WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Kirloskar Proprietary Limited v. Domains By Proxy, LLC DomainsByProxy.com / Siva Nageswara Rao Doradla

Case No. D2018-2592

1. The Parties

The Complainant is Kirloskar Proprietary Limited of Pune, India, represented by DePenning&DePenning, India.

The Respondent is Domains By Proxy, LLC DomainsByProxy.com of Scottsdale, Arizona, United States of America (“United States”) / Siva Nageswara Rao Doradla of Hyderabad, India, represented by Har Rachan Kaur, India.

2. The Domain Name and Registrar

The disputed domain name <kirloskarcapital.com>is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 13, 2018. On November 13, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 14, 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 15, 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 23, 2018. In accordance with the Rules, paragraph 5, the due date for Response was December 13, 2018. The Response was filed with the Center on December 12, 2018.

Pursuant to paragraph 17 of the Rules, on December 13, 2018, the proceeding was suspended until January 12, 2019. As the Parties have not reached a settlement, on January 14, 2019, the proceeding was reinstituted upon the Complainant’s request.

The Center appointed Maninder Singh as the sole panelist in this matter on January 30, 2019. 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 claims to be an old and established business groupconcerned with the sale of a variety of goods viz. centrifugal pumps, agricultural implements, electric motors, machine tools, ploughs, internal combustion engines, oil engines, marine gears, electric generators, electric alternators, etc. since 1920 and also claims to have been exporting the said goods overseas.

The Complainant also claims to be the proprietor of the trademarks KIRLOSKARand its variants. The Complainant claims that the mark is associated with the Complainant and their trading style, brand name and corporate name of the companies that form the Kirloskar Group of Companies in diversified businesses.

The Respondent registered the disputed domain name on June 7, 2018. The Complainant submitted evidence that the disputed domain name previously did not resolve to anactive website. Currently it resolves to a registrar parking page with pay-per-click links.

5. Parties’ Contentions

A. Complainant

The Complainant claims to be an old and established business group. The Complainant also claims to have been concerned with the sale of a variety of goods viz. centrifugal pumps, agricultural implements, electric motors, machine tools, ploughs, internal combustion engines, oil engines, marine gears, electric generators, electric alternators, welding machines, electrical apparatus, ice making plants and installations, electronic devices, compressors, vices, pneumatic machines, oil seals, tractors, etc. since 1920 and also claims to have been exporting the said goods overseas.

The Complainant also claims to be the proprietor of the trademarks KIRLOSKARand its variants. The Complainant claims that the mark is associated with the Complainant and their trading style, brand name, and corporate name of the companies that form the Kirloskar Group of Companies in diversified businesses.

The Complainant claims that the Kirloskar Group consists of several reputed companies in India and abroad viz. Kirloskar Brothers Ltd., Kirloskar Oil Engines Ltd., Kirloskar Pneumatic Co. Ltd., Kirloskar Systems Ltd. etc.

The Complainant avers that the role of the Complainant in the KIRLOSKAR Group is bifurcated into theBrand Protection, Brand Promotion, Customer Satisfaction survey, and Employee engagement survey.

The Complainant claims that it has secured statutory protection for the trademark KIRLOSKAR and its variants worldwide including India. The Complainant claims to have secured registration for the mark KIRLOSKAR and its variants in India as early as the year 1951. The Complainant claims that they are the lawful proprietor of the trademark KIRLOSKAR and its variants.

The Complainant further claims that the Honorable High Court of Bombay, India in the year 1996has designated the Complainant’s mark KIRLOSKAR as a well-known mark in India and therefore, the Complainant has exclusive rights to the mark against all entities who are imitating the mark KIRLOSKAR regardless of the difference in field of business, goods and services. The relevant case has been reported in AIR 1996 BOM-149. Copy of the official list of well-known marks as available in the Indian Trade Marks Registry’s websitehas been annexed with the complaint where the Complainant’s mark KIRLOSKAR is mentioned in item number 52 of the list.

The Complainant claims to have devoted an enormous amount of time, effort and energy in promoting and advertising the mark KIRLOSKAR in the print and online media and the said mark is consequently identified solely with the Complainant. The Complainant also claims that it has secured domain registrations for their brand KIRLOSKAR and other co-related brands as early as 2000. A tabulated statement giving details of domain registrations secured by the Complainant has been incorporated in the Complaint.

Contentions of the Complainant regarding the disputed domain name being identical or confusingly similar to the Trademark or Service Mark of the Complainant:

In order to show that the disputed domain name <kirloskarcapital.com> is confusingly similar to the Complainant’s, KIRLOSKAR, Complainant contends that it has overwhelming common law as well as statutory rights in its trade/service mark KIRLOSKAR. Therefore, the Complainant is the sole legitimate owner of the trade/service mark KIRLOSKAR.

Complainant also contends that the Respondent’s registration and use of the disputed domain name is bound to induce members of the public and trade to believe that the Respondent has a trade connection, association, relationship or approval of the Complainant, when it is not so.

Complainant further contends that the distinctive and the dominant element in the Respondent’s domain is the word KIRLOSKAR hence, the disputed domain name is confusingly similar to the trade/service mark KIRLOSKAR in which the Complainant statutory and common law rights.

Contentions regarding Respondent having no rights or legitimate interests in the disputed domain name:

Complainant contends that it is the sole legitimate owner of the trademark KIRLOSKAR. The Complainant has not licensed or otherwise permitted the Respondent to use its trade/service mark KIRLOSKAR or to apply for any domain name incorporating the said trade/service mark.

Complainant contends that the Respondent has not made any legitimate use of the disputed domain name since the date of its registration and is prejudicially blocking the domain register. However, in view of the popularity and the well-known status of the complainant’s trademark KIRLOSKAR, the disputed domain name is bound to induce members of the public and trade to believe that the Respondent has a trade connection, association, relationship or approval with/of the Complainant. Such confusion apart from sabotaging the reputation and goodwill of the Complainant’s mark KIRLOSKAR, will also dilute the distinctiveness of the mark.

The Complainant also contends that considering the blatant imitation of the Respondent, it is obvious that the sole purpose of the Respondent maintaining the registration of the disputed domain name is to misappropriate and usurp the reputation and goodwill of the Complainant’s trademark KIRLOSKAR.

Contentions regarding bad faith registration and use of the disputed domain name by Respondent:

The Complainant contends that the Respondent has not made any legitimate offering of goods or services under the disputed domain name. Further, considering the incessant use, reputation and the well-known status of the Complainant’s mark KIRLOSKAR in India, the Respondent cannot feign ignorance of the Complainant’s mark. Hence, the Respondent being aware of the complainant’s KIRLOSKAR has clandestinely registered the disputed domain name to misappropriate the reputation and goodwill of the Complainant’s trademark.

The Complainant also contends that it is furthermore stated in various precedents that the domain names are fast emerging corporate assets and have evolved as a fulcrum of a company’s visibility and marketing operations. Business transactions are primarily being carried out only through Internet addresses rather than street addresses or post boxes or even faxes. Hence, it becomes critical that unscrupulous individuals are not allowed usurp well-known trademarks and domain names to unfairly benefit from such act.

The Complainant further contends that the Respondent had constructive notice of the Complainant’s rights in the trade/service mark KIRLOSKAR by virtue of the Complainant’s well spread reputation, use and registrations. Complainant relies upon WIPO decisions in:

Research In Motion Limited v. Privacy Locked LLC/Nat Collicot, WIPO Case No. D2009-0320,

SembCorp Industries Limited v. Hu Huan Xin, WIPO Case No. D2001-1092,

Oberoi Hotels v. Arun Jose, WIPO Case No. D2000-0263,

Parfums Christian Dior v. Javier Garcia and Christiandior.net, WIPO Case No. D2000-0226.

B. Respondent

The Respondent in his Response to the Complaint, inter alia, submits the following:

Whether the domain nameis identical or confusingly similar to a trademark or service mark in which the Complainant has rights:

The Respondent submits that the Complainant is known brand in technology, oil, engines, fluid, management, motor pumps, ploughs, and generators and they have made sure to protect their mark, and their brand protection, brand promotion, Customer satisfaction, and Employee engagement survey is only limited to the fields that they have protected their brand and can in no way expand and touch names which are not in their work sphere. The Respondent also submits that KIRLOSKAR is a brand in the above stated sectors and the Respondent has not and does not deal in the above stated sectors or classes in which the Complainant works in.

The Respondent further submits that the list of Trademarks as listed in the Complaint in India and everywhere else in the world is under Class 7, 11, 12, and 35 only and the Complainant cannot in any way stop anyone in using the mark which is not trademarked to them. The Respondent also submits that he has not applied for Trademarks Registration in any class and even if the Respondent applies for same, it should not be a problem for the complainant as the complainant is not doing any business in their class, and according to the marks shown by the Complainant they are not in the class in which the Respondent has taken a domain name, i.e., in Capital Investment, so the question of there being any confusion does not arise at all.

Whether the Respondent has rights or legitimate interests in respect of the domain name:

The Respondent submits that “Kirloskar”is common surname in India, and the Complainant cannot claim ultimate right over the usage of a name which is a common name and the word “Kirloskar” cannot exclusively belong to the Complainant, if the Respondent did infringe their rights in the class in which they are registered then this complaint makes sense.

The Respondent submits that although the Complainants mark is a well known mark, it, however, doesn’t mean that nobody else can use a name, which is a common surname in India, in products in which the Complainant do not trade or have their mark registered.

Whether the domain namehas been registered and is being used in bad faith:

The Respondent submits that the Complainant is a company having their presence in the above stated classes, but this in no way means that they hold exclusive rights to the word “Kirloskar” in all classes and also for the names that they have not registered in class in which the Respondent deals in.

The Respondent submits that the complainant is only sole and legitimate owner of the mark in which they have registered their mark in India and abroad, they are not owners of the word “Kirloskar” because KIRLOSKAR is a very common and popular surname.

The Respondent submits that there is no scope for confusion in the minds of the people, because the complainant does not deal with money, share market or services alike and that the Respondent is dealing only with that, therefore, it is totally false to state that it will give rise to confusion.

The Respondent reiterates that their marks are in no way similar or confusing.

The Respondent submits that the Complainant under no law can own the word “Kirloskar” and that their right and ownership is only limited to the classes under which they have got their mark registered and if the complainant were so concerned about their mark then they should have taken all possible permutations and combinations of domain names even if they were not using it or not providing the said services.

The Respondent submits that the Complainant cannot sit on the word “Kirloskar” and just because, the complainant has its name registered in a few classes does not justify them to close any mark with similar name in a class which does not pertain to them without any intimation or hearing the other side, the Respondent further claims that the name “Kirloskar” is important to him, as it is the name of his godfather who taught him how to survive and that there was no bad intention involved as allegedly claimed by the complainant.

Respondent submits that the domain name <kirloskarcapital.com>was not registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registration(s) to the Complainant, as the alleged owner of the trademark or service mark, or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the domain name(s).

Respondent also submits that the domain name<kirloskarcapital.com>was not registered in order to prevent the Complainant from reflecting the mark in a corresponding domain name and, in connection therewith, the Respondent has not engaged in a pattern of such conduct.

The Complainant and the Respondent are not competitors and/or the domain name <kirloskarcapital.com>was not registered by the Respondent primarily to disrupt the Complainant’s business;

Respondent further submits that the domain name <kirloskarcapital.com>was not registered by the Respondent in an intentional attempt to attract for commercial gain, Internet users to the Respondent’s website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Panel has considered the documents submitted by the Complainant for supporting the claim of the Complainant that it has been using the trademark/name “Kirloskar” for decades. Besides and in addition to Complainant’s common law rights, the registrations under the Trademark Law in favour of the Complainant go back to 1951. The perusal of tabulated statement shows that the Complainant and its associated companies belonging to Kirloskar Group of companies is having more than 30 domain names registered in their favour all over the world and where their distinct name of “Kirloskar” is the primary part of their registered domain names.

The Panel observes that the Complainant is one of India’s most well-known business houses having its trade name/mark asKIRLOSKAR, very well-known with regard to a number of products as well as services. In fact, the trade name of “Kirloskar” [though a surname] with reference to the Complainant has indeed acquired the secondary meaning, in that, whenever any new product or service with the name “Kirloskar” comes into existence it will bound to and/or in any case, in all probability will get associated with the Complainant.

The Panel observes that the Complainant has many domain name registrations using its trademark/name KIRLOSKAR, not only in various Top-Level Domains but also has secured country specific domain protection.

Indeed, it is a well known mark which is distinctive and identified with its owner. The Panel has no doubt that the Complainant has trademark rights that also correspond to its disputed domain name <kirloskarcapital.com>. When the disputed domain name is compared with the domain names belonging to the Complainant, it would be apparent that the domain name of the Respondent would remain confusingly similar to the trademark of the Complainant. The Panel has no doubt that such an action on the part of the Respondent is neither permissible nor bona fide.

The Complainant has furnished evidence of its rights in the trademarks KIRLOSKAR through its
above-referred trademark registrations and common law rights have accrued to it through its long and substantial use of the mark not only in India but certain other parts of the world.

The Panel has considered the documents submitted by the Complainant in support of its claim that the Complainant has been using and has various registrations for the trademark using the word “Kirloskar”. There is no doubt that the Complainant is the owner of trademarks KIRLOSKAR.

The Panel observes that the confusingly similar domain name was created by the Respondent in June 2018 being fully aware of the commercial value, significance, reputation and goodwill of the Complainant’s trade/service mark.

The Panel finds no merit in the submission of the Respondent that KIRLOSKAR is a brand only in the above stated sectors or that its trademark is registered under Class 7, 11, 12, and 35 only and the Respondent has not/does not deal in the above stated sectors or classes in which the Complainant works in. The Panel in this regard find it useful to refer to the decision in Mirage Studios v. Counter Feat Clothing Co. Ltd. reported in (1991) FSR 145 holding that that the so-called requirement of the law that there should be a common field of activity is now discredited.

The real question is whether there is, as a result of misrepresentation, a real likelihood of confusion or deception of the public and consequent damage to the Complainant. The focus is shifted from the external objective test of making comparison of activities of parties to the state of mind of public in deciding whether it will be confused. With the passage of time and reputation acquired, the trademark KIRLOSKAR has acquired the secondary meaning and has become almost a household word.

It has been held by the Hon’ble Bombay High Court in the case of the Complainant itself that in the case of trading name which has become almost a household word and under which trading name a variety of activities are undertaken, a passing off can successfully lie if the defendant has adopted identical or similar trading name and even when the defendant does not carry on similar activity. Even if the defendant's activities in such circumstances, are remote, the same are likely to be presumed a possible extension of plaintiff's business or activities. In the instant case, the Respondents have established that word “Kirloskar” has become a household word and their businesses cover variety of activities.

The Panel, therefore, concludes that the disputed domain name <kirloskarcapital.com> registered by the Respondent in June 2018 by adding the word “capital” to Complainant’s trademark KIRLOSKAR, is confusingly similar to the well known trademarks and domain name of the Complainant and the Complainant has therefore succeeded in establishing the first element of the test in paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

The Panel observes that the Complainant has made out a case proving its rights in the trademark/name KIRLOSKAR. The Complainant enjoys goodwill and reputation for the mark/name registered by it. The Panel has no doubt that the disputed domain name incorporates the well-known and famous trademark KIRLOSKAR of the Complainant.

The contention of the Complainant is that the Respondent has been using the disputed domain name – being identical and confusingly similar with the domain name of the Complainant, without any authorization or licence from the Complainant. It is more than apparent to this Panel that such an attempt on the part of the Respondent is to create confusion and to cash in on the name of the Complainant. The Respondent is apparently attempting to extract commercial benefits for itself at the cost of the Complainant by adopting a confusingly similar domain name. The Panel is of the view that such an attempt on the part of the Respondent is to create confusion and to cash in on / ride on the name, goodwill, and reputation of the Complainant.

The Panel observes that nothing has been brought on record by the Respondent to show that the Respondent belongs/could belong or in any way is connected/related to the word/name “Kirloskar”.

The Complainant contends that it has not licensed or otherwise permitted the Respondent to use its trade/service mark KIRLOSKAR or to apply for any domain name incorporating the said trade/service mark. The Panel observes that the Respondent is in no way related to the Complainant or its business activities.

The Respondent is not an agent of the Complainant nor does he carry out activities for the Complainant.

The Panel finds it useful to refer to case of eBay Inc. v. Akram Mehmood, WIPO Case No. DAE2007-0001 holding that – “rights or legitimate interests cannot be created where the user of the Domain Name at issue would not choose such a name unless he was seeking to create an impression of association with the Complainant”.

The Panel, therefore, finds that the Respondent has no legitimate interests or rights in the disputed domain name.

C. Registered and Used in Bad Faith

The Panel accepts that the trademark/name of the Complainant KIRLOSKAR is well known not only in India but also in various parts of the world and there is every likelihood of Internet users of the disputed domain name of Respondent believing that there is some connection, affiliation or association between the Complainant and the Respondent thereby extracting illegal and undue gains to Respondent and further having the effect of damaging the goodwill, reputation and business interests of the Complainant.

The Panel observes that the disputed domain name was registered by the Respondent in June 2018. The Panel has no hesitation in holding that being fully aware of the commercial value and significance of the Complainant’s trademark/name KIRLOSKAR and incorporation thereof in a domain name, the Respondent has registered the disputed domain name to take commercial advantage of it by riding over the substantial goodwill and reputation of the Complainant in the disputed domain name.

The Panel observes that the disputed domain name has been registered by the Respondent subsequent to the Complainant’s relevant trademark and domain name registrations and is being used in bad faith. In this regard the Panel would also like to refer to the following observations made in

(i) Consitex S.A. Lanificio Ermenegildo Zegna&Figli S.p.A. Ermenegildo Zegna Corporation v. Mr. Lian Ming, WIPO Case No. DWS2003-0001 – holding that a Respondent could not ignore the existence of a well-known trademark at the time of registering a domain name; and

(ii) Research In Motion Limited v. Dustin Picov, WIPO Case No. D2001-0492 – holding that when a domain name is so obviously connected with a Complainant, its very use by a registrant with no connection to the Complainant suggests “opportunistic bad faith”.

The Panel finds that the Complainant’s trademark KIRLOSKAR enjoys enormous goodwill and reputation. The Panel has also perused the copy of the list of well-known marks available in the Indian Trade Marks Registry’s websiteshowing Complainant’s trademark KIRLOSKAR, annexed with the Complaint. Therefore, Respondent’s contention that Complainant under no law can own the word KIRLOSKAR and that their right and ownership is only limited to the classes under which they have got their mark registered – is rejected. It is reiterated that in the facts and circumstances of the present case, launch of any new product or service with the name “Kirloskar” would indeed give an impression as if the said new product or service is only on account of expansion of the activities of the Complainant.

The Panel also do not find any merit in the Respondent’s submission that if the complainant were so concerned about their mark then they should have taken all possible permutations and combinations of domain names even if they were not using it or not providing the said services. This contention of the Respondent regarding registering all the possible domain names, taking all possible permutations and combinations – would further support the case of the Complainant as this contention would clearly demonstrate absence of bonafide on the part of the Respondent in seeking the registration of the disputed domain name. Whether the Complaint ought to have taken registration of domain name with all permutations and combinations – in the view of the Panel would not be as relevant as the conduct of the respondent who has failed to demonstrate any good faith in the registration of the disputed domain name. This contention of the Respondent being entirely devoid of any merit is rejected.

The Panel, therefore, finds that the disputed domain name was registered and being used in bad faith by the Respondent.

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 <kirloskarcapital.com> be transferred to the Complainant.

Maninder Singh
Sole Panelist
Date: February 13, 2019