WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

GA Modafine S.A. v. Mani.Com

Case No. D2001-0388

 

1. The Parties

The Complainant in this administrative proceeding is GA Modafine S.A., a Swiss corporation with a principal place of business in Lausanne, Switzerland. The Complainant is represented by Avvocato Mariachristina Rapisardi of Studio Raposardi S.A. of Lugano, Switzerland.

The Respondent is Mani.Com care of Saresh Mani of Quincy, MA, U.S.A.

The Respondent is represented by Mr. Stephen J Jeffries of Holland & Knight LLP, Attorneys of Washington DC, USA.

 

2. The Domain Name and Registrar

The domain name in dispute is <mani.com>.

The domain name is registered with Network Solutions Inc., of Herndon, Virginia, U.S.A. ("NSI")

 

3. Procedural History

A Complaint was submitted electronically on March 19, 2001 and by hard copy on March 22, 2001 by the Complainant of the World Intellectual Property Organization Arbitration and Mediation Center ("WIPO Center").

On March 21, 2001 a request for Registrar verification was transmitted by WIPO Center to NSI requesting it to:

- Confirm that a copy of the Complaint had been sent to it by the Complainant as required by WIPO Supplemental Rules for Uniform Dispute Resolution Policy, paragraph 4(a).

- Confirm that the domain name at issue is registered with the Registrar.

- Confirm that the Respondent is the current registrant of the domain name.

- Provide full contact details, i.e., postal address(es), telephone number(s), facsimile number(s), email address(es), available in the Registrarís WHOIS database for the registrant of the disputed domain name, the technical contact, the administrative contact and the building contact for the domain name.

- Confirm that the Uniform Domain Dispute Resolution Policy is applicable to the domain name at issue.

- Indicate the current status of the domain name.

By email dated March 23, 2001, NSI advised the WIPO Center as follows:

- NSI had received a copy of the Complaint from the Complainant.

- NSI is the Registrar of the disputed domain name registration.

- The Respondent is the current registrant with NSI of the said domain name. Saresh Mani is the administrative, technical and billing contact for the domain name.

- NSIís 5.0 Service Agreement is in effect.

- The disputed domain name registration is in "Active" status.

With effect from January 1, 2000, NSI adopted the policy for Uniform Domain Name Dispute Resolution adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN"). As can be deduced from the advice of NSI that the domain name in question is still "active", the Respondent has not requested that the domain name at issue be deleted from the domain name database, nor sought to terminate the agreement with NSI. Accordingly, the Respondent is bound by the provisions of the Domain Name Dispute Resolution Policy, i.e., the ICANN policy.

Having verified that the Complaint satisfied the formal requirements of the Uniform Policy and the Uniform Rules, the WIPO Center on March 27, 2001 transmitted by courier, email and facsimile a notification of Complaint and Commencement of Administrative Proceedings to the Respondent. A copy of the Notification of Complaint and Commencement of Administrative Proceedings was also emailed to NSI and ICANN.

The Respondent was advised that a Response to the Complaint was required within 20 calendar days. It was also advised that any Response should be communicated, in accordance with the Rules, by four sets of hard copy and by email. The Respondent filed a Response by email on April 13, 2001 and by hard copy on April 18, 2001.

The Respondent elected to have the Complaint resolved by a three-member Panel. The parties have duly paid the amounts required to WIPO Center.

WIPO Center invited the Honorable Sir Ian Barker QC of Auckland, New Zealand to chair the Panel in this case. It had earlier invited Mr. David Perkins of Clifford Chance, London, U.K. and Mr. Reinhard Schanda of Sattler & Schanda, Wien, Austria, to be Panelists. It transmitted to all panelists a statement of acceptance and requested a declaration of impartiality and independence.

All Panelists duly advised their acceptance and forwarded to the WIPO Center their statements of impartiality and independence. On May 22, 2001, the Complainant and the Respondent were notified of the appointment of the Panel. The Panel finds that the Administrative Panel was properly constituted in accordance with the Rules and the Supplemental Rules.

Without seeking leave from the Panel so to do, as required by the Rules, the Complainant sought on May 19, 2001 to file a Reply to the Response. By a document received by WIPO Center on May 21, 2001, the Respondent objected to the Reply being accepted. Although not wishing to encourage the filing of extra submissions, especially when leave so to do has not been sought, the Panel has decided to consider these additional documents. In the Panelís view, the Reply adds little to the Complainantís case.

On May 22, 2001, WIPO Center forwarded to the Panel by courier the relevant submissions and the record. These were duly received by them. The Panel is to forward its decision by June 4, 2001.

The Panel has independently determined and agrees with the assessment of the WIPO Center that the Complaint meets the formal requirements of the Rules for Uniform Domain Name Dispute Resolution Policy as approved by ICANN on October 24, 1999 ("the Rules") and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("the Supplemental Rules").

The language of the administrative proceeding is English, being the language of the registration agreement.

 

4. Factual Background

The Complainant owns a trademark constituted by the word "MANI" registered in Europe, United States of America, Canada and elsewhere. It is used for different kinds of goods, such as clothes, ties, dresses and shorts in various materials. "Mani" trademarks feature in advertising throughout the world in fashion magazines and catalogues.

The Complainant has not given the Respondent any rights in respect of the contested domain name.

From the website correspondent to the domain name disputed it is possible to get to the e-mail address of Mr. Suresh Mani and to the website of eGulf Technologies, to which some pages are dedicated; eGulf Technologies, Inc. and eGulf Computers, Inc. are companies of which Mr. Suresh Mani is President.

In the above mentioned website there is an offer to the persons with the name Mani for a free e-mail address by writing to the e-mail address suresh@mani.com.

 

5. Partiesí Submissions

Complainant

Mr. Suresh Mani, who at the time of registration of the domain name was certainly aware of the fame and worldwide relevance of trademark Mani of Modafine. He intended to exploit the notoriety of that trademark in order to advertise worldwide and to increase the activity of his firms. If he really wanted to offer to the Mani family members the possibility of registering in order to obtain for free an e-mail address, he would have utilized another available domain name either constituted by his full name Suresh Mani, or in any case containing a clear reference to the Mani Family as Mani family.

The domain name is identical with the Complainantís mark. The Respondent has no rights or legitimate interests in the domain name. The Respondent registered and is using the domain name in bad faith.

Respondent

The term "mani" has non-trademark significance because it is a surname shared by many persons of Hindu ethnicity who originate from a particular region of the northern Indian subcontinent which is now Pakistan. At least 544 persons bearing the surname "mani" reside in the United States alone.

At least 433 parties other than Complainant have obtained registrations for the term "mani" as a trademark for products other than clothing and clothing accessories in a number of countries. A synopsis of the most relevant listings derived from the search report is attached to the Response. The term "mani" is not solely a trademark of significance. Neither is the use of the term "mani" as a trademark solely associated with Complainant or the products of Complainant. The Complainantís trademark rights in the term "mani", if established at all, can only be utilized in relation to clothing and clothing accessories.

Respondentís rights and legitimate interest in the domain name are established by:

(1) The fact that "mani" is the surname of Respondent Suresh Mani;

(2) Respondentís legitimate non-commercial or fair use of the domain name in connection with a website through which he locates and communicates with other members of the internationally dispersed "mani" family, without intent for commercial gain misleadingly to divert Complainantís customers or to tarnish Complainantís trademark; and

(3) Respondentís use of the domain name in connection with the bona fide offering of e-mail services to members of the "mani" family through the website associated with the domain name for a period of almost two years prior to the date upon which Complainant notified Respondent of this dispute.

During 1998, Respondent developed the concept of creating a website to locate and foster communications with and among the dispersed members and descendants of the "mani" family from northern India (now Pakistan) by offering them free e-mail services. To this end, Respondent purchased the domain name <mani.com> (which had been registered by another party) for the sum of $1,000 (US) on December 28, 1998. On January 4, 1999, Respondent directed a web programmer to create a website located at the <mani.com> URL through which Respondent would offer free e-mail services to all members and descendants of the "Mani" family.

Since January 7, 1999, Respondent has fulfilled a number of requests for free e-mail services made by members of the "Mani" family through the <mani.com>website. He enjoys receiving and responding to e-mail communications from other "mani" family members and as well as to more general genealogical inquiries directed to the site. Samples of some of the e-mail communications that Respondent has received through the <mani.com> website are attached to the Response. Printouts of e-mail communications that Respondent has sent from the <mani.com> website are attached. These activities of Respondent constitute both fair use of the domain name and the bona fide offering of services through the website associated with the domain name.

Complainant first notified Respondent of this dispute via letter dated December 11, 2000 Ė one year and eleven months after the date upon which Respondent commenced fair use of the domain name and the bona fide offering of services through the website associated with the domain name. Respondent replied on December 21, 2000, asserting his legitimate use of the domain name and referring to the desire to communicate with persons called "mani".

Complainant has not alleged that Respondent acquired the domain name in order to prevent Complainant from reflecting Complainantís mark in a corresponding domain name, or that Respondent has engaged in a pattern of such conduct.

Complainant has not alleged that Respondent acquired the domain name for the purpose of disrupting the business of Complainant as a competitor. Complainant is engaged in the marketing of clothing and clothing accessories. Respondent is engaged in locating and communicating with members of his family group by providing free e-mail services to them. Complainant and Respondent are not competitors at all.

Complainant has suggested that Respondent acquired the domain name with the intent to attract internet users to the on-line location of the computer services company of which Respondent is President (eGulf Technologies) by creating a likelihood of confusion with the Complainantís mark as to the source, sponsorship, affiliation, or endorsement of the Respondentís website. This suggestion is based upon the presence within the content of the <mani.com> website of a link to the website of eGulf Technologies. The <mani.com> website does not, however, feature any indicia of Complainant or other material that might create a likelihood of confusion with the Complainantís mark as to the source, sponsorship, affiliation, or endorsement of that website or any associated website. While a link to the Gulf Technologies website does appear within the sentence "This web site belongs to Suresh Mani, of eGulf Technologies, Inc., the eGulf Technologies website is likewise free of potentially confusing indicia or material. No intent to infringe could possibly be deducted from the mere and entirely incidental presence of this link.

 

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel to:

"decide a complaint on the basis of the statements and documents submitted in accordance with the policy, these rules and any rules and principles of law that it deems applicable".

The burden for the Complainant, under paragraph 4(a) of the ICANN Policy, is to show:

- 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;

- That the Respondent has no legitimate interests in respect of the domain name; and

- The domain name has been registered and used in bad faith.

In the opinion of the Panel, the domain name registered by the Respondent is identical to the Complainantís marks.

The Complainant must show that the Respondent has no rights or legitimate interests in respect of the dispute domain name. The Respondent does not assume the burden of proof, but may establish a right or legitimate interest in a disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy:

(a) He has made 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 prior to the dispute;

(b) He is commonly known by the domain name, even if he has not acquired any trademark rights; or

(c) He intends to make a legitimate, non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.

In the Panelís view, it is immaterial that the Respondent was not the initial registrant. Although the original registrant may have registered it with intend to sell it, the same cannot be said of the Respondent.

The evidence is that the Respondent registered the name long before the Complainant objected. His claim is that he used it prior to the dispute as a means of communication with persons of the same name who all can place their origins to a certain part of the Indian subcontinent. The documents attached to the Response support this claim.

The Complainant claims that the domain name should have included Mr. Maniís forename or should have been something like <manifamily.com>. The Panel does not agree. The Respondentís surname is Mani and he is commonly known as such. He is entitled to use it on the internet.

Accordingly, the Panel considers that the Complainant has not discharged the onus of proof in respect of the second criterion.

The Complainant may be able to prove a breach of its trademark rights in a Court. But in the limited environment, such as ICANN procedure allows, it is not possible for the Panel to so hold.

Accordingly, it is not necessary to consider the third criterion. However, the Panel considers that it is not proved that the Respondent purchased the name in bad faith. In other words, it is not proved that Mr. Mani knew of the Complainantís marks at that date.

 

7. Decision

The Complaint is dismissed. No order for transfer or cancellation of the domain name <mani.com> is made.

 


 

Hon. Sir Ian Barker QC
Presiding Panelist

Reinhard Schanda
Panelist

David Perkins
Panelist

Dated: May 30, 2001