WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Miba Gleitlager Aktiengesellschaft v. Vishnu Prasad Miba

Case No. D2001-1399

 

1. The Parties

The Complainant is Miba Gleitlager Aktiengesellschaft, an Austrian based stock corporation, having its seat at Dr. Mitterbauer-Straße 3, A-4663 Laakirchen. It is registered in the Commercial Register of the District Court of Wels under FN 104741g.

The Respondent is Vishnu Prasad Miba of 31 Sahawas Society Pune, Maharashtr 411052, India.

 

2. The Domain Name and Registrar

The dispute concerns the domain name <miba.com> (the said Domain Name) registered with Bulkregister.com, Inc. (the Registrar) of 7 East Redwood Street, Third Floor, Baltimore, MD 21202, U.S.A.

 

3. Procedural History

On November 26, 2001, the Complainant submitted a complaint electronically to the World Intellectual Property Organization Arbitration and Mediation Center (the Center) for a decision in accordance with the Uniform Domain Name Dispute Resolution Policy (the Policy), the Rules for Uniform Domain Name Dispute Resolution Policy (the Rules) and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the Supplemental Rules). On November 29, 2001, the Complainant submitted the hardcopy of the same to the Center. On the same day, the Center sent the Acknowledgment of Receipt of Complaint to the Complainant and copied it to the Administrative Contact of the Respondent.

On November 30, 2001, the Center sent a Request for Registrar Verification to the Registrar.

On December 6, 2001, the Registrar confirmed by e-mail with the Center that it was the Registrar of the said Domain Name and that the registrant was the Respondent.

On December 7, 2001, having found that the Complainant had satisfied the formal requirements of the Policy, the Rules and the Supplemental Rules, the Center sent the Notification of Complaint and Commencement of Administrative Proceeding (the Notification) by post/courier (with enclosures) and e-mail (with the complaint but without attachments) to the Respondent and transmitted electronically the complaint (without attachments) to the Complainant. It also extended a copy of the Notification to the Internet Corporation for Assigned Names and Numbers (ICANN) and the Registrar. The said Notification set the formal date of the commencement of this administrative proceeding as December 7, 2001, and required the Respondent to submit a response to the Complainant and the Center within 20 calendar days from the date of receipt of the Notification, i.e. by December 27, 2001, failing which the Respondent would be considered to be in default.

On December 27, 2001, the Respondent transmitted his response to the Center electronically. On the same day, the Center acknowledged receipt of the response by e-mail. On January 9, 2002, the Respondent submitted the hardcopy of the same to the Center.

The Complainant and the Respondent had elected in the complaint and the response to have the dispute decided by a single-member panel. After receiving a Statement of Acceptance and Declaration of Impartiality and Independence from Mr. Hariram Jayaram on January 15, 2002, the Center appointed him to be the panelist (the Panel) on January 16, 2002, and sent the Notification of Appointment of Administrative Panel and Projected Decision Date to the Complainant and the Respondent and copied it to the Panel by e-mail. On January 16, 2002, the Center sent a Transmission of Case File to the Panel.

The Panel finds that the Center has discharged its obligations and responsibilities under the Rules.

On January 31, 2002, the Panel made an Order for the Respondent to supply documentary evidence which showed that "miba" was the name of a person. The evidence could be in the form of the Respondent's birth certificate or those of his family members and predecessors or it could be a copy of a page from a telephone directory in Eastern Bihar or elsewhere with names incorporating the word "miba". This Order was conveyed to the Respondent and the Complainant and the date for the Panel's decision was extended to February 11, 2002.

On February 6, 2002, the Center received a response from the Respondent in which he gave particulars of Ab H Miba of the United States of America and Nobuo Miba of Japan. On February 7, 2002, the Panel received a letter from the Complainant's authorized representative to say that the Respondent's communication was a day late and that the two names supplied by him did not go to show that "Vishnu Prasad Miba" existed.

On February 7, 2002, the Panel, through the Center, emphasized that the Respondent should forthwith provide copies of his birth certificate and/or the birth certificates of his family members or their predecessors in which the word "miba" is to be found.

On February 11, 2002, the Center received a further response from the Respondent. He provided a copy of his alleged birth certificate in the Marathi language. On the same day, the Panel made an Order for the Respondent to supply a translation of the same and the Complainant to provide evidence in reply by February 18, 2002. The date of the Panel's decision was extended to February 22, 2002.

On February 18, 2002, the Center received a further response from the Complainant's authorized representative challenging the authenticity of the alleged birth certificate of the Respondent and to point out that the Respondent's communication was 3 days late.

The Panel will issue its decision based on the statements and documents submitted and in accordance with the Policy, the Rules and the Supplemental Rules and principles of law, which the Panel deems to be applicable.

 

4. Factual Background

4.1 Complainant

In its complaint, the Complainant states that it was founded in 1976. Since then, it has been a major player in the international engine and automotive industry, exporting its products to countries all over the world. It has been using its company name in connection with its business activities. The Complainant is part of the Miba-group, the origins of which go back to 1927. The component "Miba" is the discerning part and the Miba-group of companies is known to its business partners as the "Miba-companies". The present parent company of the group is Miba Aktiengesellschaft, an Austrian based stock corporation, founded on October 20, 1986.

The Miba-group is well-known and enjoys an excellent reputation in the engine and automotive industry. It has production and distribution sites in Austria, U.S.A, Singapore, France, Italy, Slovakia, Germany, the United Kingdom, Brazil and Spain. It is one of the market and technology leaders in the international engine and automotive industry with three strategic business divisions, namely "Sintered Components", "Engine Bearings" and "Friction Materials". During the 2000/01 business year, it reported a turnover of 280.5 million Euro for its ten production sites with approximately 2240 employees world wide.

The Miba-group is the holder of the domains <www.miba.co.at>, <www.miba-it.com>, <www.miba-us.com>, <www.miba-es.com>, <www. miba-sgp.com>, <www.miba-uk.com>, <www.miba-sk.com>, <www.miba-br.com>, <www.miba-de.com> and <www.miba-fr.com> while the domains <www.miba.biz< and <www.miba.net> are in the process of being registered. A web-site of the Miba-group has already been established under <www.miba-at.com> and <www.miba.co.at>.

The Miba-group is the holder of trademarks in several countries, all with the component "MIBA". It has obtained registration of the trademark in Austria on June 10, 1949 for the production and the distribution of base metals and alloys, raw blocks, tubes, bars, belts, wires from metal, moulding pieces, pressed pieces, cast forms, moulds, plants from moulded metal and from alloys, bronze bearings, spare parts of vehicles, motors and spare parts for motors. Apart from Austria, registration of the word mark "miba" has been obtained in several countries as follows:

Country

Class

Register number

Argentina

7

724094

Brazil

7.60

339359

USA

14,12

917057, 909055

Finland

6, 7

71700

Sweden

6, 7

162818

Venezuela

14, 23

71652-F, 105209

China

1, 9, 19, 21

278125, 277186, 282187, 282214

Greece

6, 7, 12

46774

Great Britain

6, 7, 12

950942, 950943, 950944

India

6, 7

273410, 273411

Canada

6, 7, 12

174886

Mexico

23

170052

Turkey

6, 7, 12

44225

The Complainant has produced extracts from the Indian Trademark Registry to show registrations of its trademarks in India. It also asserts that it has paid the fees for the renewal of the term of protection of these trademarks. Owing to the heavy backlog at the Indian Trademark Registry the Complainant still has not received the corresponding Renewal Certificates. The term of protection has been prolonged until July 2006. The word mark "miba" has also been registered in Classes 6, 7 and 12 as an international trademark pursuant to the Madrid Protocol under register number 223029 in Germany, Egypt, France, Hungary, Liechtenstein, Morocco, Benelux, Monaco, Portugal, Romania, San Marino, Switzerland, Tunisia, Vietnam, Yugoslavia and Algeria.

The Miba-group has registered the picture trademark "miba" in several countries as follows:

Country

Class

Register number

Malaysia

7

017288

Philippines

6

51058

Singapore

6, 7, 12

1939/88, 2128/89, 2141/89

South Korea

38

173552

Taiwan

84

424545

Thailand

6, 13

126617 126635

Japan

12

3202467

4.2 Respondent

In his response, the Respondent states that "Miba" is his family name. He has used this name for all 45 years of his life and his family has used it for at least 10 generations.

 

5. Parties' Contention

A. Complainant

The Complainant contends that its trademark "MIBA" was registered in Austria in 1949, and in India in 1971. The record of the said Domain Name in favour of the Respondent was created only on January 12, 2000.

There are serious doubts on the existence of a company or a person named "Vishnu Prasad Miba". According to the information provided to the Complainant by its Indian lawyers, a detailed search of the Companies Register in India revealed that there was no company registered in India under the name "Vishnu Prasad Miba" or with the component "Miba". When conducting a search at www.nic.in/dca for companies registered, the Complainant found that only one company using the component "miba" could be found and that was Laxmibabu Mercantile Private Limited. In the local telephone directory and the yellow pages, there appeared no person named as "Vishnu Prasad" or "Vishnu Prasad Miba". Aditya and Associates, the Complainant's lawyers in India, state that the Respondent and Vinayak Kulkarni, the Administrative and Technical Contact must be Maharshtrians having "Marathi" as their mother tongue.

Vinayak Kulkarni has already been a respondent in the WIPO Case No. D2000-1769 with regard to the domain name <neusiedler.com>. The addresses of the Respondent and Vinayak Kulkarni are identical. However, at 31, Sahawas Society, there is no signboard or nameplate indicating that a person called Vishnu Prasad Miba is living there, or that a company is having its corporate seat there. It would appear that Vinayak Kulkarni invented the name "Vishnu Prasad Miba" in order to claim that "he" or "it" had a legitimate interest in the said Domain Name. According to the information of the Complainant's Indian colleagues, neither in Hindu mythology nor in general terms is the term "Miba" known. It was not a term or expression in the Indian language. The word "miba" does not exist in any of the 26 official languages in India. The alleged birth certificate of the Respondent does not show the name of the Respondent. It is hardly legible and does not bear any official sign such as the stamp of an authority, a hospital or anything similar. The Complainant contests the authenticity of the said alleged birth certificate. The Respondent has not submitted any evidence which shows that the name "Vishnu Prasad Miba" appears on any document. To prove his existence, he could have submitted a copy of his Election Card or Income Tax PAN Card which are documents regularly used in India. The Respondent says he travels a lot. He must have a passport. This would have been the easiest way to prove the existence of a "Vishnu Prasad Miba". The Respondent has deliberately tried to deceive the Panel by submitting documents relating to people living in California and Japan and by submitting documents in Marathi although the language of the proceedings is English. The only conclusion which can be drawn is that the Respondent does not exist.

Vinayak Kulkarni has engaged in a pattern of conduct to exploit the reputation in the trademarks and the company names of the Miba-group by having them registered as domain names and selling them for a price far exceeding his out of pocket expenses. The said Domain Name used by the Respondent contains the trademark which is validly registered in favour of the Complainant in several countries, including India. It contains a component of the company name of the Complainant and of all other companies of the Miba-group. The Respondent has no rights to the Complainant's trademark. The Complainant has not granted any license or other right of use to the Respondent. The Respondent has no legitimate interest in the said Domain Name because before any notice of the dispute was sent to him, there was no use of the said Domain Name by him in connection with the bona fide offering of goods or services. There was also no demonstrable preparations to use the said Domain Name since January 12, 2000. He is not commonly known by the said Domain Name. He is not making a legitimate or non-commercial fair use of the said Domain Name. He has not established a web site under the said Domain Name and has never intended to do so. The said Domain Name has not been registered for business purposes or for setting up a web site. It has been registered

- for the purpose of selling, renting or otherwise transferring the said registration to the Complainant for valuable consideration in excess of the out of pocket expenses directly related to it;

- to prevent the Complainant from reflecting the trademark in a corresponding domain name; or

- to disrupt the business of the Complainant.

The Respondent is aware of the fact that the registration of the said Domain Name impeaches the rights of the Complainant in the trademark and the name. "Miba" is a word totally unknown to the Indian language. It is a "fantasy expression" and does not exist in Encyclopaedias or dictionaries. There is no country, lake, river or mountain bearing that name. A search conducted online in the Encyclopaedia Britannica showed no hit. The Respondent could only have become aware of the term "Miba" through the activities of the Miba-group and the use of its trademarks all over the world especially in India. The Respondent (or rather Mr. Kulkarni) has become aware of the Complainant's world wide activities and trademark registrations. Being a professional domain-grabber, he would have checked whether the Complainant had already registered the said Domain Name. Since this was not the case, at the beginning of the year 2000, he decided to exploit the situation by registering it first and wait for the Complainant to try to register it. Once it was unable to register the same, it would purchase it from him. It is the Respondent's duty to check whether the domain name which he intended to register, infringed the rights of third parties. He would have become aware of the existence of the Complainant when using a search engine such as yahoo.com. The search of the word "miba" at yahoo.com reveals the Complainant's name three times, making it impossible to overlook the Complainant's rights in the trademark and the name component, "miba". The Respondent has constructive notice of the Complainant's right in the said Domain Name. It would have been easy for the Respondent to find out the Complainant's rights in the trademark "MIBA" by either conducting a trademark search in the Indian Trademark Registry, or by conducting searches on the Internet. It is unrealistic to take more than one and a half years to establish a web site in India since India is one of the biggest Internet-users in the world. The Complainant alleges that the Respondent does not plan and has never planned to establish a web site under the said Domain Name and has registered it with the purpose of selling it to the Complainant for a valuable consideration exceeding the out-of-pocket expenses directly related to its registration.

In his affidavit annexed to the complaint, Thomas Meixner, the Chief Information Officer of the parent company of the Complainant, states that he tried to register the said Domain Name on behalf of the Complainant. He discovered that the said Domain Name was already registered by the Respondent. He sent various e-mail to the Respondent using the e-mail address as shown in the Whois-Database of the Registrar. After some months and various reminders by e-mail, he received an e-mail from Vinayak Kulkarni in March 2001 to the effect that he would call back on the matter. A Shrikant Kulkarni, allegedly the son of Vinayak Kulkarni, gave him a call stating that his father was a web-designer and that he had been asked to establish a web site for the Respondent under the said Domain Name. Shrikant Kulkarni said that he believed that his fatherís "client", the Respondent, might be willing to sell the said Domain Name for USD 10,000 to the Complainant.

The Complainant further states that in the WIPO Case No. D2000-1769, Wulf Gordian Hauser KEG, acting as counsel for the complainant, asked an Indian counsel to contact Vinayak Kulkarni to discuss a possible settlement. The Indian colleague reported that the respondent was involved in several domain name disputes, since when calling the respondent on the phone, his son, Shrikant Kulkarni, told the Indian colleague that he was handling all his father's litigation matters. Shrikant Kulkarni also asked in detail which domain name dispute the respective litigation was about, in particular in which country the other party was situated and claimed that his father was an attorney, not a web designer.

Vinayak Kulkarni's method was to stay in the background. His son, Shrikant Kulkarni, would deal with the domain name dispute. Shrikant Kulkarni would call the respective adversary to say that his father was the "bad guy" who started the domain name disputes. He was the "good guy" who had to sort out things. He referred to the possibility of acceptance by his father of a financial deal. A "Vishnu Prasad Miba" was invented or constructed in order to be able to register the said Domain Name.

B. Respondent

The Respondent contends that it is logically impossible to prove that a person with any given name does not exist in a country as large as India. Despite that, Dr. Kordula Fleiß, the Complainant's authorized representative, has not been deterred from trying to prove the impossible. India is a diverse country with more than a billion people and hundreds of languages. An estimated 850 languages are in daily use. Many of these languages are not written languages but are spoken only. Dr. Kordula Fleiß seems to be completely unaware of these linguistic complexities since she flatly states, "Miba is a word totally unknown to the Indian language." She uses the singular noun "language" which indicates her belief that there is a single monolithic standard Indian language. She is ill equipped to draw conclusions based on her knowledge about India. She has tried to find the Respondent's name in Indian dictionaries. Any literate person would know that dictionaries do not list proper nouns. On his part, the Respondent could not find the name "Kordula" in a German dictionary either. He asks whether this means that Dr. Kordula Fleiß does not exist as a person. Dr. Kordula Fleiß has used investigators to comb through a telephone directory to find the Respondent's name. On failing to find the Respondent's name in a telephone directory, she promptly concludes that he must be a non-existent person. In India, less than 3% of the population has telephones. The Respondent is not in the local telephone directory because he is not a subscriber to the telephone service. Dr. Kordula Fleiß has also used investigators to look for him at 31 Sahawas Society, Pune, Maharashtra, 411052, India. This is his mailing address which also happens to be the address of Vinayak Kulkarni who is the Administrative Contact of the Respondent. The Respondent travels often within India and has chosen to use Vinayak Kulkarni as the Administrative Contact for the said Domain Name and his address as the Respondent's mailing address. Vinayak Kulkarni has an account with the Registrar and has helped the Registrant register the said Domain Name at a much lower cost than what Network Solutions would charge. Vinayak Kulkarni has helped others in the Respondent's neighbourhood to secure their domain names. Many Indians do not have credit cards. When one registers a domain name with Vinayak Kulkarniís help, one does not need a credit card. One can pay cash in Indian rupees. Such arrangements are common in third world countries such as India. Vinayak Kulkarni does not "own" the said Domain Name; the Respondent does. To register a domain name, a registrant must provide a valid mailing address. There is no requirement that the address should be a home address.

The Respondent is a very private person and he takes the Complainantís effort to physically track him down as a gross invasion of his privacy. He suspects that the Complainant may have crossed the boundary of civil and orderly behavior in its overzealous efforts to acquire the said Domain Name. He has reason to fear the Complainantís intentions and he refuses to provide any more personal information to the Complainant that may help it to track him down. The Complainant has engaged the services of a law firm in India, Aditya and Associates, to find out if Miba is a valid family name. Aditya and Associates, who are lawyers and not ethno-linguists, claim that they checked the name Miba in "all the 26 official languages". India does not have 26 official languages; the number of official languages is much smaller. Aditya and Associates also say that the Respondent must be a Maharashtrian having ĎMarathií as his mother tongue. The Respondent states that this is not true. He currently lives in the state of Maharashtra but his family is originally from Bihar. He does not speak Marathi but Bhojpuri which is a language spoken in parts of North India. If the Complainant wants to find persons with the family name Miba, it should look in Bihar, especially Eastern Bihar. The Complainant was never interested in finding anyone with Miba as his family name. Aditya and Associates are not an independent third party since they are paid by the Complainant to produce an "investigative" report. They are neither suitable nor competent to carry out the job. The Respondent registered the said Domain Name in January 2000. In April 2000, he established a simple 3 page Web site with some family pictures and a link to his e-mail address vishnu@miba.com. He received an e-mail in May 2000, asking him if he was interested in selling the said Domain Name. The e-mail was sent from a Yahoo address and the person sending the e-mail had not signed it. The Respondent responded to the e-mail with a terse remark saying, "I am not interested in selling the domain name". In response, he received a one-sentence e-mail asking, "Why donít you just give up the domain name, you Indien Boy?" (The word "Indien" is as said in German). The Respondent ignored the e-mail. A few days after receiving the abusive e-mail, his web site was hacked for the first time. The contents of the web site were erased and replaced with pornographic materials. The Respondent decided to shut down the site for a few weeks. In December 2000, he re-opened the web site, hoping that the attackers would leave him alone. Within days of re-opening the web site, it was defaced again. Analysis of the web server access logs indicated that the hack attacks originated from Europe. Since December 2000, the Respondent has not used the said Domain Name to run a web site. He continues to use his e-mail address vishnu@miba.com. Some of his other family members also receive e-mail under the said Domain Name.

He points out that the web uses HTTP (Hyper Text Transfer Protocol) as its protocol to transfer data. There are other Internet protocols, such as FTP, gopher and SMTP. Many are familiar with HTTP and assume that a domain name is not being used because they type the same in a browser and do not get a response. It is possible to use SMTP (Simple Mail Transfer Protocol) to transfer e-mail while keeping HTTP disabled. This technical fact has allowed the Respondent to run an e-mail server without running a web server since e-mail servers are less prone to hack attacks than web servers. The Respondent's use of the e-mail address, vishnu@miba.com has not been without problems. He has been mail-bombed several times in the past 2 years. Many of the mailing lists to which the Respondent was subscribed, are in the German language and this has made him suspicious of the Complainant. The Respondent's e-mail server has been put under pressure by the submission of fictitious e-mail addresses ending with the said Domain Name to Internet newsgroups. In the Internet search engine Google archives newsgroup postings, there is a sample post where a fictitious e-mail address smileychamberlin@miba.com" is posted to a newsgroup so that spammers will harvest that e-mail. Once the spammers have harvested a particular e-mail address, spam e-mail is continually sent to that address. The Respondent's e-mail server continues to receive hundreds of spam e-mails every week. When he gets too tired to deal with this constant harassment, he takes his e-mail servers off-line for a few days. He has demonstrated how efforts are being made to flood the e-mail servers of the said Domain Name. This is prima facie evidence to suggest that a person or a company covetous of the said Domain Name, quite possibly the Complainant, is engaged in a covert effort to prevent him from using the said Domain Name for a legitimate non-commercial fair use. He is using and will continue to use vishnu@miba.com as his e-mail address. He has not misleadingly diverted consumers or tarnished the trademark of the Complainant. He intends to re-establish a web site when the threat of the hacking attacks subsides. The Respondent has never offered to sell the said Domain Name to anyone. The Complainant has stated that the alleged discussion about the possible sale of the said Domain Name occurred between Thomas Meixner and Shrikant Kulkarni. The Respondent does not know Shrikant Kulkarni and has never met him, talked to him over the telephone or communicated with him by e-mail. He does not know Thomas Meixne and has never met him, talked to him over the telephone or (knowingly) communicated with him by e-mail. He owns the said Domain Name and has not authorized anyone to speak or negotiate the sale of the said Domain Name on his behalf. The conversation between Shrikant Kulkarni and Thomas Meixner is irrelevant to this dispute. Thomas Meixner is naïve to conduct discussions with a person with no apparent authority or connection to the said Domain Name. His affidavit proves nothing of consequence. He works for the Complainant and cannot be considered as a disinterested third party. In his affidavit, he sounds uncertain. The affidavit fails to show that the Respondent is interested in selling the said Domain Name. The Complainant has made repeated references to Vinayak Kulkarni. Dr. Kordula Fleiß was involved in a previous administrative proceeding i.e. WIPO Case No. D2000-1769. In that case, she tried to hijack a domain name from Vinayak Kulkarni but she lost the case. Unhappy with the defeat and seeking to settle a personal score, she has decided to drag Vinayak Kulkarni into this dispute although he is not officially named as the Respondent. The Respondent states that he has nothing to do with the previous administrative proceedings involving Dr. Kordula Fleiß. The Complainant has engaged her as its authorized representative. In an effort to settle a personal score, she has neglected to focus on the facts of this case and has introduced irrelevant issues. She has used her fertile imagination to make unfounded allegations and has failed to introduce evidence to support them. The Respondent cannot respond to the allegations made against Vinayak Kulkarni. If Dr. Kordula Fleiß wants to launch administrative proceedings against Vinayak Kulkarni, she should name him as the Respondent. The Respondent has registered only one domain name i.e. the said Domain Name. The Complainant has registered the domain names, <www.miba.co.at>, <www.miba-it.com>, <www.miba-us.com>, <www.miba-es.com>, <www.miba-sgp.com>, <www.miba-uk.com>, <www.miba-sk.com>, <www.miba-br.com>, <www.miba-de.com> and <www.miba-fr.com>. It has engaged in a pattern of conduct involving speculative registration of domain names. It has failed to use many of its registered domain names. It is illogical for the Complainant to accuse others of behaviour of which it is itself guilty. It states that it is in the process of registering <www.miba.biz> and <www.miba.net>. The domain name <www.miba.net> is registered by another party, namely Missouri Independent Bankers Association. The Respondent asks whether the Complainant is threatening administrative proceedings against the Missouri Independent Bankers Association. The Complainant has crossed the boundaries of rational behaviour when it comes to registering domain names. It has registered speculative domain names and intends to acquire more domain names from others who may have a legitimate claim to the said names. This is nothing short of corporate arrogance overstepping the rights of others. The Respondent cannot understand why the Complainant did not register the said Domain Name when it was available before January 2000. There are other organizations, such as Missouri Independent Bankers Association and Mississippi Independent Beauticians Association, who could also lay claim to the name. There are people whose family names are Miba who could also claim a legitimate interest in the said Domain Name. The Respondent has supplied the names of 2 persons with the word "miba" forming part of their names i.e. Miba, Ab H of the U.S. A. and Nobuo Miba of Japan. He has also provided a copy of his alleged birth certificate in the Marathi language. He says that the said birth certificate has his father's name as Ganga Prasad Miba. It does not have his own name since in India a child is not named at the time of his birth. The Complainant has failed to prove why it deserves the said Domain Name. Its name is neither famous nor unique and it should be considered as generic.

 

6. Discussion and Findings

6.1 Elements to be proved

To succeed, the Complainant must establish under paragraph 4(a) of the Policy that

i) the said Domain Name is identical or confusingly similar to a trademark or service mark in which it has rights; and

ii) the Respondent has no rights or legitimate interests in the said Domain Name; and

iii) the said Domain Name has been registered and is being used in bad faith by the Respondent.

6.2 Identical or confusingly similar

The Complainant has rights in "MIBA". It has registered and has made long and substantial use of the same.

It has registered the word mark "MIBA" in several countries. For example, in Austria (where it is based), it has registered the same in Classes 6, 7 and 12 (formerly Classes 9a, 9f, 10 and 23) for "base metals and alloys, raw blocks, tubes, bars, belts, wires from metal, moulding pieces, pressed pieces, cast forms, moulds, plants from moulded metal and from alloys, bronze bearings, spare parts of vehicles, motors and spare parts for motors and cars". It has registered the said word mark in India (where the Respondent lives) in Class 6 for "common metals (raw), metal alloys of common metals, and bars, tubes, rods, strips, wires of common metal, metal moulds (not for cooking or confectionery), metals pressed, drilled or rolled or fashioned or worked partially" and in Class 7 for "bearings made of aluminium and aluminium alloys and bronze being parts of motors (not for land vehicles) and parts and fittings therefor". Under the Madrid Protocol, it has also obtained an international trademark registration with protection in Germany, Egypt, France, Hungary, Liechtenstein, Morocco, Benelux, Monaco, Portugal, Romania, San Marino, Switzerland, Tunisia, Vietnam, Yugoslavia and Algeria. It claims to have registration of the trade mark "MIBA" with a device in Malaysia, Philippines, Singapore, South Korea, Taiwan, Thailand and Japan.

Since its incorporation in 1976, it has used its company name all over the world. It is a part of the MIBA-group of companies and the group as a whole uses the word "miba" in its world wide business activities. Its trade mark "MIBA" is well known and enjoys reputation in the engine and automotive industry.

On account of the above, the Complainant is entitled to the trade mark "MIBA" and when a comparison is made between the said Domain Name and the trade mark, it is not difficult for the Panel to conclude that the second level domain (SLD) "miba" is identical to the trademark "MIBA".

6.3 Respondent's right or legitimate interest in the said Domain Name

The Complainant must now establish that the Respondent has no rights or legitimate interests in the said Domain Name. The Complainant bears the burden of proof in the administrative proceeding. Once it discharges this burden, it becomes obligatory for the Respondent to show his rights and legitimate interests in the said Domain Name. Under paragraph 4(c) of the Policy, he may do this inter alia by establishing -

(i) that he has used or has made demonstrable preparation to use, the said Domain Name or a name corresponding to the said Domain Name in connection with a bona fide offering of goods or services; or

(ii) that he has been commonly known by the said Domain Name, even if he has acquired no trademark or service mark rights; or

(iii) that he is making a legitimate non-commercial or fair use of the said Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

On its part, the Complainant claims that the Respondent (with "Miba" as a part of his name) does not exist and is the creation of Vinayak Kulkarni who is on record as the Administrative and Technical Contact of the Respondent.

As to the existence of the Respondent, the Panel has no alternative but to conclude that he exists as a person. He has responded to this administrative proceeding by filing his response. The Panel does have sight of a signed copy of the response from him. In the absence of evidence to the contrary, the signature of the Respondent has to be accepted as that of a person in existence.

However, what is in doubt is whether the Respondent's name includes the word "Miba". In his response, the Respondent has made statements as follows: -

"My name is Vishnu Prasad Miba and I am the Respondent in this particular Complaint. I have used this name for all 45 years of my life. Miba is my family name and we have used it for at least 10 generations."

If in fact what he has said is true, he will be entitled to the said Domain Name: A person may have his name reflected in his domain name or his e-mail address.

The Panel however could not merely rely on the Respondent's statements and assume them to be true. This prompted the Panel to make two requests to the Respondent since under paragraph 12 of the Rules

"[i]n addition to the complaint and the response, the Panel may request, in its sole discretion, further statements or documents from either of the Parties."

In its first request dated January 31, 2002, the Panel made it clear that it was unable to conclude with certainty from what had been provided by the Respondent that "Miba" was a family name used in the state of Bihar, especially Eastern Bihar. The Respondent should give documentary evidence to show that "Miba" was the name of a person. It could be in the form of copies of the Respondent's birth certificates or those of his family members or predecessors. It could be a page from a telephone directory with names of persons incorporating the word 'Miba" in Eastern Bihar or elsewhere. The Respondent responded with particulars of two names. One was Miba, Ab H of Ventura Blvd, Sherman Oaks, CA 91403, U.S.A. and the other was Nobuo Miba of Asahi National Lighting, 7-7-6 Yumegaoka, Ueno, Mie 518-8518, Japan. Both these names were not of much help to the Respondent to show his rights or legitimate interests in the said Domain Name. The Panel sent a second request to the Respondent to specify that it was looking for copies of his birth certificate and/or those of the members of his family or their predecessors, where the word "Miba" would appear as a part of his name or that of a family member. The Respondent responded by supplying a copy of his alleged birth certificate in the Marathi language. The Panel gave him an opportunity to provide a translation of the same and the Complainant to provide evidence in reply by February 18, 2002. To date, the Respondent has not provided the requested translation. On the other hand, the Complainant has filed its further response objecting to the admissibility of the alleged birth certificate on the grounds that the alleged birth certificate does not have the name, "Vishnu Prasad Miba" and its authenticity is in question because it carries no official stamp of an Authority or a hospital.

The Panel agrees with the Complainant. To show his connection to the word "miba', it is strange that the Respondent is only able to provide a document purported to be a birth certificate which does not have the name "Vishnu Prasad Miba", which is not in any manner authenticated by a proper authority and for which there is no proper translation.

The Panel finds that while there may exist a person by the name of Vishnu Prasad, his name does not have "Miba" as a part of it. The Respondent has failed to establish that he is known, commonly or otherwise, by the said Domain Name.

By his admission, his only use of the said Domain Name is the setting-up of a 3-page web site with some family pictures and a link to the e-mail address, vishnu@miba.com. This cannot constitute use or demonstrable preparations to use the said Domain Name in connection with a bona fide offering of goods or services.

The Respondent cannot be said to be making a legitimate non-commercial or fair use of the said Domain Name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or the service mark at issue. The Respondent should be deemed to have constructive notice of the Complainant's trademark: a search at the Trademark Register, India would have confirmed its registration. Nevertheless, the Respondent has adopted for his domain name the Complainant's trademark. Persons accessing the Internet would not know of the Respondent and would associate the said Domain Name with the owner of the goodwill in the name i.e. the Complainant, who is the trademark owner. The continued existence of the said Domain Name in the name of the Respondent will erode the goodwill in the name and create confusion.

The Panel concludes that the Respondent has no rights or legitimate interests in the said Domain Name.

6.4 Registration and Use in Bad Faith

The final element to be proved by the Complainant is that the Respondent has registered and used the said Domain Name in bad faith.

The Respondent has registered the said Domain Name with the word "miba" forming an essential part of it. His choice of the word "miba" as a constituent of his domain name is suspect since he has not provided concrete evidence to substantiate that the word "miba" is connected to him. It is not unreasonable for the Complainant to infer that this registration has been effected with the aim of preventing the Complainant from reflecting its trade mark in a corresponding domain name and that the confusion resulting from the continued use of the said Domain Name by the Respondent will disrupt and damage the business of the Complainant.

The Respondent cannot be said to have registered the said Domain Name in good faith.

 

7. Decision

The Panel finds that the Complainant has proved each of the three elements of paragraph 4(a) of the Policy. The Panel orders that the domain name <miba.com> be transferred to the Complainant.

 


 

Hariram Jayaram
Sole Panelist

Dated: February 19, 2002