WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
TV Sundram Iyengar and Sons Private Limited v. Media Society
Case No. D2017-1749
1. The Parties
The Complainant is TV Sundram Iyengar and Sons Private Limited of Madurai, India, represented by DePenning & DePenning, India.
The Respondent is Media Society of Los Angeles, California, United States of America ("United States"), represented by Perkins Coie, LLP, United States.
2. The Domain Name and Registrar
The disputed domain name <mytvs.com> is registered with Moniker Online Services, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 12, 2017. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 13, 2017, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent's 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 15, 2017. In accordance with the Rules, paragraph 5, the due date for Response was October 5, 2017. At the Respondent's request, the due date for Response was extended to October 9, 2017. The Response was filed with the Center on October 9, 2017.
The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on October 18, 2017. 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 factual background of the Complainant is summarised from the Complaint.
The name of TVS Group, of which the Complainant is the holding company, is derived from the name of its founder Thirukkurungudi Vengadam Sundram Iyengar. The Complainant was established in 1911, and is a distributor of a wide range of vehicles and associated goods and services including commercial vehicles, multi-utility and sports utility vehicles, three-wheelers and cars. It is a distributor for Honda, Renault, Ashok Leyland, Mahindra & Mahindra, Daimler Chrysler and Volkswagen, and partners with international brands including Datsun, Michelin, Bosch, Nissan and 3M. The Complainant has three main divisions: TVS & Sons, Sundram Motors, and Madras Auto Service. The group is international and includes more than thirty companies, most of them including the initials TVS, such as TVS America Inc., Lucas-TVS Limited and TVS Auto Serv GMBH, Germany. The group's annual turnover is over USD 4 billion. It has had a significant presence in the United States since 2001.
The Complainant holds numerous trademarks of which the following are representative for the purposes of this proceeding:
European Union Trademark Registration TVS (stylised), registered November 27, 2012, registration number EU010929123, classes 7, 9, 11, 12, 16, 35, 39, 42, registered in the name of TVS Logistics Investment UK Limited;
Indian Trademark Registration TVS (design), registered August 21, 1974, registration number 298601, class 6, registered in the name of Sundram Fasteners Limited;
Indian Trademark Registration TVS (design), registered January 30, 1997, registration number 736638, class 12, registered in the name of Sundram Fasteners Limited;
Indian Trademark Registration TVS (design), registered April 3, 1948, registration number 109706, class 11, registered in the name of TV Sundram Iyenger and Sons Limited, changed September 14, 1959 to TV Sundram Iyengar and Sons Private Ltd;
Indian Trademark Registration MYTVS (design), registered August 25, 2008, registration number 1724541, classes 36, 37, registered in the name of TV Sundram Iyengar and Sons Limited.
The Complainant holds 15 domain names that all commence with the initials "tvs", ranging in date of registration from <tvsmotor.co.in>, registered on October 3, 2003, to <tvsgroup.in> registered on April 9, 2015, and also holds the domain name <mytvs.in> registered on February 16, 2005.
The factual background of the Respondent is summarised from the Response.
The Respondent is in the entertainment business, in which it takes the role of facilitating efficient finance, production and distribution of high-quality entertainment.
The Respondent holds or has held the following trademarks:
United States Trademark Registration MYTVS, applied for November 24, 2004, registered March 7, 2006, registration number 3064878, class 41, in the names of two individuals giving an address in New York. The documentation records first use as December 2002 and first use in commerce as February 2003. Cancelled by USPTO on October 12, 2012 because registrants did not file an acceptable declaration;
Autralian Trademark Registration MY TV STUDIO, registered October 28, 2015, classes 35, 36, 41, 42, in the name of the Respondent;
European Union Trademark Registration MY TV STUDIO, registered May 17, 2016, registration number 014442297, classes 35, 36, 41, 42, in the name of the Respondent;
United States Trademark Application MY TV STUDIO, applied for March 6, 2015, serial number 86556054, classes 35, 36, 41, 42, pending, referenced as convention priority in other trademark applications worlwide.
The disputed domain name was registered on October 15, 2003. The disputed domain name resolves to pay-per-click links.
5. Parties' Contentions
The Complainant's extensive contentions include the following.
The Complainant contends that it has rights in the trademarks TVS and MYTVS and has produced copies of documentation in respect of the trademarks listed in section 4 above.
The Complainant contends that the disputed domain name is confusingly similar to its trademarks.
The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name and has not been authorised to use the Complainant's trademarks. The disputed domain name is identical to the Complainant's trademark TVS. The Complainant says it began using the brand name "MYTVS" for aspects of its car service business as early as 2003. The Respondent would have been aware of the Complainant's trademark when registering the disputed domain name. Documentation is submitted to establish the Complainant's presence in the United States in 2001 and in Europe in 1997. The Respondent has not been commonly known by the disputed domain name. The disputed domain name resolves to an Internet location with numerous pay per click links including to old cars and automotive repairs.
The Complainant further contends that the disputed domain name was registered and is being used in bad faith. The Respondent has copied the Complainant's distinctive trademark TVS without disclaimer and in order to cause confusion with the Complainant. The Respondent's conduct amounts to passing off with intent to commit fraud and to collect revenue from pay-per-click advertising.
The Complainant says the disputed domain name does not resolve to any active website, and that the passive holding of a domain name has been held to constitute use in bad faith. Furthermore, according to precedent, the very use of a domain name by someone having no connection with a relevant complainant suggests opportunistic bad faith. It is submitted that domain names are corporate assets of such importance that unscrupulous individuals should not be allowed to benefit by using the well-known trademarks and domain names of others.
The Complainant has cited certain previous decisions under the Policy that it considers should support its position.
The Complainant requests the transfer of the disputed domain name.
The Respondent denies the Complainant. The Respondent's extensive contentions include the following.
The Respondent says the disputed domain name was registered in connection with its MYTVS trademark, which was for "entertainment services, namely, live performances by a music group". The Respondent has appended copies of specimens accepted by the United States Patent and Trademark Office ("USPTO") in demonstration of the original use of the trademark for entertainment and performing arts services. The specimens include reference to a homepage for a website "www.mytvs.net", and 9 other pictorial pages including show dates, flyers, promotional materials and T-shirts, all prominently featuring MYTVS.
The Respondent says that since its MYTVS trademark registration lapsed in October 2012, it has contemplated using the residual goodwill that it enjoys in the trademark in connection with entertainment services branded as "My TV Studio", abbreviated to "mytvs". The Respondent says it filed trademark applications in 2015 for MY TV STUDIO in Australia, Brazil, the European Union, Hong Kong (China), India, Japan, the Russian Federation, the Republic of Korea, United Arab Emirates, and the United States, and has since obtained MY TV STUDIO trademark registrations in Australia, the European Union and the Republic of Korea.
The Respondent says the disputed domain name is not and has never been for sale.
The Respondent denies that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. The Respondent disputes that either of the Complainant's trademarks TVS or MYTVS had the status of being well known before the Respondent started using the disputed domain name or the MYTVS trademark for entertainment services in 2003.
The Respondent says its trademark MYTVS, registered at the USPTO between November 12, 2004 and October 12, 2012, predates the Complainant's registration of the trademark MYTVS in India, applied for on August 25, 2008 and registered on March 17, 2011. The Respondent claims legitimate interests in the disputed domain name through its trademark applications and registrations for MY TV STUDIO, which has the acronym MYTVS.
The Respondent says the Complainant did not oppose the Respondent's MYTVS trademark registration, its MY TV STUDIO trademark registrations or applications, or the disputed domain name prior to making the Complaint. The Respondent says, referring to precedent and with further argument, that the Complainant's delay in bringing the Complaint shows the weakness of the Complaint and shows legitimate use of the disputed domain name by the Respondent.
The Respondent says that while it continues preparing to use the disputed domain name, it is within its right to let the registrar provide general information, in the form of links, on the site to which it resolves. Goods and services related to cars are merely among the general links provided and consumers are unlikely to associate the page with Complainant's services.
The Respondent denies that the disputed domain name has been registered and is being used in bad faith. The Respondent has not copied the Complainant's trademark MYTVS because the Respondent registered the trademark first, on November 12, 2004, and the disputed domain name was acquired by the Respondent in 2003. The Complainant has not provided sufficient evidence of any right in the trademark MYTVS prior to the Respondent.
The Respondent submits that the Complainant's delay of about 14 years in bringing this Complaint or challenging the Respondent's MYTVS trademark registration suggest a lack of bad faith on the part of the Respondent.
The Respondent denies that the disputed domain name was acquired primarily for the purpose of selling, renting, or otherwise transferring to anyone and says its goods and services are different from the Complainant's. The disputed domain name was not registered in order to prevent Complainant from reflecting its trademark in a corresponding domain name and there is no evidence to suggest that the Respondent has ever engaged in a pattern of such conduct. The Complainant, in the vehicle industry, and the Respondent, in the entertainment industry are not competitors, and the disputed domain name was not registered primarily to disrupt the Complainant's business. The disputed domain name was not registered for commercial gain but in connection with the Respondent's MYTVS trademark prior to the Complainant's claim to its own MYTVS trademark. The disputed domain name resolves to a landing page that visitors are unlikely to believe has the Complainant's endorsement.
The Respondent has cited certain previous decisions under the Policy that it considers should support its position.
6. Discussion and Findings
Paragraph 4(a) of the Policy states that the Respondent is required to submit to a mandatory administrative proceeding in the event that the Complainant asserts to the applicable dispute resolution provider, in compliance with the Rules, that:
"(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith".
The Complainant has made the relevant assertions as required by the Policy. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute.
A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy is expressed in the present tense and requires that the Complainant has rights in a trademark or service mark ("trademark"). The Panel is satisfied by the documentary evidence produced that the Complainant has rights in the trademarks TVS and MYTVS.
The determination of confusing similarity relies mainly upon a comparison of the Complainant's trademark with the disputed domain name. The generic Top-Level Domain ("gTLD") ".com" may usually be disregarded in the determination of confusing similarity. On the evidence, the disputed domain name is found to be identical to the Complainant's trademark MYTVS and to contain recognisably the Complainant's trademark TVS. Accordingly, the Panel finds for the Complainant under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant has asserted prima facie that the Respondent does not have any rights or legitimate interests in the disputed domain name, and has not been authorised to use the Complainant's trademarks.
Paragraph 4(c) of the Policy provides for the Respondent to contest the Complainant's prima facie case under paragraph 4(a)(ii) of the Policy and to establish rights or legitimate interests in a disputed domain name by demonstrating:
"(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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 provisions of paragraph 4(c) of the Policy are, however, without limitation, and the Respondent may seek to establish rights or legitimate interests in the disputed domain name alternatively. The Respondent's claim of rights or legitimate interests is in effect founded partly on a claim of priority and of the disputed domain name having been registered legitimately and without any impediment under the Policy. The Panel has examined all of the detailed evidence produced by both the Complainant and the Respondent and has determined that, in the particular circumstances of this dispute, it will be appropriate to move forward to a consideration of the matter under paragraph 4(a)(iii) of the Policy, i.e., whether the disputed domain name was registered and is being used in bad faith. A finding under paragraph 4(a)(ii) of the Policy will not be necessary.
C. Registered and Used in Bad Faith
The Complainant must prove under paragraph 4(a)(iii) of the Policy that the disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy lists four alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:
"(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 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 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 web site or other on-line location, by creating a likelihood of confusion with the complainant's 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".
The provisions of paragraph 4(b) of the Policy are also without limitation.
According to the WhoIs, the registration date of the disputed domain name was October 15, 2003. The Respondent is listed as the registrant and there is no evidence that the Respondent was not the original registrant. The Complainant's evidence shows that its trademark MYTVS was filed on August 25, 2008 in India.
The requirement for the Complainant to prove under paragraph 4(a)(iii) of the Policy that the disputed domain name "has been registered and is being used in bad faith" in interpreted by the Panel as requiring both registration and use to have been in bad faith. Registration is a single act at an instant in time, as distinct from use, which is continuous and may change. The Panel will consider the act of registration.
In general, "where a respondent registers a domain name before the complainant's trademark rights accrue, panels will not normally find bad faith on the part of the respondent" (section 3.8, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0")). Absent extraordinary circumstances, the Respondent could not reasonably have anticipated that the Complainant would file a trademark application identical to the disputed domain name more than 5 years later. There could be an exception to this principle, however, if it were to be proven, on the balance of probabilities, that the Respondent indeed had reason, such as inside information, to predict the future creation of the relevant trademark.
No evidence has been advanced to suggest that the Respondent could have anticipated the Complainant's registration of the trademark MYTVS some years later. The Complainant says it had launched its "customer centric car service business under brand name 'MYTVS' as early as 2003", but has produced no evidence of this. The Complainant says, "The Complainant's internet presence can be dated back to 2003. Therefore, the consumers from all over the world were able to access the TVS/ MYTVS and other such domain names for over a decade". That does not amount to a claim by the Complainant to have been using a domain name containing the trademark MYTVS since 2003. The Complainant's sole domain name containing MYTVS, namely <mytvs.in>, was not registered until February 16, 2005.
The Complainant asserts that its trademark TVS is of long standing and has produced a registration document dated 1948. An alternative scenario to be considered therefore is that the Respondent registered the disputed domain name with intent to comprise the Complainant's trademark TVS, prefixed "my", which is a common prefix in domain names, including abusive domain names. Any such scenario would presuppose that the Respondent knew of and targeted the Complainant's trademark intentionally in bad faith.
The Panel cannot find any persuasive evidence of the Respondent's nefarious intent in this respect. All the evidence points to the Respondent having been focused throughout on music and entertainment. The Respondent has omitted to establish a direct connection with the lapsed United States Trademark Registration No. 3064878 that it describes as "Respondent's MYTVS trademark", but which was registered in other names, beyond the signed certification under paragraph 5(b)(viii) of the Rules that "the information contained in this Response is to the best of the Respondent's knowledge complete and accurate". The omission may be inconsequential to this proceeding, because the Policy concerns conflicts between trademarks and domain names, not between trademarks. The Respondent has however produced a number of pages of specimen material it says were accepted by the USPTO as supporting original use of its MYTVS trademark, including 35 small prints of performance flyers, pictures of modelled male and female T-shirts or proposed T-shirts displaying a television screen, raster and prominent "mytvs" motif, advertisements, and a list of some show dates. The items within the specimen material project an appearance of being genuine, contemporaneous, substantial, and consistent with the stated trademark category "entertainment services, namely, live performances by a music group". This material is accepted as showing at least the existence of the music group MYTVS. The Respondent has also submitted evidence of registered trademarks for MY STUDIO TV in Australia, European Union and in the United States as evidence of its activity in the entertainment industry.
Gaps exist in both the Complainant's and the Respondent's evidence. The onus of proof nevertheless remains firmly with the Complainant. On the totality of the evidence presented, the Panel finds it more probable than not that the Respondent, in settling on a brand name for its live music performances, chose the theme of TV and arrived at the name "mytvs" directly by that route. The concept of constructive notice of a trademark, particularly "a short combination of letters" (section 3.2.2, WIPO Overview 3.0), is adopted only reluctantly under the Policy. The Panel finds an inherently low probability that the Respondent would have been aware of the Complainant or of the Complainant's filing of documents for incorporation of TVS International, Inc., in Michigan, United States (being the Respondent's country of domicile) on January 9, 2001, or of a filing for TVS Automotive Europe Limited (later Unipart TVS Limited) in the United Kingdom in 1997. No evidence causes the Panel to consider it at all likely that the Respondent, as a music group, was in any way influenced by, or had any prior knowledge of, the Complainant's presence in the vehicle trade under the trademark TVS, or that the Respondent's music group name would realistically have been derived through knowledge of that trademark.
In relation to paragraphs 4(b)(i) - (iii) of the Policy, which refer to registration, the Panel finds no evidence that has come to light in the past 14 years to suggest that the Respondent had intended to offer for sale the disputed domain name to anyone; has engaged in a pattern of preventing trademark owners from reflecting their trademarks in corresponding domain names; had intended to disrupt the Complainant's or anyone's business; or that the disputed domain name was otherwise registered in bad faith.
Paragraph 4(a)(iii) of the Policy is interpreted in the conjunctive, i.e., as requiring proof that a disputed domain name has been registered in bad faith and used in bad faith. The Panel finds on the evidence that the Complainant has not fulfilled its burden of proving, on the balance of probabilities, that the disputed domain name, was registered in bad faith. Accordingly the Complainant cannot succeed under paragraph 4(a)(iii) of the Policy and the Panel's decision is for the Respondent.
For the foregoing reasons, the Complaint is denied.
Dr. Clive N.A. Trotman
Date: October 25, 2017