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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Zee Telefilms Ltd. and Wimpole Holdings Ltd. (presently known as Zee Multimedia Worldwide Ltd.) v. Rahul Dholakia and Oznic.com
Case No. D2001-0624
1. The Parties
The Complainants are Zee Telefilms Ltd. of J-27, South Extension New Delhi, New Delhi-110049, India and Wimpole Holdings Ltd. of P.O. Box 71, Craigmoor Chambers Road Town Tortola, British Virgin Islands Corporation, British Virgin Islands.
The Respondents are Rahul Dholakia of 6, Tulip Drive #1P, Fords, NJ 08863, U.S.A and Oznic.com of P.O. Box 761, Sunbury, Victoria 3429, Australia.
2. The Domain Name and Registrar
The dispute concerns the Domain Name <zeetv.com> (the said Domain Name) registered with Network Solutions Inc. (the Registrar) of 505, Huntmar Park Drive, Herndon, Virginia 20170-5139 U.S.A.
3. Procedural History
On May 2, 2001, the Complainants submitted a Complaint in hardcopy to the World Intellectual Property Organization Arbitration and Mediation Center (the Center) for a decision in accordance with the Uniform Domain Name Dispute Resolution Policy (the Policy), the Rules for Uniform Domain Name Dispute Resolution Policy (the Rules) and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the Supplemental Rules). On May 4, 2001, the Complainant submitted the same electronically to the Center.
On May 7, 2001, the Center sent a Request for Registrar Verification to the Registrar. On May 10, 2001, the Registrar, confirmed by e-mail with the Center that it is the Registrar of the said Domain Name and that the registrant of the said Domain Name is Rahul Dholakia and the administrative, technical and billing contact is Oznic.com.
On May 11, 2001, having found that the Complainants had satisfied the formal requirements of the Policy, the Rules and the Supplemental Rules, the Center sent the Notification of Complaint and Commencement of Administrative Proceeding (the Notification) by post/courier (with attachments), facsimile (with the Complaint but without attachments) and e-mail (with the Complaint but without attachments) to the Respondents and transmitted electronically copies of the said documents to one of the authorised representatives of the Complainants i.e. Mrs. Prathiba M. Singh. It also extended a copy of the Notification to the Internet Corporation for Assigned Names and Numbers (ICANN) and the Registrar. The said Notification set the formal date of the commencement of this administrative proceeding as May 11, 2001, and required the Respondents to submit a response to the Complaint within 20 calendar days from the date of receipt of the Notification, i.e. by May 30, 2001, failing which the Respondents would be considered to be in default.
The Respondents failed to file the Response with the Center by May 30, 2001. On June 7, 2001, the Center sent the Notification of Respondent Default to the Respondents by post/courier, facsimile and e-mail and copied it to one of the authorised representatives of the Complainants i.e. Mrs. Prathiba M. Singh via e-mail.
After receiving a Statement of Acceptance and Declaration of Impartiality and Independence from Mr. Hariram Jayaram on June 18, 2001, the Center appointed him to be the sole panelist (the Panel) pursuant to the Complaint in which the Complainants had elected to have the dispute decided by a single-member panel. On the same day it also sent the Notification of Appointment of Administrative Panel and Projected Decision Date to one of the authorised representatives of the Complainants i.e. Mrs. Prathiba M. Singh and the Respondents and copied it to the Panel by e-mail together with the Transmission of Case File.
The Panel finds that the Center has discharged its obligations and responsibilities under the Rules. The Panel will issue its decision based on the Complaint, the Policy, the Rules and the Supplemental Rules and principles of law, which the Panel deems to be applicable, without the benefit of having received a Response from the Respondents.
4. Factual Background
In their Complaint, the Complainants state that Zee Telefilms Ltd. is a company existing under the laws of India and Wimpole Holdings Ltd. (presently known as Zee Multimedia Worldwide Ltd.) is an associate company of Zee Telefilms Ltd. They are the owners, proprietors and lawful users of the mark "Zee" since 1992. The mark "Zee" was used for the first time in relation to satellite television channels by the Complainants and their group companies. Besides Wimpole Holdings Pvt. Ltd. (now known as Zee Multimedia Worldwide Ltd.), Zee Telefilms Ltd. has a number of associate companies, group companies and subsidiaries namely, Asia Today Ltd. and New Media Broadcasting Private Limited. All these companies use the mark "Zee" with the permission, license and/or consent of Zee Telefilms Ltd. With their Complaint the Complainants have produced registration certificates for the mark "Zee" in Hong Kong, S.A.R., China, U.S.A., U.K., Germany, Denmark, Finland, South Africa and Canada, particulars of their applications filed in 1992, by Asia Today Limited and an assignment dated May 2, 2000, purported to assign the applications to Zee Telefilms Ltd. Zee Telefilms Ltd. has registered the copyright in the devices of "Zee Cinema", "Zee News" and "Z Zee TV" in India. Zee Telefilms Ltd. is in the business of procurement of films, production and export of television software including television serials, soap operas, news, public affairs, children's programming, sports news and coverage, feature films, interviews, documentaries, musical programmes, televised quiz programmes, event based programming, film based programming, televised game shows and teleshopping services. The software procured or produced by Zee Telefilms Ltd. is broadcast on the various television channels of Zee Network. These channels are telecast under the names ZEE TV, ZEE NEWS, ZEE ENGLISH, ZEE MGM, ZEE UK, ZEE TV AFRICA, ZEE USA and ZEE MUSIC. These channels are now available in almost all the major continents of the world namely, Asia, Europe, Australia, America and Africa. The word/name/mark "Zee" is universally known today and is exclusively associated with the Complainants and their business. The Complainants' business initially started in relation to the television related industry. It has expanded into several other areas namely, education, music, information technology, FM radio channels, sports rights and Internet related activities. Some of the businesses are as follows:
1. Zee Interactive Learning Systems Limited: This company is engaged in providing educational services through a franchise network by establishing learning centres known as Zed (Zee Education) centres. This company has also started several computer related courses and Internet related courses in collaboration with a number of universities in India.
2. Prime Publishing: This division of the Complainants is engaged in the publication of magazines and other publications and also in conducting the Zee Cine Awards. The word "Zee" is used in relation to the magazine entitled ZEE PREMIERE which establishes an immediate connection with the Complainants.
3. Zee Records: This division of the Complainants is engaged in the procurement of rights for various music albums. It is also engaged in the production of pop music and devotional music under the mark and name ZEE MUSIC. In a short span of 4 years, it has acquired music rights in more than 200 film titles and albums. Zee Music has also set up awards especially in music industries. These are known as Zee Sangeet Awards. Zee Music is also a registered trademark in U.K.
4. E-Connect India Limited: This is a recent venture of the Complainants which is engaged in Internet related services. It includes a full-fledged portal under the name <zeenext.com>. This company is also engaged in e-commerce transactions and is one of the well-known Indian portals.
5. Zee Institute Of Creative Arts: This is the first full-fledged institute in India which has been set up for imparting training in animation, film making and television software production and to produce specialised professionals in this area.
6. Zee Multimedia Worldwide Limited: It owns a 50% stake in Asia Today Limited which is the broadcasting company for the Zee channels.
The word "Zee" forms an integral part of almost all the businesses which have been started by the Complainants and their group companies. Since its inception in 1992, the mark "ZEE TV" is one of the top ten brands in India. The Complainants claim to own a number of domain names consisting of the mark "Zee". From the year 1999 to 2000, Zee Telefilms Ltd. has been voted as "The Emerging Company of the year" and has been given the title "Company of the New Millennium" by the leading publication "The Economic Times" in India. The reputation of "ZEE TV" as a television channel is unparalleled. It has gained popularity not only in the Indian sub-continent and elsewhere in Asia but is also a leading television channel in U.S.A., U.K., South Africa and other parts of the world. The reputation of the mark "ZEE TV" extends beyond the geographical boundaries of any country. The Zee TV channel has a reach of more than 200 million viewers worldwide. Within two years of its launch, Zee TV USA has become the premier non hispanic ethnic channel in U.S.A. It is one of the most popular channels with a wide reputation in U.S.A. since it regularly covers most local events. A number of publications have commended the Complainants and the television channel Zee TV not only in India but in several countries abroad. Amongst its plans to expand further on a global scale, Zee Network has decided to launch its satellite channels in Australia and New Zealand. Zee delivers a large variety of channels to the overseas market. On the national front, Zee has entered into a Memorandum of Understanding with the Government in order to further its plans to build a massive hybrid optical fibre/coaxial (HFC) cable network. Recently, the Music Asia channel has been re-launched as Zee Music and it has further plans to launch a sports channel. Zee's satellite footprint for the Music Asia channel covers more than 2 dozen cities in West and South Asia. Zee has recently won prestigious ethnic multicultural media awards for the best digital and cable channel. The Complainants’ recent Annual Reports reflect their extent of expenditure and business and the extensive use of the mark "Zee" in relation to their activities. All this material establishes that the marks "Zee" and "ZEE TV" have come to be exclusively associated with the Complainants. There is a suit in the High Court of Delhi for a permanent injunction to restrain the use of the mark "Zee" and/or the domain name <ZEEFM.com> and to seek a direction that the defendant in the said suit transfer the domain name <ZEEFM.com> to the plaintiff. The said court granted the order on February 26, 2001, to restrain the said defendant from using the mark "Zee" and/or the domain name <ZEEFM.com> or any other identical or deceptively similar trademark. The proceedings are still continuing before the said court.
As to the Respondents, the information made available to the Complainants is based on the Whois Search Results which show that Rahul Dholakia is the registrant of the said Domain Name and Oznic.com is the administrative, technical and billing contact of the registrant.
5. Parties’ Contentions
The Complainants say that the said Domain Name incorporates the word "Zee" which is a prominent part of the Complainants’ name and incorporates the mark "ZEE TV" which is the trademark and service mark of the Complainants. Zee TV is also the name of the television channel broadcast by the Complainants. The said Domain Name is identical and confusingly similar to the Complainants’ trademark, trade name and service mark in which the Complainants have rights. The word "Zee" in association with the words "television" and "tv" is exclusively identified with the Complainants and is distinctive of the Complainants and their television network throughout the world. As the name signifies, the Respondent, Rahul Dholakia, seems to be of Indian origin. He is fully aware of the fame, reputation and goodwill associated with the mark "ZEE TV". The Respondents do not have any rights or legitimate interests in the said Domain Name. Although the said Domain Name was registered on September 22, 1998, no bona fide use has been made of it as is evidenced from a printout of the web site of the said Domain Name on December 16, 2000. Rahul Dholakia has allowed the said Domain Name to be hyperlinked to the home page of Domain Host International which has a domain name for hosting its own web site. The Respondents’ intentions are to re-sell, rent or otherwise transfer the said Domain Name registration to the Complainants or to any of the Complainants’ competitors; to derive profits in the form of providing Internet based services such as web site hosting and development with regard to the said Domain Name; to prevent the Complainants from using the said Domain Name; to misappropriate the goodwill and reputation vesting in the mark taking the form of the said Domain Name; to dilute the business interest in the said Domain Name by allowing it to be used by third parties in an illegal manner; to cause users to believe that the said Domain Name is the official web site of the Complainants thereby resulting in passing off and to allow it to be hyperlinked to a web site completely non-related to the Complainants.
The registration of the said Domain Name is in bad faith: the Respondents do not have any connection whatsoever with the Complainants; the use of the word "TV" along with the word "Zee" indicates that the Respondents’ intention is to block the use of the said Domain Name by the Complainants and the web site which is hosted under the said Domain Name has no connection whatsoever with the mark "Zee" or the word "ZEETV." The addition of the word "TV" to the word "Zee" is proof of the fraudulent intention of the Respondents. The intention of the Respondents is to traffic in the said Domain Name and this is clear from the fact that although the said Domain Name has been registered since 1998, no preparation has been made for hosting any web site. Recently the said web site has been hacked and this has caused enormous damage to the Complainants besides affecting the sovereignty of India. The said Domain Name has been used by the hackers for propagating anti-India messages. The registration of said Domain Name will result in confusion as to the source, affiliation and endorsement of the Respondents’ web site when in reality there is no connection whatsoever between the Complainants and the Respondents.
In support of their contentions, the Complainants have cited the following Administrative Panel Decisions given in favour of the Complainants:
1. Yahoo! Inc. v. Silicon City and Osama Al-Ayoub WIPO Case No. D2000-1711;
2. Singapore Cable Vision Ltd. v. Allied Pacific Singapore Technologies Pte Ltd.. WIPO Case No. D2000-0674 and
3. CBS Broadcasting Inc. v. Bert Groves WIPO Case No. D2000-0254.
The Respondent has not filed a Response.
6. Discussion and Findings
6.1 Effect of Respondents’ default
Paragraph 5(a) of the Rules requires the Respondents to submit their Response to the Center within twenty (20) days of the commencement of the administrative proceeding.
By the Notification, the Center informed the Respondents that the last date for sending their Response was May 30, 2001. The Respondents have failed to submit their Response. In view of the default it is open to the Panel, under paragraph (14)(b) of the Rules to:
"draw such inferences…as it considers appropriate."
However, before arriving at a decision, due heed must be paid to what was said in Charles Jourdan Holding AG v. AAIM WIPO Case No. D2000-0403. In that administrative proceeding, it was the Panel’s view that:
"in the absence of a Response to the Complainant’s allegations by the Respondent, the Panel must evaluate those claims in the light of the unchallenged evidence submitted by the Complainant."
It is therefore obligatory on the part of the Panel, despite the absence of the Response, to ascertain whether the Complainants have successfully made out a case against the Respondents for the cancellation of the said Domain Name or its transfer to the Complainants.
6.2 Parties to the Proceeding
There are two Complainants in this proceeding i.e. Zee Telefilms Ltd. and Wimpole Holdings Ltd. (now known as Zee Multimedia Worldwide Ltd.). The panel has observed in Ken Done, Ken Done & Associates Pty Ltd. and Ken Done Down Under Pty Ltd v. Ted Gibson eResolution Case No.AF-0638 that:
"[n]o provision explicitly excludes a single Complaint brought by multiple related parties with a common interest in the disputed domain name. In such cases, however, the complaining parties must be meticulous in delineating the relationships among the parties, the relevant trademark ownership interests of each party, and each party's stake in the remedy…"
In this administrative proceeding, Wimpole Holdings Ltd. (now known as Zee Multimedia Worldwide Ltd.) is described as an associate company of Zee Telefilms Ltd. The contentions of the Complainants throughout are that they are both owners and users of the trademarks on which they are relying to question the validity of the registration of the said Domain Name. As these contentions remain unchallenged, it is the conclusion of the Panel that this multi party Complaint is in order.
There are also two Respondents in this proceeding i.e. Rahul Dholakia, the registrant of the said Domain Name and Oznic.com, the technical, billing and administrative contact for the said Domain Name. While there is no doubt that Rahul Dholakia, as the registrant of the said Domain Name, is a proper party to this proceeding, it is open to question whether Oznic.com may be named as a party also. Oznic.com is merely a contact person for the registrant, Rahul Dholakia. By paragraph 4(i) of the Policy, the remedies available to the Complainants in this proceeding are limited to requiring the cancellation of the said Domain Name or the transfer of the said Domain Name registration to the Complainants. The decision will have to be directed to the registrant of the said Domain Name, Rahul Dholakia. It is the Panel’s view that adding Oznic.com, the contact person of Rahul Dholakia, as a party to this proceeding is wrong.
6.3 Elements to be proven
Paragraph 4(a) of the Policy envisages that to succeed, the Complainants must establish that
i) the said Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights; and
ii) the Respondents have no rights or legitimate interests in respect of the said Domain Name and
iii) the said Domain Name has been registered and is being used in bad faith.
The Complainants must prove all the aforesaid three elements.
6.4 Identical or confusingly similar
The Complainants claim rights in the marks "Zee" and "ZEE TV". They claim to be the owners, proprietors and lawful users of these marks.
As far as the mark "Zee" is concerned, they have not produced any document to show that the mark is a registered trademark in any part of the world. They will not be able to rely on a statutory right in the mark. They may however rely on their rights in the common law. The mark "Zee" has been used since 1992. It forms a part of their corporate names, Zee Telefilms Ltd. and Zee Multimedia Ltd.(formerly known as Wimpole Holdings Ltd.). They have several subsidiaries, associates and group companies with the word "Zee" namely, Zee Interactive Learning Systems Limited, Zee Records and Zee Institute of Creative Arts. The word "Zee" is also a part of the associated network of channels, namely, ZEE TV, ZEE NEWS, ZEE ENGLISH, ZEE MGM, ZEE UK, ZEE TV AFRICA, ZEE USA and ZEE MUSIC. The word is also a part of the magazine entitled ZEE PREMIERE published by Prime Publishing, a division of the Complainants. On account of long and substantial use in the fields of education, entertainment and publishing, this word "Zee" has acquired the status of a common law trademark on which the Complainants may rely to question the validity of the Domain Name registration.
The Complainants also claim rights in "ZEE TV" not only on account of long and substantial use but also as a registered trademark. They have produced three sets of documents to support their statutory rights in the mark "ZEE TV". The first set consists of certificates of registrations in the name of Wimpole Holdings Ltd. (now known as Zee Multimedia Worldwide Ltd.) for the mark "ZEE TV" and its variations in U.S.A., U.K., Germany, Denmark, Finland, South Africa and Canada in class 38 essentially for broadcasting services. The second set comprises the certificates of registration from the Trade Marks Registry of Hong Kong for the mark "ZEE TV" for classes 35, 38, 39 and 41. The third set gives particulars of the applications for the registration of the marks "Zee", "ZEE TV" and their variations in classes 1 to 34 in the name of Asia Today Ltd. filed at the Office of the Trade Marks Registry, Bombay as well as an assignment agreement for the transfer of the rights in these applications to Zee Telefilms Ltd. As far as the second and the third sets of documents are concerned, it must be noted that Asia Today Ltd. is an entity different from the Complainants. There is no assignment of the trademarks registered by Asia Today Ltd. to either of the Complainants. While there is a purported assignment for the pending applications filed by Asia Today Ltd. to Zee Telefilms Ltd., this assignment makes no mention of the assignment of the goodwill of the business. As a result, the Panel will only pay heed to the first set of documents which spell out the registrations giving the statutory ownership of the mark "ZEE TV" to Wimpole Holdings Ltd. (now known as Zee Multimedia Worldwide Ltd.).
The Panel has compared the said Domain Name with the marks "Zee" and "ZEE TV" upon which the Complainants rely and finds that the second level domain (SLD) "zeetv" is confusingly similar to "Zee" and identical to "ZEE TV".
6.5 Respondents’ rights or legitimate interests in the said Domain Name
The Complainants allege that the Respondents do not have rights or legitimate interests in the said Domain Name. The burden of proof lies on them and in their Complaint, they have made various allegations. They claim that the Respondent’s aims are:
(i) to re-sell, rent or otherwise transfer the domain name registration to the Complainant or to any of the Complainants’ competitors;
(ii) to derive profits in the form of providing Internet based services such as web site hosting and development with regard to the said Domain Name.
The Panel finds that these are mere allegations not supported by an iota of evidence.
The Complainants also contend that the Respondent, Rahul Dholakia, being of Indian origin is aware of the fame, reputation and goodwill associated with ZEE TV; the users would be led to believe that the said Domain Name is the official web site of the Complainants; his aim is to prevent the Complainants from using the said Domain Name, to misappropriate the goodwill and reputation vested in their marks and to dilute their business interests by allowing the said Domain Name to be used by third parties in an illegal manner. The Panel wishes to express no opinion on the inference drawn by the Complainants on account of the Indian origin of the Respondent, Rahul Dholakia. There is merit however, in the other contentions because of the close resemblance of the Complainants’ marks with the said Domain Name. It is to be further noted that although the said Domain Name was registered in 1998, all that the Respondent, Rahul Dholakia, has done is to allow the said Domain Name to be hyperlinked to a home page of a non-related entity, Domain Host International. Hackers have posted anti-India messages on the web site of the said Domain Name and such activity may affect the business interests of the Complainants.
The Complainants bear the burden of proof in the administrative proceeding and once they have discharged this burden, it becomes obligatory for the Respondent, Rahul Dholakia, to establish inter alia under paragraph 4(c) of the Policy -
(i) his use, of or demonstrable preparation to use, the said Domain Name or a name corresponding to the said Domain Name in connection with a bona fide offering of goods or services;
(ii) that he has been commonly known by the said Domain Name, even if he has acquired no trademark or service mark rights or
(iii) that he was making a legitimate non-commercial or fair use of the said Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent, Rahul Dholakia, has not availed himself of the right to respond to the Complaint. The Panel has no alternative but to conclude, as stated in Ogaan India Private Limited v. Mehboob Alam WIPO Case No. D2000-0720:
"that the Respondent has no evidence to rebut the assertion of the Complainant[s]."
In any event, ZEE TV is not Rahul Dholakia's name. He is a natural person and is not commonly known as ZEE TV. He has neither made use of the said Domain Name or made preparations to use it with a bona fide offering of goods or services. Hyperlinking the said Domain Name with a non-related home page of another, cannot in any sense constitute a legitimate non-commercial or fair use of the said Domain Name.
6.6 Registration and Use in Bad Faith
In support of their contention that the registration and use of the said Domain Name is in bad faith, the Complainants have repeated many of their allegations advanced to support their contention that the Respondent, Rahul Dholakia, has no rights to or legitimate interests in the said Domain Name. It is reasonable for the Panel to infer that the said Domain Name will be mistakenly regarded by Internet users as belonging to the Complainants, the owners of the trademarks, or as having some form of affiliation with or endorsement by the Complainants. The Panel may pay heed to the fact that the Respondent, Rahul Dholakia, is in no way connected with "ZEE TV"; the web site serves merely to link to another site and disruptive use has been made of it by hackers much to the embarrassment of the Complainants.
The Panel concludes that the element of bad faith on the part of the Respondent, Rahul Dholakia, is present in this administrative proceeding.
The Panel finds that the Complainants have proved each of the three elements of paragraph 4(a) of the Policy against Rahul Dholakia but Oznic.com should not have been named as a Respondent in this administrative proceeding. It requires that the said Domain Name be transferred to the Complainants and if this is not possible for any reason, to one of them as may be agreed by the Complainants.
Dated: July 2, 2001