WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Titan Industries Limited v. Tanishq Corporation
Case No. D2000-1793
1. The Parties
Complainant is Titan Industries Limited, a corporation located in Bangalore, India.
Respondent is Tanishq Corporation located in Dubai, United Arab Emirates.
2. The Domain Name and Registrar
The domain name at issue is <tanishq.com> (the "Domain Name").
The registrar is Network Solutions, Inc., in Herndon, Virginia, USA.
3. Procedural History
This action was brought in accordance with the ICANN Uniform Domain Name Dispute Resolution Policy, dated October 24, 1999 ("the Policy") and the ICANN Rules for Uniform Domain Name Dispute Resolution Policy, dated October 24, 1999 ("the Rules").
Complainant submitted its complaint in this proceeding on December 22, 2000. Respondent submitted its Response on January 22, 2001. Complainant's Reply was submitted on January 25, 2001.
WIPO Arbitration and Mediation Center appointed Mark V.B. Partridge,
Desmond J. Ryan and Tony Willoughby as panelists on February 23, 2001.
4. Factual Background
Complainant is engaged in the manufacture and sale of watches and jewelry. Complainant adopted the mark TANISHQ for jewelry and jewelry watches on
January 6, 1995. The mark was formed by combining the first two letters of Complainant's name with the Sanskrit word Nishq, meaning gold coin or necklace. Since 1995, Complainant's TANISHQ products have enjoyed substantial sales and advertising in India, and have been exported to various countries, including Dubai. The mark has been registered in a number of foreign jurisdictions, but the mark has not been registered in Dubai, the United Arab Emirates or any of the other Middle East countries. Complainant has applied for registration of the mark in India.
Respondent claims it selected the name Tanishq for use in connection with the manufacture and sale of body care products in 1997. The term was selected by Respondent as a combination of the urdu words "tan", meaning body, and "ishq", meaning love or passion.
The Domain Name was registered on June 5, 1998. In 1999 and 2000, the Respondent took steps to start a body care products business. On March 3, 1999, Respondent filed a "Registration Certificate of Establishment" with the Government of Karnataka, in Bangalore, India. The Certificate gives the name of the establishment as "Tanishq Corporation." The nature of the business is "beauty and care." In 2000, Respondent hired Mr. Manish Gajria, Multimedia Studio Ltd., Bangalore, India, to develop a web site for its body care product business. The total value of the development contract was $110,000 (US).
Complainant asserts that the Domain Name was originally registered to Mr. Prashanth Koorapati, a defendant in a law suit prosecuted by Complainant in 1998. No showing has been made of any connection between Mr. Koorapati and the Respondent, and Respondent has denied that it acquired the Domain Name from Mr. Koorapati.
5. Partiesí Contentions
Complainant contends that the Domain Name is identical and confusingly similar to its mark, that Respondent has no rights or legitimate interests in the Domain Name, and that Respondent has registered and used the Domain Name in bad faith.
Respondent contends that it selected the Domain Name for a legitimate purpose without any intent to trade on the Complainant's mark.
To obtain relief under the ICANN Uniform Domain Name Dispute Resolution Policy, Paragraph 4(a) of the Policy requires the complainant to prove each of the following:
(i) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) that the respondent has no rights or legitimate interest in the domain name; and
(iii) that the domain name has been registered and used in bad faith.
A. Confusing Similarity
Complainant has rights in its marks in India and other countries that predate the registration of the Domain Name based on use of the mark in commerce and registration of the marks in various jurisdictions. The Domain Name is identical to a mark in which the Complainant has prior rights. Therefore, Complainant has satisfied the requirements of Paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Under the Policy, legitimate interests in a domain name may be demonstrated by a showing that: (i) before any notice of this dispute, respondent used, or demonstrably prepared to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; (ii) respondent has been commonly known by the domain name, even if no trademark or service mark rights have been acquired; or (iii) respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark at issue. Policy 4(c).
Here, Respondent's statement indicates that it made demonstrable preparations to use the domain name before any notice of this dispute. Those statements are supported by a statement from Multimedia Studio Ltd. regarding a web site development contract entered in April 2000, and by the Registration Certificate of Establishment dated March 31, 1999. Nothing in Complainant's submission contradicts or questions the truth of these statements. Therefore, under the terms of the Policy, we find that Complainant has failed to show a lack of right or legitimate interest in the Domain name as required by Paragraph 4(a)(ii) of the Policy.
The Panel felt at a disadvantage in not having an Indian panelist among its number. There are certain aspects of the Respondentís evidence, which give cause for concern and which an Indian national might have been able to clarify. However, this administrative procedure is not an ideal forum for resolving issues of fact and, indeed, determining whether or not a party is being truthful. Accordingly, unless the evidence against the Respondent is clear, the Panel has no alternative but to resolve the doubt in favour of the Respondent.
C. Bad Faith Registration and Use
We also find that Complainant has failed to show bad faith registration and use under the Paragraph 4(a)(iii) of the Policy. There is no indication that Respondent registered the Domain Name with the intent of selling it for profit. There is no evidence to contradict the Respondentís assertion that it registered the Domain Name for the purpose of engaging in a body care business.
There is also no evidence that Respondent engages in a pattern of conduct to prevent others from reflecting their marks as domain names or that Complainant is seeking to disrupt the business of a competitor.
Complainant has not shown that Respondent intentionally attempted to attract, for commercial gain, Internet users to a web site by creating a likelihood of confusion with the complainant's mark. Policy 4(b)(iv). The evidence supporting Complainant's position is limited to the fact that Complainant has registered and used the TANISHQ mark for jewelry and watches since 1995, primarily in India, where Respondent's Administrative Contact and web site developer are located and where Respondent intends to do business. However, it is also undisputed that Complainant did not register the mark in Dubai, where Respondent is located. Further, Respondent has claimed a prior intent to use the mark for a different business and there is no evidence to counter that claim. Respondent has also shown that the name TANISHQ is an apt choice for a body care product business because it conveys the meaning "love for one's body." On the evidence before us, it is certainly plausible that Respondent registered and intends to use the name in good faith for a body care business, without any intent to trade on Complainant's good will. Whether the use of the mark and domain name TANISHQ for body care products may ultimately infringe Complainant's trademark rights in TANISHQ for jewelry and watches is an issue beyond the scope of the Policy.
For the Panel to hold that the Respondent registered the Domain Name in bad faith and is using it in bad faith, the Panel would have to disbelieve the Respondentís claim to complete ignorance of the Complainant and the Complainantís use of the trade mark TANISHQ at the time that the Respondent registered the Domain Name. There is no hard evidence before the Panel to justify such a finding.
We conclude that Complainant has failed to prove that Respondent lacks rights or legitimate interest in the Domain Name, or that Respondent registered and used the Domain Name in bad faith. Therefore, we find in favor of Respondent and deny Complainant's request for transfer of the <tanishq.com> Domain Name.
Mark V. B. Partridge
Desmond J. Ryan
Dated: March 14, 2001