юридическая фирма 'Интернет и Право'
Основные ссылки










Яндекс цитирования

Рассылка 'BugTraq: Закон есть закон'



Rambler's Top100



Источник информации:
официальный сайт ВОИС

Для удобства навигации:
Перейти в начало каталога
Дела по доменам общего пользования
Дела по национальным доменам

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Maruti Udyog Ltd. and Suzuki Motor Corporation v. World Information Pages

Case No. D2000-0881

 

1. The Parties

Maruti Udyog Ltd., 11th Floor, Jeevan Prakash Building, 25, Kasturba Gandhi Marg, New Delhi-110001, India and Suzuki Motor Corporation, 300, Takat suka, Hamamatsu, Japan (Complainants).

World Information Pages, 61, Manglam Building, 5-B, Old Palasia Indore, Madhya Pradesh-452001, India (Respondent).

 

2. The Domain Name and Registrar

The Respondent is the registrant of the following domain name: "marutisuzuki.com", registered with Network Solutions, Resolution @ Netsol.Com, 505, Huntmar Park Drive, Herdon Virginia-20170 U.S.A. (NSI).

 

3. Procedural History

The Complaint in this case was filed by e-mail on July 27, 2000 and in hardcopy on July 31, 2000, with the WIPO Arbitration and Mediation Center.

The Center has found that the Complaint satisfies the formal requirements of the Policy, Rules and Supplemental Rules, in accordance with the Rules for Uniform Domain Name Dispute Resolution Policy and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy.

On July 31, 2000, the Center transmitted a request to NSI to verify the following facts:

  • To confirm that a copy of the Complaint was sent to NSI by the Complainant,
  • To confirm that "marutisuzuki.com" is registered with NSI,
  • To confirm that the entity identified in the present case as the Respondent is the current registrant of the domain name,
  • To provide full contact details that are available in NSI's database for the registrant, technical contact, administrative contact and billing contact, for the said domain name,
  • To confirm that the Uniform Domain Name Dispute Resolution Policy applies to the registered domain name,
  • To indicate the current status of the domain name.

Vide communication dated August 3, 2000, NSI informed the Center as under:

  • That NSI is the Registrar of the domain name registration,
  • That World Information Pages is the current registrant of the "marutisuzuki.com" domain name registration,
  • That the Registrant is:

World Information Pages (MARUTISUZUKI2-DOM)
61 Manglam Building,
5-B Old Palasia,
Indore, MP-452001
IN

Administrative Contact, Billing Contact:
Bhargava Nidhi
[Contact details omitted]

NSI's 4-0 Service Agreement is in effect.

Technical Contact, Zone Contact:
DNS Administrator-Hypermart
[Contact details omitted]

The domain name registration "marutisuzuki.com" is in "Active" status.

On August 7, 2000, the Respondent was notified of the Complaint filed by the Complainant and opportunity was granted as per the Rules for filing of a Response. This was done by e-mail. The Administrative Panel finds that the WIPO Center has satisfied its notification obligations under Rule 2(b).

The Center on August 14, 2000, received response from the Respondent. In view of this, the Center, on August 16, 2000, replied to the queries of the Respondent and informed the Respondent that the Administrative Panel would be appointed as per the Rules.

On August 29, 2000, the Center received acknowledgment of its response from the Respondent.

On September 14, 2000, the Center appointed an Administrative Panel consisting of a single member viz., Maninder Singh and this was notified to the Complainant and the Respondent.

The language of the administrative proceedings is English.

 

4. Factual Background

Complainant No. 1 in this administrative proceeding is a company registered under Indian Companies Act, 1956, and Complainant No.2 is a Corporation duly organized under the laws of Japan.

The Complaint is based on the trademarks and trade names 'Maruti Suzuki' 'Maruti' and 'Suzuki'.

The goods and services in connection with which the mark is used by the Complainants include manufacturing of and dealing in automobiles, motor cars, vans, apparatus for locomotion by land, bus bodies and automobile parts and fittings, industrial oils and greases.

The Complainants further intend to use the mark in respect of goods and services in future as to garage keepers and suppliers of and dealers in petrol, electricity and other motive power for motors and other things and iron founders, mechanical engineers and manufactures of machinery, etc.

The company Maruti Ltd. was incorporated under the provisions of Indian Companies Act, 1956, on June 14, 1971. On October 30, 1980, the Central Legislature (Parliament) of India passed the Maruti Limited Act, 1980, which acquired the undertaking of the aforesaid company. On February 24, 1981, Maruti Udyog Limited was incorporated under the Indian Companies Act, 1956, as a Government Company for modernization of Indian automobiles industry and production of fuel-efficient vehicles.

Maruti Udyog Limited is a joint venture of Complainant No.1 and Complainant No.2. The trademarks 'Maruti' and 'Suzuki' join to form a hybrid trademark 'Maruti Suzuki' which represents both the Complainants. The said parties entered into a license agreement and a joint venture agreement. In terms of the said license agreement and subsequent license agreement in relation to various models of vehicles, the trade mark 'Maruti Suzuki' is to be displayed prominently on all the products manufactured by the Complainant No.1.

The trademark 'Maruti' of Complainant No.1 is duly registered with respect to vehicles, bus bodies, automobile parts and fittings, under the Indian Trade and Merchandise Marks Act, 1958, since October 25, 1976. The Complainant No.1 has also applied for the registration of the trademark Maruti and Wing device in class 4 in respect of industrial oils, greases and lubricants and the trade mark Maruti in class 9 in respect of audio systems for the vehicles under the Trade and Merchandise Marks Act, 1958.

The trade mark 'Maruti' and the logo of Wing device with word/mark 'Maruti' underneath is also registered under the relevant trade mark laws in nineteen countries, namely India, Poland, Italy, Portugal, Malta, Nigeria, Sri Lanka, Argentina, Nepal, Hungary, France, Australia, Uruguay, Ethiopia, Zimbabwe, Kenya, South Africa, Sudan and Egypt.

The trade mark 'Suzuki' is registered under the trade mark laws in various countries including Japan, Argentina, Guatemala (middle America), Costa Rica, Peru, U.S., Bahrain, France, Nigeria, England, Singapore, Indonesia, Canada, Hongkong, Laos, Pakistan, Afghanistan, Paraguay, Jamaica, Chile, New Zealand, Vietnam, South Africa, Finland, Sweden, Cambodia, Saudi Arabia, Portugal, Australia, Denmark, Ireland, Greece, East Germany, Austria, Switzerland, Spain, Romania, Bulgaria, Poland, Yugoslavia, Lebanon, Kenya, Panama, Tanzania, Guyana, Kuwait, Colombia, Belgium, Luxembourg, Holland, Bangladesh, Ethiopia, Cyprus, Egypt, UAE, Yemen, Barbados, Burma, Sudan, Qztar, Oman, China, Jordan, Liberia, Uganda, Zimbabwe, Bermuda, Algeria, Malibu, Zambia, Zaire, Israel, Russia, Croatia, Macadamia, Madagascar, Armenia, Azerbainjan, Beratus, Estonia, Gurujia, Latvia, Litavnla, Tazikstan, Turkmenistan, Ukraine, Uzbekistan, Chez, Slovakia, Beluga, Angira, Andrea, Mongol.

The Complainants have used the mark 'Maruti Suzuki' since a very long time. Since December 1983, till date the Complainant No.1 has sold 2.9 million vehicles including the domestic sales and export to 36 countries across the world using the said trademarks. Complainant No.1 is exporting vehicles under the marks 'Marutisuzuki' to the countries in the continent of Americas, Asia, Middle East, Africa, Europe & Oceania.

The Complainants have since 1983, expended enormous amount of money in publicizing and promoting their Maruti Suzuki trade mark/ trade name and these have appeared in various prominent newspapers, magazines and the electronic media including the satellite television channels and radios..

The trademark 'Maruti Suzuki' has also been used by Complainant No.1 in relation to all its stationery articles including letterheads, visiting cards, order forms, bill books, envelopes, etc. and in relation to all the sales promotion materials such as brochures, catalogues, price lists, etc.

The Complainant No.1 is the registrant of the following domain names containing word Maruti: 'Marutiudyog.com', 'Maruti.net', 'Marutizen.com', 'Marutiesteem.com', 'Marutibaleno.com', 'Marutiomni.com', 'Marutiomni.com', 'Marutigypsy.com', and 'Marutiwagonr.com' with respect to its world wide web site which provide up to date information about the Complainant No.1 and its products.

 

5. Parties Contentions

The Complainant's contentions in brief are as under:

That the complaint is based on the trademarks and corporate trade names 'Maruti Suzuki' 'Maruti' and 'Suzuki'.

That the domain name 'Marutisuzuki.com' is identical and confusingly similar to the trade marks in which the Complainants have a statutory as well as a right in common law, by virtue of long and continuous use and being the registered proprietors thereof.

That the Respondent has no rights or legitimate interests in respect of the domain name 'Marutisuzuki.com'.

That the trademarks 'Maruti' and 'Suzuki' join to form a hybrid trademark 'Maruti Suzuki' which represents both the Complainants. In terms of the license agreement dated October 2, 1982, and subsequent license agreement in relation to various models of vehicles between Complainant No.1 and Complainant No.2, the trademark 'Maruti Suzuki' is to be displayed prominently on all the products manufactured by the Complainant No.1.

That based on its long and continuous use, the marks 'Maruti Suzuki' are associated exclusively with Complainants and their marks are very well known to the general public.

That the trademark 'Maruti' is registered in nineteen countries including India as aforesaid. The trademark 'Suzuki' is registered in more than ninety countries. The registration of the aforesaid trade marks is a prima facie evidence of the validity of the said trade marks under the relevant trade mark laws in which the said trade marks are registered.

That the trade marks 'Maruti' and 'Suzuki' are both highly distinctive on account of their acquired strength due to extensive use. Further, the hybrid mark 'Maruti Suzuki' is even more distinctive and is a strong mark.

That the Complainants have acquired considerable reputation and goodwill in the use of the trade marks 'Maruti Suzuki'. On account of the outstanding reputation and goodwill in the use of the trade mark 'Maruti' and the trade mark 'Suzuki', both of which make up the hybrid trade mark 'Maruti Suzuki', the exclusive use of the trade mark 'Maruti Suzuki', the extensive advertising of the said mark and the inherently strong nature of the said mark, the purchasing public and the trade associate goods bearing the mark 'Maruti Suzuki' solely with the complainants

That the trade mark 'Maruti Suzuki' has inherited and subsequently acquired a vast reputation so that the use of the said trade marks or variation thereof including any of its two distinctive elements, in relation to any goods, would create immense confusion and deception in the trade and result in passing off of such traders goods as those of the Complainants.

That the Complainants have since 1983, expended enormous amount of money in publicizing and promoting their 'Maruti Suzuki' trade mark/trade name.

That on account of priority in adoption and use, the Complainants are the proprietors of the trade mark and trade name 'Maruti Suzuki' and being so, are exclusively entitled under the relevant statutory laws of the countries in which the trade marks 'Maruti' and 'Suzuki' are registered and common law rights to use the said mark to the exclusion of all others.

That the respondent in the present dispute has registered domain name 'Marutisuzuki.com' and thereby misappropriating illegally and without authority the trade mark 'Maruti Suzuki', which is exclusive property of the Complainants. The said domain name is identical to the trade marks owned by the Complainants and the existence of the said domain name can cause irreparable loss to the goodwill and reputation that has been built by the Complainants over several years of its operations.

That the Complainants trademark 'Maruti Suzuki' is already perceived as a leading name in the automobile industry, being the trademark of one of the most successful joint ventures in the automobile sector.

That the Complainant is the registrant of various domain names containing word 'Maruti' as aforesaid.

That under these circumstances, if the Respondent is allowed to proceed to operate the web site under the said domain name, the potential customers would be induced to:

- subscribe to the services of the impugned web site to deal with the Respondent believing it to be licensed or authorized by the Complainants;

- believe that the Respondent has some connection with the Complainants or in terms of a direct nexus or affiliation with the Complainants or either one of its joint venture partners;

- believe that the Respondent is carrying on activities that has been endorsed by the Complainants 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 Complainants

That the Respondent therefore, to derive illegal benefit, has misappropriated the trade marks of the Complainants in order to pass off its goods and services as for those of the Complainants. That the Respondent's registration of the domain name identical to the trade marks of the Complainants is aimed at diverting the business of the Complainants by the tarnishment of the asset, which is the trade mark 'Maruti Suzuki' owned and used exclusively by the Complainants.

That the Respondent is also preventing the Complainants from making legitimate use of its trade mark on the internet, implying bad faith on the part of the Respondent. That the act of the Respondent in registering the impugned domain name amounts to an act of passing off their business as and for that of the Complainants.

That a man of average intelligence and of imperfect recollection would be confused and it may affect the reputation of the Complainants. The Complainants have a general and specific reputation in the mark. There are more than 2.9 million vehicles manufactured by the Complainant No.1 sold in India and abroad under the trademark of 'Maruti Suzuki' prominently displayed.

That the Respondent has no rights or legitimate interests in respect of the domain name at issue due to the Complainant's "long prior use" of the mark.

That by adopting the Complainants trade marks and registering the impugned domain name 'Marutisuzuki.com' the Respondent has deliberately and intentionally attempted to create likelihood of confusion for the trade marks and the aforesaid web sites of the Complainants and other online location as to source, sponsorship, affiliation and endorsement to get financial gain.

That the Complainants are the originators of the trade marks 'Marutisuzuki'.

That the domain name has been registered and used in bad faith.

That the Respondent has no other trademark or other intellectual property rights to the domain name.

That the domain name is not the legal name of the Respondent

That the respondent is neither using nor there are any demonstrable preparations to use the domain name 'Marutisuzuki.com' in connection with a bona fide offering of goods or services

That the domain name was registered and acquired primarily for the purpose of selling, renting and transferring the domain name to registration to Complainants for valuable consideration in excess of the domain name registrant's out-of-pocket costs directly related to the domain name and to tarnish the image of Complainants.

That the domain name registrant (as an individual, business, or other organization) has been known by the domain names.

That the Respondent had contacted Sh. A.K. Bansal, Advocate on telephone seeking an offer from the Complainant No.1 of an amount as sponsorship/advertising on his site, namely, www.missingindiankids.com in lieu of transfer of the domain name. The Respondent had also addressed a letter to Complainant No.1 for sponsoring/advertising on www.missingindiankids.com.

Respondent’s Contentions:

The Respondent's contention in brief are as under:

That 'Marutisuzuki.com' is an established and active web site since February/March 1999, offering free service related to the lost and found property. The details of the property lost or found are not displayed on the web site to avoid legal problems.

That the 'Marutisuzuki.com' web site is being used in good faith for providing the aforesaid service. The domain name was not registered or acquired for the purpose of selling, renting, or otherwise transferring the domain name registration to anyone, least of all the complainants, or any competitor of the Complainants.

That the domain name was not registered in order to prevent the Complainants from reflecting the mark in a corresponding domain name and, in connection therewith, the Respondent has not engaged in a pattern of such conduct.

That the Complainant and the Respondent are not competitors and the domain name was never registered by the Respondent to disrupt the Complainant's business. The Respondent is making a legitimate non-commercial and fair use of the domain name without intent for commercial gain or misleading to divert consumers or to tarnish the trade mark(s) or service mark(s) at issue.

That the Respondent has not demanded any amount from any of the Complainants, as a matter of fact the Respondent has not demanded anything from anyone.

That the Complainants are two different companies with different identities and trade marks. Neither of them has registered the trademark 'marutisuzuki'. In fact the companies have registered their 'Maruti' and 'Suzuki' trade marks separately

That the Complainants have misled the Center by creating the impression that 'Maruti' and 'Suzuki' combines to form a hybrid trade mark 'maruti suzuki', whereas this mark has never been registered as a trade mark. The mere use of the logo 'maruti suzuki' in some brochures and a few models of cars manufactured by the Complainant No.1 do not show that it is there registered mark. The use of the mark in the said ways does not confer any right on the Complainants and merely appears to indicate an impermanent ongoing partnership between the Complainants. The Complainants have not registered the said mark in eighteen years since they have been together.

That the name Maruti does not exclusively belong to the Complainant No.1. In India, it is registered trademark of many products and services like oil, clothing, etc. The name 'Maruti' is the name of an Indian God, and is appropriate for naming a lost and found web site, where it is believed that nothing can be accomplished without the blessing of God.

That the Respondent has not booked the domain name 'marutisuzuki.com' in bad faith would also be evident from the fact that that he has not booked any other domain name with word 'Maruti' and 'Suzuki' in it. In fact, neither of the Complainants have booked any such domain name till date. The Complainants have even suggested that the domain name be cancelled.

That the allegations regarding the asking for an amount over the phone as advertising/sponsorship on 'MissingIndianKids.com' is denied as fabricated, misleading and motivated. The sponsorship letter written to the Complainant No.1 was only one of those addressed to hundreds of Companies (Tata Sons Ltd, Bajaj Auto Ltd., BPL Ltd, etc.), Government Organizations, Individuals, NGOs and Charities, etc.

That the Complainants have purposely not annexed the letter sent to them by the Respondent. The Complainants are trying to gain advantage by projecting wrong information and maligning the Respondent. The Complainants are harassing and trying to gain unfair advantage against the Respondent.

That the 'marutisuzuki.com' web site ha been running for over a year before the Complainants filed their complaint.

That the Complainants have their own web site 'marutiudyog.com' and 'suzuki.com

 

6. Discussion and Findings

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

(1) That the domain name registered by the Respondent is identical or confusingly similar to a service mark or trade mark in which the Complainant has rights; and

(2) That the Respondent has no legitimate interests in respect of the domain name; and

(3) That the domain name has been registered and used in bad faith.

Identity and confusing similarity

The Complainant's trade marks 'Maruti' and 'Suzuki' are registered in various countries. The hybrid mark 'Maruti Suzuki' has been used on the products of joint venture of Complainant No.1 and Complainant No.2 (no less than 2.9 million vehicles), in various brochures and advertisements. The word 'Maruti' is the name of an Indian God but this does not detract from identity of the domain name with the mark. The Respondent's domain name, 'marutisuzuki.com' is identical and confusingly similar to the mark 'Maruti Suzuki'.

Rights or legitimate interests

The Respondent has not been able to show any justification for adopting the name 'Maruti Suzuki' for its domain name on the web site. The only justification sought to be given that Maruti is the name of a God and is appropriate for naming a lost and found web site, where it is believed that nothing can be accomplished without the blessing of God, is absolutely sham and devoid of any merit. Even if this justification by the Respondent is to be accepted for the sake of argument, it was open to the Respondent to pick up the name of any other God out of thousands and millions of such names available and it is not understood as to how the Respondent hit into the name 'Maruti Suzuki'. To me, the purpose is obvious and evident.

The Respondent has no right or legitimate interest in the marks 'Maruti Suzuki' due to the Complainant's long prior use of the mark. The Complainant has not licensed or otherwise permitted the Respondent to use the mark(s) or to apply for any domain name incorporating the mark(s).

Bad faith

The Complainant has specifically pleaded that:

That potential customers would be induced to subscribe to the services of the impugned web site or to deal in some matter with the Respondent/3rd party believing them to be licensed or authorized by the Complainants;

That potential customers would be induced to believe that the Respondent/3rd party have some connection with the Complainant in terms of a direct nexus or affiliation with the Complainants or either one of its joint venture partners;

That potential customers would be induced to believe that the Respondent/3rd party is carrying on activities that have been endorsed by the Complainant and services that are sought to be offered by the respondents have the same level of quality and reliability that is synonymous with the goods and services of the Complainants.

The Complainants claimed that the Respondent had over the phone asked for an amount as advertising/sponsorship on MissingIndianKids.com web site in lieu of transfer of the domain name. This has been denied by the Respondent and cannot be adjudicated upon on account of lack of sufficient evidence.

The Respondent does not operate any business or have any interest in any company using the name "Maruti Suzuki". Further the Respondent has neither used nor demonstrated any serious preparations to use the domain name "marutisuzuki.com" in connection with a bona fide or legitimate offering of goods or services.

The above circumstances and even if the allegation of the Complainant that the Respondent over the telephone had asked for an amount as advertising/sponsorship on missingindiankids.com, is not to be believed even then, in my view the other submissions made by the Complainant, as specifically pleaded in the complaint, the registration of the disputed domain name by the Respondent shall constitute "Use in Bad Faith" as contemplated under Clause 4(b)(iv) of the Uniform Dispute Resolution Policy.

In view of all the above mentioned facts and circumstances, it is found:

That the Respondent's domain name " marutisuzuki.com " is identical to the trademark MARUTI SUZUKI in which the Complainant has rights;

That the Respondent has no legitimate interest in the domain name " marutisuzuki.com ";

That the registration of the domain name "marutisuzuki.com" is a "Bad Faith registration"

 

7. Decision.

The Panel decides that the Respondent's domain name "marutisuzuki.com" should be transferred to the Complainant.

 


 

Maninder Singh
Panelist

Dated: October 30, 2000

 

Источник информации: http://www.internet-law.ru/intlaw/udrp/2000/d2000-0881.html

 

Добавить эту страницу в закладки:

 


 

Произвольная ссылка:

Разработка сайта
ArtStyle Group

Уважаемый посетитель!

Вы, кажется, используете блокировщик рекламы.

Пожалуйста, отключите его для корректной работы сайта.