WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Wipro Limited and Wipro Trademarks Holding Limited v. Global Link.Com, Ltd d/b/a/ Global Online
Case No. D2000- 0656
1. The Parties
The complainants are Wipro Limited and Wipro Trademarks Holding Limited of Doddakannelli, Sarjapur Road, Bangalore- 560 035, Karnataka, India. The respondent is Global Link.Com, Ltd d/b/a/ Global Online of 50 North Third Street, Fairfield, IA 525556, United States of America.
2. The Domain Name(s) and Registrar(s)
This dispute concerns the 15 domain names identified below:
(i)
(ii)
(iii)
(iv)
(v)
(vi)
(vii)
(viii)
(ix)
(x)
(xi)
(xii)
(xiii)
(xiv)
(xv)
The Registrar with which the domain names are registered is DomainBank, Inc. of Bethlehem, Pennsylvania, United States of America.
3. Procedural History
The complaint was received by the Center by email on June 22, 2000 and in hardcopy on June 27, 2000. It related only to the first 14 domain names. The complaint was acknowledged on June 29, 2000, when registration details were sought from the registrar. Correspondence ensued between the parties and the Center, amongst the parties and between the Center and the registrar, as a result of which the complainant sought to add the 15th disputed domain name to the complaint.
It was not until August 11, 2000 that registration details were confirmed by the registrar (in respect of all 15 domain names) and on that day the Center satisfied itself that the complainant had complied with all formal requirements, including payment of the prescribed fee. On August 14, 2000 the Center formally notified the respondent by post/courier, fax and email of the complaint and of the commencement of this administrative proceeding and sent copies to the complainant, the registrar and ICANN.
The last day for a response was September 2, 2000. None was received. On September 4, 2000 the Center formally notified the respondent of its default in failing to file a response and on September 5, 2000 invited Alan L Limbury to serve as panelist. On September 6, 2000 Mr Limbury accepted the appointment and submitted a Statement of Acceptance and Declaration of Impartiality and Independence. That day the Center transmitted the case file to the panel and notified the parties of the projected decision date of September 20, 2000.
The language of the proceeding was English.
The panel is satisfied that the complaint was filed in accordance with the requirements of the Rules and Supplemental Rules; payment was properly made; the panel agrees with the Center�s assessment concerning the complaint�s compliance with the formal requirements; the complaint was properly notified to the respondent in accordance with paragraph 2(a) of the Rules; no formal response was filed and the administrative panel was properly constituted.
4. Factual Background (undisputed facts)
The principal complainant was incorporated in 1945 in India as Western India Vegetable Products Limited. In 1977 it changed its name to Wipro Products Ltd. and in 1984 Wipro Limited. Wipro Infotech Private Limited was a group company that has now merged into Wipro Limited (and currently forms the hardware division).
The word "wipro" is an invented word being an abbreviation of the original name of Wipro Limited i.e Western India Vegetable Products Limited.
The complainant is a leading India based provider of Information Technology ("IT") services globally. It provides high-end IT solutions to leading companies worldwide and has also been engaged in the consumer care business since its inception in 1945 and the lighting business since 1992.
Since at least 1974 the complainants have registered and applied for registration of several trademarks in India, the United States and other jurisdictions (spread over several categories such as consumer products, vegetable oils, lighting, computers, software, etc.) which use the word WIPRO alone and in various combinations with other words.
The complainants have also registered numerous domain names incorporating the trademark WIPRO.
All 15 of the disputed domain names were registered on February 23, 2000. On the same day as it registered the 15 disputed domain names, the respondent registered the domain names , , and based on various permutations of the name of the chairman of the complainants - Mr. Azim H. Premji.
On March 9, 2000 a magazine article reproduced on the respondent�s website reported that, in a rush to secure domain names which the COO of the respondent, Dr Lee Fergusson, compared to the "land grab of the 19th Century U.S. frontier", the respondent had �branded� some 5,500 domain names at a cost of about half a million dollars which are now valued at between $3 billion and $5 billion. Dr Fergusson was reported to have said: "All the good names are taken. It couldn�t be planned in the way we are planning now and accomplishing the same �land grab� would be difficult today" and "We decided to aggregate all the domain names under one domain. Instead of having little piece of land, we have �a virtual, digital conglomerate existing in virtual space. We grabbed a lot of land and, as a result, Global Online is the largest owner of singly branded domain names in the world".
Amongst the numerous domain names registered by the respondent beginning with the word GLOBAL are , , , , , , and .
Other domain names registered by the respondent include , , , , , , and .
Following the filing of the complaint, the respondent on June 29, 2000 stated in an email to the Center that it registered the 15 disputed domain names in furtherance of proposals for a potential joint venture which it claimed had been under discussion between the respondent and the complainant "in order to protect both WIPRO and GLOBAL ONLINE from the possibility that these domain names might be taken by someone else instead of being available for their joint venture, if one was consummated".
The complainant had not authorized the registration of the disputed domain names.
5. Parties� Contentions
A. Complainant
The disputed domain names are identical and confusingly similar to the marks of the complainants.
The respondent has no rights or legitimate interests in the domain names.
The domain names have been registered and are being used in bad faith
B. Respondent
The respondent did not file a response but it did communicate by email with the Center and, pursuant to Rule 2(h), its communications were sent to the complainant and form part of the case file sent by the Center to the panel.
6. Discussion and Findings
Amendment of the complaint
The panel is satisfied that the respondent (which by email of June 29, 2000 to the Center itself drew attention to its registration of the 15th domain name, , as having been apparently overlooked by the complainant) has had the same opportunity to respond to the complaint insofar as it relates to that domain name as it has had in relation to the others. The respondent would not be prejudiced by the proposed amendment of the complaint to include this name and accordingly the panel allows the amendment.
Substantive issues
To qualify for cancellation or transfer, a complainant must prove each element of paragraph 4(a) of the Policy, namely:
(i) the disputed domain name is identical or confusingly similar to a trademark 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 disputed domain name has been registered and is being used in bad faith.
Identity or confusing similarity
The domain names , and comprise the trademark WIPRO followed by the legal description of the complainant�s corporate entities. The domain name comprises the trade name of Wipro Infotech Private Limited, a group company now merged into Wipro Limited.
The domain names , , , , , , , and comprise the trademark of the complainant in conjunction with other generic words such as "global" and "online" or a generic word associated with the Internet, "net". The domain names and combine the complainant�s trademark with an acronym for the generic words "global online". The suffixes ".com", ".net" and ".org" are recognized as associated with the Internet and as having no capacity to distinguish a trademark from a domain name.
The generic words global and online and the acronym gol do not serve to distinguish the disputed domain names from the complainants trademark: see The Stanley Works and Stanley Logistics, Inc v. Cam Creek. Co., Inc, (Case D2000-0113) and Nokia Corporation v. N (Case D2000-0102), holding that the disputed domain names were confusingly similar to the trademark of the complainant, despite the addition of generic words.
The fact that the word "global" forms part of the trade name of the respondent does not alter the fact that it is a generic and descriptive word when used with other words. As the complainants are globally recognized and are global players, the use of such generic words would only add to the confusion in the mind of Internet users as to whether these domain names are associated with the complainants.
In Microsoft Corporation v. M aka Tarek Ahmed (Case D2000-0548) contributing factors to the likelihood of confusion were held to be the visual similarity between the domain name and the complainant�s mark and the mark being strong and immediately recognizable. Here the domain name is not as closely similar to the trade mark as in that case but confusing similarity is present here for the same reasons.
The complainants have proved that all 15 of the disputed domain names are confusingly similar to their WIPRO marks.
Illegitimacy
WIPRO is a distinctive and invented word, forming the main part of many of the trademarks of the complainants, including those registered in the United States, the country of residence of the respondent.
Without the authority of the complainant, the respondent chose to register the domain names in order to create an impression of an association with the complainant, anticipating that negotiations would result in a joint venture. No authorized association between the parties existed at the time of registration, nor has any subsequently come into being. Under these circumstances the respondent�s interest in the domain names is not legitimate. Telstra Corporation Limited v. Nuclear Marshmallows (Case D2000 � 0003).
The complainant has proved that the respondent has no rights or legitimate interest in any of the disputed domain names.
Bad faith registration and use
In SportSoft Golf, Inc. v. Hale Irwin�s Golfers� Passport (Case FA94956) a finding of bad faith was made where the respondent "knew or should have known" of the registration and use of the trade mark prior to registering the domain name. Likewise Marriott International, Inc. v. John Marriot (Case FA94737); Canada Inc. v. Sandro Ursino (Case AF-0211) and Centeon L.L.C./Aventis Behring L.L.C. v. E (Case FA95037).
Here the respondent clearly knew of the complainants� marks before registering the disputed domain names, otherwise the respondent would not have perceived the need to "protect" the names as it has asserted. However, it did not obtain the complainant�s consent to this course of conduct before proceeding. Accordingly the registration was made in bad faith.
Further, the use of the word WIPRO in the domain names was intended by the respondent to create the impression of an authorized association between the complainant and the respondent which, at the time of registration, the respondent knew did not exist. The panel finds this also to constitute registration in bad faith.
Registration by the respondent of the word WIPRO as part of each of the 15 disputed domain names prevents the complainants from reflecting their trademarks in corresponding domain names. In each case this is evidence of both bad faith registration and use, pursuant to sub-paragraph 4(b)(ii) of the Rules, provided the respondent has engaged in a pattern of such conduct.
Amongst the numerous domain names registered by the respondent, most of which incorporate only generic words and were legitimate objects of a "land grab" in cyberspace, there are some, such as and which incorporate well known trade marks belonging to others.
The panel finds that, by registering the domain names and and by registering the invented word WIPRO in various combinations and permutations over 15 domain names along with generic words that are in synergy with the business of the complainants, the respondent has engaged in a pattern of conduct that prevents trademark owners from reflecting their marks in corresponding domain names. Similar cases have been held to be classic cases of cybersquatting: Sanrio Company, Ltd and Sanrio, Inc. v. Neric Lau, (Case D2000-0172) and Stanley Works and Stanley Logistics, Inc v. Cam Creek. Co., Inc, (Case D2000-0113).
The panel finds that the disputed domain name was registered and used in bad faith.
7. Decision
Pursuant to Paragraphs 4(i) of the Policy and 15 of the Rules, the panel directs that the following 15 domain names be transferred to the complainant:-
(i)
(ii)
(iii)
(iv)
(v)
(vi)
(vii)
(viii)
(ix)
(x)
(xi)
(xii)
(xiii)
(xiv)
(xv)
Alan Limbury
Presiding panelist
Date: September 18, 2000
Full & Egal Universal Law Academy