WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Wockhardt Limited v. Margold Associates
Case No. D2000-1725
1. The Parties
The Complainant in this proceeding is Wockhardt Limited having its registered office at Wockhardt Towers, Mumbai, India.
The Respondent in this proceeding is Margold Associates, of San Mateo, California, United States of America.
2. The Domain Name and Registrar
This dispute concerns the domain name <wockhardt.com>.
The domain name was registered on March 21, 2000.
The Registrar with whom the domain name is registered is Dotster, Inc. whose address is 1338 Commerce Ave., Suite 202, Longview, WA 98632, United States of America.
3. Procedural History
A Complaint pursuant to the Uniform Domain Name Dispute Resolution Policy ("the Policy") and the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules") both of which were implemented by ICANN on October 24, 1999 was received by WIPO in electronic format on December 11, 2000 and in hardcopy on
December 14, 2000. Payment in the required amount to the Center has been made by the Complainant.
On December 14, 2000, a request for registrar verification was sent to the Registrar requesting confirmation that it had received a copy of the Complaint from the Complainant, that the domain name was currently registered with it and that the Policy was in effect, and requesting full details of the holder of the domain name and advice as to the current status of the domain name.
On December 21, 2000, Notification of Complaint and Commencement of Administrative Proceeding was sent to the Respondent.
On January 17, 2001, having received no response, the Center issued a Notification of Respondent Default. Subsequently on January 17, 2001, the Center received from the Respondent an e-mail which acknowledged the Respondent had received electronic mail regarding this Complaint. On January 22, 2001, the Centre acknowledged receipt of this e-mail. However, the hardcopy of the Complaint was returned to the Centre as not deliverable because the zip code was incorrect. Similarly, the Center sent the Notification of Complaint and the Complaint to the Respondent by facsimile, but the fax transmission coversheet indicated that the fax transmission did not go through.
On January 25, 2001, a Notification of Appointment of Administrative Panel and Projected Decision Date ("the appointment notification") was sent to the Complainant and the Respondent. In accordance with the Complainant’s request for a single-member panel, the appointment notification informed the parties that the administrative panel would be comprised of a single panelist, Mr. Clive Elliott.
On February 9, 2001, a Procedural Order regarding service of the Complaint was signed by Mr. Elliott and faxed to the Centre. This provided the Respondent with further time until February 21, 2001 in which to respond, if it chose to do so.
No further response was received from the Respondent and, accordingly, Clive Elliott as the sole panelist issued a decision on March 1, 2001.
4. Factual Background
The Complainant states that it commenced business in India in the year 1963 and has been manufacturing and marketing a wide range of pharmaceutical preparations under the trademark WOCKHARDT since then.
The Complainant, Wockhardt Limited, along with its group of companies, (hereinafter referred to as "the Wockhardt Group") say that they are among the leading manufacturers of pharmaceuticals and health care products in India, as well as abroad.
The trademark WOCKHARDT and its logo were registered in India class 5 for pharmaceuticals/medical preparations etc. in the name of "Wockhardt Private Limited." The Complaint states that the pharmaceutical business of the Wockhardt Group along with the corresponding trademark registrations were transferred to the Complainant by order of the Mumbai High Court on November 29, 1999. By virtue of the above, the Complainant claims it is the proprietor of the trademark WOCKHARDT in India.
The Complainant has also filed trademark applications for the name WOCKHARDT and the corresponding logo in the USA.
The Complainant has registered the domain names <wockhardtin.com>, <wockhardt.net>, <whhi.com> and <worldofanaesthesia.com>.
The Respondent registered the domain name <wockhardt.com> on March 21, 2000.
5. Parties’ Contentions
A. Complainant alleges the following:
The Complainant says that for the last thirty years, it has consistently sold its products under the trademark WOCKHARDT.
The Complainant says that it is among India’s top five pharmaceutical companies having an extensive presence not only in India, but also in various other jurisdictions such as the USA, the UK and Africa, through its subsidiaries/associates. The Complainant says that its presence in the USA is well established by virtue of the following entities:
- Its subsidiary, Wockhardt Americas Inc., incorporated in the State of Delaware, USA;
- Its associate Sidmak Laboratories Inc, through which it markets its drugs in the USA; and
- Its stock and sales agent in the USA known as SST Corporation.
The Complainant claims that it has been rewarded for its excellence in that it is the recipient of the Indian Drug Manufacturers Association Quality Excellent Trophy for the year 1995.
The Complainant states that it has spent considerable sums in developing its trademark WOCKHARDT. This mark is also the Complainant’s corporate name and house mark and is affixed on all the products manufactured/sold by it. The Complainant also claims it has spent considerable sums in advertising the said mark in leading newspapers and journals, both national and international. The Complaint claims that customers recognize the Complainant’s business by reference to the mark WOCKHARDT.
The Complainant states that it has not given permission or otherwise to the Respondent to use its trademark WOCKHARDT or to apply for any domain name incorporating this mark.
The Complainant submits that although the Respondent registered the domain name in March 2000, it has not proceeded to activate a website under the said name.
The Complainant claims that if the Respondent were to activate the website, it would lead to confusion as consumers would be likely to associate the said website with the Complainant and its goods and services
A. Respondent alleges the following:
The Respondent has not filed a formal response. However, it claims in an e-mail dated January 17, 2001 that the domain name <wockhardt.com> belongs to a company in the USA and that dot coms are based in the USA. The Respondent states that the proceedings are pointless and a company in India cannot attack a USA-based company through the UDRP. Finally it is argued that the Complainant has no basis for complaint and should be content with the domain name <wockhardt.co.in>.
6. Discussion and Findings
Para. 4(a) of the Policy requires that the Complainant must prove each of the following:
The domain name is identical or confusingly similar to the trade mark;
The Respondent has no rights or legitimate interests in respect of the domain name; and,
The domain name has been registered and is being used in bad faith.
Para. 4(b) of the Policy sets out four illustrative circumstances that, if proved, constitute evidence of bad faith as required by para. 4(a)(iii) referred to above.
Para. 4(c) of the Policy sets out three illustrative circumstances that, if proved, constitute evidence of a right or legitimate interest as described in para. 4(a)(ii) referred to above.
Domain Name Identical or Similar
The domain name registered by the Respondent and in dispute is identical to the trade mark used and registered by the Complainant.
‘Wockhardt’ has no meaning known to the panelist. Indeed, the Complaint, (Annexure C) indicates that the word Wockhardt was coined in a very general way from a combination of the firm name "Worli Chemical Works" and the family name "Khorahiwala." This indicates that the trade mark has a particular meaning but one which is closely related to the Complainant alone and one which has no other known meaning.
On the basis of the above it is found that this ground is made out.
Respondent has no Rights or Legitimate Interests
The Respondent has not filed a formal response. As indicated above the argument is made through e-mail correspondence that the disputed domain name belongs to a US company and that and Indian company cannot attack a US-based company through the UDRP. While this may seek to answer the Complainant’s assertions about the Respondent’s lack of rights or legitimate interests in respect of the domain name, it does not directly address the actual basis of complaint.
While .com domains may be registered in the US and in this case to a US entity, this does not mean that the UDRP does not have any relevance to the dispute. As a top level domain name <wockhardt.com> has application and presence throughout the world and it is no answer to say that just because the Respondent is based in the US, that no relief is available to an otherwise deserving Complainant.
The panelist has considered the evidence of the Complainant’s reputation and goodwill, not just in India, but in overseas countries, including the USA. There is uncontradicted evidence that the Complainant trades in the USA and the Complainant’s slogan "Our sources are world wide - Our service is world class" is backed up by evidence of substantial sales of product in the USA and a presence through its subsidiary Wockhardt Americas Inc. Other than arguing the jurisdiction point the Respondent has not given any indication as to why it chose the <wockhardt.com> domain name or why it regards itself as having a legitimate interest or right in respect of the domain name.
Having found that, prima facie, the Complainant has an international reputation and goodwill in the WOCKHARDT trade mark and in the absence of a satisfactory explanation as to why the Respondent chose the domain name or why it might have a legitimate interest in it, it is found that this ground is made out.
Domain Name Registered and being used in Bad Faith
On the evidence, it appears that the international reputation and goodwill in the WOCKHARDT trade mark existed prior to the date on which the disputed domain name was registered, that is, March 21, 2000. Also at that date, the Complainant had registered the trade mark WOCKHARDT in India and had applied for registration in USA. On this basis and for the other reasons identified above it is found that the domain name was registered in bad faith.
The next question is whether it can be found that the domain name is being used in bad faith. There is no evidence that the Respondent has activated a web site under the domain name. Nor is there evidence that the Respondent has sought to sell the domain name to the Complainant for an amount in excess of its nominal registration cost. The question then becomes whether, under these circumstances, the continued holding of the domain name, without commercial use, can reasonably amount to use in bad faith. In Telstra Corporation Limited v Nuclear Marshmallows, Case number D2000-0003 it was held that "The relevant issue is not whether the Respondent is undertaking a positive action in bad faith in relation to the domain name, but instead whether, in all the circumstances of the case, it can be said that the Respondent is acting in bad faith."
On the basis of this authority it is open to a panelist to find that inaction is sufficient to be within the concept of use in bad faith and that this finding can be made if, in all the circumstances of the case, it is regarded as appropriate. In this regard, the panelist has to weigh up the evidence which has been filed in support of the Complainant and which is probative in nature. Matched against this, the panelist has to take into account the lack of a substantive response and the fact that the Complainant has made out its case on all other grounds.
If there was any evidence that other parties were using the Wockhardt trade mark or that it had a particular meaning other than that exclusively associated with the Complainant, the panelist may have been more reluctant to make this finding. However, on balance, it is felt that Complainant has done sufficient to meet its onus. Accordingly, it is found that this ground is made out.
In view of the above, the domain name should be transferred to Complainant.
Clive L Elliott
Dated: March 1, 2001