WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Aditya Birla Nuvo Limited v. H J Shin
Case No. D2006-0224
1. The Parties
The Complainant is Aditya Birla Nuvo Limited of India, represented by Arjun T. Bhagat & Co., India.
The Respondent is H J Shin of the Republic of Korea.
2. The Domain Name and Registrar
The disputed domain name <adityabirlanuvo.com> (“Domain Name”) is registered with Cydentity, Inc. dba Cypack.com (“the Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 21, 2006. On February 21, 2006, the Center transmitted by email to Cydentity, Inc. dba Cypack.com, a request for registrar verification in connection with the domain name at issue. On February 22, 2006, Cydentity, Inc. dba Cypack.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on March 10, 2006.
The Center then verified that the Complaint (as amended) satisfied the formal requirements of 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”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 16, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was April 5, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 6, 2006.
The Center appointed Richard Tan as the sole panelist in this matter on April 24, 2006. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
The domain name registration agreement being in Korean, the default language of the proceedings is Korean in accordance with paragraph 11 of the Rules. However the Complainant submitted arguments as to why the proceedings should be conducted in English.
The Panel notes that the Respondent has been given the opportunity to respond in Korean. The Complainant has submitted that “[t]here are no official translators readily available in Mumbai as enquired by us from the Korean Consulate, whose officials have expressed their helplessness at not being able to provide any possible assistance in this regard.” The Complainant further refers to prior WIPO UDRP decisions in support of its claim.
In the specific circumstances of this case, and in the absence of any response from the Respondent, the Panel rules that the language of the proceeding is English.
4. Factual Background
The Complainant is a company incorporated in India in 1956 (previously known as Indian Rayon And Industries Limited). It is said to be one of the flagship companies in a group of Indian companies known as the Aditya Birla group of companies and deals in goods including viscose filament yarn, carbon black, branded garments, textiles, insulators and also services including insurance and information technology.
The group of companies is said to include, apart from the Complainant, five other companies, two of which are Indo Gulf Fertilizers Limited and Birla Global Finance Limited. It is said that the Aditya Birla group derived its name from its founder, the late Mr. Aditya Vikram Birla, and that the group has extensive business interests in many countries including India, Thailand, Indonesia, Malaysia, Philippines, Egypt, Canada, Australia and China. It employs 72,000 employees which belong to more than 20 different nationalities. It is also said that the companies in the group use “Aditya Birla” as their house mark, and the business community has come to associate that name and mark with the companies in the group, which has had a history of more than 50 years of being in business.
The boards of directors of three companies in the group, Indo Gulf Fertilizers Limited, Birla Global Finance Limited and the Complainant, decided to merge the former two companies with the Complainant and it was further decided that the Complainant would then adopt its present name, “Aditya Birla Nuvo Limited”. The prefix “Aditya Birla” was adopted to retain the association of the name of the group with the merged company, and the suffix “Nuvo” was adapted from the French word “Nouveau” (meaning “new”). The change of name was initiated only recently, by an application to the authorities on or about September 11, 2005, and was completed sometime in October 2005. In September 2005, and thereafter, the Indian news media published a number of articles and gave wide publicity to the proposed restructuring and merger of the companies and the proposal to rename the merged entity, “Aditya Birla Nuvo Limited”.
The Complainant has not however registered any trademarks containing or bearing the words “Aditya Birla Nuvo” in India or elsewhere.
The Respondent registered the domain name <adityabirlanuvo.com> on September 11, 2005 with Cydentity, Inc. dba Cypack.com.
5. Parties’ Contentions
(i) Identical or Confusingly Similar
The Complainant contends that the Domain Name is identical or confusingly similar to its corporate name and mark ADITYA BIRLA NUVO LIMITED in which the Complainant has rights. The Complainant contends that it has rights in the name or mark by virtue of the goodwill and reputation that it has enjoyed and continues to enjoy in that name or mark, and that the mark, being highly distinctive, has acquired a secondary meaning and has become associated with the Complainant such that the Complainant enjoys common law trademark rights in the unregistered trade mark.
(ii) Rights or Legitimate Interests
The Complainant asserts that the Respondent has no rights or legitimate interests in the Domain Name. The Domain Name is neither the business name, nor a mark associated with goods of the Respondent. The Complainant has never been associated with the Respondent or his business and has never given any permission to the Respondent to register the Domain Name. The Respondent has registered the Domain Name without sufficient cause and is not making any legitimate noncommercial or fair use of the Domain Name. The disputed website is currently not functional and merely contains a link directing users to the website of the Registrar with whom the Domain Name has been registered. The website does not contain any bona fide offer of goods or services of the Respondent.
(iii) Registered and Used in Bad Faith
The Complainant asserts that the Respondent’s registration and use of the Domain Name is in bad faith on the following grounds. First, the Respondent must reasonably be presumed to have been aware of the reputation and goodwill of the Complainant and its group of companies. The Complainant avers that the Respondent knowingly and fraudulently registered the Domain Name by virtue of the fact that the Domain Name was registered around the same time the Complainant’s new corporate name was officially announced.
Second, by virtue of the Respondent’s registration of the Domain Name, it has successfully prevented the Complainant from registering a domain name based on its own name.
Third, the Complainant avers that the Respondent’s registration and use was in bad faith as Internet users may be confused with the Complainant’s mark or name as to the source, sponsorship, affiliation or endorsement of the disputed domain name or location or products or services offered therein. The Complainant asserts that the Domain Name cannot be used by the Respondent for business or services without posing a severe risk of confusion with the Complainant’s business.
Finally, the Complainant avers that the Respondent’s registration of the disputed domain name is in bad faith with the intention of disrupting the Complainant’s business and making illegal gains out of the registration.
The Respondent has not filed any Response.
6. Discussion and Findings
The Complainant has the burden of proving each of the following three elements under paragraph 4(a) of the Policy in order to be entitled to a transfer of the disputed domain name:
“(i) that the Respondent’s domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the Respondent’s domain name has been registered and is being used in bad faith”.
The Respondent is required under the Rules to submit a Response to the Complaint within twenty days of the date of commencement of the administrative proceedings. In the event of a failure to submit a Response, Rules, paragraph 5(e) provides that absent any exceptional circumstances, the Panel is to decide the dispute “based upon the complaint”. Paragraph 14(b) of the Rules further provides that if a party, in the absence of exceptional circumstances, fails to comply with any provision of the Rules, the Panel is entitled to “draw such inferences” from the Respondent’s failure to comply with the Rules “as it considers appropriate.”
As the Respondent has not submitted a Response, and there having been no exceptional circumstances brought to the attention of the Panel, in accordance with paragraph 5(e) of the Rules, this Panel is entitled to decide the dispute based on the Complaint and to accept as true the factual averments of the Complaint for the purposes of these proceedings: Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009.
The Respondent’s default, however, does not lead to an automatic ruling in favour of the Complainant. The burden remains on the Complainant to establish, on a balance of probabilities, that it is entitled to a transfer of the domain name: World Wrestling Federation Entertainment, Inc. v. Michael Bosman, WIPO Case No. D1999-0001, Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
A. Identical or Confusingly Similar
This element of the Policy requires the Complainant to prove (a) that it has rights in a trade mark or service mark, and (b) that the Disputed Domain Name is identical to or confusingly similar to such trade mark or service mark.
The Complainant does not allege that it has registered ADITYA BIRLA NOVO as a trademark or service mark. It however asserts that it has rights in that mark as an unregistered common law trademark. There are therefore two questions to be asked and answered. First, does the UDRP apply to unregistered trademarks and second, if the answer is yes, has the name or mark in question acquired sufficient distinctiveness, goodwill and reputation as to enjoy protection as such.
As regards the first question, various UDRP panels have held that that paragraph 4(a)(i) of the Policy, which refers merely to a “trademark or service mark” in which a complainant has rights, does not however limit the application of the Policy to registered trademark or service marks. That paragraph is applicable to unregistered trademark and service marks: see Imperial College v. Christopher Dessimoz, WIPO Case No. D2004-0322, The British Broadcasting Corporation v. Jaime Renteria, WIPO Case No. D2000-0050 and Emmanuel Vincent Seal trading as Complete Sports Betting v. Ron Basset, WIPO Case No. D2002-1058. As regards the second question, that is of course a question of fact. The Complainant has sought to argue that its corporate name or mark ADITYA BIRLA NOVO is distinctive and that it has acquired goodwill and reputation in that name and mark sufficient to sustain the present complaint.
The Panel notes that the Complainant only recently, in October 2005, officially changed its name to “Aditya Birla Novo Limited”. The Domain Name in question was registered on September 11, 2005. However, a registration of a domain name before a complainant acquires trademark rights in a name does not prevent a finding of identical or confusing similarity as the Policy does not make a specific reference to the date on which the owner of the trademark acquired rights: see Digital Vision, Ltd. v. Advanced Chemill Systems WIPO Case No. D2001-0827, AB Svenska Spel v. Andrey Zacharov, WIPO Case No. D2003-0527, Iogen Corporation v. IOGEN, WIPO Case No. D2003-0544 and Madrid 2012, S.A. v. Scott Martin-MadridMan Websites, WIPO Case No. D2003-0598.
The Complainant has adduced evidence that the company is well known and well established and has for many years been associated with the name “Aditya Birla”, which is part of the name of the founder of the group of companies to which the Complainant belongs, and more relevantly, that since the adoption of the name “Aditya Birla Novo” in October 2005, the Complainant would have acquired an even greater reputation in the latter name. As noted above, the Complainant adduced evidence of press articles published in the Times of India, the Business Standard Weekend, the Financial Express and the Economic Times that reported the restructuring and merger of certain companies in the group into the company now known as ADITYA BIRLA NUVO LIMITED. The Complainant has also exhibited a published handbook of the Aditya Birla group which showed the group’s varied and widespread business interests.
Having reviewed and considered the evidence adduced by the Complainant, this Panel finds that although the evidence is by no means overwhelming that the Complainant has acquired widespread reputation and goodwill in the name or mark “Aditya Birla Novo” between the time it adopted this name in October 2005, and the date of filing of the Complaint, there is, on balance, just enough evidence for this Panel to make a finding that the mark in question has reached the threshold level of a common law trademark distinctive of the Complainant and one which has become associated with the Complainant such that the Complainant enjoys common law trademark rights in the unregistered trade mark. In reaching this conclusion, this Panel has had regard to the fact that the mark “Aditya Birla Novo” is highly unique and distinctive, and that the Respondent has not challenged or disputed any of the factual averments asserted by the Complainant.
Turning to the question of confusing similarity, this Panel has little hesitation in finding that the disputed Domain Name <adityabirlanuvo.com> is confusingly similar to the Complainant’s mark. A domain name will be considered similar even where the Respondent has omitted spaces between those words that form Complainant’s mark: see for example, Ann Coulter v. Mark Vadnais, National Arbitration Forum (NAF) Case No. FA137221 (where the domain name <anncoulter.com> was held to be identical to the mark “Ann Coulter”).
The Panel accordingly finds that the disputed domain name is confusingly similar to the Complainant’s mark, and that paragraph 4(a)(i) of the Policy has been satisfied.
B. Rights or Legitimate Interests
The Complainant is also required under paragraph 4(a)(ii) of the Policy to prove that the Respondent has no rights or legitimate interests in the disputed domain name.
However, it has been recognized by many panels that it is difficult for the Complainant to prove a negative for the purposes of paragraph 4(a)(ii) of the Policy, since it raises matters within the knowledge of the Respondent. Accordingly, many panels have held that it is sufficient that the complainant shows prima facie evidence in order to shift the burden of proof onto the respondent (see Anti Flirt S.A. and Mr. Jacques Amsellem v. WCVC, WIPO Case No. D2000-1553; Intocast AG v. Lee Daeyoon, WIPO Case No. D2000-1467).
The Complainant asserts in its Complaint that the Respondent has no legitimate interest in or legitimate bona fide business purpose in connection with the disputed Domain Name <adityabirlanuvo.com> .
The Complainant relies on the “non-use” or passive use of the Domain Name by the Respondent. The site appears to show a picture of a garden and contains a link directing Internet users to the website of the Registrar with whom the Domain Name is registered. The site contains no information on the business or activities of the Respondent.
In the absence of a Response from the Respondent, this Panel finds that the Complainant has met its initial burden of proof for the purposes of establishing paragraph 4(a)(ii) of the Policy.
Nevertheless, this Panel remains obliged to consider whether any of the (non-exhaustive) circumstances provided in paragraph 4(c) of the Policy are present to support a finding of the Respondent having rights or legitimate interests in respect of the disputed domain name, namely:
(i) before any notice to the Respondent of the dispute, the Respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if it has acquired no trade mark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
If any of the above circumstances are established, the Respondent may be said to have rights to or legitimate interests in the disputed domain name for the purposes of paragraph 4(a)(ii), in which event, the Complaint must be denied.
The Panel finds that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or making any legitimate noncommercial or fair use of the same.
The Panel also finds that the Respondent has no legitimate interest or right in using the mark ADITYA BIRLA NUVO in a domain name that directs Internet users to another website where products or services unrelated to those of the Complainant are offered to viewers. As noted in Research In Motion Limited v. Dustin Picov, WIPO Case No. D2001-0492, when a domain name is so obviously connected with a complainant and its products or services, its very use by a registrant with no connection to the Complainant suggests “opportunistic bad faith”.
There is also nothing to suggest that the Respondent, a Korean national, has been commonly known by the disputed domain name, which has obvious Indian origins, or has acquired any relevant rights.
The Respondent has also failed to file a Response and the Panel has, in the above circumstances, concluded that none of the circumstances in paragraph 4(c)(i),(ii) or (iii) of the Policy apply.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interest in the Domain Name.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must, in addition to the matters set out above, further demonstrate that the disputed domain name has been registered and used in bad faith.
Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances which “if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith”, namely:
(i) circumstances indicating that you [the Respondent] have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trade mark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.
The Complainant alleges that the Respondent has registered the disputed domain name in order to prevent the Complainant, as the common law owner of the mark ADITYA BIRLA NUVO, from reflecting the mark in a corresponding domain name and that the Respondent’s conduct is evidence of registration and use in bad faith.
One key question that however needs to be considered is whether bad faith registration can be found if the Domain Name was registered before the Complainant acquired rights in the name or mark in question. The Respondent registered the Domain Name on September 11, 2005. The Complainant’s corporate name was officially changed in late October 2005 although plans to change the name were announced earlier at or around the time the merger and reconstruction of the relevant businesses was publicly discussed in the media.
In most cases, if a domain name is registered before any relevant trademark right is established, the registration of the Domain Name cannot be considered to have been made in bad faith because the registrant could not have contemplated the complainant’s non-existent rights: see for example John Ode dba ODE and ODE - Optimum Digital Enterprises v. Intership Limited, WIPO Case No. D2001-0074.
However, where the respondent is clearly aware of the complainant and the purpose of the registration of the domain name is to take advantage of the confusion between the domain name and the rights of the complainant, then bad faith can be found. Indeed in ExecuJet Holdings Ltd. v. Air Alpha America, Inc., WIPO Case No. D2002-0669, the panel stated:
“For the purposes of the Policy, a domain name registration can have been undertaken in bad faith even if the trade marks rights at which such bad faith was directed arose after the registration of the domain name. This might be the case where a registrant speculated on an impending merger between companies that would create a new name combining in whole or in part the names of the merger partners. Another example concerns the situation where a registrant based its registration of the domain name on its insider knowledge of the intentions of a (former) business partner or employer in relation to the latter’s development of a new trademark. From the intent of the Policy, it is clearly irrelevant whether a registrant intended to abuse an existing trademark right or one which that registrant specifically knew would arise.”
This Panel concurs with that panel’s observations and notes that the circumstances described in the above quoted excerpt are analogous to those of the instant case.
The Respondent could have filed a Response to explain why or how he selected the domain name in question, but has not done so. It seems too much of a coincidence that the Respondent registered the Domain Name just around the time of the planned merger of the companies and the announcement that the Complainant would have a new corporate name. In the absence of a Response from the Respondent, this Panel draws the inference that the Respondent likely heard of the merger and the new name that was being planned and decided to take advantage of it by registering the domain name which incorporated the new name so as to disrupt the business of the Complainant.
Accordingly, this Panel finds that the disputed domain name has been registered and used in bad faith by the Respondent.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <adityabirlanuvo.com> be transferred to the Complainant.
Dated: May 8, 2006