirm that the entity identified in the present case as the Respondent is the current registrant of the domain name;

- To provide full contact details that are available in Dotster, Inc database for the registrant, technical contact, administrative contact and billing contact, for the said domain name;

- To confirm that the Uniform Domain Name Dispute Resolution Policy applies to the registered domain name;

- To indicate the current status of the domain name;

Vide communication dated 10.11.2000 Dotster, Inc informed the Center as under:

- That Dotster, Inc is the Registrar of the domain name registration,

- That Mr. Akram Ali, V.M. Hardware is the current registrant of the <indyanews.com>, <indyanews.net> and <indyanews.org> domain name registrations,

- That the UDRP applies to these domain names,

- The current status of the domain names is ACTIVE.

On November 13, 2000 the Respondent was notified of the Complaint filed by the Complainant and opportunity was granted as per the Rules for filing of a Response. This notification of Complaint was done by e-mail and normal post/courier. The Administrative Panel finds that the Center has satisfied its notification obligations under Rule 4(a).

The Center on December 2, 2000 received Response from the Respondent.

On December 22, 2000, the Center appointed an Administrative Panel consisting of a single member viz., Maninder Singh and this was notified to the Complainant and the Respondent.

The language of the administrative proceeding is English.

 

4. Factual Background

The Complainant in this administrative proceeding is Indya.Com Portal Pvt Ltd, Registered Office at No.58, Microland House, L.V. Complex, Koramangala 7th Block, Bangalore Ė 560 095, India. The Complainant is the proprietor of trade mark "indya.com" and has been using this mark since its incorporation. As per the records, the Complainant is using its website http://www.indya.com a horizontal portal of interest to the general public with India relevant contents since September, 1999.

The dispute arises out of the grievance of the Complainant that the Complainant has a website, viz., <indya.com> for which the Complainant is known. The Respondent has got registered as domain names, viz., <indyanews.com>, <indyanews.net>, <indyanews.org> for which the Respondent is not entitled.

 

5. Partiesí Contentions

The Complainant's contentions in brief are as under:

The Complainant is the proprietor of and is entitled to the use of the trademark "indya.com". This mark has been in use since the incorporation of the Complainant and has been used on its website http://www.indya.com a horizontal portal of interest to the general public with content related to India. The mark has also been extensively advertised in both print and electronic media.

The Complainant has also applied for the registration of the trade mark "indya.com" under the Indian Trade and Merchandise Marks Act 1958, which has been taken on record by the Registrar of Trade Marks, Madras, India, vide application number 914331 dated March 30, 2000, under class 16 (dealing with printed matters, newspapers and periodicals, computer printouts, jackets for programme discs and tapes, operating systems and programme manuals, spread sheets, plotters) which application is pending before the Registrar of Trade Marks.

The word "Indya" is a unique word coined by the Complainant and uniquely identifies (a) the Complainant and (b) the Complainantís website/portal/web property at the URL http://www.indya.com and at no other location.

The Complainant has also registered the domain names indya.net and indya.org with Network Solutions, Inc.

Further the mark is also part of the Corporate and trade name of the Complainant. Judgements of High Courts in India have held that holder of a domain name is entitled to the same protection as in the case of a trade mark. (See Yahoo! Inc v Akash Arora & Another IPLR 1999 April 196 [Delhi High Court]; and Rediff Communication Ltd v Cybarbooth & Another 1999 (3) All MR 164 [Bombay High Court].

The Complainant in the Complaint further states that by using the domain names, the Respondent is intentionally attempting to attract for financial gain, internet users to the registrantís web site, by creating a likelihood of confusion with the Complainantís mark as to the source, sponsorship, affiliation, or endorsement of the registrantís web site or service on the registrantís web site. There is no possibility whatever of avoiding the confusion: the mark and domain "indya" uniquely identifies the Complainantís website. Used together with the common word "news" it implies or indicates a news section of the "Indya" website.

It has been contended by the Complainant that the offending domain registrations are deceptively and confusingly similar to the Complainantís domain and mark. This has been done deliberately to traffic in the enormous goodwill and reputation developed by the Complainant. It has been further submitted by the Complainant that it undertook a massive media campaign to promote the site and it has, today, over 300,000 subscribers and enjoys traffic in excess of 14 million page-views per month.

One of the other submissions made by the Complainant in the Complaint is that there is no evidence at any stage, of the Respondentís 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.

It has also been contended by the Complainant that the Respondent is not and cannot be commonly known by the domain names. The question of the Respondent acquiring any rights (trademark, service mark or other) does not arise.

The Complainant had issued a legal notice dated June 12, 2000 to the Respondent. The notice was received by the Respondent but has not been replied to or complied with.

Respondentís Contentions:

In its Response, the Respondent has contended that the Respondentís domain names are <indyanews.com>, <indyanews.net> and <indyanews.org>. According to the Respondent, these domain names are distinct from the Complainantís domain name <indya.com> and there is no likelihood of confusion. The Respondentís site <indyanews.com> is a vertical portal exclusively dedicated to news and provides a one stop news site for its consumers and quite distinct from the Complainantís portal which is a horizontal portal.

The Respondent further states that the Complainantís registration of the trademark "indya.com" under the Indian Trade and Merchandise Marks Act 1958 is still pending before the Registrar of Trade Marks, India. The Registrar of Trade Marks, India is required to call for objections to the proposed trade mark, a procedure that has not yet been commenced by the Registrar. Only after all objections are considered by the Registrar of Trade Marks, can it take a decision on the proposed trade mark and .

It has also been contended by the Respondent in his Response that the word "Indya" is a homonym of India Ė it is pronounced exactly the same way as ĎIndiaí is and the consumer identifies "Indya" to the geographical entity ĎIndiaí, which by no stretch of imagination can be called unique and does not exclusively identify itself with a) the Complainant and b) the Complainantís website/portal/web portal.

In reply to the reliance placed by the Complainant on certain judicial pronouncements in the Complaint, the Respondent submits that the decisions cited in favour of the Complainant being Yahoo!Inc. v. Akash Arora &Anr. IPLR 1999 April 196 (Delhi HC) and Rediff Communication Ltd. V. Cyberbooth & Another 1999(3) All MR 164(Bom HC) are not relevant to the dispute in question. Both the above cited cases dealt with domain names that were unique and where they were already established web sites. The Complainant had launched its website only in the fourth week of April, 2000, much later to the date the Respondent registered its domain name which was on March 20th, 2000, with its intention to launch an exclusive news portal dedicated to make it a one stop for news for Non Resident Indians as well as Resident Indians. The idea is unique to the Respondent and there is no similarity to the Complainantís website which is a horizontal portal.

It is further the case of the Respondent that his domain names and website encapsule a unique concept- a one stop news shop for its consumers from all the leading news agencies around India and the globe. According to him, his concept is unique and in no way causes any confusion with the consumerís website. The word "indya" per se is not unique and is a homonym of India. There is no possibility of confusion between indya and indyanews which are two entirely different concepts.

The Respondent, in his Response, has denied the contention of the Complainant that his domain names are deceptively similar and confusingly similar to the Complainantís domain and mark. The Respondent denies that this has been done deliberately to traffic in the goodwill and reputation developed by the Complainant. The Respondent highlights his contention that his domain names were registered on March 20, 2000 before the Complainant even launched its website and hence the argument relating to goodwill and reputation is specious and untenable. The Respondentís registration of its domain names were bonafide and done in good faith without any prior knowledge of the Complainant launching its web site four weeks later.

It has been further stated by the Respondent that he has been in discussions with venture capital funds and private investors and has launched its website indyanews.com. The website is a dedicated one stop news shop from leading news agencies all over India and the globe.

The legal notice that the Complainant issued dated June 12, 2000 has been replied to by the Respondent denying all the allegations within. The Complainant has not acknowledged the reply to the notice of the Respondent.

 

6. Discussion and Findings

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

(1) That the domain names registered by the Respondent are identical or confusingly similar to a service mark or trade mark in which the Complainant has rights; and

(2) That the Respondent has no rights or legitimate interests in respect of the domain names; and

(3) That the domain names have been registered and used in bad faith.

Identical and confusing similarity:

It is clear from the record that the Complainant is the proprietor of trade mark "indya.com" and has been using this mark since its incorporation It is clear from the record that the Complainant is the proprietor of trade mark "indya.com" and has been using this mark since its incorporation. It is also clear that the impugned domain names are deceptively similar to the name of the Complainant i.e. <indya.com>.

There is no doubt that the name <indya.com> of the Complainant and the impugned domain name i.e., <indianews.com>, <indyanews.net> and <indyanews.org> by the Respondent are identical and confusingly similar.

Legitimate interest:

I have no hesitation in accepting the contention of the Complainant that the word "indya" has been coined by it and as such, the contention of the Respondent that this word is homonym of India and is pronounced exactly in the same way as "india", therefore, there would be no possibility of confusion, deserves to be rejected. The Complainant, as stated in the legal notice dated 12.06.2000, had registered the domain name <indya.com> in September, 1999. The Respondent, in his Response, stated that he had replied to the legal notice but had not appended the copy of the reply along with his Response. In any case, the contention of the Complainant that it registered the domain name <indya.com> in September, 1999 stands admitted. In view of this position, the contention of the Respondent that the Complainant had launched the website after the registration of the above-mentioned three disputed domain names by the Respondent on March 20, 2000, is of no consequence to the Complainant.

The Complainant has placed on record the copy of its application for registration of trade mark "indya.com" with the Registrar of Trade Marks, Madras (India). It is also relevant to note that this application was filed by the Complainant with the office of the Registrar of Trade Marks on March 7, 2000, which was numbered by that office on March 30, 2000. Even though it may not be of any consequence but it is relevant to notice that the filing of the application for registration of trade mark, by the Complainant is also prior to the registration of the impugned domain names on March 30, 2000 by the Respondent.

I am also not impressed by the contention of the Respondent that since he has added a suffix of 'news' with the word "indya", the case of the Complainant may be rejected. I am clearly of the view that since the website "indya.com" has contents related with India, there would certainly be confusion in the mind of a common user in relating the domain names of the Respondent "indyanews.com", "indyanews.net" and "indyanews.org" with the domain name of the Complainant. Further, I clearly find that the judgements relied upon by the Complainant in the cases of (a) yahoo.inc Vs. Akash Arora & Anr. and (b) Rediff Communication Ltd. Vs. Cyberbooth & Anr., copies whereof have been placed before me, squarely support the contentions of the Complainant including the contention that addition of the suffix 'news' will not rule out the possibility of confusion. I reiterate the proposition that in certain cases, the addition of words to an established website/domain name may even add to the confusion rather than reducing confusion. It would be easy for any user to believe that indyanews is an extension of indya.com rather than a separate new portal.

In view of the above, I have no doubt that the Complainant has rights and legitimate interest in the trademark "indya.com" and the Respondent, in these facts and circumstances of the case, does not have any right or legitimate interest in the word "indyanews".

Bad faith

It stands established that the Complainant has invented the word "indya" and which is quite unique. The Complainant has registered the domain name "indya.com" in September, 1999. The registration of the impugned domain names by the Respondent is only on 20.03.2000. There is no evidence produced by the Respondent of any use or demonstrable preparation to use, the domain names or a name corresponding to the domain names in connection with a bonafide offering of goods or services. The Respondent has only made a bald statement that he has been in discussions with the venture capital funds and private investors and has launched its website. Whereas, the Complainant has placed on record documentary evidence in abundance, the Respondent has placed none. I, therefore, hold that the registration and use of the domain names "indyanews.com", "indyanews.net" and "indyanews.org" by the respondent is in bad faith within the meaning of the Policy, paragraph 4(a)(iii).

 

7. Decision

The Panel decides that the Respondent's domain names <indyanews.com>, <indyanews.net> and <indyanews.org> should be transferred to the Complainant.

 


 

Maninder Singh
Sole Panelist

Dated: January 1, 2001