WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Benzer v. FutureSoft Consulting Inc. and Sunil Bhatia
Case No. D2000-1648
1. The Parties
The Complainant is Benzer, a partnership, consisting of Chimanlal Ramji Savla, Champshi Devshi Shah, Hiruben Lalji Savla, Sushilaben Dhirajlal Savla and Murji Panchariya Shah, registered under the Indian Partnership Act and having its principal office at 49, Bhulabhai Desai Road, Breach Candy, Mumbai, 400026, INDIA.
The Respondents are FutureSoft Consulting Inc. a corporation incorporated under the laws of the State of Illinois, having its principal place of business at 1324, Lazy Hollow Ct, Naperville, IL 60565, USA and Sunil Bhatia of the same address.
2. The Domain Name and Registrar
The dispute concerns the domain name "benzer.com" (the said Domain Name) registered with Registrars.com (the Registrar), a division of Network Commerce Inc. of 474 Sansome Street #570, San Francisco, California 94111, USA.
3. Procedural History
On November 28, 2000, the Complainant submitted a complaint electronically to the World Intellectual Property Organization Arbitration and Mediation Center (the 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 World Intellectual Property Organization Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the Supplemental Rules).
On December 1, 2000, the Complainant submitted a hard copy of the same to the Center.
On December 17, 2000, the Center sent a Request for Registrar Verification to Network Solutions, Inc. On December 19, 2000, Network Solutions, Inc. responded to this communication by stating that it was not the Registrar of the said Domain Name.
On January 1, 2001, the Center sent a Complaint Deficiency Notification to the Complainantís authorized representative and on January 3, 2001, the Center received from the Complainantís authorized representative an amendment to the complaint, with Registrars.com as the Registrar of the said Domain Name. On January 10, 2001, the Center confirmed with the Complainantís authorized representative that the deficiency was now cured and that the Center would proceed with the complaint.
Respondent No. 2 wrote to the Center inquiring if there was a specific format which had to be followed in filing the response and the Center on January 10, 2001, advised Respondent No. 2 to visit the Centerís website to ascertain the format.
On January 10, 2001, the Center sent a Request for Registrar Verification to Registrars.com. On the same date, Registrars.com confirmed by e-mail that it was the Registrar of the said Domain Name and that the current registrant of the said Domain Name was Respondent No.1.
On January 12, 2001, having found that the Complainant had satisfied the formal requirements of the Policy, the Rules and the Supplementary Rules, the Center sent the Notification of Complaint and Commencement of Administrative Proceeding (the Notification) by post/courier (with attachments), facsimile and e-mail (without attachments) to the Respondents and transmitted electronically copies of the Notification to the Complainantís authorized representative. It also extended a copy of the Notification to the Internet Corporation for Assigned Names and Numbers (ICANN) and to the Registrar. The Notification set the formal date of the commencement of this administrative proceeding as January 12, 2001, and required the Respondents to submit a response to the complaint within 20 calendar days from the date of receipt of the Notification, i.e. January 31, 2001, failing which the Respondents would be considered to be in default.
Respondent No. 2 sent an e-mail to the Center on January 29, 2001, requesting for additional time to file the response to the complaint because Respondent No. 2 was out of USA until February 4, 2001. On January 30, 2001, the Center granted the Respondents an extension up to February 11, 2001, to submit the response. On the said date, the Center received the response (without attachments) by e-mail from the Respondents. On February 12, 2001, the Center sent the Acknowledgment of Receipt (Response) to the Respondents and extended a copy of it by e-mail to the Complainantís authorized representative.
The Complainantís authorized representative informed the Center on February 16, 2001, that the Complainant had not received the hard copy of the response with the attachments as yet; the Complainant would like to file a reply to the response and inquired whether it could do so. On February 26, 2001, the Center responded to this communication stating that the Complainant had a right to reply to the response. On February 27, 2001, the Complainantís authorized representative informed the Center that the Complainant had still not received the hard copy of the response with the annexes. On March 2, 2001, the Center reminded the Respondents that it had still not received the hard copies of the response.
On March 7, 2001, the Center appointed Hariram Jayaram to be the sole panelist (the Panel) after receiving the Statement of Acceptance and Declaration of Impartiality and Independence from him on February 26, 2001.
It sent the Notification of Appointment of Administrative Panel and Projected Decision Date to the Complainantís authorized representatives and copied it to the Panel by e-mail. On the same day, the Center sent a Transmission of case file to the Panel.
On March 8, 2001, the Complainantís authorized representative communicated with the Panel by e-mail to the effect that the Respondents had not forwarded the hard copy of the response with the enclosures and requested the Panel not to take the response on record. On March 8, 2001, Respondent No. 1 notified the Panel via e-mail that the hard copy of the response had been sent to the Center and requested the Panel to review the response. The Center on March 9, 2001, reminded the Complainant and the Respondent that all communications should be sent to the Center and the Center would transmit them to the Panel.
On March 9, 2001, the Respondents forwarded the annexes to the response to the Center by e-mail. On the instructions of the Panel the Center gave the Complainant seven (7) days to reply to the response and allowed the Respondents seven (7) days to respond to the Complainantís reply. On March 22, 2001, the Complainantís authorized representatives forwarded to the Center the reply to the response filed by the Respondents.
The Panel finds that the Center has discharged its obligations and responsibilities under the Rules. The Panel will 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 that the Panel deems to be applicable.
4. Factual Background
The Complainant trading as BENZER is one of the leading fashion and department stores in India since 1982. In addition to the department store BENZER, there are other business/sister concerns of the Complainant (where BENZER is a prominent part of the trading style) namely BENZER Design Centre, BENZER Sarees, BENZER Classics, BENZER Novelties, BENZER Enterprises, BENZER Exports, BENZER Department Stores Private Limited and BENZERe Lifestyles. The Complainantís interior designer Noshir Talati, is the person who coined the name BENZER from the names of his two children "Ben" and "Zerxes" for the Complainantís department store in Mumbai in 1982.
The Complainant is the registered proprietor in India of the trademark BENZER in respect of goods in various classes i.e. classes 1-5, 10 and 13-32. It has also applied for registration of the trademark BENZER in other classes as well and the applications are pending. It has directly or through its sister concerns, eg. BENZER Exports, sold various goods under the trademark BENZER in USA, Canada and Europe. Its goods, including fashion accessories, apparels and clothes sold abroad, under the trademark BENZER, are well received, especially by people of Indian origin. Some of the Complainantís franchisees are Pearlhill Ad of 148 Pinner Road, Harrow, Middlesex HA1 4JJ, UK, S.M. Fashions of 153, Belgrave Road, Leicester LE4 6AS, UK, Silk Heritage of 1655-188, Oak Tree Center, LL Oak Tree Road, Edison NJ-0881188, USA, Cross Shadex Ltd of 208/210 East 49th Avenue, Vancouver BCV 5X 3G9, Canada and Yogi International Inc of 18500, Pioneer Boulevard, Unit C Artesia California 90701 USA. Between March 1982 and March 2000, the Complainantís sales amounted to $22,253,521.54 and its advertising expenditure to $1,069,684.97. The sales figures of the Benzer group as a whole between March 1982 and March 2000 was $62,077,371.47 and the advertising expenditure $2,860,544.658. Promotion of the Complainantís trademark BENZER in India and countries around the world is done by means of national and trans-national advertising. The Complainant has used the said trademark on its stationery and promotional materials. It has advertised the trademark in newspapers, magazines, radio and satellite television. Some of the newspapers and magazines where the trademark BENZER has been advertised are The Times of India, Mid-Day, Sunday Mid-day, Mumbai Samachar, The Navbharat Times, The Indian Express, Loksatta, Femina, Filmfare, Cine Blitz, Swagat, Namaskar, The Oberoi Group Magazine, Namaste, Taj Magazine, Libas International, Business India, Auto India, Business World, Savvy and Society. The trademark BENZER has been featured in such Indian and foreign trade magazines and newspapers dealing with economic matters or related to the fashion industry such as The Times of India, Mid-Day and Vogue. The British Broadcasting Corporation has featured the Complainant in one of its shows about fashions in India/UK. The Complainant has taken numerous steps through the years to promote a global reputation. It issues an annual catalogue with compilations of photographs taken by leading photographers of famous models in exotic locales and distributes them to clients and customers world wide.
The Complainant and its sister concerns have registered the domain names "www.benzerworld.com", "www.benzerindia.com", "www.benzer.org" and "www.benzer.net". The Complainant is also offering its goods for sale on the Internet through "www.benzerworld.com". The goods sold by mail order amounted to Rs.12,68,210 between March 1998 and 1999 and Rs.19,91,493 between March 1999 and 2000. The Complainantís store is an important landmark in Mumbai. The Complainant has received numerous export/franchise enquiries from persons in different countries. The trademark BENZER is associated with the Complainant and its sister concerns and has acquired reputation especially with the Indian community in India and abroad.
On October 10, 2000, the managing partner of the Complainant, Chiman R. Savla sent a letter to the Respondents requesting them to transfer the said Domain Name to the Complainant. On October 18, 2000, the Complainant received a reply from Varsha Bhatia, CEO of Respondent No. 1 with a refusal to transfer the said Domain Name to the Complainant.
Respondent No.1 is in the business of technical and e-business consulting to premier clients and it has provided consulting and e-business services since 1995. In 1997, Respondent No. 1 saw several of its customers demanding e-business and consulting services. One Alex Benzer approached Respondent No. 1 after he saw the reputation of Respondent No. 1 grow and wanted to do business with it. Respondent No. 1 had clients who wanted their websites designed and launched. Respondent No. 1 being a software consulting company lacked expertise in web designing and development resources. Alex Benzer demonstrated skills in web designing and it appeared perfect for them to work together. Respondent No. 1 and Alex Benzer came up with the name "benzer.com" since Alex Benzer would be the one mainly leading the web projects. Respondent No. 1 registered the said Domain Name and named its e-commerce division Benzer Commerce Inc. in December 1997. It has advertised in the Chicago Tribune regarding the services of Benzer Commerce Inc. and has spent around $1500 in the past three years on advertising and promotion alone. Alex Benzer has worked closely with Respondent No. 1 for the past 3 years. He has now formed his own web development organization but acts as an advisor to Respondent No. 1 on several web development projects. Benzer Commerce Inc. has engaged in developing sites for Respondent No. 1 and its clients. Benzer Commerce Inc. has completed several projects on behalf of Respondent No. 1 which has taken significant time (measured in man-months) to complete. The major projects completed are "ManageCareer.com", a career management portal, which took 3 man-years to complete, "FreeSurvey.com", a survey engine on the Internet which took 2 man-years to complete, "FutureConsult.com", the main site of Respondent No. 1.
5. Partiesí Contentions
A. Complainantís Complaint
The Complainant says that the Respondents have without the permission of the Complainant registered the said Domain Name in bad faith. Varsha Bhatia, the CEO of Respondent No. 1 and Respondent No. 2 being of Indian origin should be aware of the Complainantís store and its sister concerns in Mumbai as well as their reputation in India, USA and Europe. The Respondents had registered the said Domain Name to cash upon the reputation of the Complainant and to bar the Complainant from using the said Domain Name. The said Domain Name is identical and confusingly similar to the trademark BENZER in which the Complainant has rights and the Respondents have no rights or legitimate interests in respect of the said Domain Name. The Respondents have acquired the said Domain Name primarily for the purpose of selling, renting or otherwise transferring the said Domain Name registration to the Complainant or to a competitor for valuable consideration in excess of the Respondentsí out of pocket costs directly related to the said Domain Name. The Respondents by using the said Domain Name have intentionally attempted to attract for commercial gain, Internet users to use their website by creating a likelihood of confusion with the Complainantís trademark and trading style as to the source, sponsorship, affiliation or endorsement of their website. There was no bona fide reason for the Respondents to adopt the said Domain Name and the same was registered with the intention to deprive the Complainant from having the same registered as well as to trade upon the reputation of the Complainant.
Until October 14, 2000, the Respondentsí website was dormant/passive and displayed the message "You are in BENZER..coming shortly". There was no reference to any company or person. Upon receipt of the Complainantís letter dated October 10, 2000, Respondent No.1 displayed that the website was that of BENZER Commerce Inc., a wholly owned subsidiary of Respondent No. 1. In its letter dated October 18, 2000, Respondent No. 1 stated that it was not in the fashion industry and it was not selling garments. However, the whois database indicates that Respondent No.1 has registered the domain name "myfashion.com" on December 3, 1997 two days before the registration of the said Domain Name. The domain name "myfashion.com" also bore the message "You are in "myfashion.com"Öcoming soon". Respondent No.1 has also registered the domain name "indianbuyer.com" and is operating the website with the Indian community as the target. The website "www.indianbuyer.com" offers various services bearing the heading "grocery shopping", "classifieds", "matrimonial", "yellowpages", "gifts to India", "travel", "H-1 Visa material", and "recipes". According to the whois database, Respondent No. 1 has registered more than 45 domain names which do not have any connection or nexus with its business. Respondent No. 1 was never commonly known by the said Domain Name or BENZER and the said Domain Name is registered in the name of Respondent No. 1 and not Benzer Commerce Inc. The main website and webpage of the Respondent No. 1 appears to be "www.futureconsult.com" which has no reference or information about the wholly owed subsidiary, Benzer Commerce Inc. The said Domain Name was registered primarily for the purpose of disrupting the business of the Complainant since persons looking for the Complainant would visit the website "www.benzer.com" and be informed that "You are in BENZER.. coming soon". There was no other information on the website either about BENZER Commerce Inc. or Respondent No. 1 or any other company. The persons visiting the site would be under the belief that the Complainant was still setting up its website.
After October 14, 2000, a person visiting the website "www.benzer.com" would assume that the Complainant has ventured into the e-commerce and information technology industry. They would be confused and deceived into believing that Benzer Commerce Inc. at the "benzer.com" website, run by persons of Indian origin, has some affiliation, association, connection or relation with the Complainant or its sister concerns, when no such connection, affiliation, association or relation exists.
Prior to the receipt of the Complainantís letter dated October 14, 2000 by the Respondents, there was no evidence of the Respondentsí use of or demonstrable preparation to use the said Domain Name or a name corresponding to the said Domain Name in connection with a bona fide offering of goods or services. It was only after being served with a notice dated October 10, 2000, that Respondent No. 1 concocted a story that it was dealing under the trading style Benzer Commerce Inc., a subsidiary of Respondent No. 1.
The Complainant says that it is the owner of the trademark BENZER. It has registered and made long and substantial use of the said trademark. On account of the high degree of inherent and acquired distinctiveness which the trademark BENZER is possessed of, the use of this mark or any other phonetically, visually or other deceptively similar mark, by any other person would result in immense confusion in the trade leading to passing off.
B. Respondentsí Response
The Respondents say that the said Domain Name was not registered or acquired primarily for the purpose of selling, renting or otherwise transferring the said Domain Name registration to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of the Respondentsí out of pocket costs directly related to the said Domain Name. The Respondents have not approached the Complainant or anyone else to buy the said Domain Name. The Complainant has not provided any evidence that the Respondents have registered the said Domain Name for sale or in bad faith. The said Domain Name was not registered in order to prevent the Complainant from reflecting the mark in a corresponding domain name and in connection therewith, Respondent No. 1 has not engaged in a pattern of such conduct. The said Domain Name was registered to conduct business with its e-commerce division Benzer Commerce Inc.
The Complainant and Respondent No. 1 are not competitors and the said Domain Name was not registered primarily to disrupt the Complainantís business. Benzer Commerce Inc. and Respondent No. 1 have no overlap with the services of the Complainant. The said Domain Name was not registered by Respondent No.1 in an intentional attempt to attract for commercial gain, Internet users to Respondent No. 1ís website or other on-line location, by creating a likelihood of confusion with the Complainantís mark as to the source, sponsorship, affiliation or endorsement of Respondent No. 1ís website or location or of a product or service on Respondent No. 1ís website or location.
Respondent No. 1 does not dispute that the Complainant has an established franchise and has been conducting business under the name BENZER. However the domain name records show that the Complainant registered "www.benzerworld.com" on April 11, 1997 while Respondent No. 1 registered the said Domain Name on December 5, 1997. If the Complainant was indeed interested in registering the said Domain Name, it had full opportunity to do so for about 8 months. The Complainant has not made "Benzer.net" or "Benzer.org" operational since its registration in August 2000. Clearly the Complainant has not cared about the BENZER brand name from the e-commerce perspective. Since the Complainant failed to register the said Domain Name intentionally and chose to register an alternative domain name for its business it has chosen to release all rights and any claims to the said Domain Name. The name BENZER is a commonly used surname in USA. The Whois database shows a list of companies with BENZER in it and in New York alone the Respondents were able to find 14 people with the surname BENZER. The Respondents admit an error handling application on the site which displays the generic message when the site goes down, saying "You are in <Site Name>ÖComing Shortly". The message comes up when its other error handling procedures fail and /or when the site is temporarily down for maintenance reasons. The Complainant may have reviewed the site when it was temporarily down; hence the generic error message was displayed. The Complainant could have intentionally waited for a time when the site was down and issued the complaint then. As to "MyFashion.com" the Respondents have a customer in New York City called My Fashion, Inc. for whom they had registered the said Domain Name. After registration, the customer was no longer willing to spend the money to have the site developed, so the Respondents retained the name for themselves. They had registered the site "IndianBuyer.com" and created a demonstration home page for a local Indian grocery store in Chicago.
The Respondents registered the said Domain Name after discussions with Alex Benzer. Their use of the said Domain Name is completely legitimate and fair. The Complainant has failed to establish that Respondent No. 1 registered the said Domain Name in bad faith and for financial gain. The site has been operational for the past 3 years and the Respondents have conducted regular business using the site. They have regular client communications sent to the said Domain Name which will be completely disrupted and their business seriously impacted if the said Domain Name is no longer available to them. Since the Complainant has waited for over 3 years, it has caused the Respondentsí business communications to heavily and continuously rely upon the said Domain Name. If the Respondents are forced to give up the said Domain Name, it would cause serious disruption to their business and cause the daily business e-mail communications to fail.
C. Complainantís Reply to the Respondentsí Response
In its reply to the Respondentsí response, the Complainant reiterates that the said Domain Name was registered or acquired primarily for the purpose of selling, renting or otherwise transferring for valuable consideration. The Complainant denies that Benzer Commerce Inc is engaged in developing sites for Respondent No. 1 and its clients. The websites "freesurvey.com", "managecareer.com" and "futureconsult.com" are domain names registered in the name of Respondent No. 1 and not in the name of Benzer Commerce Inc. or its clients. The Complainant does not accept the Respondentsí statements that the said Domain Name was not registered in order to prevent the Complainant from reflecting the mark in a corresponding domain name and in connection therewith, that Respondent No. 1 has not engaged in a pattern of such conduct; that the said Domain Name was not registered by Respondent No. 1 primarily to disrupt the Complainantís business; that the said Domain Name was not registered by Respondent No. 1 in an intentional attempt to attract for commercial gain, Internet users to Respondent No. 1ís website or other on-line location, by creating a likelihood of confusion with the Complainantís mark as to the source, sponsorship, affiliation or endorsement of Respondent No. 1ís website or location or of a product or service of Respondent No. 1ís website or location; and that Respondent No. 1 had been engaging in business using the Benzer Commerce Inc. business name and the "benzer.com" website. The Respondents have not placed any documents on record to show that the said Domain Name was functional or that Benzer Commerce Inc. as a subdivision of Respondent No. 1 was in existence before the service of the Complainantís letter of October 10, 2000.
According to the Complainant on April 11, 1997 when the domain name "benzerworld.com" was registered, the said Domain Name was indicated as not available to the Complainant in the whois search at that time. The Complainant had registered "benzer.net" and "benzer.org" for its bona fide use and to prevent others from using them to attract the Complainantís customers. The revenue of US$800,000 generated by Respondent No. 1 is not relevant for the said Domain Name. The statement of accounts issued by Bank One cannot be looked into, as it does not state when the account of Respondent No. 1 and the account of Benzer Commerce Inc. were maintained by the bank. The average monthly balance for the year 2000 was vaguely stated as US$35,570 without specifying the exact amount of the two accounts. If Benzer is a separate division of Respondent No. 1, the separate account in the name of Benzer Commerce Inc. would indicate when the account was opened and the revenue generated.
The Complainant does not accept the Respondentsí allegations that Alex Benzer approached Respondent No. 1 to do business with the Respondents and that Respondent No. 1 had clients who wanted their websites designed and launched. No details of the clients or the websites developed by them have been provided. If it is true that Alex Benzer approached Respondent No. 1 and was the one leading the web projects and the division was to be named after him, his interest in Respondent No. 1 or Benzer Commerce Inc. would have been described fully. No bona fide reason has been given for registering the said Domain Name in the name of Respondent No. 1 instead of Benzer Commerce or Alex Benzer. In its letter dated October 18, 2000, Respondent No. 1 has not mentioned anything about Alex Benzer or the reason for adopting the said Domain Name or Benzer Commerce Inc..
Further the Complainant does not agree with the allegations of the Respondents that Respondent No. 1 or its subsidiaries have not sold or transferred any domain names and that Respondent No. 1 has never registered any name with the intent of selling for profit or other material gain. Respondent No. 1 has in fact stated that its business model necessitated the registration of a domain name for current and potential clients. Many companies offer services for registration of domain names to their clients but such registrations are in the name of the clients and not the company providing the services. In the present case, Respondent No. 1 has admittedly registered the domain names of its clients like "myfashion.com", "indianbuyer.com", "managecareer.com" and "freesurvey.com" in its own name. Respondent No. 1 has registered more than 30 domain names for its existing and potential clients and a partial list of the domain names is available from the whois search. The name Benzer is uncommon and rare and a mere listing of 10-14 individuals in a big city like New York does not make the name common. The Complainant had checked the website "benzer.com" on numerous occasions and until October 16, 2000, the website displayed the same message i.e. "You are in BenzerÖComing Shortly", which clearly indicated that there was no content on the website. It was more than mere coincidence that said Domain Name and "myfashion.com" were registered on December 5, 1997 and December 3, 1997, respectively. The Complainant denies that the domain names "myfashion.com" and "indianbuyer.com" were registered by Respondent No. 1 for its clients/potential clients. Respondent No. 1 had registered the said domain names in its own name. The Complainant denies that Respondent No. 1 had a customer in New York called My Fashion, Inc. for whom it had registered the said domain name and after registration the customer was no longer willing to spend the money to develop the site. If that been the case, Respondent No. 1 would have no reason to renew the registration of the domain name "myfashion.com". This domain name was renewed in December 2000 for two years although Respondent No. 1 had nothing to do with the fashion industry. It was more than a mere coincidence that its alleged clients for the domain names "myfashion.com" and "indianbuyer.com" were not interested in developing the websites further and as a result Respondent No. 1 had to retain and renew the registration.
6. Discussion and Findings
In this administrative proceeding relating to the said Domain Name, a number of issues have arisen
▪ Whether a party to a dispute may communicate with the Panel directly after the commencement of the administrative proceeding.
▪ Whether an extension of time may be given to submit the response.
▪ Whether the Complainant has the right to reply to the response.
▪ Whether Respondent No. 2 should have been made a party to the proceeding.
▪ Whether the Complainant has a case against the Respondents on the merits.
6.1. Partiesí direct communication with the Panel
The Panel received an e-mail from the Complainant dated March 8, 2001, in which the Complainant requested the Panel not to pay heed to the response because the Respondents had not submitted the hard copies of the response to the Complainant. On the same day, Respondent No.1 requested the Panel via e-mail to take note of the response since the hard copies of the response had been sent to the Center and to the Complainant by ordinary mail earlier. There might have been a delay in the receipt of the hard copies. The Respondents would be resending the hard copies via courier to the Center as well as the electronic copies of all the annexes. On its own initiative, the Center informed the parties that all communications should be sent to the Center and the Center would transmit them to the Panel. The Panel agrees with the Center. Direct communications by any party with the Panel are not healthy and respect should be given to paragraph 8 of the Rules which is to the following effect:
"No Party or anyone acting on its behalf may have any unilateral communication with the Panel. All communications between a Party and the Panel or the Provider shall be made to a case administrator appointed by the Provider in the manner prescribed in the Providerís Supplemental Rules".
6.2 Extension of Time
By its Notification of Complaint and Commencement of Administrative Proceeding, the Center informed the Respondents that the last day for sending their response was January 31, 2001. The Respondents requested an extension of time to file the response because Respondent No. 2 who was also the technical, billing, zone and administrative contact of Respondent No. 1, was out of the country.
Paragraph 5 (d) of the Rules provides as follows:
"At the request of the Respondent, the Provider may in exceptional cases extend the period of time for filing of the responseÖ".
Taking into account the reasons given by the Respondents, the Center gave the Respondents an extension until February 11, 2001, to file the response. The Panel finds that the Center acted correctly in granting the extension of time.
6.3. Right to Reply
In its e-mail dated February 16, 2001, the Complainant asked the Center whether it had a right to reply to the response and the Center confirmed that it may do so. On March 13, 2001, after receiving all the relevant documents from the Respondents, the Complainant requested the Center for time to file a reply to the response.
Paragraph 12 of the Rules states as follows:
"In addition to the complaint and the response, the Panel may request, in its sole discretion, further statements or documents from either of the Parties."
As the primary aim of the Panel is to arrive at a decision which is correct in all respects, it is quite in order for the Panel to grant an extension of time to a party to file additional statements and documents provided there is no prejudice to the other party. The Panel exercised its discretion by instructing the Center to give the Complainant seven (7) days to reply to the response and the Respondents seven (7) days to submit their reply. The Complainant has availed itself of this opportunity by submitting a reply to the response on March 22, 2001, but the Respondents have not done so.
6.4. Party to Proceeding
There are two Respondents in this proceeding. Respondent No. 1 is the registrant of the said Domain Name and Respondent No. 2 is the technical, billing, zone and administrative contact for the said Domain Name. While there is no doubt that Respondent No. 1, as the registrant of the said Domain Name, is a proper party to this proceeding, it is open to question whether Respondent No. 2 may be named as a party also. Respondent No. 2 is merely a contact person for the registrant, Respondent No. 1.
By paragraph 4 (i) of the Policy, the remedies available to a Complainant in this proceeding before the Panel will be limited to requiring the cancellation of the said Domain Name or the transfer of the said Domain Name registration to the Complainant. As a result, the decision will be directed to the registrant of the said Domain Name i.e. Respondent No. 1. It is the Panelís view that adding Respondent No. 2, the contact person of Respondent No. 1, as a party to this proceeding is wrong.
6.5. Elements to be proven
Paragraph 4(a) of the Policy envisages that to succeed, the Complainant must establish that:
(i) the Respondentsí domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondents have no rights or legitimate interest in respect of the domain name; and
(iii) the Respondentsí domain name has been registered and is being used in bad faith.
The Complainant must prove that all the aforesaid three elements are present: (see Cortefiel, S.A v. Miguel Garcia Quintas WIPO Case No. D2000-0140; Charles Jourdan Holding AG v. AAIM WIPO Case No. D2000-0403; and Ogaan India Private Limited v. Mehboob Alam WIPO Case No. D2000-0720).
The Complainant claims rights in the trademark BENZER. It has registered it in India for goods in classes 1-5, 10 and 13-32. The Complainant has made long and substantial use of the said trademark on a number of goods in the said classes.
The Panel has compared the said Domain Name with the Complainantís trademark BENZER and finds that the second level domain BENZER is identical letter-by-letter to the Complainantís trademark.
To ascertain the exact extent of the rights acquired by the owner of a trademark by registration and long use, reference may be made to the following passage in David I Bainbridge, Intellectual Property, Second Edition, page 457:
"Rights associated with registered trademarks are restricted in terms of the classes of goods and services against which the marks are registered. Therefore, if Trader A has a trademark consisting of a representation of a Harp registered for Class 2 goods (paints, varnishes, lacquers, etc.) and Trader B copies this mark but only uses in respect of wines (falling within Class 33), Trader B does not infringe Trader Aís trademark, unless it is subject to a defensive registration in Class 33. Passing off is limited in a similar way in that there must be a common field of activity between the plaintiff and the defendant. There must be some common ground otherwise there can be no trespass to this form of intellectual property. The justification for this is that, if there is no common field of activity, there can be no damage to the plaintiffís goodwill because the public will not make a connection between the traders and their alternate fields of activity. For example, if Trader A uses the name "Spright" for his margarine and, later, Trader B uses the same name for its bicycles there will be little danger of damage to Trader Aís goodwill (irrespective of the quality of the bicycles) because the public are not likely to think that the bicycles are made by or with the license of Trader A. An electric shaver called a "Rolls Razor" would not normally be confused with the makers of "Rolls Royce" motor carsÖ"
While the Complainant says that it has acquired registration for and used the trademark BENZER in relation to a number of goods including fashion accessories, apparels and clothes, the Respondents allege that they are not in the same business as the Complainant. They are engaged in technical and e-business consulting. In its reply, the Complainant denies this allegation.
One observation which the Panel would like to make, from the documents submitted for its consideration in this administrative proceeding, is that, except as to the registration of the trademark BENZER and its extensive use by the Complainant, the allegations made by the Complainant are generally denied by the Respondents. In similar fashion, the allegations made out by the Respondents are denied by the Complainant. In view of the conflict of facts, it is impossible for the Panel to conclude with confidence which party is telling the truth. In any case it is not necessary for the Panel to come to a conclusion as to the truth of the allegations and counter allegations made by the parties because the only obligation of the Panel is to see whether the Complainant has established against the Respondents, its case which essentially is, whether, with the rights acquired by the registration of the trademark BENZER and by long use, the Complainant can successfully proceed against the Respondents for the cancellation or transfer of the said Domain Name.
If the Complainant is to succeed, it must establish that before the commencement of this administrative proceeding, the Respondents have been utilizing or intending to utilize the said Domain Name for a business activity connected with the goods for which the Complainant has registered its trademark or that the said utilization or intended utilization shows a common field of activity between the Complainant and the Respondents.
There is no evidence before the Panel which substantiates the allegation that the said Domain Name is being utilized or will be utilized as aforesaid by the Respondents.
As it stands, the Panel is unable to order the cancellation of the said Domain Name or the transfer of the said Domain Name registration to the Complainant. The Complaint is hereby dismissed.
Dated: April 12, 2001