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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Cox & Kings India Limited v. Rakesh Sud

Case No. D2000-0411

 

1. The Parties

The Complainant is Cox & Kings India Limited, a company incorporated under the laws of India and having its principal place of business in Mumbai, India.

The Respondent is Ms. Ruchita Sud with her address at 8 Silver Oaks, 4 Cornwell Road, Richmond Town, Bangalore, Karnataka, India.

 

2. The Domain Names and Registrars

The disputed domain names are duniyadekho.com and addmoretoyourworld.com

The Registrar of the domain names is Network Solutions Inc., (hereinafter called "NSI"), with business address at Herndon, Virginia, USA.

 

3. Procedural History

The essential procedural history of the administrative proceedings is as follows :

a) The Complainant initiated the proceedings by the filing of a complaint via e-mail, received by the WIPO Arbitration and Mediation Center (hereinafter referred to as "WIPO") on May 10, 2000, and by courier to WIPO on May 15, 2000. Such filing was in accordance with ICANN’s Rules for Uniform Domain Name Dispute Resolution Policy (hereinafter referred to as "ICANN Rules") as well as WIPO’s Supplemental Rules. Payment by the Complainant of the requisite filing fee accompanied the courier mail.

b) The panel agrees with WIPO’s assessment concerning the Complainant’s compliance with the formal requirements.

c) On May 12, 2000, WIPO transmitted a Request for Registrar Verification to the Registrar, Network Solutions Incorporated ("NSI").

d) On May 16, 2000, WIPO received a verification response from NSI, confirming that

i) Ms. Ruchita Sud, with address at 8 Silver Oaks, 4 Cornwell Road, Richmond Town, Bangalore, Karnataka, India is the current registrant of the duniyadekho.com and addmoretoyourworld.com domain name registrations;

ii) The Administrative Contact, Technical Contact, Zone Contact and Billing Contact is Rakesh Sud with address at 8 Silver Oaks, 4 Cornwell Road, Richmond Town, Bangalore, Karnataka, India;

iii) The NSI 4.0 service agreement was in effect;

iv) The domain name registrations duniyadekho.com and addmoretoyourworld.com were in ‘active’ status.

e) On May 17, 2000, WIPO transmitted the Notification of the Complaint and Commencement of Administrative Proceedings to the Respondent via e-mail and courier mail. The panel finds that the complaint was properly notified.

f) The Respondent filed its response by e-mail on May 10, 2000, May 13, 2000, June 2, 2000, and June 5, 2000. The panel finds that the response has been filed within the stipulated time limit.

g) On June 6, 2000, WIPO transmitted an Acknowledgement of Receipt of Response, stating that it was in receipt of the submissions by the Respondent dated May 10, 2000, May 13, 2000, June 2, 2000, and June 5, 2000, which would collectively be taken to constitute the Respondent’s response in the present administrative proceedings.

h) On June 9, 2000, WIPO invited the undersigned to serve as panelist in the administrative proceeding, subject to receipt of an executed Statement of Acceptance and Declaration of Impartiality and Independence (Statement and Declaration). On June 9, 2000, the undersigned accepted the invitation and sent the declaration of impartiality to WIPO.

i) On June 13, 2000, WIPO transmitted to the Complainant and Respondent the Notification of Appointment of Administrative Panel and Projected Decision Date. The deadline for the panel’s decision was stated to be June 26, 2000. In that same communication WIPO notified the Complainant and the Respondent of the appointment of the undersigned sole panelist as the administrative panel in this matter.

j) On June 13, 2000, the panel received an electronic file in this matter by e-mail from WIPO. The panel subsequently, received a hard copy of the file in this matter by courier mail from WIPO.

k) On June 14, 2000, the Respondent sent an e-mail to WIPO stating "I have found an untrue statement in the Complainants submission which I wish to raise. How do I do so now?"

l) The panel decided to allow the Respondent two days to make submissions in support of the above-mentioned claim. Similarly, the Complainant was given two days to counter the submissions. In view of this arrangement, the prospective date of decision was extended by four days so as to make the new date June 30, 2000.

m) Having gone through the submissions of both the parties, the panel found it necessary to request further evidence from the Complainant as to the alleged trademark rights of the Complainant in "Duniya Dekho" and "Add More To Your World". In response to such a request, the Complainant submitted further evidence through an e-mail dated June 28, 2000. This evidence was sought to be rebutted by the Respondent through an e-mail dated June 29, 2000. Since the Complainant’s email dated June 28, 2000, stated that certain documents were being sent through courier mail, the panel decided to wait an additional day for such documents. Hence the decision date was extended to July 1, 2000. In response to the Respondent’s email dated July 1, 2000, stating that the documents hadn’t been received by him, the panel instructed the Complainant to transmit such documents to the Respondent. In view of the fact that July 2, 2000, was a Sunday and hence a holiday, the panel extended the due date for the decision to July 3, 2000. By e-mail dated 3rd July, 2000, the respondent commented upon the documents filed by the complainant.

The proceedings will be conducted in English.

 

4. Factual Background

a) The Complainant is a travel agency. The Complainant provides business travel services in India as also abroad. The Complainant also provides for group package holidays. The Complainant in October 1998 chose the brand ‘Duniya Dekho’ which in Hindi (the official Indian language under Article 343 of the Constitution of India, 1950) means "See the World". The brand is for its group package holidays.

b) The Complainant introduced the base line "Add More To Your World" which was featured as an integral part of advertisements that covered the tours organized by the Complainant. A fair number of full page advertisements appeared in leading Indian newspapers.

c) The Complainant applied for the registration of a composite trademark comprising a spiral with the words " Duniya Dekho – Cox and Kings" on June 29, 1999, in India under the Trade and Merchandise Marks Act, 1958, a copy of which was attached with the Complaint. In the said trademark application, the Complainant represented its period of use of the said trademark as the period commencing January 14, 1999. The trademark was applied for in respect of Printed Matter, Promotional Material, Newspapers, Journals, Magazines, Books and other literary works.

d) The Respondent registered the domain names duniyadekho.com and addmoretoyourworld.com on May 25, 1999.

e) The Complainant has not licensed the trademarks to the Respondent nor consented to the use of the same.

f) Through a letter dated June 6, 1999, the Respondent offered to sell the domain names duniyadekho.com and addmoretoyourworld.com to the Complainant for a sum of Rs. 350,000, stating that "Since you are using these phrases while advertising for sale of your packages, I thought you may be interested in it".

 

5. Parties’ Contentions

A. Complainant

a) The Complainant stated in its formal complaint, submitted on May 10, 2000, that:

i) the domain name duniyadekho.com is identical to the trademark "Duniya Dekho" which has been used by the Complainant since January 1999, and to the trademark "Duniya Dekho- Cox & Kings" for which the Complainant has sought a trademark registration;

ii) the domain name addmoretoyourworld.com is identical to the phrase and trademark "Add More To Your World", which phrase has been used by the Complainant along with the trademark "Duniya Dekho".

iii) the Respondent has no rights or legitimate interests in respect of the domain names duniyedekho.com and addmoretoyourworld.com

iv) the Respondent has registered and is using the domain names duniyadekho.com and addmoretoyourworld.com in bad faith.

b) The Complainant contends that the disputed domain name duniyadekho.com is identical to the trademark "Duniya Dekho" of the Complainant, since they both contain the words "Duniya" and "Dekho" and these words are used in the same sequence in both the domain name of the Respondent as well as in the trademark of the Complainant.

c) The Complainant also alleges that the disputed domain name addmoretoyourworld.com is identical to the phrase "Add More To Your World" used by the Complainant, as both the domain name of the Respondent and the phrase and trade mark of the Complainant contain the same words used in an identical sequence.

d) The Complainant contends that the Respondent has registered the disputed domain names pursuant to the wide publicity given by the Complainants trade marks "Duniya Dekho" and "Add More To Your World".

e) The Complainant alleges that the Respondent has registered the domain names to sell the same to the Complainant for valuable consideration and supports this claim with a letter dated June 6, 1999, in which the Respondent has clearly offered to sell the domain names.

f) The Complainant alleges that the Respondent has attempted to attract Internet users to its domain name duniyadekho.com for commercial gain, by creating a likelihood of confusion with the Complainant’s trademark Duniya Dekho.

g) The Complainant further contends that the Respondent has registered and is using the domain name duniyadekho.com in bad faith, since the Respondent is creating a likelihood of confusion in such a manner that Internet users may be led to believe that the Respondent’s web site is affiliated with, sponsored by or endorsed by the Complainant.

h) The Complainant contends that the Respondent has no legitimate interest in the domain name duniyadekho.com and addmoretoyourworld.com as (i) the Respondent primarily registered the same with the intent to transfer the same to the Complainant for commercial gain; and (ii) the Respondent has attempted to attract Internet users to its websites by use of the disputed domain names which are confusingly similar to the Complainant’s unregistered trademarks, "Duniya Dekho" and "Add More To Your World"

i) The Complainant in a reply (dated June 2, 2000) to the "preliminary arguments submitted by the Respondent" stated that while the words in the phrases "Duniya Dekho" and "Add More To Your World’ are not invented words, the phrases in particular have acquired a distinctiveness in the travel services and are exclusively associated with the Complainant, as a result of the efforts of the Complainant.

j) The Complainant in an email dated June 28, 2000, contends that the Respondent has clearly evidenced a cybersquatting strategy by attempting to register the advertising baselines of several well known brands, in corresponding domain names. Some of these include Videocon’s "Bring home the leader" (bringhometheleader.com), Pepsi’s "Yeh Dil Maange More" (yehdilmaangemore.com), BPL’s "Believe In The Best" (beleiveinthebest.com), Thums Up "Taste The Thunder" (tastethethunder.com), etc.

B. The Respondent

a) Although the Respondent has not sent any formal response, the Centre decided to construe the various submissions made by the Respondent through emails on May 10, 2000, May 13, 2000, June 2, 2000 and June 5, 2000, collectively as the Respondent's response. The panel shall deal with each of these responses to formulate the contentions of the Respondent.

b) Through an e-mail dated May 10, 2000, the Respondent stated as follows:

i) the trademark is for "Duniya Dekho- Cox & Kings" and not "Duniya Dekho" and therefore the case must be ‘thrown out’ at the outset. Moreover the domain name had been registered on May 25, 1999, whereas the trademark application of the Complainant was made only on June 29, 1999, and hence the respondent’s rights are clearly prior to the Complainants’.

ii) the respondent was willing to forego the domain name if a sum of US$ 4.5 million was paid to the respondent. This sum would then be utilized for the welfare of the street children of Bangalore, with the respondent acting as the trustee.

c) Through an e-mail dated May 13, 2000, the Respondent stated as follows:

i) The Complainant had not adduced any proof to show its establishment in 1758 or its worldwide sales.

ii) The various facts stated by the Complainant such as calling itself a market leader, or the market study said to be conducted in 1998 or the proof of its advertisements were not provided along with the complaint.

iii) The Complainant had applied for the registration of a trademark which is distinct from the disputed domain name. From this, it is obvious that the authorities did not allow the Complainant to register the "Duniya Dekho" as it is a generic term and a commonly used phrase in Hindi.

iv) The Respondent has legitimate rights in the phrases because he registered them before the Complainant. Had the Complainant wanted rights to the domain name, it should have registered the same before the Respondent.

v) The assertion of rights based on the mere filing of a trademark application is ridiculous.

vi) The Respondent further stated that after booking the name, he realized that the Complainant was using them in his advertisements and therefore approached the Complainant to enquire whether he was interested in buying them.

d) Through an email dated June 2, 2000, the Respondent stated that:

i) The fact that the Complainant did not register the domain names meant that the Complainant never envisaged using the domain names which the Respondent has registered.

ii) The Respondent stated that use of a generic term to further a commercial purpose is acceptable as long as it does not infringe upon the rights of other individuals. One cannot claim rights to a word or phrase merely because one has been using them in connection with one’s business. If this were so, then the mere fact that the complainant had been using the phrase "travel agency" in association with its business, would give it rights to the domain name "travelagency.com" as well.

iii) The respondent stated that trademark rights are not created by mere advertisement. If this were so, then all one had to do was to insert full page advertisements for a certain word or phrase and then claim trademark rights to it.

iv) The Respondent once again stated that the Complainant was taking time to send documents in order to fabricate the evidence.

e) Through an email dated June 5, 2000, the Respondent stated that the Complainant was using money power to beat them into submission.

f) By e-mail dated 3rd July, 2000, the respondent stated that the complainant’s evidence was inadequate and insufficient to allow monopolization of a Hindi language expression. He further alleged that documents which are not attested cannot be relied upon, as cutouts and xerox copies can be faked.

 

6. Discussion and Findings

Paragraph 4(a) of the Policy directs that the complainant must prove, with respect to the domain name in issue, each of the following:

A) The domain name in issue is identical or confusingly similar to a trade mark or service mark in which the complainant has rights;

B) The respondent has no rights or legitimate interests in respect of the domain name;

C) The domain name has been registered and is being used in bad faith;

The Panel will therefore discuss each category as above mentioned.

A) Are the respondent’s domain names duniyadekho.com and addmoretoyourworld.com identical or confusingly similar to any trade or service marks in which the complainant has rights?

This question is further divided into two inquiries, namely:

i) Are the domain names duniyadekho.com and addmoretoyourworld.com identical or confusingly similar to the expressions "Duniya Dekho" and "Add more to your world", used by the respondent; and

ii) Are the expressions "Duniya Dekho" and "Add more to your world" trade or service marks in which the complainant has rights.

Clearly the first of these sub questions is established on account of identity between duniyadekho.com and "Duniya Dekho" and "addmoreto yourworld.com" and "Add more to your world".

The difficulty arises in the second sub question and the complainant has to establish that the expressions "Duniya Dekho" and "Add more to your world" have become trade or service marks.

Having regard to the principles of Indian law and the various English and American decisions and commentaries which are customarily cited before Indian courts, the following principles emerge:

a) One way of acquiring trade mark or service marks rights is through registration of such trade or service marks. The Indian legislation is the Trade and Merchandise Marks Act, 1958, which is on its way to being substituted by the Trade Marks Act, 1999 which has not come into legal force as on the date of this decision but will do so shortly, having already cleared both the Houses of the Indian Parliament and having received Presidential assent.

b) "Duniya Dekho" and "Add more to your world" are used in relation to the services of a travel agency and not in relation to any vendible goods. Therefore, in the context of this case the complainant would have to establish that these expressions have become "service marks".

c) The new Indian legislation, the Trade Marks Act, 1999, although not yet in legal force, permits the registration of service marks and defines trade marks as including service marks 1. I will follow a similar nomenclature and will use the expression "trade mark" throughout this decision which is intended to cover service marks.

d) In the present case, the expressions "Duniya Dekho" and "Add more to your world" are not registered as trade marks in India.

e) The complainant can also establish rights to a trade mark through use. These rights are referred to as common law rights.

f) The complainant has established extensive use, at least throughout India, of a composite mark consisting of four elements, namely:

· A square device with a spiral structure at its center and eight notches on the edges;

· The words "Duniya Dekho" appearing in a stylized manner;

· The words "Cox & Kings" also appearing in a stylized manner; and

· The expression "Add more to your world" appearing in bold lettering.

(hereinafter referred to as the "composite mark")

g) There is clear evidence that the aforesaid composite mark was used by the complainant prior to the registration of duniyadekho.com and addmoretoyourworld.com by the respondent.

h) The question is whether the prior use of this composite mark has created trade mark rights in the expressions "Duniya Dekho" and "Add more to your world"?

The complainant was asked by the panelist to submit evidence to show if these phrases had been independently used and had acquired distinctiveness.

Duniya Dekho

i) As regards, "Duniya Dekho", the complainant has submitted substantial material to show that at least the phrase "Duniya Dekho" has been used independently of the composite mark not, only by the complainant but also by the trade. Thus there are several references in articles to the "Duniya Dekho" campaign or the "Duniya Dekho" tours to USA or to the "Duniya Dekho" tours from Cox & Kings. These articles appear to have been written in well-known Indian newspapers and I would, therefore, hold that "Duniya Dekho" has been used by the complainant and that it is recognized in the trade as having a separate commercial presence and personality.

j) To put it differently, the phrase "Duniya Dekho" forms an essential feature of the composite mark and as stated in Kerly’s Law of Trademarks and Tradenames citing Saville Perfumery v. June Perfect, (1941) 58 RPC 147, the expression "has come in trade to be used to identify the goods of the owner of the mark". 2

k) According to the complainant in the e-mail dated 28th June, 2000, the phrases "Duniya Dekho" and "Add More to your World", are not inherently distinctive. It is not difficult to imagine why. Thus, Duniya Dekho in Hindi, India’s official language, means "See the World" which when used in relation to international tours by a travel agency is a descriptive expression. Similarly, "Add more to your world" when used for international tours by a travel agency may suggest additional luxury and comfort due to the expert handling by a good tourist agency or additional cities or features, and in any event would be descriptive.

l) The question therefore is, can descriptive phrases, expressions and slogans have trade mark rights and what is the degree of distinctiveness required for such slogans in an action such as the present one.

m) The panel is mindful of the fact that the present action is not a registration proceeding before a national registering authority. In registration proceedings, descriptive slogans are difficult to register since they lack distinctiveness. The standard of distinctiveness required is a higher one than here. There have been recent decisions such as the case of "I Can’t Believe It’s Yogurt" (1992 RPC 533) which have struck a distinction between different kinds of phrases or slogans and effectively held that at one extreme there may be a phrase which is used purely in an advertising sense and not in a trade mark sense at all, while at the other extreme there may be a phrase used as a trader’s name for his goods in which case it will probably be a trade mark. In between, there may be phrases which serve both the functions – these will probably be trade marks but it may be necessary to show by evidence that they have a branding function in addition to being an advertising slogan. This case notices that in the latter two classes, there will be obviously further hurdles to be overcome before they can be registered.

The decision holds at page 537 :

In deciding where a phrase falls within the above classification, it is important to know how the trader actually intends to use the phrase, and, if he has used it, what effect that has had on the public. If it is used with what is self-evidently another trade mark (e.g. Kit-Kat) then it may well be at the "mere advertising" extreme, though there may be cases where the phrase not only serves to advertise but also to identify. If it is used with no other trade mark at all, then it will probably be a true trade mark – for what other name can the trade or public use for the trader’s goods? 3

n) The complainant has advertised its Duniya Dekho tours rather extensively, there being a large number of full page advertisements in leading newspapers.

o) At the commencement of these proceedings, the panel could not find evidence on record which showed that the expression "Duniya Dekho" had been used independently.

p) However, additional evidence was submitted by the complaint which shows that Duniya Dekho has been used independently of Cox & Kings (which is more like a House mark of the complainant) and, therefore, has a separate commercial impression quite apart from the trade mark Cox & Kings.

Whether an expression, phrase or slogan has a trademark information, advertising or decorative function when appearing as a part of a composite mark or a mix of such functions, may be determined by having regard to the intention of the proprietor and the effect on the market.

As regards "Duniya Dekho" the complainant has established the following:-

i) That efforts were made to inform the public about the trademark status of the expression by using and advertising the same independently of Cox and Kings.

ii) The complainant represented the words "Duniya Dekho" in a stylized manner.

iii) The words "Duniya Dekho" also formed a part of the trademark application.

iv) There is no evidence of any third party using the said expression.

Therefore it appears to me that due to overwhelming and extensive use, the expression "Duniya Dekho" has acquired secondary meaning and hence trademark rights.

q) At this stage, I can deal with some of the other objections of the respondent, namely:

i) that mere use in advertising would not give the complainant trade mark rights;

ii) if the complainant could get rights over "Duniya Dekho" and "Add more to your world" then they could equally be entitled to rights over generic expressions such as travel agency (in the domain name "travelagency.com"), which also they have used in connection with their business;

iii) the complainant’s use is not long enough for the expressions to have acquired distinctiveness; and

iv) If the complainant were keen to use the domain name they ought to have registered it first but having made no such efforts, the respondent cannot be penalized.

On the first point, what the complainant has done for "Duniya Dekho" is not "mere advertising". Concurrently the services have been available to consumers.

There is evidence to show this from newspaper reports which state that the "Duniya Dekho" packages elicit tremendous response from the public

Apart from this, in N.R. Dongre v. Whirlpool Corporation, 1996 PTC 583 (SC), the Supreme Court of India confirmed the finding of the Delhi High Court to the effect that advertisements of trademarks without existence of goods in the market are also to be considered as "use" of the trade mark.

Coming to the second objection there is a distinction between various kinds of trade marks which must be stated here. At the lowest end of distinctiveness are generic expressions such as the words "travel agency" for the complainant’s business. Such expressions do not qualify to be trade marks. At the next higher level of distinctiveness are descriptive expressions which, in the Indian context, really means ‘directly’ descriptive as referred to in Section 9(1)(d) of the Trade and Merchandise Marks Act, 1958. At the next level are suggestive marks which refer to certain characteristics of goods or services in a covert or disguised manner but are not directly descriptive.

Then there are arbitrary expressions such as ‘Puma’ for shoes and finally fancy or invented words like KODAK.4

The last three categories of suggestive, arbitrary and fancy or invented trade marks are considered inherently distinctive and trade marks that are inherently distinctive acquire legal protection immediately upon adoption and use in trade.

Obviously if the expressions, phrases or slogans in issue in this case were suggestive having inherent distinctiveness, it was not essential to embark on a wider enquiry and look at their "effect" in the market or on the public mind. I am of the view that both the expressions are descriptive as admitted by the complainant and not suggestive. I am further of the view that the expressions are not generic as the words "travel agency". As regards a short user, there is case law to suggest that even a few days use would confer trade mark rights. In Stannard v. Reay (1967 RPC 589), plaintiffs had been operating a mobile fish and chip van for only about three weeks under the trade name MR. CHIPPY and such a short period was held to be sufficient to build up a goodwill and in Fletcher Challenge Limited v. Fletcher Challenger Pty Ltd. (1982 FSR 1), a few hours were considered to be sufficient to create trade name rights.

The panel is mindful of the fact that due to extensive advertising in today’s world and particularly on the Internet, marks can acquire distinctiveness and descriptive marks can acquire secondary meaning in a far shorter time period than at a time when only conventional media was available for disseminating information about goods and services.

The respondent’s contention that the complainant’s evidence is inadequate to give them any right is not justified as I find that for the creation of trade mark rights, even "minimal" evidence has been considered to be adequate by the courts. For descriptive expressions such as Duniya Dekho, no doubt, the standard is higher but not as high as one would require in a registration proceedings. In my estimation, the complainant’s evidence is adequate for me to hold that there are trade mark rights in Duniya Dekho. The respondent has tried to cast a doubt on the complainant’s documents but I have no reason to believe that the documents relied upon are fake and I hold otherwise.

 

Add more to your world

As regards "Add more to your world", there does not appear evidence to show that the expression has been used independently of the composite mark and this phrase appears to be a mere advertising expression falling in the third category of the classification referred to in the "I can’t believe its Yogurt" case.

The complainant in its trade mark application applied for a composite mark consisting of ‘Duniya Dekho’ and ‘Cox & Kings’ while the same mark appears along with the expression "Add More to Your World" in the advertisements. It therefore appears that the complainant intended that ‘Duniya Dekho’ be used as a trade mark while "Add more to your world" was a mere advertising slogan. The complainant has shown that it has trademark rights in "Duniya Dekho" but not in "Add more to your world".

B) Does the respondent have rights or legitimate interest in the domain name "duniyadekho.com"?

The panel finds that the Respondent has no rights or legitimate interests in respect of domain name "duniyadekho.com" for the following reasons:-

i) The Respondent has not been commonly known by the domain name;

ii) From the letter of the Respondent dated June 6, 1999, wherein the Respondent had clearly offered to sell the domain name and had stated "since you are using these phrases while advertising for sale of your packages", it is evident that the respondent knew of the pre-existing rights of the Complainant in the phrase "Duniya Dekho". Therefore the act of the Respondent in registering a domain name incorporating the Complainant’s trademark and partially activating its website cannot be said to be a legitimate use in connection with a bona fide offering of goods or services. Rather, by registering the name "duniyadekho.com" and partially activating its website under the said domain name, the Respondent is attempting to attract Internet users to its domain name "duniyadekho.com", for commercial gain, by creating a likelihood of confusion with the Complainant’s trademark "Duniya Dekho". 5 The panel finds that degree of activation of the respondent’s website duniyadekho.com is de minimis.

C) Whether the respondent has registered and is using the domain name "duniyadekho.com" in bad faith?

a) As has already been discussed under point 2) above on the question of the legitimate interest of the Respondent in the domain name, the fact that the Respondent knew of the prior rights of the Complainant in the trademarks "Duniya Dekho" evidences bad faith on its part. In his letter dated June 6, 1999, the Respondent clearly offered to sell the domain name at a price of Rs. 3,50,000/-. It is thus clear that the Respondent has acquired the domain name primarily for the purpose of selling the domain name registration to the Complainant who is the owner of the trademark, for valuable consideration in excess of its documented, out of pocket cost, directly related to the domain name. 6

b) The respondent has in its response dated May 10, 2000, stated that it is willing to transfer the domain name free of cost to the Complainant provided the Complainant makes a contribution of US $ 4.5 million towards the street children of Bangalore. This could be made to any body/institution engaged in the welfare of street children and the Respondent’s interest is limited to ensuring that the money is utilized for the benefit of the street children.

In the light of the previous letter of the Respondent to the Complainant indicating its knowledge of the Complainant’s use of the phrase "Duniya Dekho" as part of its travel package and the respondent’s offer to sell the domain name to the complainant for a sum of Rs. 3,50,000/- the panel finds this "Good Samaritan" gesture on the part of the Respondent hard to digest.

c) Respondent had partially activated its website "duniyadekho.com" and provided information relating to the state of Karnataka. The panel finds that despite such a de minimis use of the domain name by the Respondent, the Respondent is still clearly intending to attract for commercial gain internet users to its website, 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 of a product or service on its website.

d) The Complainant has submitted evidence to show that the Respondent has implemented a clear cybersquatting strategy to register the advertising baselines of several well known brands, in corresponding domain names. The Respondent has rebutted this contention by stating that these facts are irrelevant to this proceeding since none of the other parties have instituted cases against the Respondent. However the Panel finds that this activity of the Respondent suggests a studied selection of domain names for the purposes of profiting from such registrations. This factor would go to corroborate the Panel’s inference of bad faith from the Respondent’s registration of the domain name "duniyadekho.com". 7

In conclusion, "Duniya Dekho" and "Add more to your world" are not inherently distinctive expressions. They are descriptive. The complainant has established extensive use of a composite mark containing both these expressions and independently the expression "Duniya Dekho". "Add more to your world", despite an opportunity being provided, was not shown to have been independently used. "Duniya Dekho" is an essential feature of the composite mark , since it appears to have been intended as a trade or service mark and that is also the effect in the market place. "Add more to your world" in contrast does not appear to be intended as a trademark, but as a mere advertising slogan. Even the effect is not that of a trademark. No other evidence was provided by the complainant to show that "Add more to your world" had become an essential feature of the composite mark.

 

7. Decision

In the light of the foregoing, the administrative panel decides that:-

a) the domain name "duniyadekho.com" registered by the Respondent is confusingly similar to the trademark of the Complainant;

b) the Respondent has no right or legitimate interest in respect of the domain name "duniyadekho.com"; and

c) the domain name "duniyadekho.com" has been registered and is being used in bad faith.

Accordingly pursuant to paragraph 4(1) of the policy the administrative panel requires that the registration of the domain name "duniyadekho.com" be transferred to the Complainant.

However, as regards the domain name "addmoretoyourworld.com" the panel finds that the Complainant has failed to establish its trademark or service mark rights in the expression "Add more to your world". Since one of the three conditions of paragraph 4(a) of the Policy has not been satisfied as regards this domain name, the panelist does not give any finding on the other two conditions. The panel concludes that the domain name "addmoretoyourworld.com" should not be transferred to the Complainant.

 


 

Pravin Anand
Presiding Panelist

Dated: July 10, 2000


 

Footnotes:

1. Section 2(1)(zb) of the Trade Marks Act, 1999.

2. Kerly’s Law of Trade Marks and Trade Names, (12 Edition) paragraph 14-21 titled "Infringement by taking essential feature."

3. I Can’t Believe its Yogurt ( 1992 RPC 533 )

4. Abercrombie & Fitch Co. V. Hunting World, June 189 U.S.P.Q. 759 (2nd Civ. 1976)

5. As was held in Quixtar Investments, Inc. v. Dennis Hoffman; Case No. D2000-0253 although the domain name in question was used by the Respondent before any notice of the dispute, the circumstances surrounding such use was not "in connection with a bona fide offering of goods or services".

6. See paragraph 4(b)(i) of ICANN’s Uniform Domain Name Dispute Resolution Policy

7. See Stella D’oro Biscuit Co., Inc v. The Patron Group, Inc. Case No. D2000-0012.

 

Источник информации: http://www.internet-law.ru/intlaw/udrp/2000/d2000-0411.html

 

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