WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
ITC limited v. Buy This Name
Case No. D2002-0007
1. The Parties
The Complainant in this administrative proceeding is ITC LIMITED, an existing company within the meaning of the Companies Act, 1956 of 37 Jawaharlal Nehru Road, Kolkata, State of West Bengal, India.
The Respondent is BUY THIS NAME, of 19 Bondarenko Square, Obninsk, Kaluga, Russian Federation.
2. The Domain Name and Registrar
This dispute concerns the domain name identified below:
<itcthreadneedle.com> (the "Domain Name")
The registrar with whom the domain name is registered is:
Bulkregister.com, Baltimore, Maryland, United States of America.
The Domain Name was initially registered with the registrar in question on June 2, 2001.
3. Procedural History
A Complaint pursuant to the Uniform Domain Name Dispute Resolution Policy ("the Policy") and the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules") both of which are implemented by ICANN on October 24, 1999, was received by the WIPO Arbitration and Mediation Center ("the Center") in electronic format on January 3, 2002, and in hardcopy on January 9, 2002. Payment in the required amount to the Center has been made by the Complainant.
On January 8, 2002, a request for registrar verification was sent to the Registrar requesting confirmation that they had received a copy of the Complaint from the Complainant, that the Domain Name was currently registered with it and that the policy was in effect, and requesting full details of the holder of the Domain Name and advise as to the current status of the Domain Name.
Registrar verifications were received on January 14, 2002. An amended Complaint was received on January 22, 2002.
On January 24, 2002, the Administrative Proceeding began.
On February 19, 2002, notification of Respondent's default was received.
On February 26, 2002, Notification of Appointment of an Administrative Panelist and Projected Decision Date ("the appointment notification") was sent to the Complainant and the Respondent. In accordance with the Complainantís request, the appointment notification informed the parties that the administrative Panel would comprise of one Panelist, Clive Elliott.
4. Factual Background
ITC is the trading name, trademark (including service mark) and the corporate name of the Complainant. The word "ITC" is also the house mark of the Complainant.
The Complainant states that the domain name was coined by combining the trade names of the partners of the JV namely "itc" and "threadneedle" and the Respondent had no justification in adopting the Domain Name which has no connection with the Respondent. The Complainant notes that the registrant cannot even be identified by the name in which it is registered i.e. "BUY THIS NAME", although it is believed that the technical contact Charles Bukowski, is the owner of the website.
5. Partiesí Contentions
ITC is engaged in a wide range of products and services and its products and services are used in several countries besides the home country in India. Apart from its statutory rights in trademarks consisting of the name ITC in India and different other countries, the Complainant alleges, by virtue of exclusive and diverse use of the name it has gained substantial common law rights in the trade name/trademark ITC. It is asserted that the Complainant and its group companies have been extensively using the mark ITC as its trade name and leading feature of the trade mark/trade name and as such the trade mark consisting of the word ITC is always indicative of products/services originating from or associated with the Complainant and/or subsidiaries, affiliates, group companies or like. Further, it is said the trade name/trade mark ITC have been extensively used in relation to various business by the Complainant including its group companies and has thereby acquired distinctiveness and it is understood and associated by trade and consumer as business products and services of the Complainant.
The mark ITC is a prefix to several trademarks of the Complainants company and applications/registrations existing in India and abroad in respect of the said trade marks which are used/proposed to be used in respect of a wide range of products and services. Such trademarks include ITC LOGO, ITC LIQUITAINER, ITC PRESSURE PAK, ITC REAL GOLD, ITC ULTRA-FLO, ITC WUNDER-PAC, ITC CLASSIC, ITC CLASSIC MILDS, ITC CLUB, ITC HANDI TAP, ITC INDIAN HERITAGE, ITC LIFE STYLE, ITC LIQUI-BOX, I.T.C KITCHENS Copies of the Registration Certificates of registrations for the ITC logo (in label form) in Russia and United Arab Emirates, the marks "ITC Real Gold" in Malaysia, "ITC Classic" in Russia, Uzbekistan and Iran and "ITC Classic Milds" in Russia and Saudi Arabia, and the photocopies of applications pending have been supplied. Copies of applications for the various trademarks showing the trademark as well as the goods/services were also supplied.
The Complainant claims that it has been rated as one of the ten top companies in India. The Complainant is listed with 11 Stock Exchanges in India. The Global Depository Receipts of the Complainant are listed on the Luxembourg Stock Exchange.
The Complainant also has subsidiary companies in which the name ITC appears as the leading feature of their trading names and such subsidiary include ITC Hotels Limited, ITC Bhadrachalam Paper Board Limited, and ITC Infotech India Limited. The Complainant including its subsidiary companies have registered several domain names in which ITC forms a leading and distinctive part thereof. Such domain names include:
<itcbpl.com> (by ITC Bhadrachalam Paper Boards Ltd., which is a subsidiary of ITC Limited)
<itcinfotech.com> (by ITC Infotech India Limited, subsidiary of ITC Limited)
The Complainant states substantial amounts have been spent in the promotion of the products and services of the Complainant including products bearing the trademark ITC. Such promotion and advertisement has been carried out in various forms viz. newspapers, magazines, banners, hoardings, T.V. Satellite Channels, sponsorships. Details of the publicity and promotional expenses carried out by the Complainant during the year 1994-1995 to 1999-2000, were provided.
Sometime during November 1995, ITC Classic Finance Limited, a wholly owned subsidiary of the Complainant, in a joint venture with the Threadneedle group floated a Mutual Fund by the name of "ITC Threadneedle Mutual Fund". The joint venture partners also formed two companies ITC Threadneedle Asset Management Company Limited (managers to the mutual fund) and ITC Threadneedle Trustees Limited (trustees to the mutual fund). This mutual fund acquired considerable goodwill and also drew sustenance from the goodwill of the Complainant. However, subsequently in 1999, the Complainant made a policy decision to exit the financial sector and, therefore, exited the joint venture with Threadneedle.
The Complainant claims that even to date the<itcthreadneedle.com> continues to be listed in financial publication of web pages.
It is asserted that the trading name ITC Threadneedle of the JV at all times including at the present is recognised as an entity partnered by the Complainant and has always been associated with the Complainant due to the ITC name appearing therein.
The Complainant alleges that the Domain Name is currently offered for sale to such persons whose business interest would be served by acquiring the Domain Name. The bottom limit for any offer is set at $550 while the upper limit is open ended. The said amount of $550 is in excess of the out of pocket cost for the registration of a domain name. The Complainant asserts the Respondent has registered the Domain Name and is making offer for its sale soon after registration without having used the Domain Name for any bona fide purpose and other than loading with website under the Domain Name with pornographic material. The Complainant also claims the name of the registrant namely BUY THIS NAME is itself suggestive of its intention of selling the Domain Name.
The Complainant asserts that the Respondent has no connection with the Domain Name "itc threadneedle" or its components "itc" or "threadneedle" and the domain names or its components severally or in conjunction do not denote the Respondents trade or service.
No Response was received from the Respondent.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following:
- The Domain Name is identical or confusingly similar to the trademark in which the Complainant has rights; and
- The Respondent has no right or legitimate interest in respect of the Domain Name; and
- The Domain Name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy sets out four illustrative circumstances that, if proved, constitute evidence of bad faith as required by paragraph 4(a)(iii) referred to above.
Paragraph 4(c) of the Policy sets out three illustrative circumstances that, if proved, constitute evidence of a right or legitimate interest as described in paragraph 4(a)(ii) referred to above.
Domain Name Identical to or Confusingly Similar
It is clear from the evidence that ITC is a trademark in which the Complainant has rights, not just in India but in other areas. The Complainant appears to have traded extensively and has registered or applied for registration of the ITCTHREADNEEDLE trademark in at least India. There is also support for the assertion that ITC has substantial recognition and reputation internationally.
The Domain Name is clearly a combination of the name "Threadneedle" and the trademark and name ITC. It is on its face confusingly similar to the trademark and name itcthreadneedle as used now or before by the Complainant in the course of its business. On this basis it is found the trademark ITCTHREADNEEDLE is a protectable trademark to which the Domain Name is identical or confusingly similar and that this ground is made out.
No Right or Legitimate Interest
It is difficult to understand why the Respondent chose the Domain Name other than as a reference to itcthreadneedle or as a means to divert customers to its pornographic website. Nor can it be envisaged that itcthreadneedle has any meaning other than as an indication of origin of the Complainantís goods or services or partners or associates.
As indicated above, the Respondent states it put up the site <itcthreadneedle.com> as a satisfied user of the product ITC, and wishes to provide the ability for consumers who are interested in ITC to purchase it online. Satisfied customer or not this does not entitle the Respondent to use someone elseís property to achieve a particular purpose. The Domain Name has a clear meaning connecting it to the Complainant and the disclaimer (which states that <wwwitc.com> is not associated in any way with the domain name of <itc.com>) will not in the Panelís view be enough to displace the first and overwhelming impression that the Complainant is some how associated with the Respondentís site or its offering of goods.
Given the substantial exposure, registration and use of the trademark and name and the use of the name Threadneedle the Panel finds that there is no indication that the Respondent has any rights or legitimate interests in respect of the Domain Name as it has not used or prepared to use the Domain Name in connection with any bona fide offering of goods or services as contemplated under Paragraph 4(c)(i) of the Policy; nor that the Respondent is commonly known by the Domain Name as contemplated under Paragraph 4(c)(ii) of the Policy; nor that the Respondent 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 as contemplated under Paragraph 4(c)(iii) of the Policy.
As such it is found that this ground is made out.
Domain Name Registered and Being Used in Bad Faith
Given the substantial reputation and the undoubted goodwill in the trademark and name ITC and the association of the Complainant and for the reasons given above it is difficult to see how the Respondent can claim to have registered and used the Domain Name in good faith. Indeed the diversion of trade to its website suggests the Domain Name is being used for improper purposes which the Respondent has not sought to justify.
It is thus found that this ground is made out.
Therefore, and in consideration to the Complainantís compliance with the formal requirements for this domain dispute proceeding, to the factual evidence and legal contentions that were submitted, to the confirmation of the presence of each of the elements contemplated in Paragraph 4(a)(i)(ii), and (iii) of the Policy, and on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and other applicable rules and principles of law, as directed by paragraphs 14(a)and (b) and 15(a) of the Rules, it is found:
(1) that the Domain Name is confusingly similar to the Complainantís ITC Threadneedle trademark and name.
(2) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(3) that the Domain Name has been registered and is being used in bad faith by the Respondent.
Therefore, the Panel requires, pursuant to what is provided for under Paragraphs 3(c) and 4(i) of the Policy, that the Domain Name be transferred to the Complainant.
Clive L. Elliott
Dated: March 12, 2002