WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

G.A. Modefine S.A. v. Prabhakar Jeyapathy

Case No. D2001-0330

 

1. The Parties

The Complainant is G.A. MODEFINE S.A., a Swiss company of 90, Avenue de France CH Ė 1004 Lausanne, represented by Avvocato Mariacristina Rapisardi of Studio RAPISARDI S.A. of Via Ariosto, 6 Ė 6901 LUGANO Ė CH.

The Respondent is Prabhakar Jeyapathy of 98 Highview Drive, Woodbridge, NJ 07095 U.S.A.

 

2. The Domain Name and Registrar

The domain name at issue is <mani.org>.

The Registrar is Register.com.

 

3. Procedural History

The Complaint was received by email on March 7, 2001, and in hard copy on March 15, 2001, by the WIPO Arbitration and Mediation Center [the Center]. In accordance with Paragraph 4(a) of the Rules for Uniform Domain Name Dispute Resolution Policy [the Rules] as approved by ICANN on October 24, 1999, and the Centerís own Supplemental Rules in effect as of December 1, 1999 [the Supplemental Rules], the Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy adopted by ICANN on October 24, 1999 [the Policy], the Rules and the Supplemental Rules. The Complaint was submitted in English and the proceedings have been conducted in English. The Complainant has paid the specified fee to the Center.

The Center transmitted the requisite Registrar Verification request to Register.com on March13, 2001, and received a response on the March 16, 2001, confirming that the Respondent, Prabhakar Jeyapathy, is the current owner/registrant of the domain name <mani.org> and that the domain name "is active".

Proceedings in this case were formally commenced on March 20, 2001, when the Center sent a copy of the Complaint to the Respondent by post at the address recorded in the Registrant details for the domain name at issue and by email to manionline@yahoo.com. The notification to the Respondent advised that a Response would need to be submitted to the Center no later than April 8, 2001, to be sure of being considered in these proceedings. A Response was received by email on March 23, 2001 and in hardcopy on March 26, 2001.

On March 27, 2001, the Center invited Mr. Keith Gymer to serve as single Panelist in these proceedings and received his Statement of Acceptance and Declaration of Impartiality and Independence on March 28, 2001. The Center appointed Mr. Gymer as Panelist on March 30, 2001, and notified the Respondent and the Complainantís representatives of this appointment by email on the same day.

Following an initial review of the Partiesí submissions the Panelist considered that some clarification of matters raised in evidence would be desirable before taking a final decision in these proceedings. On April 6, 2001 the Center issued a Procedural Order No.1 to the Respondent seeking such clarification. The Respondent provided a reply to the points of issue on April 9, 2001.

 

4. Factual Background

According to the Registrarís records, the domain name <mani.org> was registered to the Respondent on February 10, 2000.

The Complainant is the parent company of the famous Georgio Armani worldwide fashion business. The Complainant owns and operates (itself or through its associated companies) websites relating to this business using various domain names, including, most relevantly <mani.net>, which was registered for Georgio Armani Corporation in September1997, according to the WHOIS record.

The Complainant has numerous registrations of MANI as a trade mark for clothing and related goods, including, in particular:

Trade-mark

Country

App. No.

Classes

Filing Date

MANI

United States

1276982

18, 24, 25

May 8, 1984

MANI

United States

1910069

18, 25

August 8, 1995

The evidence shows that the mark has been in use in the United States in recent years.

The Complainant, by its Agent, sent a letter by courier on December 6, 2000 advising the Respondent of its trade mark rights and inviting the Respondent to contact the Agent with a view to "settling the matter in a friendly way". The letter gave the Respondent until December 29, 2000 to reply and indicated that thereafter the Complainant would consider itself free "to act for the protection of its rights". A receipt for this letter shows that it was, in fact, signed for by one "Rajesh Mani" on December 20, 2000. The Respondent did not reply to this letter and claims not to have seen it.

The Respondent has a company registered under the name "Mani Associates L.L.C." in New Jersey, U.S.A. for software consulting services. The company was first registered as MAANI Companies L.L.C. on July 21, 1997. The name of the company was subsequently changed to MANI Associates L.L.C. on May 1, 1998. The Respondent submitted relevant documentation in evidence including:

1. Copy of original Registration of MAANI Companies L.L.C.

2. Copy of change of name from MAANI Companies L.L.C. to MANI Associates L.L.C.

3. Copy of Registration of MANI Associates L.L.C.

4. Copy of Application for Employer Identification Number which shows the activity of the company.

Otherwise, the Complainant and Respondent have made a number of further contentions in the Complaint and Response respectively. These are summarised below.

 

5. Partiesí Contentions

A. Complainant

The complainant alleges that the notoriety and diffusion of its MANI trademarks are proved by the copious advertising which constantly appears throughout the world in fashion magazines and in the most important newspapers as well as in the catalogues produced and distributed by the Complainant about the line of fashionís products "Mani". Some examples of such advertising were included in the Complaint (annex D). No evidence was provided of the extent of actual sales under the mark or of public recognition of the mark in the USA or elsewhere which might substantiate a claim to notoriety.

The Complainant asserts that the Respondent has no lawful rights and legitimate interest in respect of the contested domain name: in particular, that the Respondent does not own trade marks constituted by the word MANI and also does not own any other signs comprising the word MANI; and further that the Respondent is not known on the market by the name MANI.

Bad faith of the Respondent in the registration of the domain name is supposedly proved by two separate circumstances:

Firstly, the mere registration of "domain names" [sic] consisting of the word "MANI" without having any lawful right, reveals the intention of the Respondent to take advantage from the unlawful use of the trademark owned by Modefine, provided that at the time of the registration of the contested domain name, the Respondent was certainly aware of the fame and worldwide relevance of trademark MANI of Modefine.

Such circumstance is alleged not to be excluded by the fact that at the date of 1.3.2001 the web site was not operative: the lack of use of the site does not guarantee that in the future that the Respondent "will not unlawfully use them worsening the situation of interference with Modefineís trademark already effected through the registration of the domain name at stake."

Secondly, in several decisions (i.e. Cigna Corporation v. Jit Consulting, No. AF-00174 of 6 June 2000) it has been considered registration and use in bad faith of the domain name when the registrant does not reply to the warning letters duly received in which the sender contests the registration of the domain name Ė the "silent" behaviour of the registrant has been considered as an admission of a bad faith use. Therefore, considering that the Respondent did not answer its warning letter, the Complainant asks the Panel to conclude that the contested registration has been made in bad faith.

The Complainant requests the Administrative Panel to issue a decision that the contested domain name be transferred to the Complainant.

B. Respondent

In his initial Response, the Respondent asserts that he has a legitimate interest in the domain name at issue in the light of his own company registration and in view of the operation of his business in the field of software consulting.

The Respondent alleges that a web site was not developed [at www.mani.org] because "we primarily used the domain name for email and we are currently hosted with an Internet service provider."

The Respondent also states that the question of registering and using the domain name in bad faith does not arise because the domain name <mani.org> was not offered for sale or did not violate any laws of any land. The Respondent claims that the domain name was registered previously by another party and was allowed to expire before the Respondent registered the domain Ďmani.orgí. The Respondent denies affecting or disrupting the functioning of the Complainantís business because the Respondent is in a different line of business. Respondent asserts that he did not divert internet users to create any confusion with Complainantís trademark, nor sell or service a product or service that is in the line of business of the Complainant.

The Respondent does not violate any trademark because the services provided by the Respondentís organization is not in the line of goods or services provided by the Complainant.

The Respondent has a valid use of the domain name <mani.org> for MANI Associates L.L.C. without intent to tarnish the trademark of the Complainant because Respondent provides Software Consulting services, which are not the line of service or goods sold by the complainant.

As for the allegation of bad faith in not responding to an earlier letter, the Respondent claims not to have received the earlier letter to see or understand that an objection was raised against him for owning the domain name.

The Panelist sought clarification regarding the denial of receipt of this letter in view of the Complainantís evidence that it had been received and signed for by a "Rajesh Mani".

The Respondent replied:

"I was not in the U.S.A. on the said date the letter was received. "Rajesh Mani" is my friend and I had asked him to pick up mail for me and he could have signed for the mail but unfortunately some of my mail was missing because there was a clean up of the premises that was taking place at that time so invariantly they must have misplaced the mail. Had I got a copy of the mail I would have responded immediately to any notification."

The Panelist also asked why did the Respondent first choose MAANI Companies LLC and then change it to MANI Associates LLC?

The Respondent replied:

"I had tried to register "MANI Companies LLC" at first and the registrar had told me that the name was not available and that is the reason I settled for "MAANI Companies LLC". My name is also "MANI" by which I am known in India which is also a common name in India and that is why I had chosen that name. So after about a year I decided that I want my name as it is in my company name and so I changed the name of my company to "MANI Associates LLC". I would also like to bring to your attention since I did not find any domain name with the name "mani" I had registered "manionline.com" and when the domain name "mani.org" became available I registered the domain name which is being disputed now."

"I had adopted the email address manionline@yahoo.com in the middle of 1997 and the reason I had adopted the address was that it was easy for my friends to remember because they know me as "mani" and if they want to send something online it was easy to use. I also adopted this address because when I travel I forward all my email to this address and I can access it globally."

 

6. Discussion and Findings

In order for the Panel to decide to grant the remedy of transfer of a domain name to a Complainant under the Policy it is necessary that the Complainant must prove, as required by Paragraph 4(a) of the Policy, that

(i) the contested domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) the domain name has been registered and is being used in bad faith.

6.1 Is the domain name identical or confusingly similar to a trademark or service mark in which the Complainant has rights?

The evidence shows that the Complainant has registered trade mark rights in the relevant jurisdiction (USA) in the mark "MANI". The Respondent has not disputed this. The domain name at issue is <mani.org>. In the Panelistís opinion it is clear that the domain name is indeed identical or confusingly similar to a trademark in which the Complainant has rights and that the first requirement of Paragraph 4(a)(i) of the Policy is met.

6.2 Does the Respondent have no rights or legitimate interests in respect of the domain name?

Paragraph 4(c) of the Policy provides that:

"Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) Ö"

Contrary to the Complainantís assertions, it is clear from the evidence that the Respondent has indeed made effective preparations to use a name corresponding to the domain name in connection with a bona fide offering of services, through the Respondentís incorporation of its company for business in the field of software consulting. The Complainantís trade mark rights do not extend to such services.

Further, it is also entirely credible, as a simple search on the internet reveals, that a person of Indian extraction may commonly be known as "Mani", as the Respondent has claimed, and the Panelist would have been prepared to come to this conclusion without additional clarification.

In these circumstances, the Panelist considers that the Complainant has failed to prove that the Respondent has no rights or legitimate interests in respect of the domain name; and the requirements of Paragraph 4(a)(ii) of the Policy are not met.

6.3 Has the domain name been registered and is it being used in bad faith?

The Complainant has claimed that mere registration of the domain name<mani.org> in the light of alleged notoriety of the mark MANI; the failure of the Respondent to reply to its warning letter; and the failure to establish an active website using the domain name all amount to evidence of bad faith on the part of the Respondent.

In the Panelistís opinion, the evidence is certainly insufficient to establish that MANI is a mark of such exclusive notoriety that any use by any other party would inevitably be associated with or conflict with the Complainant. This is not a uniquely distinctive mark. It appears to be simply a contraction of ARMANI, which itself is an abbreviation of the genuinely famous GEORGIO ARMANI mark. The Complainantís registrations for MANI, however, are not the only ones, even on the US Trademarks Register.

MANI will also be more familiar to many as the ordinary Italian word meaning "hands".

As the evidence and the Panelistís own online searches have additionally revealed, MANI is a common (nick)name well-known to people from the Indian sub-continent.

In this situation, mere registration of the domain name could not justify a finding of bad faith.

The Respondent has offered explanations for the lack of reply to the Complainantís warning letter and for the delay in establishing a website and the Panelist sees no reason to disbelieve these explanations. In any event, the Panelist does not consider that ignoring a warning letter or not setting up a website are automatic indications of culpability when a domain name has only been registered by the Respondent for barely a year - by comparison, trade mark registrations cannot generally be challenged for non-use until at least five years after registration.

The Complainant has shown no evidence at all of any objectionable conduct by the Respondent, in terms of demands for money or misleading use of the domain name.

In the circumstances, the Panelist concludes that the Complainant has not discharged its obligation to show that the domain name has been registered and is being used in bad faith. The requirements of Paragraph 4(a)(iii) of the Policy have not been met.

 

7. Decision

For the reasons given in Section 6 above, the Panelist decides that this Complaint should be dismissed.

 


 

Keith F.Gymer
Sole Panelist

Dated: April 14, 2001