Administrative panel decision maruti Udyog Limited V Praveen Kumar Case No. D2000-1037




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WIPO Arbitration and Mediation Center



ADMINISTRATIVE PANEL DECISION



Maruti Udyog Limited v Praveen Kumar
Case No. D2000-1037

1. The Parties
The Complainant is MARUTI UDYOG LIMITED, a company duly registered under the Indian Companies Act 1956 and having its registered address at 11th Floor, Jeevan Prakash, 25, Kasturba Gandhi Marg, New Delhi – 110001 (India).
The Respondent is PRAVEEN KUMAR of 202-60 North Hills Terrace, Toronto, Ontario M3C 1M7, Canada.

2. The Domain Name and Registrar
The dispute concerns the domain name “mymaruti.com” registered with Network Solutions Inc. of 505, Huntmar Park Drive, Herdon Virginia-20170, United States of America.

3. Procedural History
On August 12, 2000, the Complainant submitted the complaint by e-mail to the World Intellectual Property Organization Arbitration and Mediation Center (the WIPO 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 the same date, the Complainant sent or transmitted a copy of the complaint to the Registrar by courier/e-mail.
On August 18, 2000, the Complainant submitted the hardcopy of the complaint to the WIPO Center and on the same date the WIPO Center acknowledged receipt of the complaint by e-mail.
On August 22, 2000, the Registrar confirmed by e-mail to the WIPO Center that it was the Registrar of the domain name “mymaruti.com” and that the registrant was the Respondent.
On August 28, 2000, having found that the Complainant had satisfied the formal requirements of the Policy, the Rules and the Supplementary Rules, the WIPO Center sent the Notification of Complaint and Commencement of Administrative Proceeding (the Notification) by post/courier, facsimile and e-mail to the Respondent and transmitted by e-mail copies of the said documents to the Complainant, the Internet Corporation for Assigned Names and Numbers (ICANN) and the Registrar. The Notification set August 28, 2000, as the formal date of the commencement of this administrative proceeding and required the Respondent to submit a response to the complaint within 20 calendar days from the date of the Notification pursuant to paragraph 5 of the Rules.
On September 6, 2000, the Respondent transmitted a response to the complaint and an affidavit to the WIPO Center via e-mail. On September 14, 2000, the WIPO Center acknowledged receipt of the response by e-mail.
On September 30, 2000, the Complainant sent its additional submission to the WIPO Center. On October 2, 2000, the Respondent sent his additional submission to the WIPO Center.
The Complainant and the Respondent elected to have the dispute decided by a single-member panel (the Panel). On October 10, 2000, the WIPO Center appointed Mr. Hariram Jayaram to be the panelist after receiving a Statement of Acceptance and Declaration of Impartiality and Independence from him and sent the Notification of Appointment of Administrative Panel and Projected Decision Date to the Complainant and the Respondent and copied it to the Panel by e-mail. On the same day, the WIPO Center sent a Transmission of Case File to the Panel with an electronic version of the Model Form of Administrative Panel Decision.
The Panel finds that the WIPO Center has discharged its obligations and responsibilities under the Rules.
The Panel will hereby issue its decision based on the statements and documents submitted and in accordance with the Policy, the Rules, the Supplementary Rules and any principles of law which the Panel deems to be applicable.

4. Factual Background
4.1 Complainant
The Complainant asserts that the word MARUTI is its well-known tradename. On June 14, 1971, Maruti Limited was incorporated under the Indian Companies Act 1956 and carried on the business of inter alia manufacture of automobiles and bus bodies. On October 30, 1980, the Central Legislature (Parliament) of India passed the Maruti Limited (Acquisition & Transfer of Undertakings) Act 1980, to acquire the undertaking of the said company. On February 24, 1981, the Complainant was incorporated under the Indian Companies Act 1956 as a Government company for the modernization of the Indian automobiles industry and the production of fuel-efficient vehicles. It is now popularly known as MARUTI and its issued paid up capital is Rs.1322.92 million.
The Complainant is the proprietor of the word mark MARUTI. It was registered under the Indian Trade and Merchandise Marks Act 1958 under No. 319710B on October 25, 1976 in Class 12 for vehicles, bus bodies, automobile parts and fittings and is valid until October 25, 2004. The Complainant has applied for the registration of the said word mark in Class 9 for audio systems for vehicles. It has also applied for the registration of the trademark MARUTI with the wing device in Class 4 for industrial oils, greases and lubricants. The Complainant also claims to have a registration in India for the trademark MARUTI with the wing device. The said trademarks are also registered in Poland, Italy, Portugal, Malta, Nigeria, Sri Lanka, Argentina, Nepal, Hungary, France, Australia, Uruguay, Ethiopia, Zimbabwe, Kenya, South Africa, Sudan and Egypt. The trademark MARUTI is perceived as a leading name in the automobile industry.
The Complainant is a market leader for the passenger car segment. Since December, 1983, it has sold 2.9 million vehicles in India and in 36 other countries. In India, its market share is more than 50%, making it the largest producer of passenger cars. Its most popular small car is known as Maruti-800. It has expended large sums of money in promoting and publicizing its trademarks since 1983. The trademarks have regularly appeared in many newspapers and magazines having widespread reach and circulation. They have also appeared in the electronic media. The Complainant has used the trademark MARUTI on its stationery articles including letterheads, visiting cards, order forms, bill books and envelopes and on all its promotional materials such as brochures, catalogues and price lists. It displays the word mark MARUTI prominently on its products. It intends to use the word mark MARUTI on its goods and services associated with garage keepers and suppliers of and dealers in petrol, electricity and other motive power for motors, iron founders, mechanical engineers and manufacturers of machinery.
The Complainant provides up to date information about itself as well as its products through its websites “marutiudyog.com”, “maruti.net”, “marutizen.com”, “marutiesteem.com”, “marutibaleno.com”, “marutiomni.com”, “marutigypsy.com” and “marutiwagonr.com”. It alleges that the domain name “mymaruti.com” is confusingly similar to its trademarks and the Respondent has adopted it to divert the customers and tarnish the trademarks of the Complainant.
4.2 Respondent
The Respondent says that he is of Indian origin. He is a Hindu and devotee of Maruti , which is Hanuman, a famous deity of the Hindus. He has registered the domain name “mymaruti.com” to create a non-commercial website. His aim is to make the website serve as a common site for all those Hindus who believe in this god. He is gathering facts and information on the temples related to the said god for his website. After the filing of the complaint by the Complainant, he has not gone ahead to activate his website in order to maintain the status quo. He has limited resources and as a result the said website has not been completed as yet. He asserts that he will not use the domain name for a commercial purpose. He has not tried to sell and will not transfer it to anyone. He admits that the Complainant has sent a notice to him on July 27, 2000, by e-mail asking for the transfer of the domain name “mymaruti.com” to the Complainant. The Respondent did not reply the e-mail because he did not register the domain name “mymaruti.com” for the purpose of selling to others. The Respondent is a software developer and has reserved other domain names for web development including “torontodrivers.com”, “canadadrivers.com” and “virtualinfoway.com”. He has not tried to sell any of these domain names.
Third parties have registered several domain names with the word MARUTI and they include “maruti.com”, “maruticomputers.com”, “marutiinc.com”, “marutionline.com”, “emaruti.com”, “imaruti.com”, “marutisoft.com”, “marutitech.com”, “maruticars.com”, “maruti-cars.com”, “marutiorganics.com”, “marutiworld.com”, “maruticourier.com” and “maruticonsultants.com”.

5. Parties’ Contentions
A. Complainant
The Complainant says that it is the owner of the word mark MARUTI and the trademark MARUTI with the wing device. It has registered and made long and substantial use of the said trademarks. The domain name “mymaruti.com” of the Respondent is identical and confusingly similar to its said trademarks. The Respondent has no legitimate interests in the domain name “mymaruti.com” and has registered it in bad faith.
B. Respondent
The Respondent says that he has registered the domain name, “mymaruti.com” to provide a common website on the Hindu god, Maruti for all Hindus who believe in the said god. On account of the same, the Respondent contends that he has rights and legitimate interests in the domain name “mymaruti.com”. There is no bad faith on his part. In fact it is the Complainant who is attempting a reverse domain name hijack by bringing this proceeding in bad faith.

6. Discussion and Findings

6.1 Elements to be Proved


Under paragraph 4(a) of the Policy, the Complainant must prove each of the following elements in order to succeed in its complaint:
(i) The Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the Respondent’s domain name has been registered and is being used in bad faith.
6.2 Identical or Confusingly Similar to Complainant’s Trademarks.
The Complainant claims rights in the word mark MARUTI and the trademark MARUTI with the wing device. It has registered them in several countries, particularly India, in Class 12 for vehicles and their parts. The Complainant has made extensive use of the said trademarks on a number of goods, especially small cars. There can be no doubt that the Complainant enjoys goodwill in the word MARUTI from its use on the motor vehicles. This word forms an essential part of the domain name “mymaruti.com” of the Respondent.
To ascertain the exact extent of the rights acquired by the owner of a trademark by registration and long use, reference may be made to the following passage in David I Bainbridge, Intellectual Property, Second Edition, page 457:
“Rights associated with registered trademarks are restricted in terms of the classes of goods and services against which the marks are registered. Therefore, if Trader A has a trademark consisting of a representation of a Harp registered for Class 2 goods (paints, varnishes, lacquers, etc.) and Trader B copies this mark but only uses in respect of wines (falling within Class 33), Trader B does not infringe Trader A’s trademark, unless it is subject to a defensive registration in Class 33. Passing off is limited in a similar way in that there must be a common field of activity between the plaintiff and the defendant. There must be some common ground otherwise there can be no trespass to this form of intellectual property. The justification for this is that, if there is no common field of activity, there can be no damage to the plaintiff’s goodwill because the public will not make a connection between the traders and their alternate fields of activity. For example, if Trader A uses the name “Spright” for its margarine and, later, Trader B uses the same name for its bicycles there will be little danger of damage to Trader A’s goodwill (irrespective of the quality of the bicycles) because the public are not likely to think that the bicycles are made by or with the license of Trader A. An electric shaver called a “Rolls Razor” would not normally be confused with the makers of “Rolls Royce” motor cars …”
The Complainant cannot, therefore, rely on paragraph 4(a)(i) of the Policy, to establish its claim against the Respondent.
6.3 Respondent’s Rights or Legitimate Interests in the Domain Name
Under paragraph 4 (c) of the Policy, the Respondent may demonstrate his rights and legitimate interests in the domain name “mymaruti.com” by showing:-
(i) his use of or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services before any notice to him of the dispute; or
(ii) he has been commonly known by the domain name, even if he has acquired no trademark or service mark rights; or
(iii) he is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
It is well known among Hindus that MARUTI is the name of a god in Hindu mythology. The Respondent has made it clear that his aim in registering the domain name “mymaruti.com” is to create a website for the benefit of the devotees of this god. He did not register it for re-sale to any person. He has not been able to activate this site because of limited resources in his hands. However he is collecting information on this god as well as the temples connected with it. He is only interested in making a non-commercial use of the domain name “mymaruti.com”. He undertakes not to engage in any commercial activity which will infringe on the rights of the Respondent.
In LifePlan v Life Plan C/O Relational Dynamics, Inc. (Claim No. FA0005000094826) http:/www.arbforum.com/domains/decisions/94826.htm, the National Arbitration Forum Panel noted that the complainant, LifePlan was the owner of the registered trademark “LifePlan” related to diet planning and weight loss. The respondent was the registrant of the domain name “lifeplan.com” for non-financial lifetime goal setting services. In dismissing the complaint, the Panel held that a non-trademark holder could have legitimate rights or interests in a domain name even if the domain name was identical to a registered trademark provided its activities were different.
Its follows from the above that the Respondent has rights and legitimate interests in the domain name “mymaruti.com”.
6.4 Registration and Used in Bad Faith
It is required of the Complainant to prove that the Respondent has registered and used the domain name “mymaruti.com” in bad faith. Paragraph 4(b) of the Policy, sets out the circumstances which the Panel may take note to determine bad faith registration of the domain name. They include circumstances that indicate that:
(i) the domain name has been registered or the registrant has acquired it primarily for the purpose of selling, renting, or otherwise transferring its registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of his documented out-of-pocket costs directly related to the domain name; or
(ii) the registrant has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that he has engaged in a pattern of such conduct; or
(iii) he has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, he has intentionally attempted to attract, for commercial gain, Internet users to his website 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 his website or location or of a product or service on his website or location.
There is no evidence to support any of the above. The circumstances listed in the said paragraph 4(b) of the Policy, are not intended to be exhaustive but the Complainant has not produced evidence as to any other circumstances which may be relevant to make a finding of bad faith on the part of the Respondent.
The Respondent has advanced two further arguments to maintain his rights in the domain name “mymaruti.com” and these may be disposed of summarily. He says that there are many other domain names which have been registered by third parties with the word MARUTI. There is evidence on the Complainant having challenged the registration of the domain name “maruti.com”. The panel concerned has ruled that the domain name cannot be expunged or transferred to the complainant because MARUTI is the name of the respondent’s nephew: (see Maruti Udyog Limited v Tella Rao WIPO Case No. D2000-0518). Each case is dependent on its particular facts. This Panel is unable to draw an adverse inference against the Complainant on account of the Tella Rao decision or the registration of the other domain names.
The Respondent’s other argument is that the Complainant has brought this complaint in bad faith in an attempt at Reverse Domain Name Hijacking. The Panel is unable to arrive at such a conclusion for lack of evidence. At the most what may be said is that the Complainant has initiated this proceeding on the misguided conviction that it has exclusive rights to the word MARUTI on account of its fame in India for motor vehicles.

7. Decision
The Panel finds that the domain name “mymaruti.com” rightfully belongs to the Respondent. The complaint is hereby dismissed.

_________________________________

Hariram Jayaram



Sole Panelist
Dated : October 25, 2000



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