WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Living Media, Limited v. India Services
Case No. D2000-0973
1. The Parties
Living Media, Limited ("Complainant"), is an India corporation doing business as India Today with its offices at 404 Park Avenue South, New York, New York, USA.
India Services ("Respondent"), is the registrant of the domain name "indiatoday.com" with a contact address of 60 East 56th Street, 9th floor, New York, New York, USA. Mr. Kent Charugunala is listed as the Administrative Contact in the registration for this domain name.
2. The Domain Name
The domain name in issue is <indiatoday.com>.
3. The Registrar of the Domain Name
The registrar of the domain name <indiatoday.com> is Network Solutions, Inc. ("NSI"), located at 505 Huntmar Park Drive, Herndon, Virginia, USA.
4. Procedural History
On August 8, 2000, the Complainant filed a Complaint with the WIPO Arbitration and Mediation Center (the "Center") concerning the domain name <indiatoday.com> and paid the required filing fee for appointing a single member Panel. The Complainant named India Services as the Respondent in this proceeding. On August 11, 2000, the Center sent an "Acknowledgement of Receipt of Complaint" by e-mail to the Complainant and a copy of the Acknowledgement to the Respondent.
On August 22, 2000, "Request for Verification" concerning the domain name <indiatoday.com> was sent to NSI. On August 23, 2000, NSI provided a Verification Response to the Center stating, in pertinent part that: (i) it received the Complaint from the Complainant as required by the Policy; (ii) it is the registrar of the domain name "indiatoday.com"; (iii) "India Services" is the current registrant of the domain name registration with a listed postal address of 60 East 56th Street, 9th floor, New York, New York 10022, USA; (iv) "Kent Charugundla" is the administrative contact for the domain name with a listed e-mail address of email@example.com; (v) the Registrarís 5.0 Service Agreement is in effect; and (vi) the domain name is currently in "active" status.
On August 22, 2000, the Center found the Complaint to be in compliance with the formal requirements of ICANNís Uniform Domain Name Dispute Resolution Policy (the "Policy"), ICANNís Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") and WIPOís Supplemental Rules for the Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
On September 11, 2000, the Center sent a "Notification of Complaint and Commencement of Administrative Proceeding" to the Respondent. On September 29, 2000, the Respondent timely filed a Response and a supporting declaration with the Center. On October 14, 2000, the Center sent an "Acknowledgement of Receipt of Response" by e-mail to the Respondent and a copy of the Acknowledgement to the Complainant.
On October 30, 2000, the Panelist submitted a "Statement of Acceptance and Declaration of Impartiality and Independence" with the Center and on November 1, 2000, the Center sent a "Notification of Appointment of Administrative Panel and Projected Decision Date" by e-mail to the parties notifying them that an Administrative Panel consisting of a single Panelist had been appointed in the proceeding.
5. Factual Background
The Complaint is based on the trademark INDIA TODAY, Reg. No. 2,103,139 (first use 12/75; first use in commerce 1982; issued 10/7/97) for a bi-monthly magazine featuring information concerning Indian politics, economy, business, entertainment and culture registered with the U.S. Patent and Trademark Office. The Complaint is also based on a Certificate of Registration that shows that the title of the magazine INDIA TODAY was registered with the Indian Government on November 25, 1980 (R.N. 28587/75). Copies of these registrations were attached as Annexes 3 and 4 to the Complaint.
A search result from a query of NSIís Whois database shows that the domain name <india-today.com> was registered on December 24, 1996 to the Complainant and that there is a corresponding Web site located at this domain name. A search result from a query of NSIís Whois database shows that the domain name <indiatoday.com> was registered on February 23, 1995 to the Respondent and that there is also a corresponding Web site located at this domain name.
6. Partiesí Contentions
In the Complaint, the Complainant asserts that it is the owner of the mark INDIA TODAY, "U.S. Reg. No. 1,404,862" but attached a copy of U.S. Reg. No. 2,103,139 for the mark INDIA TODAY as Annex 3. The Complainant also asserts that India Today has a certificate of registration of its mark with the Indian Government dated November 25, 1980 for its magazine publication (attached as Annex 4), that India Today is a registered trademark in active use for a news magazine distributed worldwide (magazine covers and circulation information attached as Annexes 5-7) and that it has been doing business as "India Today" in the United States since 1992 (magazine cover and New York State Certificate of Authority attached as Annexes 7 and 8).
The Complainant asserts that the domain name in issue is identical to the U.S. and Indian trademark INDIA TODAY, that readers of the print version of the magazine would likely key this domain name expecting to find content provided by the India Today magazine and that by registering this domain name, the Respondent has denied the use of the mark by its legitimate owner, the Complainant, for distribution of its Internet-based media.
The Complainant asserts that the Respondent has failed to develop a Web site at the domain name in issue and has failed to make any other good faith use of the domain name based on no Web site content being present as of February 28, 2000 and August 1, 2000 other than "Under Construction" Web pages attached as Annex 9.
The Complainant asserts that on August 2, 2000, its agent telephoned the Administrative contact for the domain name and the Respondentís attorney to ask what the Respondentís intentions were with regard to the domain name. The Complainant then asserts that, after the telephone call with the Respondentís attorney, a new Web page with minimal content was put up at the domain name in issue. The Complainant asserts that the posting of this page appears to be a pre-emptive effort at nullifying the Complainantís attempts to demonstrate the requirement of the Rules, par. 4(a)(iii) of the Policy and attached a copy of the Web page as Annex 9.
The Complainant continues by asserting that when attempting to register the domain name in issue in December of 1996, the Complainant found that the domain name was already registered but there was no site content present. The Complainant then asserts that it appears that no content has ever been posted to the Web site of the domain name in issue for a period of five years since its inception up until after the Complainant contacted the Respondentís attorney on August 2, 2000. The Complainant asserts that if the new site content remains at the domain name in dispute the Complaint should then meet the test of the Rules, para. 4(b)(iv) of the Policy, given now that after five years of non-use, the Respondent has posted content that will create a likelihood of confusion with the Complainantís mark.
Based upon the above, the Complainant requests that the Panelist transfer the domain name in issue to it.
The Respondent asserts that the term "India Today" is "a relatively weak mark which is susceptible of descriptive (non-trademark) usage in any discussion of subject matter concerning India" and has a description of goods that does not cover services on the Internet or goods in any International class other than Class 16 (paper goods and printed matter).
The Respondent asserts that no evidence has been offered by the Complainant in support of the Complainantís contention that "[r]eaders of the print version of its magazine would likely key this domain name expecting to find content provided by India Today magazine." The Respondent further asserts that the Complainant registered the domain name <india-today.com> in 1996 and has presented no evidence of any confusion or other detriment to its business during the period that the two domain names have co-existed. The Respondent also asserts that the Complainant has failed to demonstrate that the Respondent has denied the Complainant the use of its mark.
The Respondent continues by asserting that it has maintained a Web site at the domain name in issue offering content of interest to the Indian community for most of the time since December 1996 and attached copies of Web pages with copyright notices of 1995 and 1996/1997. The Respondent admits that there have been brief interruptions in the content provided due to technical problems and that the Complainantís statement that "no content has ever been posted to this web siteÖ for a period of five years" is simply incorrect. The Respondent continues by stating that nothing in the Respondentís Web content would support a finding of a likelihood of confusion with the Complainantís mark for its print magazine.
The Respondent asserts that the domain name in issue was not registered primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainant or to a competitor of the Complainant and that there has been no contact between the Complainant and the Respondent during the entire time the registration was owned by the Respondent prior to August 2000. The Respondent asserts that the registration was obtained and is being used for the Respondentís legitimate business purposes, namely the dissemination of information of interest to the Indian community of which the Respondentís principal is a part. The Respondent also asserts that its principal is a resident of the United States with close ties to India and the Indian business community in the United States. The Respondent further asserts that the domain name and its Web site have existed for years and have been used for the bona fide offering of information to the Indian community without any confusion with or challenge by the Complainant. The Respondent attached a declaration from its principal in which he states that there have been no known instances of confusion by users of the <indiatoday.com> Web site.
The Respondent states that the Complainant has failed to establish the required elements as set forth in Paragraph 4(a) of the Policy, that the Respondent has submitted evidence which shows circumstances as described in Paragraph 4(c) of the Policy and that the Panel should rule in favor of the Respondent and deny the remedies requested by the Complainant.
7. Discussion and Findings
The Proceeding - Three Elements
Paragraph 4(a) of the Policy states that the domain name holder is to submit to a mandatory administrative proceeding in the event that a third party Complainant asserts to an ICANN approved dispute provider that:
(i) the domain name holderís domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights ("Element (i)"); and
(ii) the domain name holder has no rights or legitimate interests in respect of the domain name ("Element (ii)"); and
(iii) the domain name of the domain name holder has been registered and is being used in bad faith ("Element (iii)").
Element (i) - Domain Name Identical or Confusingly Similar to the Mark
Although it appears from the Complainantís assertions that it owns two U.S. trademark registrations for the mark INDIA TODAY, the Complainant only provided evidence of one registration. Nevertheless, such evidence is sufficient to show that the Complainant is the owner of the mark INDIA TODAY. Comparing the domain name in issue with the mark INDIA TODAY, the Panelist finds that the domain name is identical to the mark. Although the Respondent asserts that the mark INDIA TODAY is "a relatively weak mark which is susceptible of descriptive (non-trademark) usage in any discussion of subject matter concerning India", the Complainantís U.S. trademark registration is itself prima facie evidence that the mark is distinctive and the Respondent has presented no evidence to suggest otherwise. Accordingly, the Panelist finds that Element (i) has been satisfied.
Element (ii) - Rights or Legitimate Interests in the Domain Name
Paragraph 4(c) of the Policy sets out circumstances, in particular but without limitation, which, if found by the Panelist to be proven based on its evaluation of all of the evidence presented, can demonstrate the holderís rights to or legitimate interests in the domain name. These circumstances include:
(i) before any notice to the holder of the dispute, the holderís 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 holder (as an individual, business, or other organization) has been commonly known by the domain name, even if the holder has acquired no trademark or service mark rights; or
(iii) the domain name holder 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 trademark or service mark at issue.
The Respondent asserts that the registration of the domain name in issue "was obtained and is being used for Respondentís legitimate business purposes, namely the dissemination of information to the Indian community" and that the "Respondentís domain name and its web site have existed for years and have been used for the bona fide offering of information to the Indian community." The only evidence that the Respondent submits apparently to support these assertions are copies of two Web pages with copyright notices of 1995 and 1996/1997, respectively, having little content other than a general statement about the site being designed "to keep in touch with Indian culture and related Websites" and offering plans for online matrimonial services, debit card services, discount long distance service to India and England and e-mail addresses incorporating the domain name in issue. The Respondent has provided little to no explanation or guidance about its site, the pages submitted or the content therein in its Response, nor has it provided any other evidence to support the above assertions.
The Complainant, however, asserts that no site existed at the domain name in issue in 1996 and that during the past year the site has only existed as an "Under Construction" page until the Respondent was contacted by the Complainant at which time a new page was introduced with "minimal content." The Complainant has provided copies of these Web pages as evidence. The Panelist has also reviewed the site since the filing of the proceeding and finds it now entitled <Welcome to indiatoday.com> and has grown to include links to an Indian magazine, online Indian news sources and adult content and displays multiple advertising banner logos for other companiesí services.
Reviewing this evidence in its entirety, the Panelist is not at all persuaded that before notice to the Respondent of this dispute, the Respondent was using or that there were demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services. Furthermore, no evidence has been presented showing that the Respondent is commonly known by the domain name as an individual, business or otherwise or that the Respondent could be considered as making any type of legitimate noncommercial or fair use of the domain name. Accordingly, the Panelist therefore concludes that the Respondent has no rights or legitimate interests in the domain name and that Element (ii) has been satisfied.
Element (iii) - Domain Name Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that evidence of registration and use in bad faith by the holder includes, but is not limited to:
(i) circumstances indicating that the holder has registered or has 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 trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the holderís documented out-of-pocket costs directly related to the domain name; or
(ii) the holder has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the holder has engaged in a pattern of such conduct; or
(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holderís web site or other online 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 the holderís web site or location.
When considering the Complainantís evidence concerning its mark INDIA TODAY and its magazine with the fact that the domain name in issue is identical to the Complainantís mark and in view of the Respondentís acknowledgement that its principal has "close ties to India and the Indian business community in the US", it is difficult to conceive that the Respondent was unaware of the Complainantís mark and its rights therein. Combined with the lack of any explanation or evidence from the Respondent of why the domain name was registered or how the second level domain of the domain name in issue could be understood as meaning something different from the Complainantís mark INDIA TODAY and its magazine, the Panelist accordingly finds that the Respondent had knowledge of the Complainantís rights in its mark at the time the domain name in issue was registered.
The Complainant also submitted evidence of Web pages of the site from the past year showing the Respondent, after being contacted by the Complainant, changing its site from being "Under Construction" to having links to Indian news sources and providing an advertising banner logo promoting another companyís services. The Respondent submitted evidence of its site in 1995 and 1996/1997 showing plans to offer online matrimonial services, debit card services, discount long distance service to India and England and e-mail addresses incorporating the domain name in issue on the site. The Panelistís review of the Respondentís current site finds it now to be entitled <Welcome to indiatoday.com> with links having been added for an online Indian magazine, more Indian news sources and adult content as well as more advertising banner logos. In view of this evidence, the Panelist finds that the Respondent is using the domain name to intentionally attempt to attract for commercial gain Internet users to its site.
Although the Respondent has submitted a declaration stating that its principal is aware of no known instances of confusion by users of the <indiatoday.com> site, such is not decisive when the standard is "likelihood" of confusion. While it could be argued that the Respondent may have built a reputation with some of the people who have visited this site, no evidence has been shown that its visitors act on that reputation, nor does the submitted evidence support such an assertion. Rather, it is far more conceivable that visitors go to the site based upon the strength and reputation of the Complainantís mark and magazine and that the Respondent is attempting to mislead Internet users into believing that its site is or was associated with the Complainant.
Based upon the findings and evidence submitted, the Panelist concludes that the Respondent has registered and is using the domain name in issue in bad faith for the purpose of creating a likelihood of confusion with the Complainantís mark and magazine as to the source, sponsorship, affiliation or endorsement of the site or of the services on the site. Element (iii) has therefore been satisfied.
The Panelist concludes that: (i) the domain name in issue is identical to the Complainantís mark; (ii) the Respondent has no rights or legitimate interests in the domain name; and (iii) the Respondent has registered and is using the domain name in bad faith. Accordingly, the Panelist requires that the registration of the domain name <indiatoday.com> be transferred to the Complainant.
Dated: December 8, 2000