WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
NIIT Ltd v. Ghazanfar, Ali on behalf of National Institute of Information Technology
Case No. D2000-1718
1. The Parties
The Complainant is NIIT Ltd, an Indian corporation with its principal place of business at C-125, Okhla Phase 1, New Delhi, 110020, India. The Complainant is represented by Mr. Pravind Anand, Anand & Anand Advocates, New Delhi, India.
The Respondent is Ghazanfar Ali, of National Institute of Information Technology, Chishti Centre, G-81, Ch Khaliguzzaman Road, Block-8, Clifton, Karachi, Pakistan. The Respondent is represented by Mr. Iqbal Chishti who filed a Response.
2. The Domain Name and Registrar
The domain name at issue is "niit.net". The domain name is registered with Network Solutions Inc., 505 Huntmar Park Drive, Herndon, Virginia 20170, U.S.A. ("NSI"). It was registered in March 1999.
3. Procedural History
The Complaint submitted by NIIT Ltd, was received on December 4, 2000, (electronic version) and December 8, 2000, (hard copy) by the WIPO Arbitration and Mediation Center ("WIPO Center").
On December 13, 2000, a request for Registrar verification was transmitted by the WIPO Center to NSI, requesting it to:
Confirm that a copy of the Complaint had been sent to it by the Complainant as requested by WIPO Supplemental Rules for Uniform Dispute Resolution Policy ("Supplemental Rules"), paragraph 4(b).
Confirm that the domain name at issue is registered with NSI.
Confirm that the person identified as the Respondent is the current registrant of the domain name.
Provide full contact details, i.e., postal address(es), telephone number(s), facsimile number(s), email address(es), available in the Registrarís WHOIS database for the registrant of the disputed domain name, the technical contact, the administrative contact and the building contact for the domain name.
Confirm that the Uniform Domain Dispute Resolution Policy ("UDRP") was in effect.
Indicate the current status of the domain name.
By email dated December 18, 2000, NSI advised WIPO Center as follows:
NSI had received a copy of the Complaint from the Complainant.
NSI is the Registrar of the domain name registration "niit.com".
NIIT at the address shown for the Respondent is shown as the "current registrant" of the domain name.
The Respondent at the same address is the billing, administrative and technical contact.
The domain name registration "niit.com" is currently in "Active" status.
The NSI has currently incorporated in its agreements the policy for Uniform Domain Name Dispute Resolution adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN").
The advice from NSI that the domain name in question is still "active" indicates the Respondent has not requested that the domain name at issue be deleted from the domain name database. The Respondent has not sought to terminate the agreement with NSI. Accordingly, the Respondent is bound by the provisions of NSIís Domain Name Dispute Resolution Policy, i.e., the ICANN policy. The Respondent has not challenged the jurisdiction of the Panel.
Having verified that the Complaint satisfied the formal requirements of the Uniform Policy and the Uniform Rules, the WIPO Center on December 22, 2000, transmitted by post-courier and by email a notification of Complaint and Commencement of Administrative Proceedings to the Respondent. A copy of the Complaint was also emailed to NSI and ICANN.
The Complainant elected to have its Complaint resolved by a single panel member: it has duly paid the amount required of it to the WIPO Center.
The Response due date indicated in the Notification of Complaint was January 10, 2001. On January 5 2001, Mr. Iqbal Chishti (Director, National Institute of Information Technology) submitted a response. In his covering email he stated:
"We also have other supporting documentary evidences for the statements written in our answer such as Certificates, brochures, Advertisements, Leaflets and legal registration documents approved from the Government of Pakistan if required by you."
On January 6, 2001, the Complainant, apparently under the impression that the documents referenced in Mr. Chishtiís message had already been submitted to the Center, requested that it be provided with an opportunity to review the documents "so that we can verify the factual accuracy of what the Respondent is claiming." The Complainantís message went on to state:
"We would like to put on record a printout of their own home page which shows that the National Institute of Information Technology was started in the year 2000. The opening ceremony was held on July 13, 2000 and attended by the Federal Minister of Interior, Mr. Moin Uddin. This completely belies their story and we, therefore, wish to see their documents carefully."
On January 9, 2001 the Center received an email from Ms. Nafees Siddiqi, a lawyer in Karachi, purporting to act on behalf of the Respondent, announcing that a response would be submitted by February 10 2001. (Her message contained no request for an extension). She claimed that the January 10 deadline could not be met due to "long holidays" in Pakistan, as a result of which lawyers leave Karachi from December 15 to January 15.
On January 11, 2001, the WIPO Center invited the Honourable Sir Ian Barker QC of Auckland, New Zealand to serve as Sole Panelist in the case. It transmitted to him a statement of acceptance and requested a declaration of impartiality and independence.
On January 12, 2001, the Honorable Sir Ian Barker QC advised his acceptance and forwarded to the WIPO Center his statement of impartiality and independence. The Panelist finds that the Administrative Panel was properly constituted in accordance with the Rules and the Supplemental Rules.
On January 12, 2001, the WIPO Center forwarded to the Honorable Sir Ian Barker QC by courier the relevant submissions and the record. He received these on January 18, 2001. In terms of Rule 5(b), in the absence of exceptional circumstances, the Panel would have been required to forward its decision by January 26, 2000. However, because of numerous procedural and communication difficulties, the decision date was extended to March 15, 2001.
By email dated January 10, 2001, the Center advised the Respondent that it considered that a Response had been filed on January 5, 2001 by Mr. Chishti. The Complainant filed a reply to the Response on January 11, 2001. The Complainant did not seek leave of the Panel to do so as should have occurred. The Panel has decided to admit the Response.
The Panel subsequently decided that justice to the Respondent required that it be given the opportunity to provide the documents referred to by Mr. Chishti and that the Complainant should be given a further right to comment on these documents. The documents were received from Mr. Chishti and a further counter received from the Complainant Ė both within the time limits specified by the Panel.
The Panel has independently determined and agrees with the assessment of WIPO Center that the Complaint meets the formal requirements of the Rules for Uniform Domain Name Dispute Resolution Policy as approved by ICANN on October 24, 1999, ("the Rules") and the Supplemental Rules.
The language of the administrative proceeding is English, being the language of the registration agreement.
4. Factual Background
The Complainant, (earlier known by the name of Pace Education Pvt. Ltd.), was incorporated on December 2, 1982. On November 16, 1990, the name of the complainant was changed to NIIT Ltd. The name NIIT is derived from the Complainantís trading style: National Institute of Information Technology.
Since its inception, the Complainant has been engaged in the business of imparting education and training in the field of Computer and Information Technology and has been developing and marketing computer software. The Complainantís business involves educating the members of the public to become proficient in the use of computers as per the norms and methodologies developed by it and/or to occupy professional positions related to the use of computers. The Complainant has become prominent in the field of Computer Education and has achieved national status and reputation in India.
The Complainant initially set up educational centers at Bombay, Delhi, Madras, Bangalore, Hyderabad, Secunderabad, Calcutta and Pune in India. The Complainant from 1987 onwards has granted licenses to third parties in various territories enabling them to set up and conduct NIIT Education Centers, to enable NIIT education to be made available to a larger segment of society. At present, the Complainant has over 1900 Franchise Centers situated across India. The Complainant also has its operations in several other countries, including but not limited to United States of America, United Kingdom, Belgium, France, Thailand, Australia and Singapore. The Complainant has 101 Franchise Centers around the world.
The American Council on Education (ACE) has established credit recommendations for NIIT career courses enabling NIIT students to seek credits in over 1500 American colleges and universities.
The Complainant has set up an office in Atlanta, Georgia, USA and training centers in Singapore, Malaysia and Indonesia. It is one of the top companies in India in the area of software exports.
The business of the Complainant, referred to in the preceding paragraphs, has been conducted under the trade and service mark "NIIT", an invented word. The Complainant is the proprietor of the trademark and trade name "NIIT" in relation to the said business.
The mark NIIT has been used by the Complainant in relation to all its computer software printed manuals, publications and magazines, study materials, etc. The mark NIIT has also been used in relation to advertisements inserted in several print media such as newspapers, magazines etc. both in India as well as abroad. In each of the aforesaid instances of use, the mark NIIT is prominently displayed and has become the focus of the Complainantís entire business.
Apart from any common law trademark rights, the Complainant is the registered proprietor of the trademark NIIT in India, details whereof are as follows:
Computers and parts thereof, computer software of all kinds, audio and video cassettes.
Printed matter, book publications, magazines, periodicals.
The aforesaid trademarks are valid and subsisting. Apart from the aforementioned two registered trademarks, four other applications of the Complainant are pending trademark registration. The registered trademarks were obtained when the Complainant was called Pace Education Pvt. Ltd.
The Complainant has had its trademark "NIIT" registered in some 17 countries including the United States of America, United Kingdom, China, Hong Kong, Israel, Indonesia, Korea, Mauritius, South Africa, Taiwan and New Zealand. The Complainant also has applied for registrations in Australia, Pakistan, Kuwait and Saudi Arabia. In its original application for a trademark, the Complainant alleged continuous uses of the mark since December 1981. Its application for registration in Pakistan was made on August 31, 1996.
The Complainantís business, as run under the mark "NIIT", has achieved a strong growth ever since its inception. The Complainant has also extensively advertised its business and goods under the mark "NIIT" in print, satellite television and electronic media.
The Complainant has advertised extensively in print media circulating in other Asian countries, including Pakistan, Sri Lanka, Malaysia and China. The Complainant has also, since 1995, advertised extensively on satellite television such as STAR TV the footprint of which covers 53 countries in the Asian region. In the 1998/9 year, out of a total income of 583.56 (rupees in crores), it spent 11.01 (rupees in crores) in advertising.
5. Partiesí Contentions
The Complainant submits:
(a) The domain name is identical to its numerous registered and common-law marks;
(b) The Respondent has no rights or legitimate interests in respect of the domain name;
(c) Registration and use in bad faith is shown by:
i) The registration of the disputed domain name by the Respondent in March 1999, years after the Complainantís first use of the mark "NIIT";
ii) The disputed domain name gives the impression that the Respondent is controlled by or affiliated with the Complainant;
iii) The widespread fame of the mark for many years, particularly in Asia;
iv) The Respondentís rudimentary website indicates a connection between that website and the Complainantís;
The Respondent, particularly coming from a neighbouring country, must have known of the Complainantís mark before he registered the domain name because of the Complainantís high profile in the IT industry, in the media and elsewhere; and
The Respondentís mark has been protected by various Court decisions in India and in Sri Lanka, and in WIPO Case D2000-0497 (domain name "myniit.com").
The Respondent alleges in summary:
a) The Respondent was established as an autonomous institution in 1980 and not 2000 as alleged by the Complainant.
b) The Respondent (as the National Institute for Information Technology) is a subsidiary of MEPCO (Manpower Export Placement Corporation) registered by the Government of Pakistan since 1974 for recruitment, training and education. The National Institute for Information Technology was established in 1980 by MEPCO and has been engaged in training in computer science. It has 300 students and employs service email addresses using the word "niit" including "www.niit.com.pk" which resolves into "niit.net", the disputed domain name.
c) Since the establishment of NIIT Pakistan allegedly in 1980, the Respondent has placed in many countries computer-literate persons trained by NIIT Pakistan.
d) MEPCO and NIIT Pakistan have an established reputation in Pakistan for educating persons in computers, although MEPCOís major activity is the export of manpower from Pakistan.
e) The Respondent has invested much money in creating its website.
f) The Respondent uses NIIT in advertisements, diplomas and brochures.
g) The Complainant has never used the trademark in Pakistan.
h) The Respondentís documents refer to "National Institution of Information Technology". They include promotional material for courses and photographs of official occasions.
The Complainant alleges in reply:
a) The Respondent was established in 2000 and not 1980 and that the Respondent had changed the year of foundation noted in the website from 2000 to 1982 on January 8, 2001.
b) The Complainant is entitled to enforce its rights in respect of its Indian registered marks.
c) The Complainant has been operating and using its mark since 1981 whereas the Respondent has no registered mark.
d) The Complainant has owned the marks since 1981, although it was originally called Pace Education Pte. Ltd.
e) The Respondentís website first stated that it was officially opened on July 13 2000, but that it was started in 2000: The site was changed to show the start year as 1982.
f) The Complainant has produced simple certificates using only the name "National Institute of Information Technology" as issued to graduates in the 1980s.
g) Official documents were produced to show that Pace Education Pvt. Limited, incorporated on December 2, 1981, had official approval of its name change to NIIT Limited on November 16, 1990.
h) The Respondentís material does not show any use of the mark "niit", except for a newspaper article in the Urdu language for which no translation was provided. On a street map on an advertising brochure is shown "NIIT" as a location. This is hardly use as a mark, particularly when the full name appears on the brochure. Also on a crest on a brochure the word "NIIT" appears. There is no evidence of the extent to which the crest is used.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to:
"decide a complaint on the basis of the statements and documents submitted in accordance with the policy, these rules and any rules and principles of law that it deems applicable".
The burden for the Complainant, under paragraph 4(a) of the ICANN Policy, is to show:
- That the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
- That the Respondent has no legitimate interests in respect of the domain name; and
- The domain name has been registered and used in bad faith.
The domain name "niit.com" is, in the judgment of the Panel, identical to the Complainantís mark "NIIT". The addition of the ".net" does nothing to deflect the impact on the viewer of the mark. Because of the worldwide nature of the Internet, it does not matter that the trademark registration is in a country other than that of the domain name registrant.
The Complainant must show that the Respondent has no rights or legitimate interests in respect of the dispute domain name. The Respondent does not assume the burden of proof, but may establish a right or legitimate interest in a disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy:
a) He has made 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 prior to the dispute;
b) He is commonly known by the domain name, even if he has not acquired any trademark rights; or
c) He intends to make a legitimate, non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.
The Panel has considered the submissions under this criterion and determines that the Complainant has discharged the onus of proof: The Respondent has failed to demonstrate a legitimate right or interest for the following reasons:
a) The Complainant has not given the Respondent any right or interest in the mark.
b) No proof is offered for the broad assertion that the Respondent has a common law mark in Pakistan. Nor is there sufficient evidence of the widespread use of documents that use the expression "NIIT" as distinct from the expression "National Institute of Information Technology". Nor is there any proof that the Respondent has been trading since 1974, or 1980 under the name NIIT. Whether the activities carried on by MEPCO were done under the name of NIIT has not been demonstrated.
c) The Respondent appears to have changed its website on January 8, 2001, to show its year of institution in 1982 instead of 2000 as hitherto.
d) The evidence of lack of legitimate interest frequently is the same as the evidence of lack of bad faith. It stretches belief that the Respondent in a neighboring country and heavily involved in IT, did not know about the Complainant and its services
e) The right of the Respondent to use the words "National Institute of Technology" is not in issue. The right of the Respondent to use the mark "NIIT" as a domain name is in issue.
f) Generally, there is insufficient evidence of preparation to use the domain name in connection with a bona fide offering of goods and services prior to the dispute.
Paragraph 4(b) of the ICANN Policy states:
"For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration 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 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 trademark 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 website or other on-line location, by creating a likelihood of confusion with the complainantís mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location."
It should be noted that the circumstances of bad faith are not limited to the above.
The Panel considers that the Respondent has registered and used the domain name "niit.net" in "bad faith" for the reasons set out in the summary of the Complainantís submissions and, in particular:
(a) The Domain name "niit.net" is obviously connected with services provided throughout Asia by the Complainantís business.
(b) The Respondent must have known of the Complainantís mark and reputation in Asia when it registered the name.
Accordingly, for all the various reasons discussed above, the Panel finds that the domain name "niit.net" has been registered and is being used by the Respondent in bad faith.
For the foregoing reasons, the Panel decides:
a) That the domain name registered by the Respondent is identical or confusingly similar to the trademark to which the Complainant has rights;
b) That the Respondent has no rights or legitimate interests in respect of the domain name; and
c) The Respondentís domain name has been registered and is being used in bad faith.
Accordingly, pursuant to paragraph 4(i) of the Policy, the Panel requires that the registration of the domain name "niit.net" be transferred to the Complainant.
Hon. Sir Ian Barker QC
Dated: March 9, 2001