WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Ushodaya Enterprises Private Ltd. v. Surendra Reddy
Case No. D2002-0003
1. The Parties
The Complainant in this administrative proceeding is Ushodaya Enterprises Private Limited, having as its registered office at Eenadu Complex, Somajiguda, Hyderabad 500082, India, ("Complainant").
The Respondent is Mr. Surendra K. Reddy with a listed mailing address of Pointgain Corporation, 1248 Sunnyvale, Saratoga Rd., #2, Sunnyvale, CA 94087, USA ("Respondent").
2. The Domain Names and Registrar
The Domain Names at issue are <eenadu.com >, <eenadu.org>, <eenadumail.com>, <eenadumail.net>, <eenaduexchange.com> and <eenadushopping.com> ("The Domain Names").
The Domain Names are registered with Network Solutions Inc., 505 Huntmar Park Drive, Herndon, Virginia 20170, USA.
3. Procedural History
The Complainant filed a Complaint ("the Complaint") with the World Intellectual Property Organization Arbitration and Mediation Center ("the Center") electronically on January 4, 2002, the Center acknowledged receipt of the Complaint the same day.
On January 9, 2002, the Center transmitted a request for registrar verification in connection with this case so as to:
- confirm that the Domain Names at issue are registered with the registrar;
- confirm that the person identified as the Respondent is the current registrant of the Domain Names;
- provide full contact details, i.e. postal address(es), telephone number(s), facsimile number(s), e-mail address(es) available in the Registrar's Who is database for the registrant of the disputed Domain Names, the technical contact, the administrative contact, and the billing contact for the Domain Names.
On January 10, 2002, the Center verified that the Complaint met the formal requirements of the ICANN Uniform Domain Names Dispute Resolution Policy ("the Policy"), the Rules for Uniform Domain Names Dispute Resolution Policy ("the Rules") and the Supplemental Rules for Uniform Domain Names Dispute Resolution Policy ("the Supplemental Rules").
The panel has reviewed the documentary evidence provided by the Parties and the Center and agrees with the Center's assessment that the Complaint complies with the formal requirements of the aforementioned Rules.
The administrative proceeding commenced on January 11, 2002. The same day, the Complaint was notified to the Respondent.
On February 5, 2002, the Respondent filed a Response by email and on February 7, 2002, by hardcopy, the receipt of which was acknowledged by the Center on February 5, 2002.
Upon receipt of the necessary declaration of independence and impartiality of the present panel, the Center appointed on February 19, 2002, Prof. Charles Gielen as sole Panelist.
4. Factual Background
Complainant, founded in 1973, is part of the Eenadu Group, a company that is principally the publisher of the Telugu daily newspaper Eenadu (meaning "daily" in Sanskrit) published in a particular region in India (as the panel understands this is Andhra Pradesh) with a daily circulation of more than eight million copies. Furthermore there is an Internet publication since mid 2000 receiving a million plus hits per day, amongst others from visitors living in the USA. Complainant is the proprietor of a number of trademark applications (none of them registered yet) in India (the first one filed on May 30, 1996, consisting of the word Eenadu in Telugu-script; the first application for the word Eenadu in roman script, which also contains the logo ETV in combination with the word "television" was filed on October 21, 1997; both applications were filed for class 16), Singapore and USA (the last one filed on January 25, 1999, for goods in classes 29, 30, 31 and 32, as appears from Exhibit M of the Respondent). Furthermore Complainant points at its domain <eenadu.net> that is in operation since February 3, 1997.
Respondent says he is living in Sunnyvale, California, USA, and the founder of Pointgain Corp. (in early 2000), a company that aims at providing on line business to business activities such as providing electronic infrastructures that connects enterprises in real time by creating, developing, maintaining, consulting and supporting their websites and computer software, systems and networks primarily for the US market. On October 26, 1999, he filed an intent to use application of <eenadu.com> at the USPTO for class 42; the application was allowed on June 5, 2001. He points at the domain name <eenadu.com> that was registered by him on October 31, 1996. Later he filed several other domain names that are – including <eenadu.com> - collectively referred to as "the Domain Names."
There has been no contact between the parties before this case was started by Complainant.
5. Parties' Contentions
Complainant alleges that the Domain Names are identical or confusingly similar to the trademarks applied for and used by Complainant. Furthermore he points at the extensive use of the trademarks and states that also unregistered rights are protected under the Policy. He states that confusion appeared from emails received (but not filed in this case) asking whether there is an affiliation with the website of the Respondent. He points out that the Respondent does not carry any legitimate business under the name "eenadu" and states that he initiated proceedings against the allowance of Respondent's trademark registration in the USA. Furthermore there is no actual use of the word "eenadu" by Respondent and the Domain Names are only passively held. Furthermore the Domain Names are registered and used in bad faith. In this context Complainant states that if normal prudence would have been exercised by the Respondent he would have come across the Complainant's trademark. In the region where Respondent lives there is a big Indian population and the Respondent is clearly targeting this population and therefore Respondent tries to intentionally attract Internet users for commercial gain to its website causing confusion with Complainant's activities.
Respondent denies that Complainant owns trademark rights. He states that "eenadu" means "daily" and can therefore not be monopolised for daily publications. Generic terms can furthermore not get secondary meaning. If secondary meaning would have to be accepted, such meaning would then be limited to India (and presumably only amongst Telugu speaking public) and only for the goods or services for which this word is used. Furthermore he states that he has legitimate rights and interests in the Domain Names. First of all he registered the domain name <eenadu.com> on October 31, 1996. At that time Complainant only had one trademark application in India and only for the word "eenadu" in Telugu-script which is not understood by anyone not reading Telugu-script. The intent-to-use declaration filed in the US on October 26, 1999, is for a totally different class of products than those of Complainant. Also Respondent initiated serious business activities. The fact that the scale thereof is still small, is of no relevance. Finally, the Domain Names were not registered and are not used in bad faith. Respondent did not even know of the use by Complainant of the trademark Eenadu for publications and would not have understood the trademark in Telugu-script filed in India prior to the registration by him of the domain name <eenadu.com>. Constructive knowledge would not be sufficient. The possibilities for Complainant to reflect its trademark in domain names are not hindered. There is no intention to attract Internet users to the website of Respondent and causing confusion. The activities of the parties are clearly different.
6. Discussion and Findings
In the panel's opinion this case is not a case to be dealt with under the Policy. There are a number of issues involved in particular in the area of trademark law that need be decided by a court of law. First of all there is a serious point as to the question whether the word "eenadu" is generic. The parties agree that it means "daily" and that means that a trademark monopoly to such a word used for "dailies" is highly improbable. That also means that difficult questions of secondary meaning need to be answered, questions that are dealt with differently under different national law systems. In this case Complainant does not have trademark registrations but only applications. The panel would therefore have to decide on issues of secondary meaning of unregistered rights. Complainant did file a number of documents from which intensive use of the word eenadu (partly in Telugu-script) could be deduced, but whether or not such use is sufficient to accept secondary meaning can not be judged by me and I am not going to do that. But this is not the only problem. Leaving aside the question whether or not Respondent has legitimate rights or interests (there is some proof that Respondent has such rights and interests, such as its uncontested US trademark registration and at first sight serious attempt to do business), Complainant has major difficulty in proving bad faith. Respondent has a registration of the domain name <eenadu.com> well before most of the trademark applications by Complainant, except for the Telugu-script one. There is no proof whatsoever that Respondent knew of this application. Even if Respondent would have known of the use of eenadu in India, it is questionable whether he should have bothered about it, because of its genericness and restricted use to a particular region of India. Even if confusion could arise in some regions in the world as a result of the co-existence of the parties trademarks and domain names – which does not seem probable in view of the different activities – that is not something this panel should deal with. That would clearly be a case of trademark law to be decided by courts of law. The policy is written to deal with cases of abusive registration. In the opinion of the panel this case is different.
For the foregoing reasons, the panel concludes and decides that the Complaint should be denied.
Prof. Dr. Charles Gielen
Dated: February 28, 2002