WIPO Domain Name Decision D2000-1038 for marutionline.com

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Maruti Udyog Limited. v. Maruti Software Private Limited

Case No. D2000-1038

 

1. The Parties

Maruti Udyog Ltd., 11th Floor, Jeevan Prakash Building, 25, Kasturba Gandhi Marg, New Delhi-110001, India (Complainant).

Maruti Software Private Limited 508, Express Tower, Azadpur Commercial Complex,Delhi-110033, India (Respondent).

 

2. The Domain Name and Registrar

The Respondent is the registrant of the following domain name: "", registered with Network Solutions, Inc. (NSI).

 

3. Procedural History

The Complaint in this case was filed by e-mail on August 12, 2000 and in hardcopy on August 16, 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 August 21, 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 "" 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 22, 2000, NSI informed the Center as under: That NSI is in receipt of the Complaint sent by the Complainant That NSI is the Registrar of the domain name registration, That eBiz Maruti Software Limited is the current registrant of the "" domain name registration, That the Registrant is: eBiz Maruti Software Limited (MARUTIONLINE-DOM)
509 Express Towers,
Azadpur,
New Delhi-110033
India

Administrative Contact, Billing Contact:

Chal Aman

[Contact details omitted]

Technical Contact, Zone Contact:

dnsadmin

[Contact details omitted]

NSI's 5.0 Service Agreement is in effect.

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

On August 28, 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 September 13, 2000 received response from the Respondent. In view of this, the Center, on September 25, 2000 gave an acknowledgment of the Response to the Respondent and informed the Respondent that the Administrative Panel would be appointed as per the Rules.

On September 30, 2000 the Center received additional submissions from the Complainant.

On October 6, 2000 the Respondent filed his additional submissions in hard copy.

On October 10, 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 in this administrative proceeding is a company duly registered under Indian Companies Act, 1956.

The Complaint is based on the trademark and corporate trade name and service mark 'Maruti'.

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 Complainant 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. It is popularly known as Maruti.

The trademark 'Maruti' of Complainant 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 trade mark 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 Complainant has used the mark since a very long time. Since December 1983 till date the Complainant has sold 2.9 million vehicles including the domestic sales and export to 36 countries across the world. The Complainant has sold 16,50,826 number of its most popular small car namely Maruti 800. The domestic sales during the said period were 15,47,184 numbers and the export sales during the said period were 1,03,642 number of vehicles. Complainant is exporting vehicles under the trade name and trademark 'Maruti' to the countries in the continent of Americas, Asia, Middle East, Africa, Europe & Oceania.

The Complainant has since 1983, expended enormous amount of money in publicizing and promoting their Maruti 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 ' has also been used by Complainant 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 is the registrant of the following domain names containing word Maruti: 'M', 'M', 'M', 'M', 'M', 'M', 'M', 'M', and 'M' with respect to its world wide web site which provide up to date information about the Complainant and its products.

 

5. Parties Contentions

The Complainant's contentions in brief are as under:

That the complaint is based on the trademark and corporate trade name 'Maruti'.

That the domain name 'M' is identical and confusingly similar to the trade mark 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 'M'.

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

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

That the trademarks 'Maruti' is highly distinctive on account of its acquired strength due to extensive use.

That the Complainant has acquired considerable reputation and goodwill in the use of the trademark 'Maruti'. On account of the outstanding reputation and goodwill in the use of the trade mark 'Maruti', the exclusive use of the trade mark 'Maruti ', 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' solely with the complainants

That the trade mark 'Maruti' has inherited and subsequently acquired a vast reputation so that the use of the said trade marks or variation thereof, 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 Complainant has since 1983, expended enormous amount of money in publicizing and promoting their 'Maruti' trade mark/trade name.

That on account of priority in adoption and use, the Complainant is the proprietors of the trade mark and trade name 'Maruti' and being so, are exclusively entitled under the relevant statutory laws of the countries in which the trade marks 'Maruti' and '' 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 'M' and thereby misappropriating illegally and without authority the trade mark 'Maruti', which is exclusive property of the Complainant. The said domain name is identical to the trade marks owned by the Complainant and the existence of the said domain name can cause irreparable loss to the goodwill and reputation that has been built by the Complainant over several years of its operations.

That the Complainants trade mark 'Maruti' 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 were 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 trademarks of the Complainant in order to pass off its goods and services as for those of the Complainant. That the Respondent's registration of the domain name identical to the trademark of the Complainant is aimed at diverting the business of the Complainants by the tarnishment of the asset, which is the trademark 'Maruti' owned and used exclusively by the Complainant.

That the Respondent is also preventing the Complainant 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 Complainant.

That a man of average intelligence and of imperfect recollection would be confused and it may affect the reputation of the Complainant. The Complainant has a general and specific reputation in the mark. There are more than 2.9 million vehicles manufactured by the Complainant sold in India and abroad under the trademark of 'Maruti' 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 Complainant�s trade mark and registering the impugned domain name 'M' 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 Complainant is the originator of the trademark 'Maruti'.

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 respondent is neither using nor there are any demonstrable preparations to use the domain name 'M' 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 �Maruti� is the main component of the domain name at issue, which is solely and exclusively associated by the general public with the trademark and corporate trade name of the Complainant. The media, the newspapers and general public refer to the Complainant as �Maruti�. The suffix �online� used after the trademark of the Complainant �Maruti� means the business of the Complainant on the Internet.

That the domain name at issue does not does not in any manner relate to any activity of the Respondent. The Respondent is not an authorized dealer or dealer of the Complainant to deal with the vehicles produced by the Complainant.

That the domain name was registered in order to prevent the Complainant of the trademark and service mark from reflecting the mark in a corresponding domain name.

That the domain name registrant has got the name registered to divert the consumers and to tarnish the trademark and service mark at issue.

Respondent�s Contentions:

The Respondent's contentions in brief are as under:

That the Respondent is registered as per Indian Companies Act, 1956 and is presently engaged in the business of computer software, customized software development, hardware, related components, assembling, servicing, consultancy & advisory services of all types in the field of information technology, e-Commerce, M-Commerce, portal development, web designing, web hosting etc.

That one of the Directors of the respondent company, Maruti Software Pvt. Ltd. is also a Director in the corporate group company of the respondent, namely, Maruti Marketing Pvt. Ltd.

That the respondent is in the process of expansion together with its other group company and is in the process to start new companies under its corporate group.

That the respondent company has no idea about the manufacturing of or dealing in automobiles, motor parts, vans, apparatus for locomotion by land, bus bodies and automobile parts and fittings etc.

That the Directors of the respondent and its group companies are Hindus and they do believe in the God and "Maruti" is the name of one of the Lord of Hindus. The families and near relatives of the Directors of the respondent company are the devotees of Lord Maruti since generations. Only for this reason, the name of the respondent company was got registered under the Indian Companies Act, 1956 as "Maruti Software Pvt. Ltd.".

That the main objects of the company as stated in the Memorandum of Association of the respondent company are other than that of manufacturing or dealing in automobiles motor parts, vans, apparatus for locomotion by land, bus bodies and automobile parts and fittings, garage keepers and supplies or dealing in petrol, electricity and other motive power for motors and other things and iron foundries, mechanical engineering and manufacturing of machinery etc.

That the respondent company is mainly dealing in computer software, customized software development, hardware, related components, assembling, servicing, consultancy & advisory services of all types in the field of information technology, e-Commerce, M-Commerce, portal development, web designing, web hosting, etc. other than the products manufactured or dealt by the complainant.

That there are more than 500 corporate houses, many thousand firms, multimillion people only in India alone who use the name of Lord "Maruti" since ancient times and are also devotees thereof.

That the details about some of the products named "Maruti" which are duly registered as per the Indian Trade and Merchandise Marks Act, 1958 include "Maruti Pressure Cooker, Maruti Easy Kitchenware, Maruti Apple Cutter, Maruti Lime Sqeezer, Maruti Easy Kitchenware two-in-one, Maruti Sports Goods, Maruti Locks, Maruti Footwear, Maruti Scented Sticks, Maruti Stationery Products, Maruti Oil, Maruti Pipes, Maruti Plywood and Maruti Construction Equipment.

That the respondent company is neither dealing with nor has any intention to deal in automobiles, motor cars, vans, apparatus for locomotion by land, bus bodies and automobile parts and fittings, garage keepers and supplies or dealing in petrol, electricity and other motive power for motors and other things and iron foundries, mechanical engineering and manufacturing of machinery etc.

That the respondent has no intention to divert from its field of operation in the foreseeable future. Also, it is neither using nor intends to use the mark of the complainant in any manner whatsoever.

That the respondent company together with its group company has already applied for registration of its "NAME" together with its "LOGO" under the Indian Trade and Merchandise Marks Act, 1958 under class-8 and class-9.

That the domain name registered by the respondent company is neither identical nor confusingly similar to the trade mark/trade name in which the complainant has rights.

That there are more than 500 corporate houses, 50000 firms, 500 million people only in India alone who use the name of Lord Maruti since ancient times and are devotees thereof. People all over the world use the word "Maruti" in different manner for different purposes.

That, therefore, Maruti does nowhere mean the complainant alone as inadvertently claimed by it.

That the educated and elite class of the population of the world uses the goods/services in which the respondent is engaged and it is not feasible to deceive such a class by referring to the word "Maruti" as aggrieved by the complainant that it refers to Maruti Udyog Ltd. alone.

That the products dealt in by complainant company are well known around the world and if it launches a new product, then even an ordinary person comes to know about the same before it is launched through different print media and electronic media circulating all over the world and no question arises of deceiving anyone by using the word "Maruti" by a third party.

That the respondent company has no intention to start any such business/product line in which the complainant has been engaged or is intended by the complainant as per the Memorandum of Association of the respondent company.

That, according to the Indian Trade and Merchandise Marks Act, 1958, there is no restriction to use the same name in different categories by different firms/companies etc. as the Act has specifically defined various categories in which any firm/company can register its trade name/trade mark.

That according to Section 29(1) of the said Act, in order to constitute an infringement of a trade mark, following elements must be present : -

i) The mark used by the person must be either identical with or deceptively similar to the registered trademark;

ii) The goods in respect of which it is used must be specifically covered by the registration under the said Act;

iii) The use made of the mark must be in the course of trade in the areas covered by the registration under the said Act; and

iv) The use must be in such a manner to render it likely to be taken as being used as a trademark.

In the present case, none of these elements are applicable and, therefore, the objections raised by the complainant are null and void.

That there is no similarity in the presentation of the name "Maruti" and the logo used by the respondent company with that of the complainant.

That the respondent is not using the trade mark/wing mark of the complainant for any purposes whatsoever since both the respondent companies as well as the complainant company are altogether engaged in diversified fields/products and there is no similarity at all between both of them.

That the respondent has all the rights and legitimate interests in respect of the impugned domain name for the reasons stated hereinabove.

That the claim of the complainant is incorrect, wrong and baseless that the word "Maruti" is exclusively associated with it.

That Maruti is the name of one of the Lord of Hindus popularly known since Treta Yug (since ancient times) duly recorded in Hindu holy books, namely, Vedas, Purans, Ramayana, Mahabharat, etc.

That Maruti is used by number of people for different references. There are more than 500 corporate houses using the word Maruti as their corporate name.

That, particularly in Indian market, there are various products which are recognized by the word "Maruti", many of which are registered as per Indian Trade and Merchandise Marks Act, 1958 used by general mass who are well conversant that these products are not produced/assembled by the complainant.

That it is well established and identified all over the world that the complainant has a tie-up with Suzuki Motors Corporation of Japan and is exclusively engaged in automobiles, motor cars, vans, apparatus for locomotion by land, bus bodies, and automobile parts and fittings etc. and have intention to use its trade mark/trade name in the field of garage keepers and suppliers or dealers in petrol, electricity and other motor parts for motors and other such things.

That the complainant has admittedly stated of its own creation by way of a central legislature (Parliament). As Suzuki Motors Corporation of Japan has a major stake in the complainant, it becomes necessary for the complainant to get approval from the Suzuki Motors Corporation before manufacturing/dealing by it in a new/diversified field/product as per the Memorandum of Understanding (MOU) signed between the complainant and Suzuki Motors Corporation of Japan.

That it is wrong, incorrect, and baseless and hence denied in toto that the mark "Maruti" is associated exclusively with the complainant for the reasons stated hereinabove.

That the respondent company has different logo as well as fonts/presentation of its name on its stationery, websites (under development) etc. and has no similarity with that of the complainant.

That there are a number of companies/firms/individuals who are holders/proprietors of trademark and trade name "Maruti" prior to the complainant. These companies/firms/individuals are duly registered under different statutory laws of the countries, i.e., trade mark, excise, sales tax, income tax, foreign trade, labor, insurance etc. and thus the claim of the complainant is totally false and incorrect and is, therefore, denied.

That the respondent is the exclusive legal owner/registrant of the domain name "" under its corporate group name and is totally different from the complainant�s domain names. The respondent is using the domain name in an altogether different manner for a totally different trade under its own group corporate name. Therefore, the allegation of the complainant that the domain name is acquired/registered illegally and without authority for misappropriation is totally false, baseless and wrong and thus denied.

That the respondent company is the registrant of the following domain names containing the word "Maruti": -

, , , , , , sellm and globalm.

That it is crystal clear that the Respondent Company�s domains are altogether different than that of the Complainant as the domain names held by the complainant specifically denote its products namely, - passenger cars and automobiles while the domain name used by the respondent company has no similarity with that of the domain name of the complainant.

That the objections/allegations raised by the complainant have no meaning at all, probably cooked on presumptions and imaginations.

That it is specifically denied that in case the respondent is allowed to proceed to operate the website under the domain name identical to the trademark owned by the complainant, the potential customers would be induced to behave as stated in the complaint.

That it is a well known fact that a large number of users of the internet/websites are the qualified and elite educated class in various parts of the world and as earlier stated hereinabove that the products dealt in by the complainant company are well known around the world and if it or any of its joint venture partners launch any product, then even an ordinary person comes to know about the same.

That the claim of the complainant that the respondent has misappropriated the trade mark of the complainant in order to derive illegal benefit and to pass off its goods and services as and for those of the complainant is ill-founded, misconceived and hence denied by the respondent who is engaged in an altogether different business from that of the complainant and thus the respondent has not derived any sort of benefit from the trade mark of the complainant.

That the respondent is in no way diverting the business of the complainant by tarnishment of its trademark as the respondent has been engaged in an altogether different business.

That the claim of the complainant that the respondent is preventing it from making legitimate use of its trade mark on the internet is also denied by the respondent as there is no similarity in the presentation of the name "Maruti" and logo used by the respondent company on its website (under development) and other stationery items etc. with that of the complainant.

That the respondent is not using the trade mark/wing mark of the complainant for any purpose whatsoever since both the respondent company as well as the complainant company are altogether engaged in diversified fields/products and there exists no similarity at all between both of them.

That the respondent has acquired/registered the domain name under dispute on its own group corporate name and there is no restriction in any law for the time being in force to stop any person/legal entity to use its name for any purpose whatsoever. By registering the impugned domain name it does not amount to an act of passing off the business to customers as and for those of the complainant as there exists a large number of well known companies/firms/associations containing the name "Maruti" in their trade name, doing business in diversified lines/products/services in India as well as abroad, registered under different statutory laws and it is unbelievable that every such company/firm/association has been working /doing business by disguising their own businesses as that of the complainant.

That in brief, the baseless and false allegations made by the complainant are denied.

That a man of average intelligence who is using the website is well educated and an educated person cannot be deceived by using the word Maruti as the products of the complainant company are well known to common people before its launch through different print media and electronic media circulating all over the world. The allegation is ill founded, concocted on presumptions and imaginary.

That it is wrong, baseless and incorrect to claim by the complainant company that the respondent company has no rights or legitimate interests in respect of the domain names at issue due to complainant�s long prior use of its mark for the reasons given hereinunder.

That the use of the mark by the complainant is totally in the auto industry only. The respondent company has neither intended nor intends at a later stage to start the business of automobiles, motor parts and related services in which the complainant is engaged with the use of the domain name under dispute. Therefore, the domain name "" has no relation with the auto industry or the business of the complainant.

That the respondent denies the allegation made by the complainant that it has registered and used the domain name in bad faith as the respondent is using the said domain name for its legitimate business and since it nowhere hurts the interests of the complainant. The respondent has been engaged in an altogether different business (i.e., information technology) and, therefore, is not the competitor of the complainant (automobile sector) in any manner whatsoever. The respondent has registered the impugned domain name for the sole purpose of its own business and it has no intention to sell, rent it out to the complainant or any other person for valuable consideration..

That the respondent has not selected the domain name for using it with the intention or purpose of creating likelihood of confusing and appropriation and trading upon the complainant�s considerable goodwill and reputation.

That the respondent company has not made any false representation to the Registrar that the registration of the domain name "" would not violate the trade mark rights of any third party.

That in the given case, the complainant has been registered under class-12 of the Indian Trade and Merchandise Marks Act, 1958 which is different from the category/class applicable to the respondent company business.

That there is no intention on the part of the respondent to create any sort of likelihood of confusion with the complainant mark as to source, sponsorship, affiliation or endorsement. The respondent has no intention to deceive any person or to trade upon the goodwill or reputation of the complainant, as there is no similarity among the business activity in which both the respondent and the complainant are engaged.

That the website designing and development of all the sites of the respondent are still under process and these would be hosted/launched in a couple of days depicting its clear intention to use the impugned domain name with a bonafide offering of its goods and services and it will be demonstrated at the earliest.

That the respondent company is using the word "Maruti" in different category of the Indian Trade and Merchandise Marks Act, 1958 as that applicable to the complainant. The respondent company has registered and is using the impugned domain name under its group corporate name and there is no restriction in any law for the time being in force to stop any person/legal entity to use its name for any purposes whatsoever. Hence, the registration of the domain name "" is absolutely accurate and valid and therefore, the respondent company is the rightful registrant of the impugned domain name.

That the complainant�s claim that the suffix "online" after the name "maruti" means the business of the complainant is absolutely baseless, misleading and misappropriate. This is so because the term "online" is commonly associate with information technology (IT) sector and the respondent is primarily engaged in IT sector only. Using the word "online" after the respondent�s group corporate name is in no manner linked with the allegation made by the complainant.

That the respondent is in no way preventing the complainant from reflecting its mark in any domain name as the respondent is using its own corporate group name in the impugned domain name and as per internet rules, a person registering/acquiring a domain name firstly has all the rights to use the domain name if: (a) the domain name is not identical or confusingly similar to a trade mark or a service mark in which any other person has rights; (b) the registrant of the domain name has a right or legitimate interest in respect of the domain name; and (c) the domain name has been registered and is being used in good faith.

That in the present dispute, the respondent has complied with all the above-stated conditions and, therefore, is the legal owner/registrant of the impugned domain name.

That the website designing and development of all the sites of the respondent are still under process and these would be hosted/launched in a couple of days depicting its clear intentions to use the impugned domain name with a bonafide offering of its goods and services and it will be demonstrated at the earliest. Hence, the respondent denies this point raised by the complainant.

That there is no infringement of the Indian Trade and Merchandise Marks Act, 1958 or any other law for the time being in force for using the word "Maruti" and there is no infringement of any rules for using the domain name "" without prejudice to the rights of any party for the submissions made hereinabove. However, the respondent is ready to undertake that it would not enter upon the automobile business by using the above domain name. The respondent is further ready to make a declaration that it has no nexus with the complainant.

Additional Information and Documents filed by the Complainant

That the Government of India had granted registration of trade mark "Maruti" in favor of the complainant after consideration of all facts and objections raised under the provisions of the Trade and Merchandise Marks Act, 1958. The trademark "Maruti" is registered in favor of the complainant in 19 countries. The media, the newspapers and the general public refer to the complainant as "Maruti". God Hanuman is a Hindu deity popularly known among the Hindus as Hanuman and not as "Maruti". Maruti is solely and exclusively associated with the corporate trade name and the trademark of the complainant. Complainant has a statutory as well as a right in common law in the trade mark "Maruti" by virtue of long and continuous use and being the registered proprietor thereof. The complainant has, since 1971, expended enormous amount of money in publicizing and promoting its trade mark/corporate trade name "Maruti". Advertisements pertaining to the said Maruti trade mark/trade name has regularly appeared in various prominent newspapers and magazines, having widespread reach and circulation, besides also appearing on the electronic media including the satellite television channels and FM Radio. The trade mark Maruti has also been used by the complainant in relation to all its stationery articles including letter heads, visiting cards, order forms, bill books, envelopes etc. and in relation to sales promotional materials such as brochures, catalogues, price lists etc.

That the respondent has registered the domain name in January 2000. On September 28, 2000, an attempt was made by the complainant to reach the website of the domain name at issue but the page or site could not be displayed. This shows that the site is inactive and respondent has not made any demonstrable preparations to use the domain name.

Moreover, even other domain names, which were registered by the respondent, are still inactive. On September 28, 2000, an attempt was made by the complainant to reach the following websites, which are registered by the respondent :

M, , , , globalm and sellm

However, the pages and sites are inactive and respondent has not made any demonstrable preparation to use domain names. This is sufficient to prove that the respondent has acted in bad faith and registered the domain name only to take advantage of the goodwill of the complainant.

In its response, the respondent has stated that an application for registration of the trade mark/logo has been already filed, but it does not mean that the trade mark/logo has got registered under the Trade and Merchandise Marks Act, 1958. There is a big difference between the registration of domain name under the Trade and Merchandise Marks Act, 1958 and the incorporation of a company under the Companies Act, 1956. Under the Companies Act, 1956, a company can be incorporated within one month.

There is a difference between the name with which the company is registered and the trade mark/logo of the company. The name and the trademark may or may not be the same. In the case of Maruti Udyog Ltd., both are same. The trade mark, i.e., Maruti, wherever appears, it represents Maruti Udyog Ltd.

Maruti Udyog Ltd. has followed the long procedure for registration of trademark. The purpose of following such lengthy procedure is to effectively restrain others from using the trademark of Maruti Udyog Ltd. The procedure of registration will not be challenged at this stage. The main purpose of registration of trade mark/logo under the Act is that no one can take advantage of the goodwill of the business of the entity, i.e., who has registered the trade mark by using the trade mark/logo of such entity.

The respondent at annex 4 presents the list of companies incorporated under the Companies Act, 1956, containing the word "Maruti". It is easily visible from the name of all the companies that all of them are not engaged in any type of automobile activities. All the name of the companies mentioned in the list are such that, the names have reflection of companies works/activities, which are also different from the complainant activities. Even the name of the respondent also reflects its area of operation, which is different from the complainant activities. The respondent mainly deals in software related activities. The complainant has serious objection for the domain name, i.e., "" as it does not reflect the area of operation of the respondent and it create confusions that it is the site of the complainant.

Instead of registering the domain name which reflects the area of operations of the respondent, the respondent has registered the domain name which create confusion in the mind of the persons who knows about Maruti Udyog Ltd., which is large enough.

The respondent in annex 5 presents the list of products with the name "Maruti".. The name of the products from point 1 to 10 of the list mainly dealing in domestic appliances and it is also viable from their names such as Maruti Apple Cutter, Maruti Lime Squeezer, Maruti Pressure Cooker etc. The name of the entities from 11 to 14 of the list deals to construction work and the same is visible from their names such as Maruti Oil, Maruti Construction Equipment, Maruti Pipes etc. There is no relevance of such lists in our case, therefore, the respondent has attached these annexes only to misguide the panel.

Moreover, the respondent has started to take steps for the registration of trade mark/logo after the receipt of the complaint. As the date mentioned on the receipt from the Trademark Office is August 25, 2000, which is after the date of receipt of complaint. The gap between the receipt of complaint and the filing of response of complaint was sufficient to prepare the application for registration of the trade mark/logo. Therefore, the respondent wants to hijack the domain name at any cost and the respondent is trying to show that he is legally equipped only to misguide the panel.

The respondent has registered the domain name on January 1, 2000 whereas the company, i.e., Maruti Software Pvt. Ltd. was incorporated on February 25, 2000 (after one month of the incorporation). Therefore, the respondent has registered the domain name in the name of the company without being incorporating the company. It shows that respondent has malafide intention right from the beginning.

Parawise Comments

Reference Point No.1 of the Additional Objections:

The complainant�s submission that "Maruti" means the complainant and not God Hanuman to the public at large is totally ill-founded and an effort to hurt the feelings of the Hindu community all over the world in general and the respondent in particular as already explained in point No.23 to 26 and 29 to 35 of the response.

The respondent has already submitted the relevant list of few corporate houses working in the trade name of "Maruti" engaged in different trades inclusive of those engaged in automobile sector.

The contention of the complainant is altogether ill-founded, malicious, ill-conceived with the sole objective to falsify the factual position available on the world scene. The contention of the complainant that Lord Maruti is known and called only as Hanuman and not maruti is far from truth, incorrect and again an unsuccessful attempt to misrepresent the feelings of the people having faith in Hinduism and Lord Maruti.

The name of Maruti is being used from ancient times owing to the strong belief and faith of Hindu community over Lord Maruti.

It is well known fact that the name "Maruti" is used as name of persons, temples, trust, corporates, firms, products, services, roads, places, crossings (inter-sections), towns, medical dental college, restaurants (also at USA), hotels, university level projects (Maryland, USA) etc. and hence, the claim of the complainant is not tenable in the light of the vital material available on record.

In the recent past, the Kargil conflict between India and Pakistan is well known in every corner of the world. During Ganapati festival celebrated in Pune Maharashtra (India), one particular mandap (stall) by the name of "Vijay Maruti" was elaborated highlighting a live representation of the conflict .

It has been alleged that the respondent has not made any demonstrable preparations for hosting of its website. This kind of discovery of the complainant is imaginary and totally farce. For the satisfaction of the complainant it would be relevant to mention here that one of the family members of the Directors of the group company was hospitalized in the recent past thereby causing disturbances in the smooth functioning of the company�s activities. Furnishing of detailed information regarding family ailments is neither obligatory nor desired to be given by the respondent.

Moreso, the process to activate the website is underway. The complainant is repeatedly beating the bush about the respondent to have acted in bad faith knowing fully that the respondent has at no stage violated the exclusive criteria for bad faith determined, as per para 4(b) of the ICANN Policy.

The domain name " and other domains registered by the company are exclusively meant for the use of the respondent and its group companies. These are neither for selling, renting nor for transferring the same to the complainant or anybody else as already explained in para 55 of the response already submitted.

There is no rule or law contemplating wherein that the respondent is bound to get the company incorporated with Registrar of Companies within a restricted period of three days as alleged by complainant. As a matter of fact, the period/limitation allowable for the purpose ranges up to six months after approval of the name availability by the concerned authority in India.

Section 8 of the Indian Trade and Merchandise Marks Act, 1958 clearly states "a trade mark need not be necessarily registered in respect of all goods. It is possible and permissible to have some trade mark/brand name for different classes of goods owned by different persons".

As already explained on various counts, logo of respondent is altogether different from that of the complainant.

It is truthful fact that "Maruti" is the name of God worshipped in every Hindu family irrespective of the challenge by the complainant.

As per the provisions contained in para 4(c)(ii) of ICANN Policy, it is neither obligatory nor mandatory for the respondent for acquiring a registration under the Indian Trade and Merchandise Marks Act, 1958. Hence the question of hijacking the domain name of the complainant hardly arises. The allegation appears to have been inserted willfully and maliciously by the complainant with the sole object to influence the panel.

Surprisingly, the complainant has purposely ignored the administrative panel�s decision vide case No.D-2000-0518- of the domain name "m". In the cited case, the complainant had failed to adduce any evidence to the effect that the domain name "m" was ever used/registered in bad faith and similarity in the present case of "" with cited case D-2000-0518- exists even now and then.

It is well known fact that the domain names are registered on first come first serve basis on the internet. As the promoters were underway to get the respondent company incorporated under the Indian Companies Act, 1956, as is clear from the copy of name approved by the Registrar of Companies, NCT of Delhi & Haryana (India. The promoters booked/registered the domain name "" in order to use the same for company�s business after its incorporation. Also, at the time of booking the above domain there was already one group company doing business in the name of "Maruti Marketing Pvt. Ltd." registered by promoters of the respondent company with Registrar of Companies, NCT of Delhi & Haryana (India) on December 24, 1998

Subsequently, the domain in question was transferred in the respondent�s corporate name. It shows that the respondent has clear intentions right from the beginning to use the above domain name for itself.

 

6. Discussion and Findings

Even though the present case involves consideration of a lot of facts, the questions of law that require determination is in narrow compass. In my view the following legal questions need to be addressed and adverted to for deciding the dispute involved in the present case;

Whether registration of the name of a company for incorporation under the Companies Act can be a valid defense in establishing if the domain name is identical or confusingly similar to the Complainant's trade mark?

Whether the adoption of the name of a God by a Company entitles it to claim exclusive user on the ground that such user of the name of a God has attained distinctiveness?

Whether registration of the name of a company for incorporation under the Companies Act can be a valid defense in establishing if the domain name is identical or confusingly similar to the Complainant's trade mark?

It is well settled that mere registration of the name of a Company for incorporation under the Companies Act does not afford any right and/or entitle the holder of the incorporation certificate to succeed in an action for Passing Off. In this regard certain observations of the judgement of Ld.Division Bench of Delhi High Court in the case of Montari Overseas Limited Vs. Montari Industries Limited 1996 PTC (16) 142 are useful:

"��.An individual has the latitude of trading under his own name is in recognition of the fact that he does not have choice of name which is given to him. However, in the case of a corporation the position is different. Normally a company cannot adopt a name, which is being used by another previously established company. As such a name would be undesirable in view of the confusion which it may cause or is likely to cause in the minds of the public. Use of a name by a company can be prohibited if it has adopted the name of another company. It is well settled that no company is entitled to carry on business in a manner so as to generate a belief that it is connected with the business of another company, firm or an individual. The same principle of law which applies to an action for Passing Off of a trade mark will apply more strongly to the Passing Off of a trade or corporate name of one for the other�����.."

In my view the above statement of law applies with much greater force to disputes relating to domain names as well in as much as it is the principle of "identical or confusingly similar" which governs the adjudication in an action for Passing Off of trade marks/trade names and also for Resolution of disputes in relation to Domain names under the relevant provisions of the Uniform Dispute Resolution Policy. Accordingly in the present case the arguments raised by the Respondent that there are other similar corporate names which are registered in India and as such the Complainant is not entitled for the relief claimed for, are not sustainable when tested on the basis of the well settled principles of law laid down in this regard. When the registration by incorporation of the corporate name under the Companies Act does not itself give any indefeasible right to the registrant in such an action the argument raised by the Respondent that there is a lengthy technical procedure involved in the process of grant of incorporation certificate under the Companies Act, in my view, is not at all relevant.

Whether the adoption of the name of a God by a Company entitles it to claim exclusive user on the ground that such user of the name of a God has attained distinctiveness?

There are hundreds and thousands of names of Gods/Goddesses, which are known in India. Some such names enjoy a greater familiarity. It would be correct to say that names of Gods & Goddesses per se would fall in public domain. However, the principles of monopolization of such names on the ground of distinctiveness/secondary meaning are applicable like in the case of distinctiveness of descriptive marks/names, historical marks, geographical marks, dictionary words, personal names etc., For e.g., the word WHIRLPOOL, though a simple dictionary word is exclusively associated with Whirlpool Corporation USA; Similarly, Apple though the name of a common fruit has acquired a secondary meaning and establishes immediate connection with Apple Computers;

No doubt that the word MARUTI has its origin in Indian mythology and has a relation with one of the Gods namely Lord Hanuman, it has certainly acquired a secondary meaning to connote and denote the Complainant and has become distinctive of its products/business. Even an illiterate person in India immediately relates the word Maruti to the Complainant without any hesitation.

Insofar as the contention of the Respondent in a similar case, D.2000-0518 the present complainant has not been able to establish the Bad Faith Registration of the domain name M, it is also not entitled to grant of relief in the present complaint, I respectfully disagree with the reasoning of the said decision and in coming to the above mentioned conclusion in the present case I derive support from another decision in the case of D.2000-0520 (Maruti Udyog Limited Vs. Maruti Infotech Limited), which has not been cited by the parties. Similarly, the contention of the Respondent that its logo is different from the logo of the complainant does not give any benefit to the Respondent in the present dispute in relation to identical/confusingly similar domain name.

Further when the present dispute, in the light of the above mentioned legal principles, is, inter alia, viewed with the facts viz., (a) that the Respondent had obtained the registration of the domain name before obtaining the certificate of incorporation under the Companies Act, 1956; (b) that the Respondent filed the application for trade mark after receiving the complaint; (c) the website has been kept inactive, it leaves no doubt that the present domain name registration is identical and confusingly similar but is also in Bad Faith.

Under Para 4(a) of the Policy 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.

Each of these conditions have been fulfilled by the Complainant.

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

That the Respondent's domain name "" is identical to the trade mark/name MARUTI in which the Complainant has rights;

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

That the registration of the domain name "" is a "Bad Faith registration"

 

7. Decision.

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

 

 

 

 

Maninder Singh
Sole Panelist

Dated: November 16, 2000

Full & Egal Universal Law Academy