WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
MindTree Consulting Pvt. Ltd. v. Rajesh Shrestha
Case No. D2002-0438
1. The Parties
The Complainant is MindTree Consulting Pvt. Ltd., a company incorporated In India, with its principal place of business in Bangalore, India.
The Respondent is Mr. Rajesh Shrestha, an individual residing in Nepal. The address of the Respondent as contained in the domain name registration is Hattisar, Kathmandu, Kathmandu G.P.O. 8975, Nepal.
2. The Domain Name and Registrar
The domain name that is the subject of this Complaint is <mind-tree.com>.
The Registrar of this domain name is eNom Inc., 16771, NE 80th Street, Suite #100, Redmond, WA 98052, 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 via email on May 6, 2002, and in hard copy on May 14, 2002. The Center acknowledged receipt of the Complaint on May 10, 2002. On May 10, 2002, a Request for Registrar Verification of registration details was made by the Center and on May 14, 2002, the Registrar confirmed that the disputed domain name is registered in the name of the Respondent, who is also the Administrator, Technical and Billing Contact; that the Policy applies to the disputed domain name; that the domain name is active and that the language of the registration agreements of the disputed domain name is English.
On May 16, 2002, the Center satisfied itself that the Complainant had complied with all formal requirements (including payment of the prescribed fee).
On May 16, 2002, the Notification of Complaint and Commencement of Administrative Proceeding together with the Complaint with Transmittal Coversheet in English were electronically transmitted to the parties.
On June 14, 2002, the Notification of Respondent Default was electronically dispatched to the parties.
On June 28, 2002, having received a completed and signed Statement of Acceptance and Declaration of Impartiality and Independence from Susanna H.S. Leong (the "Panelist"), the Center notified the parties of the appointment of a single-member panel (Ďthe Panel") consisting of the Panelist. That day, the Center transmitted the case file to the Panel and notified the parties of the Projected Decision Date of July 12, 2002.
The Panel is satisfied that the Complaint was filed in accordance with the requirements of the Rules and Supplemental Rules; payment was properly made; the Panel agrees with the Centerís assessment concerning the Complainantís compliance with the formal requirements and the administrative Panel was properly constituted.
4. Factual Background
The Complaint asserted, and provided evidence in support of, and the Administrative Panel finds established, the following facts:
The Complainantís Business and Commercial Activities
The Complainant is an integrated e-business and networking Technology Company founded in the year 1999. The Complainant was set up with an aim to effectively tackle issues which conventional software consulting companies had failed to address in the age of e-business. The Complainant enjoys the distinction of having created a new synergetic model of consultancy that combines the traditional US-based consulting practices with the benefits of off-shore development. The Complainantís main activities are the provision of web-enabled services in the twin spheres of e-commerce and telecommunications and over the years, the Complainant has in its list of clients some of the worldís leading technology players including Alcatel, Ariba, Cisco Systems, Epson, Fujitsu, Hitachi, Lucent Technologies, Sun Microsystems etc. The client list also includes business players such as Avis, Business Standard, Fabmart, Franklin Templeton, Inc., Global Trust Bank Ltd., Hindustan Lever Ltd., Prudential ICICI etc. The Complainant having established credible presence in the US and Europe has strengthened its Indian operations to provide world-class consulting and implementation services to Indian customers who account for 20% of its revenues and is now in the process of starting its third line of operations aimed at the enterprise space. The Complainant has posted an annual revenue in excess of US$ 15 million in the very first year of its operations, hiring over 400 employees and has established fully functional development centers in Bangalore and New Jersey as well as a business development office in the Silicon Valley, California.
The Complainantís Trade Name and Trademarks
The Complainant is the proprietor of the trademark MindTree, which has been adopted and used by the Complainant in relation to its goods and services, since August 5, 1999. The name MindTree not being a commonplace dictionary word of the English language or for that matter, of any other language is a coined word which connotes no other meaning than as a trademark in relation to the goods and services of the Complainant. In order to protect its inherently distinctive trademark MindTree, the Complainant has filed numerous trademark applications in several countries of the world. The applications have been filed in inter alia India, United States of America, United Kingdom, Australia, Singapore, Japan and European Community. The trademark applications for MindTree in United Kingdom, Australia, European Community and Singapore have materialised into registrations. The other applications are pending at the moment. Besides having filed applications for the trademark "MindTree", the Complainant has also filed applications for the marks "MindTree Consulting & Design" and "MindTree Technologies" in India.
The Complainantís Domain Names and Web Sites
The Complainant has a website <www.mindtree.com>, which contains information with regard to the Complainantís business, contact details, clients and latest news.
The Complainant is also the registrant of the following domain names containing the word <mindtree>:
The Respondentís Identity and Activities
The Respondent is the registrant of the domain name <mind-tree.com>, the Registrar of which is eNom Inc. According to the eNomís Whois database, the date of registration of the disputed domain name January 11, 2002. This domain name resolves to a web site entitled "MindTree" which is under construction.
The address of the Respondent as contained in the domain name registration is Hattisar, Kathmandu, Kathmandu G.P.O. 8975, Nepal. From the e-mail correspondences between the Complainant and the Respondent, which are adduced before the Panel as supporting evidence, the Respondent claims to have a company registered by the name of Mind-Tree Solutions in the cottage and small industries department under the Ministry of Industry, commerce and supplies in Nepal. A copy of the registration certificate has been submitted by the Respondent but as the certificate is in the Nepalese language and no translation for the certificate has been undertaken, it is not possible for the Panel to verify the claims of the Respondent on this matter.
5. Partiesí Contentions
The Complainant contends that each of the three elements specified in the paragraph 4(a) of the Policy are applicable to this dispute.
In relation to element (i) that the domain name in dispute is identical or confusingly similar to a trademark or service mark in which the complainant has rights, the Complainant contends that the disputed domain name <mind-tree.com> contains the word Mindtree in its entirety and is therefore identical with or confusingly similar to the Complainantís trademark/trade name MindTree.
In relation to element (ii), that the Respondent has no rights or legitimate interests in respect of the domain name, the Complainant contends that the word MINDTREE is a coined word, and as such is not one that traders would legitimately choose except for the sole purpose of misappropriating the reputation associated with the Complainantís famous trade mark MindTree. The Complainant also contends that it has not authorized the Respondent to use its trade marks and trade name. Furthermore, it is the Complainantís contention that the Respondent is neither known commonly by the MindTree name nor has he made any demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods and/or services. As of the date of filing of the Complaint, the Respondentís website has remained inactive and as such, the Respondent cannot be said to have any rights or legitimate interests in the domain name.
In relation to element (iii), that the disputed domain name has been registered and is being used in bad faith by the Respondent, the Complainant contends that evidence of bad faith registration and use is established by the following circumstances:
(a) That the trade mark MindTree is distinctive and famous and the respondent knew or ought to have known of the Complainant and its exclusive rights in the trade mark. Accordingly, the Respondent can have no legitimate interest in the disputed domain name which is identical with or similar to the Complainantís famous trade mark and the sole purpose of the registration is to misappropriate the reputation associated with the Complainantís famous trademark. In this way, the Respondentís appropriation of the trade mark or trade name as a domain name is clearly in bad faith.
(b) The malafides of the Respondent can be inferred from the website of the Respondent wherein the trade mark or trade name MindTree is represented in exactly the same way as the Complainantís mode of representation. There is a great likelihood that actual or potential visitors to the Respondentís website, using the disputed domain name, will be induced to believe that the Complainant has licensed its trademark MindTree or authorized the Respondent to register the disputed domain name and/or believe that the Respondent has some connection with the Complainant in terms of a direct nexus or affiliation with the Complainant.
(c) That the unlawful adoption of the disputed domain names by the Respondent would result in the dilution of the Complainantís trademark MindTree. The illegal adoption of the disputed domain name will cause irreparable damage and injury to the Complainantís reputation and goodwill which cannot be ascertained and/or quantified due to the intangible nature of goodwill.
The Respondent did not file a Response to the Complaint. In accordance to the Rules for Uniform Domain Name Dispute Resolution Policy, paragraph 14, the Administrative Panel thus draws such inferences as she considers appropriate.
6. Discussion and Findings
Identical or Confusingly Similar Domain Name
The domain name in issue is <mind-tree.com>. The relevant parts of this domain name are the two words "mind" and "tree", separated by a hyphen. The Panel finds that the relevant parts of the domain name are identical to the Complainantís trade mark, MindTree. In addition, the Panel finds that the whole of the domain name is confusingly similar to the Complainantís trade mark.
Respondentís Rights or Legitimate Interests in the Domain Name
The Respondent has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or of any other circumstances giving rise to a right to or legitimate interest in the domain name. Based on the following reasons the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name:
(i) That the Respondent has not provided evidence of honest concurrent user in the trade mark or trade name MindTree or reasons to justify the choice of the word MindTree in its business operations;
(ii) That the Complainant has not licensed or otherwise permitted the Respondent to use its trade mark or to apply for or use any domain name incorporating the trade mark; and
(iii) that the word MindTree appears to be a coined word and as such is not one that traders would legitimately choose unless the sole purpose is to create an impression of an association with the Complainant.
Domain Name Registered and Used in Bad Faith
It is important to note on the outset that the requirement in paragraph 4(a)(iii) that the domain name "has been registered and is being used in bad faith" will be satisfied only if the Complainant proves that the registration was undertaken in bad faith and that the circumstances of the case are such that the Respondent is continuing to act in bad faith.
Has the Complainant proven that the domain name "has been registered in bad faith" by the Respondent?
In the light (i) that the trade mark or trade name MindTree is a coined word that is distinctive and has acquired a strong reputation and goodwill over the years; (ii) that the Complainant has also acquired strong business reputation and goodwill since its incorporation in 1999 and has enjoyed substantial press coverage and publicity, often in association with its trade mark or trade name MindTree; (iii) that the Respondent has not provided evidence of honest concurrent user in the trade mark or trade name MindTree or reasons to justify the choice of the word MindTree in its business operations; (iv) that it is not possible to conceive of a plausible circumstance in which the Respondent could legitimately use the domain name <mind-tree.com> unless the sole purpose is to create an impression of an association with the Complainant; (v) that it also not possible to conceive of a plausible situation in which the Respondent would have been unaware of the distinctiveness and strong reputation of the Complainantís trade mark or trade name MindTree; and (vi) that given that the Panel has found that the Respondent has no rights or interests in the domain name, the Panel concludes that the domain name <mind-tree.com> has been registered by the Respondent in bad faith.
Has the Complainant proven the additional requirement that the domain name "is being used in bad faith" by the Respondent?
The disputed domain name <mind-tree.com> resolves to a web site that is under construction and on that web site the trade mark or trade name MindTree is represented in exactly the same way as the Complainantís mode of representation. The Panel finds that there is a great likelihood that actual or potential visitors to the Respondentís website, using the disputed domain name, will be induced to believe that the Complainant has licensed its trademark MindTree or authorized the Respondent to register the disputed domain name and/or believe that the Respondent has some connection with the Complainant in terms of a direct nexus or affiliation with the Complainant. Under Paragraph 4(a)(iv), this shall be evidence of use of a domain name in bad faith.
Accordingly, the Panel finds that the Complainant has proven that the domain name is being used in bad faith by the Respondent.
In accordance to paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name in dispute, <mind-tree.com>, be transferred to the Complainant.
Susanna H.S. Leong
Dated: July 11, 2002
1. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003