WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Kotak Mahindra Bank Limited v. Richard Brown

Case No. D2008-0243

 

1. The Parties

The Complainant is Uday Kotak of Mumbai, India, represented by the legal department of Kotak Mahindra Bank Limited of Mumbai, India, and Wadia Ghandy & Co., of Mumbai, India.

The Respondent is Richard Brown, of Dayton, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <udaykotak.com> (the “Domain Name”) is registered with Schlund + Partner (the “Registrar”).

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) by email on February 15, 2008, and in hard copy on February 19, 2008. The Center transmitted its request for registrar verification to the Registrar by email on February 18, 2008. The Registrar replied on February 21, 2008, confirming that it was the registrar and the Respondent was the registrant of the Domain Name, that the Uniform Domain Name Dispute Resolution Policy (the “Policy”) applied to the registration, that the Domain Name was locked, that the registration agreement was in English, and that the Respondent had submitted to the jurisdictions at the location of the Registrar’s principal office and his residence; and providing the contact details recorded on its Whois database in respect of the registration. The Registrar also noted that the Domain Name would expire on March 14, 2008, and that it had not received a copy of the Complaint. The Center asked the Registrar to confirm in accordance with paragraph 3.7.5.7 of ICANN’s Expired Domain Deletion Policy that the Domain Name would remain locked until this proceeding is concluded and whether any action by the parties was required to keep the Domain Name locked. The Registrar confirmed that the Domain Name would remain locked until this proceeding is concluded.

The Center verified that the Complaint satisfied the formal requirements of 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceeding commenced on February 21, 2008. The notification appears to have been delivered successfully by email and courier to the addresses in the contact details for the Domain Name in the Registrar’s database. In accordance with paragraph 5(a) of the Rules, the due date for Response was March 12, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 13, 2008.

The Center appointed Jonathan Turner as the sole panelist in this matter on March 27, 2008. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with paragraph 7 of the Rules. Having reviewed the file, the Panel is satisfied that the Complaint complied with applicable formal requirements, was duly notified to the Respondent and has been submitted to a properly constituted Panel in accordance with the Policy, the Rules and the Supplemental Rules.

 

4. Factual Background

The Complainant, Uday Kotak, is the founder and Executive Vice Chairman & Managing Director of Kotak Mahindra Bank Limited, an Indian bank which provides banking and other financial, monetary and insurance services under the mark KOTAK. The Complainant started the business in 1985, incorporating a company under the name Kotak Capital Management Finance Limited. The name was changed to Kotak Mahindra Finance Limited in 1986 and to Kotak Mahindra Bank Limited in 2003. The company has registered KOTAK as a trademark. It has also registered numerous domain names containing “kotak”, including <kotak.com>, at which it provides a website. The Complainant retains a substantial shareholding in the company.

Kotak Mahindra Bank Limited is part of the Kotak Mahindra Group, a leading financial services group in India, also headed by the Complainant. As at September 30, 2007, the group had a net worth of over 36 billion rupees; over 15,000 employees; offices in New York, London, Dubai, Mauritius and Singapore; branches, franchisees, and representative or satellite offices in 340 cities and towns across India; and around 3.2 million customer accounts. At the same date, Kotak Mahindra Bank Limited had deposits of nearly 170 billion rupees in over 530,000 deposit accounts and a net worth of nearly 18 billion rupees.

The Complainant was ranked by Forbes in 2007 as the 16th richest person in India and the 432nd richest person in the world. He has been interviewed on national and international television.

The Domain Name resolves to a website which displays the following information:

“Uday Kotak is an Indian businessman. He is the vice-chairman and managing director of Kotak Mahindra Bank. In 2005, he was ranked among India's richest people by Forbes magazine.

“Spurned his family's trading business for financial services. Today his Kotak Mahindra Bank serves 1.5 million customers and has offices in New York, London, Dubai and Mauritius. Has partnerships with Goldman Sachs and Old Mutual. A personal investment in cellular operator Hutchison Essar has soared lately.”

A side-bar displays links to “Site Partners”, an “Ads by Google” sponsored search box, and a large link labeled “Public Service Ads by Google”. There is a copyright notice at the foot of the page in the form “ 2008 udaykotak.com”.

The Complainant sent the Respondent a cease and desist letter on November 8, 2006, and email on July 24, 2007. The Respondent did not reply.

 

5. Parties’ Contentions

A. Complainant

The Complainant states that he is a well-known businessman in India and abroad and has acquired valuable goodwill and reputation as the founder and Executive Vice Chairman & Managing Director of Kotak Mahindra Bank Limited. According to the Complainant, his name, Uday Kotak, has thereby acquired a secondary meaning, and he has a common law exclusive right in it as a service mark. The Complainant cites numerous decisions which have held that common law rights in personal names used in business are protected under the Policy. The Complainant submits that the Domain Name is identical and deceptively similar to his name.

The Complainant asserts that the Respondent has never been known by the name “Uday Kotak” or any similar name or mark, and that the sole purpose of the Respondent’s registration is to harm, dilute and damage the goodwill and reputation earned by the Complainant and the group of companies which he founded and heads. He further states that the Respondent has not used or made demonstrable preparations to use the Domain Name in connection with any bona fide offering of goods and services in connection with the Domain Name; on the contrary, he says that the Respondent’s website does not offer any services, but rather is used to direct internet traffic to other websites through sponsored links from which the Respondent derives financial benefit.

Finally, the Complainant contends that the Respondent has registered and is using the Domain Name in bad faith in an intentional attempt to attract, for unlawful financial gain, internet users to his website by creating confusion with the Complainant’s well-known and famous name. He also alleges that the Respondent registered the Domain Name to prevent him reflecting his name in a corresponding domain name.

The Complainant requests a decision that the Domain Name be transferred to him.

B. Respondent

As mentioned above, the Respondent did not reply to the Complainant’s contentions.

 

6. Discussion and Findings

In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding, the Complainant must prove (i) that the Domain Name is identical or confusingly similar to a mark in which it has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) that the Domain Name has been registered and is being used in bad faith. Each of these requirements will be considered in turn below.

In accordance with paragraph 14(b) of the Rules the Panel shall draw such inferences from the Respondent’s default as it considers appropriate. This includes the acceptance of plausible evidence of the Complainant which has not been disputed.

A. Identical or Confusingly Similar to Mark in which Complainant has Rights

It is necessary first to determine whether the Complainant has rights in any relevant mark. Kotak Mahindra Bank Limited undoubtedly has registered rights in the mark KOTAK, but this company is not the Complainant. It is necessary to consider whether Complainant has rights in the mark “Uday Kotak” within the meaning of the Policy, as he contends.

The Policy does not protect personal names as such. It only protects personal names if they are also marks in which the Complainant has rights. The Policy was formulated to give effect to the recommendations in the Final Report of the WIPO Internet Domain Name Process of April 30, 1999. That Report recorded and concluded:

“165. The preponderance of views … was in favor of restricting the scope of the procedure, at least initially, in order to deal first with the most offensive forms of predatory practices and to establish the procedure on a sound footing. Two limitations on the scope of the procedure were, as indicated above, favored by these commentators.

“166. The first limitation would confine the availability of the procedure to cases of deliberate, bad faith abusive registrations. . . .

“167. The second limitation would define abusive registration by reference only to trademarks and service marks. Thus, registrations that violate trade names, geographical indications or personality rights would not be considered to fall within the definition of abusive registration for the purposes of the administrative procedure. Those in favor of this form of limitation pointed out that the violation of trademarks (and service marks) was the most common form of abuse and that the law with respect to trade names, geographical indications and personality rights is less evenly harmonized throughout the world, although international norms do exist requiring the protection of trade names and geographical indications.

“168. We are persuaded by the wisdom of proceeding firmly but cautiously and of tackling, at the first stage, problems which all agree require a solution …”

The Policy accordingly identified as the first condition of a successful complaint that the disputed domain name “is identical or confusingly similar to a trademark or service mark in which the complainant has rights”.

Consideration was subsequently given to extending the Policy to cover personal names in the Second WIPO Internet Domain Name Process. However, the Final Report of that Process of September 3, 2001, concluded:

“199. It is clear that many sensitivities are offended by the unauthorized registration of personal names as domain names. It is clear also that UDRP does not provide solace for all those offended sensitivities, nor was it intended to do so, as originally designed. The result is that there are some perceived injustices. Persons who have gained eminence and respect, but who have not profited from their reputation in commerce, may not avail themselves of the UDRP to protect their personal names against parasitic registrations. The UDRP is thus perceived by some as implementing an excessively materialistic conception of contribution to society. Furthermore, persons whose names have become distinctive in countries that do not recognize unregistered trademark rights are unlikely to find consolation in the UDRP in respect of bad faith registration and use of their personal names as domain names in those countries.

“200. Nevertheless, we believe that the views expressed by the majority of commentators against the modification of the UDRP to meet these perceived injustices are convincing at this stage of the evolution of the DNS and the UDRP.

“201. The most cogent of the arguments against modification of the UDRP is, we believe, the lack of an international norm protecting personal names and the consequent diversity of legal approaches deployed to protect personal names at the national level. We consider that this diversity would place parties and panelists in an international procedure in an untenable position and would jeopardize the credibility and efficiency of the UDRP.”

Panels have recognized that it would not be proper to subvert the conclusion reached in that Process by extending the Policy beyond its scope, as fairly interpreted from its text read in the light of its context and objectives: see Leonard Asper v. Communication X Inc., WIPO Case No. D2001-0539, Israel Harold Asper v. Communication X Inc. WIPO Case No. D2001-0540, Falwell & Anor v Cohn & ors, WIPO Case No. D2002-0184 and R. E. ‘Ted’ Turner and Ted Turner Film Properties, LLC v. Mazen Fahmi WIPO Case No. D2002-0251.

It is well established that the Policy can protect a Complainant’s unregistered rights in his or her personal name as a mark where the name is recognized as identifying the origin of goods or services in relation to which is used. This most commonly occurs in relation to the names of authors, actors, musicians and sportspersons. Well-known cases include Jeanette Winterson v. Mark Hogarth, WIPO Case No. D2000-0235; Julia Fiona Roberts v. Russell Boyd, WIPO Case No. D2000-0210; Madonna Ciccone, p/k/a Madonna v. Dan Parisi and ‘Madonna.com’, WIPO Case No. D2000-0847, and Serena Williams and Venus Williams v. Eileen White Byrne and Allgolfconsultancy WIPO Case No. D2000-1673.

It is less common for businessmen to have unregistered rights in their personal names as marks protected by the Policy, since businesses are normally carried on by companies which are separate legal persons. The circumstances in which businessmen may have such rights have been considered in a number of decisions.

In Israel Harold Asper v. Communication X Inc. WIPO Case No. D2001-0540, the Panel held that:

“6.22 In the cases mentioned in paragraphs. 6.14 – 6.17 above where the Complainant was successful he or she either used the personal name in question as a marketable commodity, allowing his or her name or image to be used for a fee, to promote someone else’s goods or services, or for direct commercial purposes in the marketing of his or her own goods and services. In some of these, including Monty and Pat Roberts, there were multi-purposes. The pure business cases are more problematic. An obvious difference between them and the above situations is that it is less likely that a business person will use his or her name to market their own goods or services, and very unlikely that they will do so to market someone else’s. Take, by way of examples, Henry Luce, Kenneth Thomson, Conrad Black and Rupert Murdoch. Are their publications marketed as a product connected to the person in question? Not likely. It is also not likely that someone would pay a fee to use these names in the promotion of a good or service with which they have no connection. Yet, each of these gentlemen is or was a famous businessman with a very high profile in the publishing business and held in high regard by many. This doesn’t mean that a businessperson’s name is not entitled to protection as a Domain Name. As demonstrated in the Supreme Court of Canada decision in Hurlbut Co.Ltd. v. Hulburt Shoe [1925] 2 D.L.R. 121 a person may be able to use his personal name to prevent its improper use if he or she can show that if "all persons whom in any way it concerns" has come to know that a particular article associated with his or her name means that he or she is responsible for its source. Under this circumstance, the personal name takes on a secondary meaning. Probably, when the T.Eaton Co. was owned by Timothy Eaton and Macy’s owned by someone of that name, their names could have been protected on this basis. There is no evidence in the Complaint that the name of the Complainant has formed a part of the name of any of his companies. ...”

The Panel notes that, by contrast, in the present case, the surname of the Complainant has formed part of the name and constituted the principal mark of his companies.

In R. E. ‘Ted’ Turner and Ted Turner Film Properties, LLC v. Mazen Fahmi, WIPO Case No. D2002-0251, the majority of the Panel observed that the case differed from the Asper case in that Ted Turner’s surname was used in the names of several major companies in the group which he controlled. However, they concluded that there was “insufficient evidence produced in the Complaint that the Complainant, Ted Turner, has ever offered goods or services under that name, or that that name has acquired any secondary meaning in relation to any goods or services”.

A forceful dissenting opinion expressed the view that

“The majority has wrongly decided that the name ‘Ted Turner,’ although known throughout the world as a symbol of business acumen and commercial success, has not been used commercially to promote goods and services. The name ‘Turner’ has been used in the names of several media companies, in addition to its inclusion in the name of the Complainant Ted Turner Film Properties. The majority needs numerous pages of explanation to dispel the obvious and lose the forest for the trees. This evidence is sufficient to find the existence of a common law trademark or service mark in the name ‘Ted Turner.’”

In Chung, Mong Koo and Hyundai Motor Co. v. Individual, WIPO Case No. D2005-1068 the Panel concluded:

“Eventually, such cases come down to whether the evidence establishes sufficient of a nexus between the name itself and its use and association in trade and commerce. In undertaking that exercise, it is useful to consider a number of guides, for they can be no more than that, that will tend to suggest one way or the other, whether such a nexus has been established and might over time help to establish the ‘pattern’ of consistent authority that the panelist in the Asper Case lamented is presently absent. Those factors would include the extent to which the commercial community identifies the individual with the company, the extent to which the individual is seen by relevant media and sections of the public as the alter ego and driving force behind the company, the extent of the personal ownership of the company by the individual, the degree of personal control that the individual exercises over the enterprise, the extent to which the individual is identified with any major achievements of the enterprise and whether, as was the case in Rattner, it can be said that the individual and/or the company has a demonstrable interest in protecting the individual’s name for commercial use.”

The domain name in that case was confusingly similar to the name of the Chairman and Chief Executive of the Hyundai Motor Company. The Panel upheld the complaint. The guidance given in that case was applied in Soin International LLC v. Michael W. Solley, PrivateRegContact Admin/TECH, WIPO Case No. D2007-0094. This Panel considers that this guidance is correct and should be followed. Accordingly, the Panel will review the evidence in this case in the light of the criteria identified in the Chung, Mong Koo case.

The uncontradicted evidence of the Complainant in this case is that the commercial community identifies the Complainant with the bank which he founded and which Kotak Mahindra Bank Limited continues to operate under his leadership. He is seen by the media and the public, particularly in India, as the alter ego and driving force behind the company. He retains a substantial shareholding. He is identified with its achievements. The enterprise has a clear interest in protecting his name for commercial use, in view of the Complainant’s association with the bank and the fact that it trades under its registered mark KOTAK, his surname

Indeed the Complainant’s evidence is corroborated by the Respondent’s web page, which states:

“Uday Kotak is an Indian businessman. He is the vice-chairman and managing director of Kotak Mahindra Bank. In 2005, he was ranked among India's richest people by Forbes magazine.

“Spurned his family’s trading business for financial services. Today his Kotak Mahindra Bank serves 1.5 million customers and has offices in New York, London, Dubai and Mauritius. Has partnerships with Goldman Sachs and Old Mutual. A personal investment in cellular operator Hutchison Essar has soared lately.”

This text clearly identifies the Complainant with the bank and vice versa.

In all the circumstances, the Panel concludes that the Complainant has rights in his name, Uday Kotak, as a mark. The Domain Name is clearly identical or confusingly similar to this mark, from which it differs only in the addition of the generic top level domain suffix. The first requirement of the Policy is satisfied.

B. Rights or Legitimate Interests

The Panel considers that the Respondent has not used the Domain Name in connection with a bona fide offering of goods or services or made demonstrable preparations for such use. The Panel finds that the main purpose of the Respondent’s web page is not to provide Internet users with a biography of the Complainant, but rather to obtain commissions from the sponsored links which may be clicked by Internet users who have been diverted to his site by confusion with the Complainant’s mark. This does not constitute a bona fide offering of goods or services.

There is no reason to doubt the Complainant’s evidence that the Respondent is not commonly known by the Domain Name. Nor is the Respondent making non-commercial or fair use of the Domain Name. On the contrary, he is making unfair, commercial use taking advantage of confusion with the Complainant to obtain click-through commissions.

There does not appear to be any other basis on which the Respondent could claim a right or legitimate interest in respect of the Domain Name. In all the circumstances, the Panel concludes that he has no such right or interest. The second requirement of the Policy is satisfied.

C. Registered and Used in Bad Faith

The Panel finds on the undisputed evidence that the Respondent has used the Domain Name in order to attract Internet users to his web page, for the purpose of commercial gain in the form of click-through commissions on sponsored links, by creating a likelihood of confusion with the Complainant’s mark. This constitutes evidence of bad faith registration and use in accordance with paragraph 4(b)(iv) of the Policy. This evidence is not displaced by any evidence or circumstances indicating the contrary.

In these circumstances, the Panel concludes that the Domain Name was registered and is being used in bad faith. The third requirement of the Policy is satisfied.

 

7. Decision

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, <udaykotak.com> be transferred to the Complainant.


Jonathan Turner
Sole Panelist

Dated: April 9, 2008