WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sandvik Intellectual Property AB v. Harbhajan Singh/State Engineering Corporation
Case No. D2008-0608
1. The Parties
Complainant is Sandvik Intellectual Property AB, Sandviken, Sweden, represented by Melbourne IT Corporate Brand Services AB, Stockholm, Sweden.
Respondent is Harbhajan Singh, Phagwara, India and State Engineering Corporation, Phagwara, India, represented by Sanjeev Kr. Singh, India.
2. The Domain Name and Registrar
The disputed domain name <secochuck.com> is registered with Net 4 India Limited.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 18, 2008. On April 18, 2008, the Center transmitted by email to Net 4 India Limited a request for registrar verification in connection with the domain name at issue. On April 21, 2008, Net 4 India Limited transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint 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 April 28, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was May 18, 2008. The Response was filed with the Center on May 17, 2008.
The Center appointed Frederick M. Abbott as the sole panelist in this matter on May 22, 2008. 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.
4. Factual Background
Complainant Sandvik Intellectual Property AB is a controlled affiliated entity of Sandvik AB. Sandvik Intellectual Property AB appears to act as a holding company for the intellectual property assets of Sandvik AB. Seco Tools AB is also a controlled affiliated entity of Sandvik AB. Seco Tools has expressly authorized Sandvik Intellectual Property AB to represent it with regard to intellectual property matters. The parent company Sandvik AB may be the “better” Complainant in this matter because it ultimately controls the trademarks upon which this proceeding is based. However, the Panel will accept Complainant’s designation of Sandvik Intellectual Property AB as Complainant in this matter, referring to all three members of the affiliated group referenced above.
Complainant asserts that it is the holder of trademark registrations for the term “seco” in countries around the world, including the United States of America and India. Complainant’s evidence of ownership is in two parts. Annex 9 to the Complaint is a list dated April 18, 2007 headed “Trademarks by Country and Mark Name” that includes columns headed “Docket Number”, “Mark Name”, “Country”, “Current Appl No” and “Current Reg No”. The Mark Name in all cases is listed as SECO. The significance of “Docket Number” is unclear. There is no supporting documentation behind this Annex, save for evidence of registration from the United States of America and India attached as Annexes 12-14. Annex 12 is a United States Patent and Trademark Office (USPTO) Trademark Electronic Search System (TESS) printout dated April 2, 2008 showing Seco Tools AB as assignee from Fagersta AB Sweden of registration of the word trademark SECO (Principal Register, registration number 1079715, dated December 20, 1977, in International Class (IC) 7, claiming date of first use of 1931 and first use in commerce of 1953, covering, inter alia, carbide tips for rock drills and tool holders holding or adapted to hold one or more of said tools or tool elements). Annex 13 is a copy of a certificate of trademark registration from the Trade Marks Registry, Bombay, India, for the term “seco”, registration number 151919, dated December 10, 1951, in the name of “Fagersta Bruks Aktiebolag, Fagersta, Sweden, in class 6, covering “hard metal in pieces of [unreadable] carbides included in Class 6”. Annex 14 is a copy of a certificate of trademark registration from the Trade Marks Registry, Bombay, for the term “seco”, registration number 307309, dated August 1, 1975, in the name of “Fagersta Aktieboleg, Fack, 773 01 Fagersta, Sweden, in class 7, covering “tools and parts subjected to wear provided with hard metal pieces of sintered carbides, all being machine tools included in Class 7”. There is no explanation in Complainant’s submission of the relationship between the registrant in India, “Fagersta” AB and Complainant. However, the USPTO registration listed above refers to “Fagersta” as assignor to Seco Tools, suggesting some relationship among the parties. Fagersta is the name of the headquarters city of Complainant in Sweden.
Complainant is one of the world’s leading manufacturers of carbide metal cutting products, with representation in 130 countries, 47,000 employees and annual sales of 86 billion Swedish kroner. Complainant delivers millions of tools to customers each year under the trademark SECO (Complaint, Annexes 10-11, with printouts from website at “www.sandvik.com”). Complainant operates an affiliated company in India, Seco Tools India (id., Annex 11).
According to the Registrar’s verification report, the registrant of the disputed domain name is “Harbhajan Singh” of “ART MASTERS”, Phagwara, India, and the administrative contact is “Mukhinder Singh” of “State Engineering corporation”, Phagwara, India. According to that report, the disputed domain name, <secochuck.com> was registered on December 30, 2003. By e-mail dated March 27, 2008, the registrant “Harbhajan Singh” advised Complainant that he was acting as web designer for State Engineering Corporation, and requested that any contact concerning trademark matters be addressed to that enterprise. The evidence in this proceeding is sufficient to establish that the beneficial owner and real party in interest with respect to the disputed domain name is the enterprise listed as the administrative contact, State Engineering Corporation. State Engineering Corporation will hereafter be considered Respondent in this proceeding.
Respondent registered the term “SECO” on the Trade Marks Registry, Bombay, India, registration number 202048, dated April 24, 1961, in class 7, covering “Chucks”. That trademark registration was most recently renewed on April 20, 2003, for a period of seven years, as advertised in Trade Mark Journal Number 1286, Bombay/Mumbai. Respondent has also registered the term “SECO” on the Trade Marks Registry, Mumbai, registration number 766780, dated August, 22, 1997, in class 8, covering “hand tools for sale in India” (Response, Annex R-1). Respondent has registered the publication “SECO GOLD” on the Copyright Register of India, with a visual representation on the cover of the publication showing a machine-tool part, apparently a “chuck”, dated 09/07/1999, showing 1959 as the year of first publication (id.). Respondent State Engineering Corporation has provided evidence of its tax registration in India dating back as early as 1959, and its registration to operate a factory (small scale/industrial unit or SSI) for the production of “lathe chucks” in India as early as 1967 (id., Annex R-II).
Responded indicates that it has been doing business under the trademark SECO in India since 1958 and at the time the trademark was adopted the predecessors of the current management had no knowledge of the existence of any other holder of the trademark SECO.
Respondent indicates that Complainant has been aware of Respondent’s use of the trademark SECO since 1995 as both parties have participated in international exhibitions in India in 1995, 1998, 2001 and 2003.
Respondent has provided copies of correspondence from a German firm of intellectual property lawyers representing Complainant in June 2006 that objected to Respondent offering “chucks” on the German market under the trademark SECO. Having received evidence of Complainant’s German trademark registration, Respondent provided evidence of its own registration in India. In an exchange of correspondence, Respondent accepted not to market its “chuck” products outside India. Complainant’s attorneys stated by letter dated August 22, 2006 “on behalf of our client we accept your assurance that you and your company will not use the trademark SECO in any of the export markets of the world with exception of your home country India”. Said letter further stated “This agreement does not mean that our client acknowledges that State Engineering Corporation is entitled to legally valid trademark rights in India”. (Response, Annex R-III, including letter from rospatt osten pross, Dr. v. der Osten, to State Engineering Corporation, Attn: Mr. Mukhinder Singh, dated Aug. 22, 2006).
Respondent indicates that it “is only engaged in the business of manufacturing and marketing of work holding devices i.e., ‘Lathe Chucks and Parts’ in SECO brand in India” (Response).
Respondent operates a website at “www.secochuck.com”. The top part of the home page consists of a variety of pictures of lathe chucks, and the trademark SECO [within oblong design] GOLD. The lower part of the homepage contains a brief history of State Engineering Corporation, indicating its beginning in 1958, and prominently offering for download a PDF version of the company catalog.
In the Complaint, Complainant states that, “Complainant has not found that the Respondent has any registered trademarks or trade names corresponding to the Domain name”. Prior to initiation of this proceeding, Complainant sent several cease-and-desist and transfer demands to Respondent. In none of that correspondence did Complainant indicate any awareness of its prior dealings with Respondent. (Complaint, Annexes 15-17)
The Registration Agreement in effect between Respondent and Net 4 India Limited subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory Administrative Proceeding conducted by an approved dispute resolution service provider, of which the Center is one, regarding allegations of abusive domain name registration and use (Policy, paragraph 4(a)).
5. Parties’ Contentions
Complainant asserts that it has rights in the trademark SECO and that the disputed domain name, <secochuck.com>, is confusingly similar to Complainant’s trademark. Complaining contends that its trademark is well known and that addition of the term “chuck” does not mitigate confusing similarity because the term designates a product that Internet users expect to be provided by Complainant.
Complainant contends that Respondent has no rights or legitimate interests in the disputed domain name because Respondent has not been known by the term “seco”, has not been authorized by Complainant to use that term and because Respondent is using the term to market products similar to Complainant’s products. Complainant argues that Respondent must have been aware of its trademark rights when Respondent registered the disputed domain name.
Complainant argues that Respondent registered and is using the disputed domain name in bad faith because Respondent must have been aware of Complainant’s well-known trademark when it registered the disputed domain name, and is intentionally using Complainant’s trademark to create a likelihood of confusion in order to attract Internet users to its website.
Complainant requests the Panel to direct the registrar to transfer the disputed domain name to Complainant.
Respondent asserts that it has rights or legitimate interests in the disputed domain name because it has been doing business under the SECO trademark in India since 1958, and it registered the SECO trademark in India in 1961. Respondent has also registered SECO GOLD on the Indian Copyright Register. Respondent has provided substantial evidence of its business operations in India commencing in 1958, including its Small Scale Industries registration, Central Sale Tax Registration, State Sale Tax Registration as well as trademark and copyright registrations.
Respondent indicates that it had no knowledge of Complainant or its trademark when it began doing business and registered its own trademark.
Respondent states that it registered the disputed domain name in good faith. Such domain name incorporates its registered trademark and a term identifying its principal product, the “chuck”. Respondent argues that it is within its rights to register and use a domain name incorporating its own registered trademark.
Respondent alleges that it is only engaged in manufacturing and marketing its products under the SECO brand in India. Respondent further indicates that visitors to its website would not be confused into believing that its products are those of Complainant.
Respondent alleges that Complainant has acted in bad faith in this proceeding by concealing and suppressing correspondence between Respondent and Complainant that clearly evidences Complainant’s knowledge of Respondent’s trademark registration in India and Respondent’s business in India.
Respondent requests the Panel to reject Complainant’s request for the Panel to direct the Registrar to transfer the disputed domain name.
6. Discussion and Findings
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. The Panel will confine itself to making determinations necessary to resolve this Administrative Proceeding.
It is essential to dispute resolution proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).
Respondent received notice of the Complaint and commencement of the administrative proceeding from the Center and filed its Response in a timely manner. Respondent received adequate notice of these proceedings and had reasonable opportunity to respond.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use, and to obtain relief. These elements are that:
(i) respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) respondent has no rights or legitimate interests in respect of the domain name; and
(iii) respondent’s domain name has been registered and is being used in bad faith.
Each of the aforesaid three elements must be proved by a complainant to warrant relief.
A. Identical or Confusingly Similar
Complainant has established rights in the trademark SECO in the United States of America as evidenced by submission of a USPTO TESS printout showing Seco Tools AB as assignee of the SECO mark. Complainant has failed to adequately support its claims of registration of the SECO mark in other jurisdictions. A year-old listing of trademark registration numbers does not constitute adequate evidence of trademark registrations. A copy of two certificates of registration for India showing a party other than Complainant as registrant, and without explanation of the relationship between the named trademark registrant and Complainant, does not constitute adequate evidence of registration by Complainant in India. Complainant has, in sum, evidenced rights in the trademark SECO in the United States of America.
Complainant has alleged that the disputed domain name <secochuck.com> is confusingly similar to its SECO trademark. Complainant uses its SECO mark in connection with the marketing and sale of power tools. A “chuck” is a part used in connection with power tools (i.e., a “chuck” holds or grips materials on which certain power tools operate). The Panel determines that Internet users would be likely to confuse the disputed domain name <secochuck.com> with Complainant’s SECO mark used in combination with the term “chuck”.
The Panel determines that Complainant has rights in the SECO trademark and that the disputed domain name is confusingly similar to that trademark.
B. Rights or Legitimate Interests
The second element of a claim of abusive domain name registration and use is that the respondent has no rights or legitimate interests in respect of the domain name (Policy, paragraph 4(a)(ii)). The Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.” (Policy, paragraph 4(c))
Respondent has provided substantial evidence that it registered the trademark SECO in India in 1961 specifically in connection with manufacturing and sale of “chucks”, and that such registration has been renewed and currently remains in force. Respondent has provided substantial evidence that it has long manufactured and sold chucks in India under the SECO mark, including evidence of its registration to operate a “lathe chuck” manufacturing plant in 1967, its tax registration commencing from 1959 and a marketing brochure registered with the copyright office (see Factual Background, supra).
Complainant has not submitted evidence that would contradict Respondent’s claims. Respondent has submitted substantial evidence that Complainant was aware of Respondent’s trademark registration in India. Correspondence between Complainant’s counsel and Respondent from 2006 indicates that Respondent made Complainant aware of its trademark registration in India, and provided other evidence of Respondent’s long-standing business operations in India. Complainant’s counsel in 2006 indicated that its client did not concede the validity of Complainant’s trademark rights in India. That does not justify Complainant’s claim in this proceeding that it is not aware of any trademark registrations by Respondent. Complainant was aware that Respondent registered its trademark in India in 1961, whether or not Complainant has conceded its validity. There is no evidence in this proceeding that Complainant has challenged the validity of Respondent’s trademark registration before Indian authorities.
Respondent has long been known by the disputed domain name, a combination of its registered trademark and principal product, and has established rights and legitimate interests in that domain name.
Complainant has failed to demonstrate that Respondent lacks rights or legitimate interests in the disputed domain name. Complainant does not succeed in this proceeding. There is no need to consider the issue of bad faith.
For all the foregoing reasons, the Complaint is denied.
Frederick M. Abbott
Dated: June 5, 2008