WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Express Publications (Madurai) Limited, Express Network Private Limited v. Vasavi Communications Ltd, Seenu

Case No. D2011-0150

1. The Parties

The Complainants are Express Publications (Madurai) Limited and Express Network Private Limited of Chennai, India, internally represented.

The Respondent is Vasavi Communications Ltd of Banjara Hills, Hyderabad, India.

2. The Domain Name and Registrar

The disputed domain name <andhraprabhaonline.com> is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 27, 2011. On January 27, 2011, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com a request for registrar verification in connection with the disputed domain name. On January 30, 2011, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com transmitted by email to the Center its verification response, confirming that the 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” or “UDRP”), 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 February 7, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was February 27, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 28, 2011.

The Center appointed Harini Narayanswamy as the sole panelist in this matter on March 10, 2011. 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

The Complainants are publishers of Indian daily newspapers and among other publications the Complainants publish the Telugu daily newspaper “Andhra Prabha”, “Aadivaram Andhra Prabha” (the Sunday Edition) and a weekly magazine called “Andhra Prabha Illustrated Weekly”. The news reports and articles published in these publications are hosted on its websites “www.andhraprabha.com” and “apweekly.com”. The Second Complainant Express Network Private Limited is the sister concern of the first Complainant Express Publications (Madurai) Limited and has been granted the license to use the websites owned by the first Complainant. The Complainants hosts websites for its other publications, these are “www.expressbuzz.com”, “www.dinamani.com”, “www.tamilanexpress.com”, “cinemaexpress.com” and “www.malayalamvarikha.com”.

The Respondent acquired proprietary rights to publish in print media, the Telugu newspapers “Andhra Prabha”, “Aadivaram Andhra Prabha” and the magazine “Andhra Prabha Illustrated Weekly” for the cities of Vijayawada, Vishakhapatnam and Hyderabad by an agreement with the first Complainant dated July 26, 2002. The Respondent paid an amount of Indian Rupees two hundred and sixty five lakhs to the first Complainant for acquiring the proprietary rights in the names “Andhra Prabha”, “Aadivaram Andhra Prabha” and “Andhra Prabha Illustrated Weekly” under the said agreement. The Respondent started publishing under the titles from January 2003 and registered the disputed domain name <andhraprabhaonline.com> on September 19, 2003.

5. Parties’ Contentions

A. Complainant

The Complainants contend that the Telugu daily newspaper “Andhra Prabha” was initially published in the year 1938 from Chennai and is presently published in other cities in India. The Complainants published the Telugu weekly magazine “Andhra Prabha Illustrated Weekly” from August 15, 1952. The Complainants state the website “www.andhraprabha.com” has an “enviable presence” in India since its inception in 1998 as it attracts a number of visitors. The Complainants provide the figures for the number of visitors per month to their website for the years 2008, 2009 and 2010, and figures for revenue earned from the advertisements published on their website from April 2007 to November 2010.

The Complainants claim exclusive rights in the mark ANDHRA PRABHA due to their use of the mark on their website “www.andhraprabha.com” from November 21, 1998 and their long, continuous use of the trademark since the year 1938. The Complainants have filed a certificate issued by the Registrar of Newspapers for India dated August 30, 1995 for its Hyderabad Center and a copy of a declaration filed before the Declaration Authority under the Press & Registration of Books Act for its Andhra Prabha, Hyderabad edition.

The Complainants state that the Respondent is in the business of entertainment, television channels, printing and publishing newspapers. The first Complainant entered into an agreement with the Respondent on July 26, 2002 to sell its proprietary rights as editor, proprietor and publishers of the papers “Andhra Prabha”, “Aadivaram Andhra Prabha” and the Telugu weekly magazine “Andhra Prabha Illustrated weekly”.

The verbatim copy of the relevant clauses of the agreement on which the Complainants base their case are reproduced here:

2) The assets and rights agreed to be conveyed include all the proprietary rights in all the three editions of the daily Andhra Prabha, Aadivaram Andhra Prabha and Andhra Prabha Illustrated Weekly, including copyright, tenancy rights, together with all fixtures, fittings, furniture, electric and electronic equipments including softwares and pre-press equipments as detailed in the annexures and all pending contracts including rights and obligations under such contract which employees/workmen, telecommunication department, newspaper distributors, subscribers to the publications and advertises or advertising agencies in respect of the above publications. It is made clear that the I PARTY (the first Complainant) agreed to transfer its proprietary right in respect of the aforesaid publications only in print media to the II PARTY (the Respondent).

3) The II PARTY (the Respondent) shall be entitled to the right for the exclusive use of the titles “Andhra Prabha”, “Aadivaram Andhra Prabha” and “Andhra Prabha Illustrated Weekly” on its dailies, weeklies, journals, books and other publications.

As per clause 3 of the agreement, the Respondent would be entitled to the exclusive use of the titles in dailies, weeklies, journals, books and other publications, which as per clause 2 would be limited to print media only. The Complainants state a second agreement was entered into between the parties on January 9, 2003 for sharing news, whereby news gathered by one party would be made available to the other party for a mutually agreed period of three years. This arrangement of exchanging news, according to the Complainants, continued till July 2008 although the agreement had expired in 2006 and there was no written renewal of the agreement. The Complainants claim that the Respondent was therefore aware that the Complainants had the rights to publish news items on its website “www.andhraprabha.com” and that they had retained the rights to publish news items under the ANDHRA PRABHA mark in media other than print media subsequent to the transfer of proprietary rights to the Respondent.

The Complainants state that a letter dated July 25, 2008 was sent by a sister concern of the Respondent, Andhra Prabha Publications Limited, to the Complainants stating that it had developed a website, which would be operational from August 1, 2008, and that the Respondent would not be able to provide the Complainants with news from August 1, 2008 onwards due to the creation of the Respondent’s own website. The Complainants state that they came to know that the said website was being hosted by the Respondent at the domain name <andhraprabha.in>.

The first Complainant then issued a legal notice dated July 31, 2008 calling upon the Respondent and its sister concern to desist using the name ANDHRA PRABHA or any variation thereof in any media other than print media. The Respondent sent a reply dated December 27, 2008, conceding that the agreement of July 26, 2002 restricted the Respondent’s rights to print media, but contended that such a restriction was bad in law and hence void. The Respondent also contended that the term of the second agreement of January 9, 2003 was only a news sharing agreement. The Complainants claim that the January 9, 2003 agreement was not an agreement for transfer of proprietary rights and was only for a period of three years, and since the news sharing agreement had expired it was not binding on either party. The Complainants also allege that the letter dated July 25, 2008 is evidence that the news sharing arrangement between the parties continued till 2008.

The Complainants state that they raised a dispute before the .IN Registry for the transfer of the domain name <andhraprabha.in> and obtained a favorable order of transfer dated March 3, 2010. The Complainants allege that subsequent to the .IN Registry award, the Respondent started using the disputed domain name and started updating the website linked to disputed domain name on a daily basis.

The Complainants claim the Respondent’s registration and use of the disputed domain name is in violation of the terms and conditions of the July 26, 2002 agreement as it registered the disputed domain name in bad faith for purposes of trafficking. The Complainants argue that a domain name is part of the online identity of an entity and functions as a trademark on the Internet, therefore the use of the trademark ANDHRA PRABHA by the Respondent causes confusion, deception and dilution of their trademark, prejudicing public as it was registered with mala fide intention of capitalizing on the goodwill associated with the Complainants’ trademark. The Complainants therefore request for transfer of the disputed domain name due to irreparable damage and injury caused to its reputation, business and goodwill.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

The present dispute is essentially based on the terms and conditions of the July 26, 2002 agreement between the parties. The dispute revolves around the limited use transfer of proprietary rights in the names “Andhra Prabha”, “Aadivaram Andhra Prabha” and “Andhra Prabha Illustrated Weekly” from the Complainants to the Respondent for the editions published in cities of Vijayawada, Vishakhapatnam and Hyderabad and the said rights being confined to print media only.

The Panel finds there are some ambiguities in the Complainants’ submissions and in the agreements entered into by the parties. This lack of clarity in the documents and submissions raise some unanswered questions:

First, the Respondent has been publishing under the name “Andhra Prabha” since January 2003 and by the Complainants’ own admissions the Respondent has clearly paid valuable consideration for acquiring exclusive rights to publish under the name “Andhra Prabha” and has been using the name for publications with valid rights in print media. If the Complainants were indeed concerned about dilution of their mark they should not have entered into such an agreement or transferred exclusive rights to the Respondent in the first place. The Panel is not convinced that the Respondent’s publishing on the Internet alone can cause dilution, injury or damage to the Complainants’ mark when the Complainants have already authorized the same publications in print media.

Second, there is the Complainants’ long silence after the registration of the disputed domain name. For a period of nearly eight years, from the time the disputed domain name was registered in 2003 till the present dispute in 2011 there was no objection from the Complainants. It appears that the Complainants choose to keep silent about the disputed domain name when the parties were in good terms and have now chosen to raise the present dispute. What were the reasons for the Complainants’ silence and not objecting when the Respondent registered the disputed domain name initially in 2003?

Third, the July 26, 2002 agreement does not talk of transfer of trademark rights in particular, although the agreement specifically mentions copyright, it is silent about trademark rights.

Given these ambiguities in the July 26, 2002 agreement and the Complainants’ submission, it is the Panel’s view that the rights of the parties can be determined only by a detailed finding of facts as to the true intentions of the parties at the time of entering into the agreement. Such a finding can be done through a court proceeding with hearings to discover the true intent of the parties to the dispute. Further under clause 12 of the July 26, 2002 agreement, the parties have agreed that Courts of Law at Chennai have jurisdiction over any disputes arising from the terms and conditions of the agreement.

Clause 12 of the agreement dated July 26, 2002 provides:

“It is expressly agreed that all claims and disputes arising out of the terms and conditions hereof are to be settled and paid in Chennai and the Courts of Law at Chennai shall have jurisdiction in respect of any claims and disputes between the parties arising from the performance or non-performance, terms and conditions of this Agreement.”

As discussed the dispute is essentially regarding the performance and the terms and conditions of the July 26, 2002 agreement, and to that extent the Courts of Law at Chennai has jurisdiction over the dispute concerning the terms and conditions of the agreement.

As far as the present domain name dispute, the Panel makes the following findings under the Policy, based on the submissions of the Complainants and the material on record.

To obtain the remedy of transfer of the disputed domain name, the Policy states that the Complainants have to establish three elements under paragraph 4(a).

(i) The disputed domain name is identical or confusingly similar to a mark in which the Complainants have rights; and

(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) The disputed domain name was registered and is being used in bad faith by the Respondent.

A. Identical or Confusingly Similar

The first element under paragraph 4(a) of the Policy requires the Complainants to prove that the disputed domain name is identical or confusingly similar to a mark in which they have rights.

The Complainants claim exclusive trademark rights in ANDHRA PRABHA by virtue of its long and continuous use since the year of its inception in 1938 and its use of its services in commerce via, inter alia, the website “www.andhraprabha.com” that has been operational since November 21, 1998. Although the Complainants have not filed any trademark registration certificate the Panel finds the Complainants have provided figures that show the number of visitors their website receives per month for the three years 2008, 2009 and 2010 and figures of the revenue earned from advertisements published on their website from April 2007 to November 2010. The Complainants have also filed a certificate issued by the Registrar of Newspapers for India dated August 30 1995 for its Hyderabad Center and a copy of a declaration filed before the Declaration Authority under the Press & Registration of Books Act in respect of Andhra Prabha, Hyderabad edition. The Panel finds the material filed by the Complainants supports a finding of unregistered trademark rights in favor the Complainants’ ANDHRA PRABHA mark.

Regarding the question whether the disputed domain name is confusingly similar to a mark in which the Complainants have rights, the Panel answers this question affirmatively. The distinctive portion of the disputed domain name consists of the trademark ANDHRA PRABHA. The generic term “online” that is used in conjunction with the trademark does not decrease the confusing similarity with the trademark. See MasterCard International Incorporated v. Banu Asum Kilich, WIPO Case No. D2009-1525. (Use of the term “online” with the trademark does not lessen the confusing similarity with the trademark.)

Based on the material the Panel finds the Complainants have rights in the term ANDHRA PRABHA and the disputed domain name is confusingly similar to the mark in which the Complainants have rights.

B. Rights or Legitimate Interests

The second element under paragraph 4(a) of the Policy requires the Complainants to make a prima facie case that the Respondent lacks rights and legitimate interest in the disputed domain name.

The Complainants assert the Respondent has no rights or legitimate interests in the disputed domain name, as the Respondent has not been given any authorization to use their trademark for electronic medium and is only confined to print medium. Under paragraph 4(c) of the Policy the Respondent can demonstrate rights or legitimate interests in the disputed domain name if the Respondent can establish that:

(i) The Respondent has used or made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services;

(ii) The Respondent has been commonly known by the disputed domain name;

(iii) The Respondent is making legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers or tarnish the trademark of the Complainants.

The Policy provides that paragraph 4(c) is not an exhaustive listing. A respondent can establish rights by showing any aspect mentioned under paragraph 4(c) or put forward submissions other than those mentioned in paragraph 4(c) to establish rights in the domain name. The Respondent in the present dispute has not responded in these proceedings and has not provided any material to show rights in the disputed domain name.

The Panel finds the facts and circumstances in the present case show the first Complainant entered into agreement with the Respondent on July 26, 2002 transferring proprietary rights as editor, proprietor and publishers of the paper “Andhra Prabha”, “Aadivaram Andhra Prabha” and the Telugu weekly magazine “Andhra Prabha Illustrated Weekly” only for print media. The Complainants claim that although the first Complainant transferred all proprietary rights to the Respondent for the three publications, it retained the rights with respect to television and Internet. The Panel finds there is nothing in the agreement that specifically mentions that the Respondent has rights to register a domain name using the Complainants’ mark for Internet publication. Further, clause two of the agreement categorically states the Respondent’s rights are limited to the print media only.

The material on record clearly shows the Respondent has not been granted rights to use the trademark for electronic publishing and therefore the Respondent’s use of the trademark in the disputed domain name under the circumstances of the case cannot be termed a bona fide offering of goods or services. The agreement between the parties specifically mentions that the Respondent has right only to the extent of print media. In the absence of any submissions from the Respondent to show that its has been granted rights to use the mark in electronic media, the Panel finds the Respondent lacks rights or legitimate interests in the disputed domain name.

For the reasons discussed the Panel is satisfied that the Complainants have made a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

The third element under paragraph 4(a) of the Policy requires the Complainants to prove that the disputed domain name has been registered and used in bad faith.

The Complainants have argued that the Respondent has registered the disputed domain name for the goodwill associated with their mark and with mala fide intentions to create confusion among the public. The facts however, do not support a conclusion that the Respondent is deliberately attempting to create confusion or to derive mileage from the Complainants’ goodwill. First, because the Responded has legally acquired (albeit explicitly limited) proprietary rights and the title to the use of the name “Andhra Prabha” in print media from the first Complainant and in addition the Respondent has sent a letter to the Complainants of its intentions to publish a website for its edition of the newspapers and magazine for which it had obtained rights to publish in print.

The agreement dated July 26, 2002 is completely silent about the trademark and domain name rights of the parties and only talks about transfer of other proprietary rights to the Respondent. The Respondent registered the disputed domain name knowingly fully well that the agreement with the first Complainant allowed the Respondent limited rights to only publish in print medium and therefore the Respondent’s registration and use of the disputed domain name beyond the scope of the said agreement with the trademark owner constitutes evidence of bad faith registration and bad faith use of the disputed domain name.

Paragraph 4 (a) (iii) of the Policy requires the Complainants to show that the disputed domain name is registered and used in bad faith. Paragraph 4 (b) provides a list of circumstances, which if found present, are indicative of bad faith registration and use of the domain name. Paragraph 4 (b) of the Policy does not however provide an exhaustive listing and the Panel can find bad faith registration and use in circumstances others than those mentioned in paragraph 4 (b) of the Policy.

Under the circumstances of the case, the Panel is convinced that the Respondent had registered and used the disputed domain name in bad faith as the Respondent has not been given rights or authorization under the agreement dated July 26, 2002, to use the Complainants’ trademark in electronic media.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <andhraprabhaonline.com> be transferred to the Complainants.

Harini Narayanswamy
Sole Panelist
Dated: March 24, 2011