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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Satyam Computer Service Limited v. Vasudeva Varma Gokharaju

Case No. D2000-0835

 

1. The Parties

Complainant: Satyam Computer Services Limited of Mayfair Centre, 1-8-303, SP Road, Secunderabad 500 003 Andhra Pradesh, India

Respondent: Vasudeva Varma Gokharaju of 35240, Drakeshire Place, Apt#204, Farmington, MI 48335 USA

 

2. The Domain Names and Registrar

Domain Names: satyam.net, satyam.org

Registrar: Network Solutions

 

3. Procedural History

The Complaint was filed in the Center by e-mail on July 20, 2000 and in hard copy on July 24, 2000. WIPO verified that the Complaint satisfies the Rules and the Supplemental Rules and that payment was properly made. The panelist is satisfied this is the case.

The Complaint was properly notified on August 21, 2000 in accordance with Rules, paragraph 2 (a) and a Response was filed by the Respondent within the extended deadline of September 10, 2000.

The administrative panel was properly constituted. The undersigned panelist submitted a Statement of Acceptance and Declaration of Impartiality and Independence on October 13, 2000. A deadline was set of October 31, 2000, for the decision.

 

4. Parties’ Contentions

A. Complainant

The Complainant states that:

The Complainant is the flagship company of the Satyam Group of companies and is engaged inter alia in the business of providing software services and delivering comprehensive IT solutions to its customers. From being a simple service provider, the complainant has moved to being a high-end consulting company providing services in 30 countries. The complainant’s multi-faceted activities include Software Services and Engineering Services, Systems Integration, Electronic Commerce, Software Product Development and Management Consulting. The complainant’s software services cover a broad band of industry segments such as telecom, manufacturing, financial services, insurance, banking, industrial, health and transportation sectors. Within a short span since their inception, the complainant and its Internet arm, Satyam Infoway Limited, have gained expertise in engineering supply chain management, ERP Solutions, E-Commerce solutions and embedded systems. Satyam Infoway Limited is one of the only two Indian companies presently listed on the NASDAQ. Internet access and hosting services and consulting are also amongst the key domain areas of the complainant and its Group companies. It has nearly 6,000 IT professionals, who operate out of its state-of-the-art software development centers located in India, the USA, Japan, Singapore and the UK. These Centers work as an extended enterprise/IT partner for over 150 Fortune 500 and multinational clients worldwide. Apart from its country offices in India, the complainant has offices in the United Kingdom, Australia, Japan, the Netherlands, Singapore, Dubai in the Middle East, and the cities of Birmingham, Vienna, Atlanta, New Jersey, Illinois, California, Ohio and Seattle in the USA.

The word SATYAM, which means "truth" in the Sanskrit language, is a totally arbitrary trademark in relation to software services selected by the complainant company in the year 1987. With meticulous devotion to quality, world class infrastructure, state-of-the-art development centers, commitment and client orientation of its personnel, the complainant has elevated ‘SATYAM’ to a well known trademark in India and internationally, and the trademark SATYAM has acquired a reputation which is a force to reckon with worldwide. Now, the mere mention of the word SATYAM instantly conjures up the image of the complainant and its achievements in the field of software and IT.

The trademark SATYAM is an essential and striking feature of the complainant and its Group companies’ business names. There are several companies in the Satyam Group of companies, including:

Satyam Infoway Limited,

Satyam Computer Services Limited,

Satyam Europe Limited,

Satyam Asia (Pte.) Limited,

Satyam Venture Engineering Services Pvt. Ltd.

Satyam Japan Limited

Satyam GE Software Services Limited

Satyam Emerging Technology Pvt. Ltd.

The complainant has applied for registration of and has pending trademark applications for the word SATYAM and the Corporate logo including the word SATYAM in India in classes 9 and 16 as per the following details:

S. No.

Mark

Appln. No.

Dated

Class

1.

Satyam (word)

769401

26.9.1997

9

2.

Satyam (word)

769400

26.9.1997

16

3.

Satyam & Corporate logo

797797

6.4.1998

9

4.

Satyam & Corporate logo

797798

6.4.1998

16

All the above marks have been used by the Satyam Group since 1987. The complainant has also registered the domain address "satyam.com" with NSI in 1997, and it has been regularly operating a web site at the said address since 1997.

The complainant has seen a meteoric rise from its inception as a basic software services provider to its current status as an Indian software giant. The complainant has the humble distinction of having an instrumental role in the IT revolution of the last century and its entry into the present. The net sales of the complainant are to the tune of Rs. 378.13 crore (approx. US$ 86 million) and its net profit Rs. 72.80 crore (approx. US$ 16 million). The Complainant annexed to its Complaint copies of some specimen invoices pertaining to the complainant’s billing for substantial sums for software services since 1996, in the USA, Japan, Denmark, Bahrain and Singapore. Worldwide advertising expenditure amounts to 590.29 Rs inlacs over the last 8 years.

The Complainant is one of the 100 leading pioneer technology companies that are at the forefront of the knowledge economy and has been conferred several awards for its role. The complainant is widely acclaimed as a major contender in the software export arena and for leveraging and advancing technology and has contributed to economic development and progress through its services. The complainant has numerous honours and awards to its credit, including:

- the Ernst and Young Entrepreneur of the Year in the Services Sector Award in 1998;

- the "Global Growth Companies" Award given by the World Economic Forum in 1997, for Top-Performing Global growth Company from India;

- World Economic Forum, Technology Pioneer;

- American Telugu Association, Contribution to Information Technology in India, July 2000.

- Motilal Oswal Institute of Wealth Creation, Certificate of Honour for being the Fastest Wealth Creating Company (1994-1999);

- STPI, Best Regional Software Export Award, 1996-97;

- STPI, Top Software Exporting Unit in Andhra Pradesh;

- STPI, Highest Export Award, 1999-2000,

- HYSEA (Hyderabad Software Export Assn.), Award for Highest Software Export, 1997-1999)

Press coverage and media reports on the Complainant run into several volumes. Samples of such press coverage and write-ups were annexed to the Complaint.

This complaint concerns the misappropriation by the Respondent of the trademark/name SATYAM which effectively symbolizes and encapsulates the complainant’s and its Group companies’ identity. The complainant is entitled to protection of the said trademark under common law by virtue of the fact that the said trademark has been continuously and extensively used by the complainant for nearly 13 years. The business of the complainant, referred to in the preceding paragraphs, has been conducted since the year 1987, under the trademark "SATYAM" which mark was newly and freshly coined by the complainant and, having no obvious meaning to any person and not being a dictionary word, is an invented word having the highest degree of inherent distinctiveness. The complainant is the proprietor of the trademark and trade name "SATYAM" in relation to the said business.

More specifically, the mark "SATYAM" has been used by the complainant in relation to all its stationery articles including letterheads, visiting cards, order forms, invoices, envelopes, and in relation to sales promotional materials, such as brochures, catalogues, price lists etc. The mark "SATYAM" has also been used in relation to advertisements issued in print media, both national and international, such as newspapers, magazines etc. In each of the aforesaid instances of use, the mark "SATYAM" is prominently displayed and has become the focus of the complainant’s entire business and also that of users. Additionally, the consumers recognize the complainant’s business and its various components referred to above by reference to the mark "SATYAM" / "Satyam Group". Specimen advertisements for job opportunities with the complainant were annexed to the Complaint.

Thus, the mark "SATYAM" having been extensively used in relation to the business of the complainant and its Group companies in the software and IT industry, has acquired distinctiveness and substantial reputation. The said mark is understood and associated by consumers in India as well as abroad as the mark of the complainant denoting its goods and business. On account of the high degree of inherent and acquired distinctiveness which the mark "SATYAM" is possessed of, the use of an identical mark or any other phonetic, visual or structural equivalent thereof, by any other person would result in immense confusion and deception in the trade, leading to passing off.

The complainant has filed documents to show extensive use of the mark "SATYAM", including advertisements in newspapers and magazines. The complainant is presently in the process of expanding its business under the trademark "SATYAM" to e-commerce and other net related activities and its plans have already received tremendous publicity in India as well as overseas.

The Respondent in the present dispute has registered the domain names "satyam.org" and "satyam.net" thereby misappropriating illegally and without authority the trademark SATYAM, which is the exclusive property of the complainant. The impugned domain names are identical to the trade mark owned by the complainant and their existence on the ".org" and ".net" domains, can cause irreparable loss to the goodwill and reputation that has been built by the complainant over the past thirteen years.

The complainant submits that the Respondent has registered the impugned domain name "satyam.org" in 1999, and "satyam.net" in the year 1998, and even till date, the Respondent has not activated a web site at the said addresses which clearly demonstrates its intention of merely blocking the impugned domain names. The complainant has attempted but is unable to access the web sites bearing the addresses www.satyam.net and www.satyam.org. It is submitted that if the Respondent had a bonafide reason to register the said domain names, it would have proceeded to activate its web sites bearing the said addresses. The fact that it has chosen not to do so implies malafide intentions on its behalf, to sell the same to a third party or to use the same for fraudulent purposes. The aforesaid facts clearly demonstrate that the Respondent has no rights or legitimate interest in the disputed domain names and the said registrations should be considered as having been registered in bad faith.

The domain name registered by the respondent should be considered as having been registered in bad faith on account of a combination of the factors which are summarized below:

- the established prior rights of the complainant over the trademark SATYAM and the protectability of the said mark on account of its reputation as demonstrated in the preceding paragraphs;

- the lack of a bonafide intention on the part of the respondent to use the impugned domain names to offer goods and services;

- the registration by the Respondent, in two different gTLDs, of not one but two domain names that are identical to the complainant’s trademark SATYAM;

- the registration by the Respondent of domain names that contain the complainant’s legal name in entirety;

- the prior existence of the complainant’s web site under the domain name "satyam.com".

The complainant’s trademark SATYAM is well known and is a leading name in the Software Services and IT industry. Under these circumstances, if the Respondent or any third party proceeds to operate a web site under a trade mark identical to that owned by the complainant, the potential customers would be induced to:

- Subscribe to the services of the impugned web site or to deal in some manner with the respondent believing it to be licensed or authorised by the complainant;

- Believe that the respondent has some connection with the complainant in terms of a direct nexus or affiliation with the Satyam Group of companies;

- Believe that the respondent is carrying on activities that have been endorsed by the complainant and services/goods that are sought to be offered by the respondent have the same level of quality and reliability that is synonymous with the goods and services of the complainant company.

Therefore, to derive illegal benefit, the Respondent has misappropriated the trademark of the complainant in order to pass off its goods and services as and for those of the complainant. The Respondent’s registration of a domain name identical to that of the trade mark owned by the complainant is aimed at diverting the business of the complainant and lowering its reputation by tarnishment of the asset, which is the trademark "SATYAM" owned and used exclusively by the complainant and its Group companies. It is submitted that the act of the Respondent in registering the impugned domain names amounts to an act of passing off its business as and for that of the complainant.

B. The Respondent states that:

The Complainant has failed to:

- demonstrate the three independent requisites under Paragraph 4(a) of the Uniform Domain Name Dispute Resolution Policy, namely:

- Domain Name of the Respondent is identical or confusingly similar to the Trade mark/Service mark owned by the Complainant;

- The Respondent has no rights or legitimate interests in the domain name; and

- The Domain Name has been registered by the Respondent and is being used in bad faith.

- establish the requisite elements under the common law theory of "Misappropriation";

- establish the requisite elements under the common law theory of "Passing Off"; and

- establish the requisite elements under the common law theory of "Tarnishment".

Statistics indicate that an overwhelming majority of the Population of Republic of India comprises of Hindus, the believers in the religion of Hindu. Hindu mythology preaches the existence of various forms of "God’. One of his ‘avatar"/ "form" is "Lord Satyanarayana", who is worshipped with immense devotion and respect. The mention of the word "Satyam" (short form of Lord Satyanarayana) among Hindus, instantaneously brings to mind "Lord Satyanarayana". As a result, it is extremely common among the devotees of Lord Satynarayana to name their children "Satyam". Usually, the family members and friends of a person named Satyanarayana refer to him as "satyam". The Respondent’s family being an ardent devotee of Lord Satyanarayana, the name "satyam" runs through their family. For instance, Respondent’s grandfather was named "satyam" and his cousin brother is named Satyanarayana (who is referred to as "satyam"). The Respondent even intends to name his son after his grandfather as "satyam"

Besides this nexus, as rightly indicated by the Complainant, the word "Satyam" in Sanskrit (or in most of the Indian languages which emanate from Sanskrit) means, "Truth". It aptly symbolizes the Hindu religious perception of the Sanskrit adage "SATYAM SHIVAM SUNDARAM" – English translation of which means "TRUTH LOVE BEAUTY". The adage represents the values that are deeply embedded in India’s outlook. The underlying idea can best be articulated on a comparison with the flower Lotus. (the National Flower of India). "A lotus is considered the symbol of truth, auspiciousness and beauty SATYAM SHIVAM SUNDARAM). The Lord is also that nature and therefore, his various aspects are compared to a lotus (ie. Lotus-eyes, Lotus feet, Lotus hands, the Lotus of the heart etc.) The Lotus blooms with the rising sun and close at the night. Similarly, our minds open up and expand with the light of knowledge. The lotus grows even in slushy areas. It remains beautiful and untainted despite its surroundings, reminding us that we too can and strive to remain pure and beautiful within, under all circumstances". (Citations omitted)

The Respondent strongly believes that every effort must be made to restore the awareness of these values in personal and collective life for the common good and benefit of the mankind and decided to use internet as a medium. On conducting a preliminary search for the possible domain name options, he was enthused by the availability of "satyam.org" and "satyam.net". He felt that "satyam" which almost instantaneously conjures the image of Lord Satyanarayana and symbolizes the underlying idea behind the adage "SATYAM SHIVAM SUNDARAM", is the best suited domain name to serve his twin purposes of:

- creation of a non commercial free web site for dissemination of message of truth as enshrined in the Sanskrit adage and the spread the teachings of prominent Indian Gurus and their perceptions about "truth"; and

- create personal profile web site for his cousin brother Satyanarayana.

A trademark search on the United States Patent and Trademark Office("USPTO") (the Respondent is a resident of the United States Of America) to determine the trademark interests / rights of other parties in relation to the word "Satyam", indicated that there were no registered, abandoned or pending applications with USPTO relating to the word "Satyam". Encouraged by the search results, which confirmed no potential legal tangles, the Respondent registered the domain names "satyam.org" and "satyam.net".

The Respondent also owns several non commercial websites like www.srisatyasai.com (which relates to Guru Sri Satya Sai), www.eamcet.net (which provides free information about a Medical Entrance Examination in the State of Andhra Pradesh, India). The Respondent also acquired registrations for various domain names constituting the last and first names of his family members and relatives. (For instance, the domain gokaraju.com was registered to create his own profile pages, yasoda.com was registered for his niece.) The Respondent annexed a list of domain names that he stated were either for the dissemination of free information or for creation of personal profiles of his family members and relatives strictly on a non commercial basis to the Response. He also enclosed the education certificates of Mr. Satyanarayana and few other family members of the Respondent which was stated to lend proof of their names thereby authenticating the motive behind the registrations.

It is a well established under the common law that a trademark cannot be appropriated in gross, as its nature is incapable of such an existence. The trademarks do not confer monopoly rights in a particular mark. The trademarks merely indicate the source of the origin of goods. There is no such thing as a property right in a trademark except as a right appurtenant to an established business or trade in connection with which the mark is used. As long as there is no competition in a relevant market which poses a potential threat of deception as to the source of the origin of the goods, the trademarks law and its underlying theories have no legitimate place. Absent a competition, trademark law has no purpose. (Citations omitted)

The Respondent is not engaged in any commercial activity nor has he registered any domain names other than the names relevant to him or his family members. None of the domain names registered by the Respondent have a commercial significance which can attribute the alleged bad faith to his actions. The contestants in the dispute are not competitors nor do they share common interests. The Complainant is engaged in the business of computer related services and the Respondent is involved in creation of web sites for free dissemination of information(not even vaguely related to computers) for the public benefit.

The Respondent sincerely intended/intends to use the web sites solely for non commercial purposes like dissemination of information about truth and creation of online profiles of his family members. This strict non commercial usage of the Respondent would no way result in a likelihood of confusion situation or an actual confusion.

Thus, it is axiomatic from the Respondent’s circumstances that there is no source of origin indicating trademark function of the word "satyam" .

Further, under the Common Law an extensive third party usage of a mark reduces the distinctiveness of the mark and it deserves no / minimum protection. (See also 1997 Trademark Review Commission Report which reads "third party uses of the same or similar marks are relevant in determining the fame and distinctiveness of the mark, since the mark must be substantially exclusive use." 77 Trademark Rep. 375, 461(1987)).

The Respondent annexed documents to indicate the prolific usage of the word "Satyam". Annexure D consisted of information relating to several third party domain name registrations using the word "Satyam". (For Instance, the websites www.satyaminfoway.com and www.satyamonline.net contain materials relating to teachings of Mahatma Gandhi, Guru Nanak, Swamy Vivekananda and links to hindu religious materials. The websites are captioned "The way of Truth". The website www.satyamnadeen.com provides information relating to books that profess spiritual awakening. The website www.spiritofyoga.com.au/satyam.htm provides information about the philosophy of Swamy Satyananda. http://satyam.aurangabad-online.com/ relates to mats business, the domain www.satyam.ws registered by Mr. Suren Safaya, is still under construction.) Further, the Annexure also lists several third party business names comprising of the word "satyam" (For Instance Satyam Impex, Satyam Godasi, Satyam Tyre, Satyam Hall, Satyam and Arwens Weddings, Satyam Priyadarshi..etc.)

Annexure E consisted of copies of webpages from the online telephone directory of few towns in the State of Andhra Pradesh, India. The web pages list names of customers comprising of the word "Satyam". The annexure just indicates names of the subscribers of the particular Telephone Service in just few towns in the State of Andhra Pradesh, India. The Respondent respectfully submits that if the listing in telephone directory is any indication, there would be at least a million people with the word "satyam" as / in their names within the Republic of India. The numbers clearly indicate the prolific and common usage of the word "Satyam". The popularity could largely be attributed to the sense of devotion among the devotees of Lord Satyanarayana.

Annexure F set out the webpages which list baby names with the word "Satyam".

The Respondent was not aware of any trademark rights in the word "Satyam" till he received this complaint. A search on the USPTO on receiving the complaint retrieved a pending application before the USPTO to register the mark "satyam". The Respondent respectfully submits that the pending application has been filed by Mr. Srivastava Krishan and not by the Complainant. The search also retrieved a registration( Reg. No 1819481 with the USPTO) for the Sanskrit adage "SATYAM SHIVAM SUNDARAM". A search on the Australian Trademark office confirmed registration (No. 497735) of the mark "satyam" by Satyam Clothing Company. Pty Ltd.

Thus, the prolific usage of the word "satyam" in several third party domain names, business names, pending and registered trademark applications with the USPTO and the Australian Trademark Office, its immense popularity as a persons name among the devotees of Lord Satyanarayana, indicates lack of distinctiveness of the mark "Satyam". The situation can best be described as a crowded market, under the common law terminology. When there is such a prolific usage, even assuming but not conceding that there is a competition between the contestants, there can be no likelihood of confusion as a consumer exercises his best judgment while making a source of origin determination in a crowed situation. Moreover, the consumers of the complainants services are sophisticated customers dealing with highly advanced computer related products and services. A lot of diligence is used in making a purchase decision. This exercise of diligence rules out any likelihood of confusion.

As a matter of fact, the respondent also hosts a non commercial site www.mastercvv.com registered by one of his friend due to the Respondent’s personal interest in dissemination of speeches of Gurus. (Attached to the Response was copies of invoices cleared by the Respondent to the web site register and a copy of the web site as Annexure G.)

To establish a claim for misappropriation, the complainant has to establish that:

a) the Complainant has developed a product or service at some cost and effort

b) the Respondent is free riding on the Complainants costly efforts

c) the Respondent’s use of the information is in direct competition with a product or service offered by the Complainant,

d) the ability of the Respondent to free ride on the efforts of the Complainant would reduce the incentive to produce the product or service; and

e) the Respondent’s activity would substantially threaten the quality of the goods/ services of the Complainant.

The foregoing elucidation clearly sets out that the Complainant did not establish any of the common law misappropriation elements. The fact that the contests are not competitors and there is no usage of the word "satyam" to indicate goods or services, negates any finding of misappropriation in this dispute.

Under common law, "Passing off " means unexplained substitution of the product of one party on calls for that of another, which can be enjoined as unfair competition. This complaints claim is inappropriate as there is no substitution of the products or services of the complainant.

Under common law, "Tarnishment" generally arises when the complainant’s trademark is linked to products of shoddy quality, or is portrayed in an unwholesome or unsavory context likely to evoke unflattering thoughts about the owner’s product. Respondent intends to create web sites with truth related matters and the dissemination of sayings by Great Indian GURUS. The Complainant could not establish how websites relating to dissemination of information relating to teachings of gurus can tarnish the quality of goods or services rendered by the Complainant. This claim is just inappropriate in light of the aforementioned elucidation.

The Respondent respectfully points out the inconsistencies of the complaint statements in the complaint. In paragraph 12 (g) of the complaint the Complainant expressly stated that "satyam" is a word coined by the complainant and has no obvious meaning to any person. The complainant contradicts its claim in Paragraph G by expressly stating in Paragraph 12(b) on page 8 of the complaint that "satyam" means "truth" in Sanskrit language. This inconsistency vitiates the basic claim of the complaint. This clearly indicates a desperate move on the complaints part to reverse hijack the domain names rightfully owned by the Respondent.

The Respondent is a computer programmer and an analyst by profession. (Attached to the Response was a letter confirming his employment from the employer of the Respondent as Annexure H). As all his domain name registrations are for a non commercial use, the Respondent cannot not afford to hire a web designer to design and activate the websites. The Respondent works on the websites in his free time. He has been holding the registrations for approximately 18-24 months. There has been no attempt on his part to sell or gain from his domain names registrations which is a strong indication of his good faith registrations. On receiving the complaint, the Respondent being uncertain of the possible repercussions of a genuine non-activation of the web sites, immediately activated the web sites. "satyam.org" provides personal profile of Mr. Satyanarayana (the Respondent’s cousin brother) and "satyam.net" provides information about "satyam" ie. "truth". The Respondent also included a clear disclaimer in the web sites to clearly indicate non association with the Complainant. Under Common law and the trademark registration procedures the world over, disclaimers have been accepted as a viable means to shrug away any possible association with the contestants or similar right holders.

Further, the Complainant registered the Domain name satyam.com in the year 1995, (not in 1997, as mentioned by the complainant, the registration details were enclosed with the Response as Annexure I) and has been extensively using the same. They can as well continue using the same site. In addition to satyam.com, complainant also registered a web site satyam.net.in. The domain names satyam.org and satyam.net were available in 1995. But the complainant chose not to register the same. Complainant firmly believes that the word "satyam" has acquired distinctiveness and the use of the same by a third party would result in dilution of its distinctiveness. But instead, the complainant opted not to register .net and .org domains when they were available and now they are merely making attempts to reverse hijack the domain names rightfully owned by the Respondent for legitimate reasons. Thus, the Respondent has not registered in order to prevent Complainant from reflecting the mark in a corresponding domain name

As the Complainant did not provide even a scintilla of evidence that the Respondent diverts or intends to divert Complainant customers to its web site. Certainly, if Respondent wanted to gain from his registrations, he would have attempted to dispose off the web sites to third parties. He would have not waited for 2 years. Further, there is also no evidence of Respondent’s actions to confuse or pass off goods from his web sites.

The Complainant was aware of the Respondent’s registrations for the last two years. What is inexplicable is the silence of the Respondent for two years before he initiate this action. Moreso, when there has been no change in the status of the web sites in two years.

The decision of the administrative panel in Maruti Udyog Limited v. Tella Rao, (Case no D2000-0518) is very instructive to the present dispute.

 

5. Discussion and Findings

According to paragraph 4(a) of the Uniform Dispute Resolution Procedure Policy, the Complainant must prove that:

(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and

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

(iii) The Domain Name has been registered and is being used in bad faith.

A Identical or confusing similarity

It is prima facie obvious that the Domain Names are identical to the Complainant’s SATYAM mark which it has been using since 1987 and, therefore, that the Domain names and the SATYAM mark are confusingly similar.

The panelist notes the contradiction in the Complaint that on the one hand the Complainant admits that Satyam means truth in Sanskrit, however then goes on somewhat inconsistently to assert that the word was coined by the Complainant and has no dictionary meaning. I accept that Satyam means truth in Sanskrit and that it is often used in this context and that it is a common Indian name. However, I am also persuaded by the Complainant’s evidence of longstanding use and extensive business worldwide, including substantial business in India and also the United States of America, where it has no less than 8 offices. Accordingly, I find that SATYAM has secondary meaning in the context of computer services and is exclusively associated with the Complainant in this field.

B Rights or legitimate interest of the Respondent

The Respondent has sought to prove that he has registered the Domain names either due to the name of a member of his family for family purposes or to put up a site for non commercial purposes which would be fair use in the circumstances. However, the Respondent did not seek to put any content on the site until the dispute arose. Most of the domain names given by the Respondent as registered in his name as evidence of his interest in spreading the teachings of prominent Indian gurus and their perceptions about truth do not have any content. None except that posted at satyam.net have any content relating to Indian gurus. Satyam.net consists of a page and a half of links to other sites, but is clearly makeshift and has the appearance of being hastily posted. Further, none appear to have any family related sites except for satyam.org which contains the CV of the Respondent’s "cousin brother" who is a worker in the IT industry and therefore works in the same field as the Complainant. Accordingly, this case can be clearly distinguished from the case of Maruti.com where the Respondent displayed non commercial family content. The Respondent has not persuaded the panelist that he has any rights or legitimate interest in respect of the Domain names.

C Bad Faith

Paragraph 4 (b) of the Rules sets out four non exclusive criteria which shall be evidence of the registration and use of a domain name in bad faith as follows:

(i) the Respondent has registered or has 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 trade mark or service mark or to a competitor of that complainant for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) the Respondent has registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct: or

(iii) the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 its web site or location or of a product or service on its web site or location.

There is no evidence that the Respondent has tried to sell the name. The Respondent does not seek to explain why he registered both Satyam.net and satyam.org, but otherwise there is no evidence of a pattern of conduct of cybersquatting. However, the Respondent is a computer programmer and analyst. He, therefore, works in exactly the same industry as the Complainant and despite his protestations that he has registered the Domain Names for a non commercial purpose, he has posted the CV of his "cousin brother" also a computer programmer on the domain name satyam.org. There is a disclaimer on the site, but given the expectations of the users of the Internet when seeing the mark Satyam in the field of computer services I am not satisfied this would serve to avoid confusion. The Respondent points to the relative sophistication of the Complainant’s customers, (appearing again to show some knowledge of the computer software services industry), but does not take account of ordinary or small business Internet users aware of, but less familiar with the Complainant who may be less circumspect and more likely to be confused. Accordingly, I find that the Respondent has registered and used the Domain Names in bad faith primarily for the purposes of disrupting the business of a competitor and, probably, also to attract Internet users to his site for commercial gain in circumstances where confusion is highly likely. The case to which the Respondent refers Maruti.com can be distinguished on the grounds that there was in that case no evidence of such bad faith.

 

6. Decision

In light of the foregoing the panelist decides that the Domain Names are identical to the Complainant’s trade mark SATYAM, the Respondent does not have any rights or legitimate interest in respect of the Domain Names and the Domain Names were registered and used in bad faith.

Accordingly, in the light of the above, the panelist requires that the registration of the Domain Names "satyam.net" and "satyam.org" BE TRANSFERRED to the Complainant.

 

 


 

Dawn Osborne
Presiding Panelist

Dated: October 30, 2000

 

Источник информации: http://www.internet-law.ru/intlaw/udrp/2000/d2000-0835.html

 

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