WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Sai Machine Tools Private Limited v. Sudhir Jaiswal, Shree Sai Extrusion Technik Pvt. Ltd.

Case No. D2018-2561

1. The Parties

The Complainant is Sai Machine Tools Private Limited of Indore, India, represented by Anand & Anand, India.

The Respondent is Sudhir Jaiswal, Shree Sai Extrusion Technik Pvt. Ltd. of Indore, India, represented by Trade & Corporate Jurists, India.

2. The Domain Name and Registrar

The disputed domain name <shreesaiextrusion.com> is registered with Tucows Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 8, 2018. On November 9, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 9, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 16, 2018 providing the registrant and contact information disclosed by the Registrar and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on November 19, 2018.

The Center verified that the Complaint together with the amended 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 November 22, 2018. In accordance with the Rules, paragraph 5, the due date for Response was December 12, 2018. The Response was filed with the Center on December 12, 2018.

The Center appointed Harini Narayanswamy as the sole panelist in this matter on December 18, 2018. 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 Complainant is a manufacturer of plastic processing machinery and owns the trademarks SAI MACHINE TOOLS and SAI EXTRUSION. The Complainant has several registered trademarks for the mark SAI EXTRUSION TECHNIKS and its variants, including Indian trademark certificate No. 909195 for SAI EXTRUSION TECHNIK, issued January 18, 2011. The Complainant operates websites from the domain name <saimachinetools.com> registered on October 30, 2009 and the domain name <saiextrusiontechnik.com>, registered on June 20, 2012.

The named Respondent is Sudhir Jaiswal, a director of Shree Sai Extrusion Technik Pvt. Ltd and a partner of the partnership firm M/s Shree Sai Extrusion Technik. (In the Response, the Respondent has however identified itself as “Shree Sai Extrusion Technik Pvt. Ltd.”) The Respondent registered the disputed domain name <shreesaiextrusion.com> in 2014. The website resolving to the disputed domain name displays content pertaining to the Respondent’s business, which shows that it is a manufacturer of plastic processing machines. The Respondent has filed a trademark application for the mark SHREE SAI EXTRUSION TECHNIK in 2015, which is pending and has been opposed by the Complainant.

5. Parties’ Contentions

A. Complainant

The Complainant states that it commenced its operations in 1988 and has grown to become the largest manufacturer of plastic processing machinery in central India. The Complainant claims that its trademarks SAI MACHINE TOOLS, SAI EXTRUSION TECHNIK, and its variant mark SAI EXTRUSION have a significant reputation in India and globally. The Complainant states that through innovation, research, and development it has pioneered and developed products such as India’s “Flat Dripper Type Drip Irrigation Tube Extrusion Line”, for which it has valuable goodwill. The Complainant states that goodwill and reputation is due to the superior quality of its products.

The Complainant adds that it is accredited with the ISO 9001:2008 certification and has won the “National Award-2007 for Outstanding Entrepreneurship Efforts” and “National Award 2007 for Research and Development Efforts” and the “National Award 2009 for Quality Products in Micro and Small Enterprises (Plastic Processing Machinery)”. The Complainant has also received the “Arch of Europe” for quality and technology by Business Initiative Direction, Spain and the Rastriya Vikas Ratna Award from FSOI. The Complainant has filed figures of promotional expenditure from 2007 until 2018 and figures for promotions through exhibitions from 2013 to 2018. The Complainant states it has used its trademarks from 1988 and due to its distinctive nature and its pioneering activities, the mark SAI EXTRUSION TECHNIK has been associated with the Complainant exclusively. The Complainant states it has a significant online presence, including on social media such as Facebook, YouTube, Twitter and LinkedIn.

The Complainant states the disputed domain name and the website to which it resolves, contain the mark SAI EXTRUSION TECHNIK, in which it has overwhelming statutory rights as the registered proprietor of the mark in various classes and for which the Complainant also has common law rights due to its long, continuous and uninterrupted use. The Complainant states that the Respondent has no rights or legitimate interests to use of the name SAI EXTRUSION TECHNIK, which is used in a malafide attempt to ride upon the reputation and well-established name of the Complainant. The Complainant argues the disputed domain name has been registered and is being used in bad faith and requests for transfer of the disputed domain name.

B. Respondent

The Respondent states it is a private limited company and the directors of the both the Respondent and the Complainant companies are from the same family. The Respondent states that due to differences they parted ways, and since then, the Complainant has been trying to disrupt the Respondent’s business which includes the registration of the trademark SAI EXTRUSION TECHNIK. The Respondent denies the Complainant’s claim that the mark is a well-known mark and further argues that the Complainant has been using the marks SAI MACHINE TOOLS and SMT and not the mark SAI EXTRUSION TECHNIK.

The Respondent argues that the evidence of promotional advertisement expenses given by the Complainant pertain to its main mark SAI MACHINE TOOLS and not to SAI EXTRUSION TECHNIK. The Respondent argues the Complainant has made contradictory statements such as claiming use of the mark from 1988 but providing use details only from the year 2007. Further, the Complainant has given use details from March 16, 2009 for the mark “saiextrusiontechnik.com”, when the said domain name itself has been registered only on June 20, 2012. The Respondent pleads delay and laches in bringing the Complaint and argues that the Complainant had knowledge about the disputed domain name which was registered in 2012.

The Respondent claims prior use and superior rights in the mark SHREE SAI EXTRUSION TECHNIK and claims its use from 2005 and disputes the Complainant’s rights in the mark. The Respondent has submitted government documents as evidence of its prior use: (a) Registration Certificate under Central Sales Tax dated July 18, 2005, (b) License from Indore Municipal Corporation dated July 7, 2005, and (c) Trademark application filed in 2015 showing use of SHREE SAI EXTRUSION TECHNIK from July 20, 2005. The Respondent argues that rights of prior user are not affected by a later registration of a mark and cites Section 34 of the Trademark Act of 1999 and the cases S.Syed Mohideen v. P.Sulochana Bai 2015 (2) RCR (Civil) 810 and Neon Laboratories Ltd. v. Medical Technologies Ltd. & Ors’, 2015 (64) PTC 225 (SC) (holding that prior user rights are superior to a subsequent trademark registered proprietor).

The Respondent has submitted that its partnership firm in the name M/s Shree Sai Extrusion Technik commenced in the year 2005 and is currently existing and doing business. The Respondent argues that its business has been commonly known by the disputed domain name and has been operating under the name for about thirteen years and has obtained goodwill by delivering quality products. The Respondent has filed documents showing (1) Year-wise turnover for the Partnership firm and the Respondent company, (2) Copy of auditor report with Balance Sheet and Profit & Loss Accounts for the year 2005-06, (3) Copy of Income Tax intimation, assessment year 2006-07. The Respondent states that the disputed domain name was registered in 2012 which is identical to its name and is listed on various Business to Business (B2B) websites like India Mart and “tradeindia.com” for generating income and has submitted evidence of such use and adds that it has spent INR 35,00,000 since its incorporation to promote the disputed domain name.

The Respondent argues there is no bad faith on its part because it is a prior user and the disputed domain name reflects its own name. The Respondent denies having any “specific” knowledge that the Complainant was using the mark SAI EXTRUSION TECHNIK and states the Complainant is famous for its mark SAI MACHINE TOOLS / SMT, and states that the Complainant has not provided any evidence of the Respondent’s knowledge. The Respondent alleges that the Complainant ought to have known about the Respondent’s use of SHREE SAI EXTRUSION TECHNIK since 2005, as the Parties have their businesses in the same industrial area and are from the same family. The Respondent adds it is earning a livelihood through the disputed domain name and is commonly known by the name and is not exploiting the Complainant’s mark. The Respondent claims that the present Complaint has been brought in bad faith and is a case of Reverse Domain Name Hijacking (“RDNH”). The Respondent states that the Complainant has knowledge of the Respondent’s use of the mark and has opposed the Respondent’s trademark application two years back and yet has delayed in bringing the present Complaint and requests for the Complaint to be denied.

6. Discussion and Findings

Delay and Laches

It is well established that delay in bringing a complaint is generally not a defense in UDRP proceedings; due to the injunctive nature of the remedy, the equitable doctrine of laches and delay is not per se part of the Policy. The Policy does not stipulate any limitation period, and in cases where the trademark in question has been extensively used by the complainant, the plea of delay and laches by the respondent has been denied. See for instance The E.W.Scripps Company v. Sinologic Industries, WIPO Case No. D2003-0447 (where the complaint was filed seven years after the domain name registration); M/s Nalli Chinnasami Chetty v. Nalli’s Silks Saree Center, WIPO Case No. D2009-0664 (where the complaint was filed ten years after the domain name registration); and Billards Toulet v. Damon Nelson – Manager, Quantec LLC/Novo Point, LLC, WIPO Case No. D2016-2502 (where the complaint was made approximately ten years after the domain name registration).

In the present case, the Respondent has argued that there has been delay in bringing this Complaint. The present Complaint was filed in 2018, and the disputed domain name was registered in 2014. The Panel finds, the Complainant has opposed the Respondent’s trademark application, which indicates that there is no acquiescence on the part of the Complainant.

Consistent with the UDRP panel consensus view that delay need not necessarily be detrimental to a complainant’s case, the Panel finds that any delay here neither bars the Complainant from filing a complaint or prevailing on the merits of the case. See section 4.17 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition(“WIPO Overview 3.0”).

To obtain the remedy of transfer of the disputed domain name, the Complainant has to establish three requirements set out under paragraph 4(a) of the Policy. These are:

(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) The Respondent lacks rights or legitimate interests in 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 requirement under paragraph 4(a) of the Policy stipulates the Complainant has to establish the disputed domain name is confusingly similar to a trademark or a service mark in which it has rights.

The Complainant has provided evidence of its registered trademark rights in the mark SAI EXTRUSION TECHNIK and its variants. Some of these trademark registrations are SAI EXTRUSION TECHNIK, application number 1674819 under class 7, dated April 10, 2008 with use date November 27, 2007; figurative mark SAI SMT EXTRUSION TECHNIK, bearing number 2268129, filed on January 18, 2012, under class 7, with use date February 4, 1997; mark EXTRUSION TECHNIK, application number 2162735 under class 35, filed on June 26, 2011 with use date February 4, 1997; and SAI EXTRUSION TECHNIK figurative mark bearing number 2163732, filed on June 26, 2011, under class 35, with use date from February 4, 1997.

Evidence of ownership of a registered trademark is considered sufficient proof of a complainant’s requisite rights in the trademark for purposes of paragraph 4(a)(i) of the Policy. See section 1.2.1 of the WIPO Overview 3.0. Accordingly, based on the evidence provided by the Complainant of its trademark registration for the said mark, it is found that the Complainant has established rights in the mark SAI EXTRUSION TECHNIK.

The disputed domain name consists of the Complainant’s trademark with the word “shree” prefixed to the mark (minus the “TECHNIK” portion), which does not eliminate the confusing similarity to the mark in question. If the relevant trademark is recognizable within the disputed domain name, the addition of other terms would not prevent a finding of confusing similarity under the first element. See section 1.8 of the WIPO Overview 3.0.

The disputed domain name is therefore found to be confusingly similar to the trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

The second element under paragraph 4(a) of the Policy requires the Complainant to make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name. The Respondent has the opportunity to rebut the Complainant’s contentions and demonstrate rights or legitimate interests in the disputed domain name.

Paragraph 4(c) of the Policy has provided a non-exhaustive list that a respondent may rely on to demonstrate rights or legitimate interests in a domain name that is in dispute. These are:

(i) Before any notice of the dispute, Respondent’s 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) Respondent (as an individual, business or other organization) has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or

(iii) 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.

The Complainant has argued that the Respondent has no rights or legitimate interest in the disputed domain name and the use of the mark by the Respondent is not legitimate use but infringes the Complainant’s well-established rights in the mark. The Respondent on its part has argued it has rights and has claimed prior use of the name. (The Respondent has submitted documents that show use of the name from the year 2005 and argues that the Complainant has demonstrated use of the mark only from the year 2007.)

The Panel finds from the material on record that the Complainant’s trademark registrations clearly show that the mark SAI EXTRUSION TECHNIK has been used by the Complainant from the year 1997, which is eight years prior to the Respondent’s starting the partnership firm in 2005. Therefore, the Respondent’s claims of being a prior user of the name and the mark is not maintainable. Furthermore, the Panel finds that the Complainant has established in these proceedings that its mark has significant third-party recognition and reputation associated with the mark.

Under these circumstances, the question arises whether paragraphs 4(c)(i) and (ii) of the Policy are applicable to the Respondent’s case and whether the Respondent had adopted the business name or the mark in good faith. The Respondent has adduced evidence purporting to show that it is commonly known by a name that corresponds to the disputed domain name and has filed government documents as evidence of its use of the name from the year 2005, these are: (a) Registration Certificate under Central Sales Tax valid from the date July 18, 2005, (b) License from Indore Municipal Corporation dated July 5, 2005 (both documents show the name of the Respondent is M/s Shree Sai Extrusion Technik), and (c) Trademark application filed in 2015 showing use since July 20, 2005.

The Panel finds that the Respondent has also provided evidence of its continuous use of such name in connection with its business from the year 2005 onwards. The documents filed by the Respondent are: (i) Year-wise turnover for the Partnership firm and the Respondent company, (ii) Copy of auditor report with Balance Sheet and Profit & Loss Accounts for the year 2005-06, and (iii) Copy of Income Tax intimation in the name of the Respondent firm for assessment year 2006-07. The Respondent states that the disputed domain name corresponds to the essential part of its name “Shree Sai Extrusion Technik”. Based on the evidence submitted by the Respondent, the Panel finds the Respondent has submitted legitimate documents that it is in some respect known by the name “Shree Sai Extrusion Technik” and that it has been running its business under this name.

The issue to consider under these proceedings is whether the use of the mark in the disputed domain name constitutes a bona fide offering of goods and services under paragraph 4(c)(i) and whether the adoption and use of the name which is confusingly similar to the Complainant’s mark is a bona fide and honest adoption of the name by the Respondent, from which it could establish rights or legitimate interests under paragraph 4(c)(ii). It is well established that bona fide use is predicated on honest adoption of the name. The Panel finds the entire set of facts and circumstances, on balance, shows there is a high degree of third-party recognition and reputation associated with the Complainant’s mark and that the Complainant is a prior user of the mark.

A trademark derives its value from the goodwill generated due to the quality of the product or services that are provided under the mark and its extensive use in commerce. The material and evidence on record show that the Respondent has adopted a name that is confusingly similar to the Complainant’s mark, and the onus is on the Respondent to establish honest adoption of another’s mark. Although the Respondent has produced documents that show use of a business name corresponding to the disputed domain name, given that the required standard of proof for UDRP disputes is “balance of probabilities”, or based on the preponderance of evidence (see section 4.2 of the WIPO Overview 3.0), the material on record reveals the Complainant as the prior user with well-established reputation in the mark. Thus the Panel finds such adoption that seeks to take advantage of the prior rights in another’s mark cannot be termed a bona fide offering under paragraph 4(c)(i) of the Policy or legitimate adoption of the business name under paragraph 4(c)(ii) of the Policy.

The Panel finds based on the discussion above and the evidence submitted by the Parties that the Complainant has made a prima facie case that the Respondent lacks rights in the disputed domain name. The Respondent has attempted to refute the Complainant’s allegations but has not successfully established rights or legitimate interests for the reasons mentioned.

C. Registered and Used in Bad Faith

The third element under paragraph 4(a) of the Policy requires the Complainant to establish the disputed domain name has been registered in bad faith and is being used in bad faith by the Respondent.

Having assessed the entire set of facts, chronology of events and circumstances of this case, the Panel finds that the Complainant has established its extensive and continuous use of the mark in commerce supported with evidence and it has established its prior rights in the said mark. The Complainant has established with evidence that it has invested considerable amounts to acquire goodwill, reputation, and third-party recognition by developing innovative products that are sold under the mark.

Given the evidence of the recognition, reputation and goodwill associated with the Complainant’s mark, and the lack of evidence thereof by the Respondent, the Panel is not persuaded that the use of the mark by the Respondent is bona fide or non-infringing use. Under these circumstances, the balance of probabilities indicate that the Respondent is using the disputed domain name in a manner that is intended to and likely to cause consumer confusion with the Complainant’s mark.

The Panel finds the Respondent’s adoption and use of a confusingly similar variant of the Complainant’s mark was probably to derive value from the reputation associated with the mark. The Panel finds the Respondent, by using the disputed domain name in the manner discussed, has attempted to attract, for commercial gain, Internet users to its website or other online location by creating a likelihood of confusion with the Complainant’s mark which is recognized as bad faith registration and use under paragraph 4(b)(iv) of the Policy.

The Complainant is found to have established bad faith registration and use of the disputed domain name.

Reverse Domain Name Hijacking

The Panel finds that the Complaint was not brought in bad faith by the Complainant against the Respondent and the plea of Reverse Domain Name Hijacking is not maintainable under paragraph 15(a) of the Rules. The Panel finds that the Complainant has based its cause of action on its rights in its trademark and no case of Reverse Domain Name Hijacking has been established here.

7. Decision

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

Harini Narayanswamy
Sole Panelist
Date: January 11, 2019