WIPO Domain Name Decision D2018-2592 for kirloskarcapital.com
WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Kirloskar Proprietary Limited v. Domains By Proxy, LLC DomainsByP / Siva Nageswara Rao Doradla Case No. D2018-2592 1. The Parties
The Complainant is Kirloskar Proprietary Limited of Pune, India, represented by DePenning&DePenning, India.
The Respondent is Domains By Proxy, LLC DomainsByP of Scottsdale, Arizona, United States of America (“United States”) / Siva Nageswara Rao Doradla of Hyderabad, India, represented by Har Rachan Kaur, India. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 13, 2018. On November 13, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 14, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 15, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on November 19, 2018.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 23, 2018. In accordance with the Rules, paragraph 5, the due date for Response was December 13, 2018. The Response was filed with the Center on December 12, 2018.
Pursuant to paragraph 17 of the Rules, on December 13, 2018, the proceeding was suspended until January 12, 2019. As the Parties have not reached a settlement, on January 14, 2019, the proceeding was reinstituted upon the Complainant’s request.
The Center appointed Maninder Singh as the sole panelist in this matter on January 30, 2019. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
The Complainant claims to be an old and established business groupconcerned with the sale of a variety of goods viz. centrifugal pumps, agricultural implements, electric motors, machine tools, ploughs, internal combustion engines, oil engines, marine gears, electric generators, electric alternators, etc. since 1920 and also claims to have been exporting the said goods overseas.
The Complainant also claims to be the proprietor of the trademarks KIRLOSKARand its variants. The Complainant claims that the mark is associated with the Complainant and their trading style, brand name and corporate name of the companies that form the Kirloskar Group of Companies in diversified businesses.
The Respondent registered the disputed domain name on June 7, 2018. The Complainant submitted evidence that the disputed domain name previously did not resolve to anactive website. Currently it resolves to a registrar parking page with pay-per-click links. 5. Parties’ Contentions A. Complainant
The Complainant claims to be an old and established business group. The Complainant also claims to have been concerned with the sale of a variety of goods viz. centrifugal pumps, agricultural implements, electric motors, machine tools, ploughs, internal combustion engines, oil engines, marine gears, electric generators, electric alternators, welding machines, electrical apparatus, ice making plants and installations, electronic devices, compressors, vices, pneumatic machines, oil seals, tractors, etc. since 1920 and also claims to have been exporting the said goods overseas.
The Complainant also claims to be the proprietor of the trademarks KIRLOSKARand its variants. The Complainant claims that the mark is associated with the Complainant and their trading style, brand name, and corporate name of the companies that form the Kirloskar Group of Companies in diversified businesses.
The Complainant claims that the Kirloskar Group consists of several reputed companies in India and abroad viz. Kirloskar Brothers Ltd., Kirloskar Oil Engines Ltd., Kirloskar Pneumatic Co. Ltd., Kirloskar Systems Ltd. etc.
The Complainant avers that the role of the Complainant in the KIRLOSKAR Group is bifurcated into theBrand Protection, Brand Promotion, Customer Satisfaction survey, and Employee engagement survey.
The Complainant claims that it has secured statutory protection for the trademark KIRLOSKAR and its variants worldwide including India. The Complainant claims to have secured registration for the mark KIRLOSKAR and its variants in India as early as the year 1951. The Complainant claims that they are the lawful proprietor of the trademark KIRLOSKAR and its variants.
The Complainant further claims that the Honorable High Court of Bombay, India in the year 1996has designated the Complainant’s mark KIRLOSKAR as a well-known mark in India and therefore, the Complainant has exclusive rights to the mark against all entities who are imitating the mark KIRLOSKAR regardless of the difference in field of business, goods and services. The relevant case has been reported in AIR 1996 BOM-149. Copy of the official list of well-known marks as available in the Indian Trade Marks Registry’s websitehas been annexed with the complaint where the Complainant’s mark KIRLOSKAR is mentioned in item number 52 of the list.
The Complainant claims to have devoted an enormous amount of time, effort and energy in promoting and advertising the mark KIRLOSKAR in the print and online media and the said mark is consequently identified solely with the Complainant. The Complainant also claims that it has secured domain registrations for their brand KIRLOSKAR and other co-related brands as early as 2000. A tabulated statement giving details of domain registrations secured by the Complainant has been incorporated in the Complaint. Contentions of the Complainant regarding the disputed domain name being identical or confusingly similar to the Trademark or Service Mark of the Complainant:
In order to show that the disputed domain name is confusingly similar to the Complainant’s, KIRLOSKAR, Complainant contends that it has overwhelming common law as well as statutory rights in its trade/service mark KIRLOSKAR. Therefore, the Complainant is the sole legitimate owner of the trade/service mark KIRLOSKAR.
Complainant also contends that the Respondent’s registration and use of the disputed domain name is bound to induce members of the public and trade to believe that the Respondent has a trade connection, association, relationship or approval of the Complainant, when it is not so.
Complainant further contends that the distinctive and the dominant element in the Respondent’s domain is the word KIRLOSKAR hence, the disputed domain name is confusingly similar to the trade/service mark KIRLOSKAR in which the Complainant statutory and common law rights. Contentions regarding Respondent having no rights or legitimate interests in the disputed domain name:
Complainant contends that it is the sole legitimate owner of the trademark KIRLOSKAR. The Complainant has not licensed or otherwise permitted the Respondent to use its trade/service mark KIRLOSKAR or to apply for any domain name incorporating the said trade/service mark.
Complainant contends that the Respondent has not made any legitimate use of the disputed domain name since the date of its registration and is prejudicially blocking the domain register. However, in view of the popularity and the well-known status of the complainant’s trademark KIRLOSKAR, the disputed domain name is bound to induce members of the public and trade to believe that the Respondent has a trade connection, association, relationship or approval with/of the Complainant. Such confusion apart from sabotaging the reputation and goodwill of the Complainant’s mark KIRLOSKAR, will also dilute the distinctiveness of the mark.
The Complainant also contends that considering the blatant imitation of the Respondent, it is obvious that the sole purpose of the Respondent maintaining the registration of the disputed domain name is to misappropriate and usurp the reputation and goodwill of the Complainant’s trademark KIRLOSKAR. Contentions regarding bad faith registration and use of the disputed domain name by Respondent:
The Complainant contends that the Respondent has not made any legitimate offering of goods or services under the disputed domain name. Further, considering the incessant use, reputation and the well-known status of the Complainant’s mark KIRLOSKAR in India, the Respondent cannot feign ignorance of the Complainant’s mark. Hence, the Respondent being aware of the complainant’s KIRLOSKAR has clandestinely registered the disputed domain name to misappropriate the reputation and goodwill of the Complainant’s trademark.
The Complainant also contends that it is furthermore stated in various precedents that the domain names are fast emerging corporate assets and have evolved as a fulcrum of a company’s visibility and marketing operations. Business transactions are primarily being carried out only through Internet addresses rather than street addresses or post boxes or even faxes. Hence, it becomes critical that unscrupulous individuals are not allowed usurp well-known trademarks and domain names to unfairly benefit from such act.
The Complainant further contends that the Respondent had constructive notice of the Complainant’s rights in the trade/service mark KIRLOSKAR by virtue of the Complainant’s well spread reputation, use and registrations. Complainant relies upon WIPO decisions in:
Research In Motion Limited v. Privacy Locked LLC/Nat Collicot,WIPO Case No. D2009-0320,
SembCorp Industries Limited v. Hu Huan Xin,WIPO Case No. D2001-1092,
Oberoi Hotels v. Arun Jose,WIPO Case No. D2000-0263,
Parfums Christian Dior v. Javier Garcia and C,WIPO Case No. D2000-0226. B. Respondent
The Respondent in his Response to the Complaint, inter alia, submits the following: Whether the domain nameis identical or confusingly similar to a trademark or service mark in which the Complainant has rights:
The Respondent submits that the Complainant is known brand in technolo