WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

MIRC Electronics Limited v. Onida.com

Case No. D2001-1061

 

1. The Parties

The Complainant is M/s MIRC Electronics Limited, of Onida House, G-1, MIDC, Mahakali Caves Road, Andheri East, Mumbai (Bombay) Ė 400 093, India, represented by Ms. Jennifer Fernandez of Krishna & Saurastri of Mumbai, India

The Respondent is Onida.com of 3640 Patridge Path # 8, Ann Arbor, Michigan, 48108, United States of America, represented by Ari Goldberger Esq., of ESQwire.com Law Firm of Cherry Hill, New Jersey, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name is <onida.com>.

The Registrar is Bulk Register.com, Inc., of Baltimore, United States of America.

 

3. Procedural History

This is an administrative proceeding pursuant to the Uniform Domain Name Dispute Resolution Policy ("the Policy") adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999, the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999, ("the Rules") and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("the Supplemental Rules") of the WIPO Arbitration and Mediation Center ("the Center").

The Complaint was received by the Center by email on August 24, 2001, and in hard copy on August 29, 2001. It named "Srinit R.T." as Respondent. The Complaint was acknowledged on August 29, 2001. On August 30, 2001, registration details were sought from the Registrar. On September 6, 2001, the Registrar replied that the disputed domain name is registered with it; that the registrant is Onida.com, at the address mentioned above; that the Administrative and Technical Contacts are "Host Master srinirt@yahoo.com Onida.com" at the same address, and that the Policy applies to the disputed domain name.

On September 7, 2001, the Center requested the Complainant to amend the Complaint so as to name Onida.com as Respondent. An amended Complaint was filed by email on September 9, 2001, and in hard copy on September 17, 2001.

On September 20, 2001, the Center formally dispatched copies of the Complaint and the amendment by post/courier (with enclosures) to the Respondent at the address as recorded with the Registrar and by email (without attachments). The Center included with the material dispatched to the Respondent a letter dated September 20, 2001, containing notification of the commencement of this administrative proceeding, with copies (of the Complaint as amended without attachments) to the Complainant, the Registrar and ICANN.

The last day specified by the Center for a Response was October 10, 2001. On October 3, 2001, Respondentís counsel sought an extension of 10 days and next day the Center granted an extension until October 26, 2001. A Response was filed on October 26, 2001, by email and on October 30, 2001, in hard copy.

Respondent elected to have the case decided by a three-member Administrative Panel and on November 22, 2001, the Center notified the parties of the appointment of the undersigned as Panelists, each Panelist having submitted a Statement of Acceptance and Declaration of Impartiality and Independence. On November 22, 2001, the Center transmitted the case file to the Panel and notified the parties of the projected decision date of December 4, 2001.

On November 23, 2001, Complainant sought leave to file a Reply. On November 29, 2001, by Procedural Order No. 1, the Panel ordered Complainant to file a Reply within 3 working days of notice of the Order, and requested Respondent to provide certain evidence, within 5 working days of notice of the Order. The Panel extended the time for a decision until the information sought had been received and, subsequently, to December 20, 2001. The parties complied with the Procedural Order.

The Panel is satisfied that the Complaint, as amended, was filed in accordance with the requirements of the Rules and Supplemental Rules; payment was properly made; the Center discharged its responsibility under paragraph 2(a) of the Rules to employ reasonably available means calculated to achieve actual notice to the Respondent of the Complaint; the Response was filed within the time specified in the Rules, as extended by the Center, and the Panel was properly constituted.

The language of the proceedings was English, being the language of the Registration Agreement.

 

4. Factual Background

Under the registered trademark ONIDA, Complainant makes a wide range of electronic goods including television sets and music systems, which it sells principally in India, Sri Lanka, Nepal, Bangladesh, the Middle East, South Africa and African countries. The mark ONIDA was adopted in 1986 by Complainantís predecessor, Monica Electronics Limited, and was assigned to Complainant on February 12, 1998 [Complaint, Annex F].

In December, 1999 ONIDA brand advertising was ranked by the Hindu Business Line as second most endearing in India, behind PEPSI. ONIDA was the only consumer durable brand in the top ten [Complaint, Annex M]. A report by Pricewaterhouse Coopers in August, 2000, valued the ONIDA brand at between 550 Ė600 crores [Complaint, Annex P].

Respondent, Accuway Services, Inc., doing business as Onida.com, is a developer of websites. (Tella affidavit, para. 3). It registered the disputed domain name on January 11, 2000.

As of July 10, 2001, Internauts entering <www.onida.com> were directed to an unconnected site, <www.goto.com>, offering a money-earning facility and Internet gambling (Complaint, Annex R).

As of October 24, 2001, (after the commencement of this administrative proceeding) the site <www.onida.com> provided information about a city called Onida in South Dakota, United States of America; community chat and discussion forums [sic] and web search and shopping facilities, which offered for purchase over the Internet a wide range of products and services including electronic goods, in particular televisions and music systems (Response, Exhibit 2).

Complainant faxed Respondent on September 5, 2000, October 18, 2000, and December 18, 2000, asserting its rights in the trademark ONIDA and seeking transfer to it of the domain name "in the interests of healthy and cooperative business practices"(Complaint, Annex D). In reply to an email from Complainant dated December 19, 2000, Respondent said:

"Onida.com has been up and running for a long time. It was started as a community website for people living in Onida city, South Dakota. We are going to improve a lot in the next couple of years.

We were not aware of your trademark or your company while registering the domain name." (Response, Exhibit 3).

 

5. Partiesí Contentions

A. Complainant

The Complainant requests the Panel to direct that <onida.com> be transferred to Complainant and it invokes the following legal grounds as the basis of the relief sought:

Identity or confusing similarity

The disputed domain name is identical to Complainantís trademark ONIDA.

Legitimacy

The Respondent has no legitimate interest in the disputed domain name. The word ONIDA is an invented word, which no individual would legitimately choose unless seeking to create an impression of an association with Complainant. Respondent is not identified or associated with the word ONIDA.

The administrative contact of the disputed domain name, Mr. Srini R.T., is of Indian origin and must be aware of Complainantís trademark ONIDA and of the products being marketed under that mark in several countries including India.

The fact that Respondent has not taken any initiative to construct a website but has redirected users to another site demonstrates lack of legitimate interest in the disputed domain name.

Bad faith

The disputed domain name was registered and is being used in bad faith.

Respondent is using the disputed domain name misleadingly to divert users to the <www.goto.com> site. This is within paragraph 4(a)(iii) of the Policy.

Further, the "passive" use of the disputed domain name amounts to bad faith.

The administrative contact details were changed with malafide intention after Complainant made contact with Respondent, in order to avoid proceedings under the Policy.

B. The Respondent

Identity or confusing similarity

Respondent acknowledges that the disputed domain name and Complainantís alleged trademark are identical.

Legitimacy

Mr. Srinivasa Rao Tella, President of Respondent, registered the disputed domain name to use in connection with a community website offering information about the city of Onida in South Dakota, which he had visited several years ago on a fishing trip (Tella affidavit, para. 3). This establishes legitimacy (and negates bad faith), as do Respondentís past and present uses of the disputed domain name in connection with advertising links and general information.

When he registered the disputed domain name, Mr. Tella had no knowledge of Complainant or its ONIDA trademark (Tella affidavit, para. 5).

Good Faith

Complainant can show neither bad faith registration nor bad faith use. Registration of a domain name incorporating a geographic trademark, to which no party can establish exclusive rights, cannot establish bad faith registration under the Policy: Sorel Corporation v. Domaine Sales Ltd., (NAF Case No. 96674). There is no evidence of circumstances within paragraph 4(b) of the Policy and no evidence of prior knowledge of the trademark. The evidence does not support "passive use" since the disputed domain name has been used, first in connection with the "goto" links and now in connection with a website related to the City of Onida, South Dakota.

The administrative contact details were changed purely as a result of Mr. Tella changing his preferred email address for the disputed domain name.

Complainantís reply

The Panel acceded to a request by Complainant for leave to file a Reply because Respondentís assertions concerning the place called Onida in South Dakota could not reasonably have been anticipated in the Complaint: see Goldline International, Inc. v. Gold Line (WIPO Case No. D2000-1151) and the cases there cited. The Panel required the Reply to be limited to that issue.

The defence that the disputed domain name was registered to be used in connection with a community website offering information about the place ONIDA is baseless as the place is neither well known nor prominent for any merchandise or services nor has the Respondent produced any evidence to show his connection with this place. It is primarily an agricultural community of 800 people with a land area of 1.641 sq. kilometers. The Respondent himself is not associated in any manner with the said city as he himself is located in Michigan, more than 500 miles away, and has therefore failed to identify any factual nexus or rational connection in the matter.

The general information, products, electronic goods, home appliances, services and links available on the website reached by means of the disputed domain name as stated in the Response bear little or no relationship with Onida - the place in question. Respondent is actually hosting an e-commerce website offering entertainment, electronics and white goods and hence Respondent does not have any genuine intention or legitimate interest in adopting the domain name <onida.com>. The real intention behind registration of the disputed domain name is to encash upon the trademark reputation enjoyed by Complainant and to pass off Respondentís merchandise as that of Complainant.

Further evidence from Respondent

The Panel requested the Respondent to provide (without argument) evidence of Mr. Tella having visited Onida, South Dakota prior to notice of this dispute, examples of such evidence being faxed copies of hotel bills, tickets, credit card records etc.

Respondent stated it was unable to locate any such records, saying they are not the kind of personal records Respondent saves in the normal course. Respondent submitted two sworn affidavits, from Mr. Tella and a Mr. Srinivasa Munnangi, both stating that Mr. Tella visited Onida, South Dakota in company with Mr. Munnangi, in 1993 and 1998.

 

6. Discussion and Findings

Under paragraph 15(a) of the Rules, the Panel must decide this Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

To qualify for cancellation or transfer, a Complainant must prove each element of paragraph 4(a) of the Policy, namely:

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

Trademark rights in geographical names

While geographical names are not protected as such under the Policy, they may nevertheless qualify for protection under the Policy as trademarks if shown by evidence of their use to have become distinctive of the goods or services of a particular trader. In this respect they may be protected as trademarks in the same way as descriptive (generic) words shown to have become distinctive. It is therefore a matter of evidence in each case as to whether a complainant has proved that the geographical name functions as a trademark: see Mt. Eliza Graduate School of Business and Government Ltd. v. Rom Graphics (eResolution Case No. AF-00831) and the cases there cited. See also Daydream Island Resort Investments Pty Ltd. v. Alessandro Sorbello (eResolution Case No. AF-0586) and the cases there cited.

The fact that a trademark may also be a geographical indication means that the trademark owner cannot claim exclusive use of the mark: see Sorel Corporation v. Domaine Sales Ltd. (NAF Case No. FA0102000096674). It is therefore a matter for evidence in each case as to whether the elements of illegitimacy and bad faith are established: see Maui Land and Pineapple Co., Inc. v. Kapalua Land Co. (NAF Case No. FA0008000095544); Bondy Way Development Corporation and Ashburn Village Development Corporation v. Re/Max Premier (WIPO Case No. D2000-0322); Oshawa Centre Holdings Inc. v. M. Bharwani (eResolution Case No. AF-0820); MAHA Maschinenbau Haldenweg GmbH & Co. KG v. Deepak Rajani (WIPO Case No. D2000-1816) and Sorel (supra). In this regard also, the Policy applies to geographical indications that function as trademarks in like manner as it applies to generic words that function as trademarks.

Here Complainant has shown that, in India and elsewhere, the word ONIDA is a coined word that is distinctive of Complainantís goods. It is registered as a trademark and Complainant undoubtedly has rights in it.

Identity or confusing similarity

Respondent admits and the Panel finds that the disputed domain name is identical to the Complainantís trademark ONIDA.

The Complainant has established this element.

Illegitimacy

In India and other countries in the region, the word ONIDA is a very well known coined word (one of the top ten brands in India) strongly denoting the goods of Complainant. Complainant has not authorized Respondent to use its trademark nor to register the disputed domain name. Respondent is not known by the disputed domain name.

These circumstances are sufficient to constitute a prima facie showing by Complainant of absence of rights or legitimate interest in the disputed domain name on the part of Respondent. The evidentiary burden therefore shifts to Respondent to show by concrete evidence that it does have rights or legitimate interests in that name: Do The Hustle, LLC v. Tropic Web (WIPO Case No. D2000-0624) and the cases there cited.

Respondent points to the small town (population 800) of Onida in South Dakota and has produced sworn evidence that its President, Mr. Tella, visited that place in 1993 and 1998. Because no use of the disputed domain name in connection with the town of Onida was made

until after the commencement of these proceedings, the Panel views with great suspicion Respondentís attempts to explain the registration of the disputed domain name by reference to that small town.

The Panel had asked Respondent to provide "without argument" evidence of Mr. Tella having visited Onida, South Dakota, prior to notice of this dispute, examples of this evidence being faxed copies of hotel bills, tickets, credit card records etc. The Administrative Panel Procedural Order No.1 dated November 29, 2001, made it crystal clear what specifically the Panel was looking for.

Respondent has failed to produce the specific concrete evidence as desired by the Panel and has failed to discharge the onus of proof on the Respondent.

In the absence of contemporaneous, objective, corroborative evidence, such as hotel bills, credit card records or travel tickets, the Panel is not prepared to make a definitive finding that Mr. Tella visited the town called Onida. In any event, even if Respondent knew of the use of the word Onida as a place name before registering the disputed domain name, this would not end the enquiry, because knowledge of the place would not negate knowledge of the mark.

Mr. Tella has also sworn that he was unaware of Complainant and its ONIDA trademark before registering the disputed domain name. The outcome of this case turns on whether this last assertion is accepted, since it goes to the heart of the entwined issues of legitimacy and bad faith.

Complainant asserts that Mr. Tella, the President of Respondent and its administrative contact in relation to the disputed domain name, is of Indian origin and therefore must have known of the ONIDA trademark. Respondent has not disputed that Mr. Tella is of Indian origin but says there is no evidence he knew of the trademark, that he did not know of it and that the ONIDA mark is not known in the United States. The Panel accepts that there is no evidence the ONIDA mark is known in the United States but, despite Mr. Tellaís assertion, infers from the renown of the ONIDA mark in India and elsewhere, where it is a coined word, and from Respondentís failure to use the disputed domain name in connection with the town of Onida until after the commencement of this proceeding that it is more likely than not that Mr. Tella did know of the ONIDA trademark and had it in mind when he registered the disputed domain name on behalf of Respondent. The Panel reaches this conclusion without any regard to Complainantís assertion concerning Mr. Tellaís Indian origin.

The initial use of the disputed domain name was to redirect users to the "goto" site, which has no connection with or information about the town of Onida (Complaint, Annex R). This use was inconsistent with Respondentís claimed purpose in registering the disputed domain name, namely to use it for a community website about the town of Onida. The Panel does not accept that was Respondentís purpose.

The Panel does not agree that Respondentís use of the disputed domain name to redirect Internauts entering <www.onida.com> to the "goto" site (Complaint, Annex R) demonstrates a legitimate interest in the disputed domain name. That redirection did not involve the establishment of a website at <www.onida.com> and was the equivalent of "parking".

The Panel does not accept Respondentís proposition that because <onida.com> incorporates a term not solely associated with Complainant, Respondent has rights and a legitimate interest in the disputed domain name, regardless of how it is using it. Respondent cited two cases for this proposition. In the first, Energy Source Inc. v. Your Energy Source (NAF Case No. FA 96364), there was evidence of preparations and bona fide use by the respondent before notice of the dispute. In the second, Neusiedler Aktiengesellschaft v. Vinayak Kulkarni (WIPO Case No. D2000-1769) the Panel considered the evidence but was not satisfied that it established illegitimacy and bad faith.

As mentioned, this Panel takes the view that where a domain name incorporates a term not solely associated with a complainant, such as a geographical indication that also functions as a trademark, it is a matter of evidence in each case as to whether the respondent has a legitimate interest in the domain name.

On the evidence before the Panel, there was no website at <www.onida.com> and no information about the town of Onida on that site until after the commencement of this proceeding and shortly before the Response was filed, nearly 2 years after registration of the disputed domain name (Response, Exhibit 2). In Corinthians Licenciamentos Ltda. v. David Sallen, Sallen Enterprises and J.D.Sallen Enterprises (WIPO Case No. D2000-0461) [1], the posting of scripture on a website after notice of dispute was found not to demonstrate a legitimate interest under either paragraphs 4(c)(i) or 4(c)(iii) of the Policy. Here the Panel does not accept the posting of information about the town of Onida after the commencement of these proceedings as demonstrating a legitimate interest on the part of Respondent.

The Panel finds the Complainant has established this element. The Respondent has no rights or legitimate interest in the disputed domain name.

Bad faith registration and use

Paragraph 4 (b) of the Policy is expressly not limited to its specified circumstances. A finding of bad faith may be made where the Respondent knew of the registration and use of the trademark prior to registering the domain name: SportSoft Golf, Inc. v. Hale Irwinís Golfersí Passport (NAF Case No. FA0094956). Likewise Marriott International, Inc. v. John Marriot (NAF Case No. FA0094737); 163972 Canada Inc. v. Sandro Ursino (eResolution Case No. AF-0211) and Centeon L.L.C./Aventis Behring L.L.C. v. Ebiotech.com (NAF Case No. FA0095037).

The Panel has found that it is more likely than not that Respondent did know of Complainantís mark ONIDA prior to registration of the disputed domain name. In determining whether that registration was in bad faith, in the sense of being an act directed towards Complainant, the Panel notes that Respondent did nothing to associate the disputed domain name with the town of Onida until almost 2 years after registration, after this proceeding had commenced. In about December 2000, having received 4 communications from Complainant, Respondent incorrectly stated (Response, Exhibit 3)"Onida.com has been up and running for a long time". Respondent also incorrectly stated: "It was started as a community website for people living in Onida City, South Dakota". Under these circumstances the Panel finds that it was Respondentís knowledge of the ONIDA trademark that was uppermost in Mr. Tellaís mind when he registered the disputed domain name and that any knowledge of the town of Onida which Mr. Tella might have had did not have a material bearing on the decision to register the disputed domain name. The Panel finds the disputed domain name was registered in bad faith.

On the evidence, including the evidence of Respondent as to its activities after commencement of this proceeding (Response, Exhibit 2), the Panel finds that, by establishing a website at <www.onida.com> which offers, among other things, electronic goods including televisions and music systems, Respondent has used the domain name intentionally to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with Complainantís mark as to the source, sponsorship, affiliation or endorsement of the site and of products on the site. Under paragraph 4(b)(iv) of the Policy, such a finding is evidence of both registration and use in bad faith.

The Complainant has established this element.

 

7. Decision

Pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the Panel directs that the domain name <onida.com> be transferred to Complainant.

 


 

Alan L. Limbury
Presiding Panelist

David E. Sorkin
Panelist

Pavan Duggal
Panelist

Dated: December 20, 2001

 

 


Footnotes:

1. The order made by the Panel in that case is presently under challenge in court proceedings in the U.S. Federal Court, see: http://www.ca1.uscourts.gov/cgi-bin/getopn.pl?OPINION=01-1197.01.A.