WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
AB SKF and SKF Beaings India Limited v. Vikas Pagaria
Case No. D2001-0867
1. The Parties
1.1 The Complainants are:
(a) AB SKF, a company duly incorporated under the laws of Sweden, having its registered office at SE � 415, 50 Goteberg, Sweden.
(b) SKF Beaings India Limited, a company incorporated under the laws of India, having its registered office at Mahatma Gandhi Memorial Building, Netaji Subhash Road, Mumbai � 400 002, India.
1.2 The Respondent is Mr. Vikas Pagaria, an individual and a non corporate, non business entity. The address of the Respondent as contained in the domain name registration with DomainPeople, Inc. is 453, Gali Mata Wali, Teliwara, Delhi � 110 006, India. The administrative contact, technical contact and billing contact for the domain name registered by the Respondent is Mr. Vikas Pagaria, AL � 134, Shalimar Bagh, Delhi � 110 052, India.
2. The Domain Name and Registrar
2.1 The domain name that is the subject of this Complaint is .
2.2 The Registrar of the domain name is DomainPeople, Inc, Suit 1440, Harbour Center, 555 West Hastings Street, Vancouver, BC, Canada V6B 4N6.
3. Procedural History
Issuance of Complaint
3.1 A complaint, pursuant to the Uniform Domain Name Dispute Resolution Policy implemented by the Internet Corporation for Assigned Names and Numbers (ICANN) on October 24, 1999 ("Uniform Policy"), and under the Rules for Uniform Domain Name Dispute Resolution Policy implemented by ICANN on the same dated ("Uniform Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("Supplemental Rules"), was submitted electronically to the World Intellectual Property Organization, Arbitration and Mediation Center ("the Center") on July 9, 2001. A hard copy of the complaint together with annexures and the required fees were received by the Center on July 10, 2001. An Acknowledgment of Receipt of the complaint was sent by the Center to the Complainant on July 11, 2001.
3.2 A copy of the Complaint was sent to the Registrar on July 16, 2001. On August 15, 2001, the Registrar confirmed to the Center that it is the Registrar of the domain name and indicated that the date of registration of the domain name is December 10, 2000. The Registrar also confirmed that the current registrant of the domain name is the Respondent, Mr. Vikas Pagaria. According to the register of the Registrar the Administrative Contact, Technical Contact, Zone Contact and Billing Contact for the Respondent is Mr. Vikas Pagaria, AL � 134, Shalimar Bagh, Delhi � 110 052, India, vikaspagaria@. The Registrar provided postal and email address and a telephone number for the Contact. The Registrar also supplied the terms of the domain name service agreement between it and the Respondent. Section 2 of this Agreement states as follows:
"You agree to be bound by the current CORE Domain Name Dispute Policy ("Dispute Policy") which is incorporated into this Agreement by reference. The Dispute Policy can be found at . Any disputes regarding the right to use your domain name will be subject to the Dispute Policy."
3.3 The agreement also provides that the Respondent agrees to be bound by the Uniform Domain Name Dispute Resolution Policy incorporated therein.
Notification to Respondent
3.4 On August 17, 2001, the Center verified that the complaint satisfied the formal requirements of the Uniform Policy and the Uniform Rules. On the same day, that is, August 17, 2001, the Center issued a Notification of Complaint and Commencement of Administrative Proceeding (including a copy of the filed Complaint), to both the postal and email addresses of the Respondent as provided by the Registrar. Copy of this Notification of Complaint was also sent to the Complainant.
3.5 The Notification of Complaint and Commencement of Administrative Proceeding stated that the last date for sending the response by the Respondent to the Complainant and the Center is September 6, 2001. The Respondent was further informed that if his response is not received by that date, he will be considered in default. The Center will appoint an Administrative Panel to review the facts of the dispute and to decide the case. The Administrative Panel will not be required to consider late-filed response, but will have the discretion to decide whether to do so and, as provided for by Rules, paragraph 14, and may draw such inferences from the default of the Respondent as it considers appropriate.
3.6 The response was submitted by the Respondent electronically to the World Intellectual Property Organization, Arbitration and Mediation Center on September 5, 2001. A hard copy of the response together with annexures was received by the Center on September 11, 2001.
3.7 On September 18, 2001, the Center issued to both parties a Notification of Appointment of Administrative Panel and Projected Decision Date. This Notification informed the parties that the Administrative Panel would be comprised of a single Panelist, namely, Dr. Vinod K. AGARWAL. The Administrative Panel is required to give the decision by October 2, 2001.
3.8 On September 22, 2001, the Complainant made Supplemental filing to the Center by e mail. The Center acknowledged to the Complainant the receipt of the Supplemental filing on September 25, 2001. The Administrative Panel and the Respondent were also informed accordingly. A copy of the Supplemental filing has been given to the Respondent. The Administrative Panel received the Supplemental filing through e mail on September 25, 2001.
3.9 The Respondent also submitted a reply to the Supplemental filing on October 1, 2000. The Center acknowledged to the Respondent the receipt of his Supplemental filing on the same day, that is October 1, 2001. The Administrative Panel and the Complainants were also informed accordingly. The Administrative Panel received the respondent�s Supplemental filing on October 3, 2001.
3.10 The Rules for the Uniform Domain Name Dispute Resolution Policy do not contain any express provision for Supplemental filing. Therefore, the Center has left it for the Administrative Panel to take an appropriate decision in the matter. In the interest of justice to the parties, the Administrative Panel decides to take into consideration the contentions raised in the said Supplemental filing made by the Complainant and the Respondent. However, wherever, such Supplemental filing will be taken into consideration, specific reference of the Supplemental filing will be made.
4. Factual Background
4.1 The Complainants have stated the following facts:
Complainant�s Identity and Activities
4.2 In the present complaint, there are two Complainants. They are distinguished and called as Complainant No. 1 and Complainant No. 2.
4.3 The Complainant No. 1 was established in 1907 for the manufacture of self- aligning ball bearings. Presently, it is the largest manufacturer of bearings in the world. It is the market leader in the field of rolling bearings and is famous for designing, manufacturing and distributing bearings. The Complainant No. 1 has manufactured and marketed various types of bearings under the mark SKF. At present the product range comprises more than 241 variants of bearings manufactured in all types and sizes and types for practically all applications, covering the principal bearing types. The Complainant No. 1 has worldwide presence owing to its production plants, joint venture companies, subsidiaries and dealership network spread across 150 countries. It has a work force of over 40,000 employees in 80 production facilities in over 22 countries with a turn over of 39,848 million seks in the year 2000.
4.4 The Complainant No. 2 is a part of the SKF group and a joint venture company incorporated in India. The complaint does not indicate the names of the joint venture partners. It set up its first unit for the manufacture of bearings near Pune, Maharashtra, India in 1965. Subsequently, it established a modern bearing manufacturing unit near Bangalore, Karnataka, India. The Complainant No. 2 is also advertising its product under the trademark SKF in India and has a turn over of Rs. 3000 million in 1999.
Complainant�s Trading Name and Trademarks
4.5 The Complainant No. 1 is the registered proprietor of the trademark SKF in approximately 130 countries in respect of their goods and services. These include inter alia Australia, Benelux, Canada, European Community, Japan, New Zealand, South Africa, United Kingdom, United States of America, etc. The mark has acquired the status of a "well known mark" as per Article 6 bis of the Paris Convention. It is stated that the earliest registration of the trademark SKF in favour of the Complainant No. 1 in India dates as far back as 1948. The Complainants have annexed four certificates in Annexure C to the Complaint. The first Certificate had been issued under the Indian Trade Marks Act, 1940 on June 7, 1947, and is in respect of goods falling in class 6. It had been issued in the name of "Aktiebolaget Svenska Kullagerfabriken" Artillerigatan, Gothenburg, Sweden. The second certificate had also been issued under the Indian Trade marks Act, 1940 on March 19, 1948, but it is in respect of goods falling in class 7. It had also been issued in the name of "Aktiebolaget Svenska Kullagerfabriken" Artillerigatan, Gothenburg, Sweden. The third certificate had been issued under the Indian Trade and Merchandise Marks Act, 1958 on October 22, 1959, in the name of "Skf Kullagerfabriken GmbH.", Schweinfurt, German Federal Republic. The fourth and the last certificate had been issued under the Indian Trade and Merchandise Marks Act, 1958 on May 15, 1981, in the name of "Aktiebolaget Skf" Hornsgatan, S-416 50 Gothenburg, Sweden. All these certificates indicate the registration of the trademark though written in different styles. However, these certificates appear to have been issued in different names. Further, three registrants belong to Sweden while the one registrant is from the Federal Republic of Germany. The Complainants have no where stated in the complaint that all these registrants are the same company or their joint ventures. For the sake of the present dispute, the Administrative Panel presumes, as certain words are common in all of them, that all these registrations of trademark have been granted either to the same company or its joint ventures.
4.6 The Complaint does not disclose that the SKF Bearings India Limited, the Complainant No. 2, is also the owner of any trademark in India.
Complainant�s Domain Names and Web Sites
4.7 The Complainant No. 1 has a web site, . The said web site provides a comprehensive overview of the Complainants activities. In addition, the Complainant has a number of web sites which include the names of the countries where it is having its establishments, like , for the United States of America, for Netherlands, etc. The home page and a few other relevant pages of the Complainant No. 1�s web site have been annexed as Annexure D to the Complaint.
Respondent�s Identity and Activities
4.8 The Respondent is the registrant of the domain name The Registrar of the domain name is DomainPeople Inc.. The Registrar has confirmed that the registrant of this domain name as per their Whois database is the Respondent.
4.9 The postal address of the Respondent and its Contact, as contained in the Registrar�s registry, is Mr.Vikas pagaria, 453, Gali Mata Wali, Teliwara, Delhi � 110 006, e mail: vikaspagaria@. Further, as per the Registrar�s register, the Respondent is an individual.
Respondent�s Trading Name and Trademarks
4.10 The Respondent is non-trading, non-commercial entity. The response does not disclose any trading name and trademark possessed by the respondent nor any information as to the activities of the Respondent is asserted in the Response except that he has vast knowledge of household and consumer goods.
Respondent�s Domain Names and Web Sites
4.11 The response discloses that the Respondent owns only the disputed web site, namely, .
5. Relevant Provisions of the Uniform Policy
5.1 Paragraph 4(a) of the Uniform Policy sets out the three requirements which must be present for a proceeding to be brought against the Respondent under the Uniform Policy, and which the Complainant must prove in order to be able to obtain a remedy. It is as follows:
a. Applicable Disputes
You are required to submit to a mandatory administrative proceeding in the event that a third party (a "complainant") asserts to the applicable Provider, in compliance with the Rules of Procedure, that
(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.
In the administrative proceeding, the complainant must prove that each of these three elements are present.
5.2 Paragraph 4(b) of the Uniform Policy identifies, in particular but without limitation, four circumstances which, if found by the Administrative Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The precise wording of this paragraph is as follows:
b. Evidence of Registration and Use in Bad Faith.
For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purposes of selling, renting, or otherwise transferring the domain name 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, internet users to your web site 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 your web site or location or of a product or service on your web site or location.
5.3 It may be mentioned that circumstances specified in sub-paragraphs (i), (ii), and (iii) of paragraph 4(a) deal with the intention or purpose of domain name registration, the four circumstances in paragraph 4(b) are illustrative and the existence of any of them, will be an instance of "registration of a domain name in bad faith".
5.4 Paragraph 4(c) of the Uniform Policy sets out circumstances, in particular but without limitation, which, if found by the Administrative Panel to be proved, demonstrate the Respondent�s rights or legitimate interests to the domain name for the purposes of paragraph 4(a)(ii). The provisions of this paragraph are as follows:
c. How to Demonstrate Your Rights to and Legitimate Interests in the Domain Name in Responding to a Complaint.
When you receive a complaint, you should refer to Paragraph 5 of the Rules of Procedure in determining how your response should be prepared. Any of the following circumstances, In particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your 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; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial 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.
6. Parties� Contentions
The Complaint
6.1 The Complainants contend that each of the three elements specified in paragraph 4(a) of the Uniform Policy are applicable to this dispute. In relation to element (i), the Complainants contend that the trademark "SKF" contained in the domain name registered by the Respondent incorporates the entire trademark of the Complainant and hence it is confusingly similar to the Complainant�s trademark. The addenda "india" in the domain name does not prevent the domain name from being confusingly similar to the Complainant�s trademark. A suffix like "india" is generic and does not effectively distinguish the Respondent�s domain name. In support of this contention, the Complainants have relied on Viacom International Inc. v. Sung Wook Choi and M Production, (WIPO Case No. D2000-1114) wherein the Administrative Panel has observed that, "This is consistent with this and other Panels earlier decisions that common geographic qualifiers can rarely be relied upon to differentiate if the other elements of the domain name comprise a mark or marks in which another party has rights." Thus, the domain name is identical or confusingly similar to the trademark of the Complainants.
6.2 In relation to element (ii), the Complainants contend that the Respondent has no rights or legitimate interest in the domain name . The Respondent is not commonly known by the name . The Complainants further contend that the Complainants have not authorized the Respondent to use their trademark . Further, the Respondent has not made any demonstrable preparations to use the impugned domain name in connection with a bona fide offering of goods/services. The Complainants further contend that the Respondent has no rights or legitimate interests in respect of the domain name in issue. The sole purpose of the registration is to misappropriate the reputation associated with the Complainant�s trade mark . As on the date of filing the complaint, the web site was inactive.
6.3 Regarding the element at (iii), the Complainants contend that :
(a) The impugned domain name belonged to the Complainants till September 23, 2000. Owing to the inadvertence of Complainant No. 2 in paying the renewal fees, the registration of the domain name in the name of the Complainant lapsed and the respondent immediately registered the domain name. According to an e mail received by the Complainants, the sole purpose of the respondent�s registration of this domain name was to sell it to the Complainants for valuable consideration in excess of the respondent�s out of pocket costs directly related to the domain name. This amounts to bad faith as er para 4(b)(i) of the Policy.
(b) the Respondent, being an Indian, clearly knew of the Complainants� trademark rights and its extensive business presence in India. This by itself suggests that the registration has been in bad faith. In support of this contention, the Complainants have annexed a copy of an affidavit of an employee filed in the court, wherein the employee has stated that he received a telephone call from the Respondent. The Respondent said that he was troubled because a lot of people were confusing the web site he had registered as that of the Complainant. In support of this contention, the Complainants have relied on the Administrative Panel�s decision in Cellular One Group v. Paul Brein (WIPO Case No. D2000-0028).(A copy of the decision is available at Annexure I). Further that the customers of the Complainants are likely to believe that the complainant has licensed its trademark SKF to the Respondent or authorized the Respondent to register the impugned domain name or that the Respondent has some connection with the Complainant in terms of direct nexus or affiliation with the SKF Group.
(c) the impugned domain name was registered by the Respondent on December 16, 2000. The web site has not been activated by the Respondent till the date of filing the complaint. Thus, "inaction" or "passive holding" of domain name amounts to "bad faith". In support of this contention, the Complainant has relied on the case of Telstra Corporation Ltd., v. Nuclear Marshmallows, (WIPO Case No. D2000-0003) (A copy of the decision is available at Annexure J).
Thus, the impugned domain name has been registered and is being used in bad faith.
The Response
6.4 The Respondent has filed his response to the complaint. In the response the Respondent denies that each of the three elements specified in paragraph 4(a) of the Uniform Policy are applicable to the domain name which is the subject of this dispute.
6.5 In relation to element (i) of paragraph 4(a) of the Uniform Policy, the contentions of the Respondent are as follows:
(a) the Respondent admits that he is the registrant of the domain name . Since he had received some e mails and queries about the product of the Complainants on the said site, it goes to show that the word SKF in the domain name is identical or confusingly similar to the trademark of the Complainants. The Respondent submits that the said confusion has arisen due to the fact that the Complainant is giving various links from its site to the site stating it to be the local site of the Complainant. The Respondent has asked the Complainant to delink this web site by a notice dated January 22, 2001, and again by a telephone call to remove the links from to as this was creating confusion in the mind of the people.
(b) The Respondent has registered this web site for purposes of doing the business of e-commerce. The Respondent wanted to make the shopping fun for the customers. He was inspired by another site by the name of which means Kya Mangta Hai (this is in Indian language Hindi and means "what do you want"). Thus, the domain name has been registered which is abbreviated for "SHOPPING KA FUN IN INDIA". KA is a word of Indian language Hindi. According to the Respondent is means the "FUN OF SHOPPING IN INDIA". Further that, this site will be used by the Respondent for household goods and services which are goods and services unrelated to or unassociated with the goods and services of the Complainants.
(c) The Respondent challenges the Complainant�s claim that the SKF mark is word famous and exclusively associated with the Complainant and is therefore, entitled to protection. In particular, the Respondent contends that the domain names registered by some other companies also contains the words SKF, such as SKFMEDIA.COM and SKF-INC.COM. Further, while conducting the search it was found by the Respondent that there are many trademarks similar to the trademark of the Complainant which are being used by others (Copies of such searches have been annexed as Annexure G).
6.6 In relation to element (ii) of paragraph 4(a) of the Uniform Policy, the Respondent denies the allegation that he has no right or legitimate interest in the domain name. The Respondent contends that the web site is being prepared by the Respondent which is still under construction and further plans have been postponed due to the restraint order passed by the Delhi High Court. The Respondent has also place reliance on the Administrative Panel in the case of A.C.I.M.G.A. v. PNMI (WIPO Case No. D2001-0542) where the complainant has failed to prove paragraph 4(a) (ii) of he Policy and the Administrative Panel had taken a decision in favour of the Respondent. That case has no application to the facts of the preset case.
6.7 In relation to element (iii) of paragraph 4(a) of the Policy, the Respondent denied the allegation of bad faith made by the Complainants. He clarifies that he has neither made any offer for the sale of the web site not he has made any demand for money. In the Respondent�s Supplemental filing, the Respondent contends it is wrong to link him with the e mail sent by indiasking@. The preparation or construction of the site takes lot of time. The Respondent is engaged in arranging the finances and for the construction of the web site. In support of this contention, the Respondent has annexed some correspondence exchanged between the Respondent and the finance companies.
7. Discussion and Findings
The Court case
7.1 In the first instance, it may be seen that in this case, the Complainants have filed a case against the Respondents in the Delhi High Court being Suit No. 393 of 2001 � AB SKF & Anr. V. Mr. Vikas Pagaria. By its order dated February 26, 2001, the Delhi High Court has granted an ex-parte ad interim restraint order against the Respondent. (A copy of the Order is annexed as Annexure E).
7.2 Regarding the Court Proceedings, the Uniform Domain Name Dispute Resolution Policy, paragraph 4(k) provides as follows:
"k. Availability of Court Proceedings. The mandatory administrative proceeding requirements set forth in Paragraph 4 shall not prevent either you or the complainant from submitting the dispute to a court of competent jurisdiction for independent resolution before such mandatory administrative proceeding is commenced or after such proceeding is concluded�."
7.3 Rule 18 of the Rules for Uniform Domain Name Dispute Resolution Policy is also relevant in the context of this case. It is as follows;
"18. Effect of Court Proceedings
(a) In the event of any legal proceedings initiated prior to or during an administrative proceeding in respect of domain name dispute that is the subject of complaint, the Panel shall have the discretion to decide whether to suspend or terminate the administrative proceeding, or to proceed to a decision.
(b) In the event that a party initiates any legal proceedings during the pendency of an administrative proceeding in respect of a domain name dispute that is the subject of a complaint, it shall promptly notify the Panel and the Provider."
7.4 The Court has granted an ex parte ad interim restraint order restraining the Respondent from, "carrying on any business or making or selling, offering for sale, advertising goods under the name SKF or in any other name deceptively similar thereto and from using the domain name or in any other manner passing off its web site as that of Plaintiff No. 2." The Plaintiff No. 2 in the court proceeding is the Complainant No. 2 in this Complaint. This restraint order was granted on February 2, 2001. No order has been passed thereafter. In India, the courts take long time to decide a dispute. Till a decision of the court is available, neither the Complainants nor the Respondent will be able to make use of the impugned domain name. Further, the Complainants have already filed a complaint before the Center and had paid the requisite fees. The Respondent has filed the response. The Administrative Panel has been appointed. The decision making process of the Center is quite fast. Further, Paragraph 4(k) of the Policy clearly provides that any party aggrieved by the decision of an Administrative Panel can go to a court. Considering all these aspects, the Administrative Panel, in exercise of the discretion vested in it under Rule 18 of the Rules, decides to proceed to a decision.
Identical or Confusingly Similar Domain Name
7.5 The relevant part of the domain name is . The Complainants asserts, the Respondent admits and the Administrative Panel finds that the domain name is identical to the word .
7.6 The Complainants are the owners of the trademark or service mark SKF. There is sufficient evidence filed by the Complainants to establish the fact that the trademark has been registered by and belongs to the Complainants for a very long time. In some countries, the word is associated with the country name also. The Respondent has admitted that the domain name is creating confusion in the mind of the people, as he is receiving e mails and queries on the impugned site about the product of the complainants. No doubt, the Respondent has requested the Complainants to delink the with . But that by itself does not prove that the two are not identical or confusingly similar to each other. In this context, reliance can be placed on the Administrative Panel decision in Viacom Iternational Inc., v. Sung Wook Choi and M. Production, (WIPO Case No. D2000-1114).
7.7 To the Respondent�s contention that other companies are holding the domain names similar to the Complainant, such as, and , the Complainant has in the Supplemental filing stated that in order to succeed in the present proceedings, it is not bound to take action against all infringers of its trade marks. In support, the Complainant has relied on the decision of the Administrative Panel in SGS Societe Generale de Surveillance S.A. v. Inspectorate (WIPO Case No. D2000-0025). The fact of the referred case are different and have no bearing to the facts of this case. Further, it is difficult to find acceptability of this argument of the Complainant. In such an event, the Complaint ought to have distinguish this case and disclose the circumstances compelling the Complainants to initiate action against the Respondent only and not against other infringers. However, this issue by itself is not material for a finding in this case.
7.8 The Administrative Panel finds that the domain name is confusingly similar to the trademark registrations of the word held by the Complainant.
Respondent�s Rights or Legitimate Interests in the Domain Name
7.9 The Respondent Mr. Vikas Pagaria is an individual and a non-corporate, non-business entity. The response does not indicate the current activities of the Respondent. He has only stated that he has vast trade knowledge over the household goods and consumer goods of renowned companies such as Philips, Bajaj, BPL, Sumeet, etc. But no evidence has been filed in support of these contentions. He does not possess any other trademark or service mark. The Respondent is not commonly known by the name of . The site is inactive or not in use. In the Supplemental filing, the Complainant has drawn attention to the findings of the Administrative Panel in Herohonda Motors Limited v. Rao Tella, (WIPO Case No. D2000-0365), wherein it has been held that the, "Respondent�s plan, without more, would not give the Respondent any rights or legitimate interests in the name". In view of para (i) above, and the fact that the Complainant has not licensed or otherwise permitted the Respondent to use its trademark or to apply for or use any domain name incorporating any of those marks, and (ii) the fact that no body will use the word unless seeking to create an impression of an association with the Complainant, the Administrative Panel finds that the Respondent has no rights or legitimate interests in the domain name.
Domain Name Registered and Used in Bad Faith
7.10 According to the language used in paragraph 4(a)(iii), the Complainant has to prove registration in bad faith as well as use in bad faith. That is to say, bad faith registration alone is an insufficient ground for obtaining a remedy under the Uniform Policy. It can be seen that the requirement in paragraph 4(a)(iii) that the domain name "has been registered and is being used in bad faith" will be satisfied only if the Complainant proves that the registration was undertaken in bad faith and that the circumstances of the case are such that Respondent is continuing to act in bad faith.
7.11 The Complainant No. 2 has been the registrant of the domain name . For the first time, it was registered by the Complainant No. 2 in 1997 with the Network Solutions Inc. The aforesaid web site contained information about SKF India�s constitution, history, activities and product range of the Complainant No. 2. The said domain name was renewed annually by the Complainant No. 2 by paying the requisite fee. For the year 2000-2001 also, the Complainant paid the renewal fee of US $ 35.00 to the Registrar on October 27, 2000, through a cheque No. 620501167 dated October 20, 2000, drawn on Bank of America. The Bank has confirmed that the said cheque has been encashed. The Respondent has contended that the Complainant has annexed neither the copy of the relevant notice nor the copy of any communication made with Network Solutions Inc. However, in the Supplemental filing the Complainant has stated that the Complainant is filing and has in fact filed a copy of the communication with Network Solutions Inc., as well as the bank draft and a letter from the bank confirming that the cheque had been cashed as Annexure J to the Complainant�s Supplemental filing.
7.12 The Respondent has registered the domain name with the word on December 10, 2000. In view of the fact that the trademark of the Complainants is very old and is registered in a number of countries, the Respondent would not be able to use the domain name without creating an impression in the minds of the public that the Complainants have licensed the said trademark to the Respondent or authorized the Respondent to register it or that the Respondent has some connection with the Complainants. All these situations are not available in this case. The Respondent has not shown any convincing reason as to why he had registed a domain name with the abbreviation, more particularly when he was aware of the Complainants trademark, also when the full name "SHOPPINGKAFUNINDIA" or any other similar domain name would have been more appropriate and conveyed the ideas of the Respondent in a better and proper manner. This would have clearly distinguished the trademark of the Complainants with the domain name of the Respondent. The words SKF are not the standard or well known abbreviation of the expression SHOPPING KA FUN The Administrative Panel concludes that the domain name has been registered by the Respondent in bad faith.
7.13 The next question is whether the domain name is "being used in bad faith". Inaction (eg. passive holding) in relation to a domain name registration can, in certain circumstances, constitute a domain name being used in bad faith. The Administrative Panel in the case Telstra Corporation Ltd., v. Nuclear Marshmallows (Case No. D2000-0003) has giving a positive finding. However, the Uniform Policy and the Uniform Rules do not provide that an Administrative Panel is bound by or required to follow precedents.
7.14 The Administrative Panel has considered whether, in the circumstances of this particular Complaint, the passive holding of the domain name by the Respondent amounts to the Respondent acting in bad faith. The Administrative Panel has come to the conclusion, keeping in view the following circumstances, that the passive holding of a domain name amounts to acting in bad faith.
(i) The trademark of the Complainant enjoys sound reputation and is well known in business world in India and other countries. The Complainant has used the trademark for a long time for various goods and services.
(ii) The Respondent has preferred not to provide any evidence whatsoever of any actual or contemplated good faith use by it of the domain name in dispute. A mere correspondence with a few finance companies, in this case two companies one of which has rejected the proposal, is not enough.
(iii) The Respondent is not commonly known by the domain name registered by him.
(iv) The Respondent has no relation or association with any of the words used in the domain name.
8. Decision
8.1 The Administrative Panel concludes that the domain name is confusingly similar to the trademark or service mark in which the Complainant has rights. The Respondent has no rights or legitimate interests in this domain name. The Respondent has registered this domain name and is using it in bad faith.
8.2 The Administrative Panel allows the complaint of the Complainant in accordance with the Uniform Policy and the Uniform Rules. The Administrative Panel directs that the domain name be transferred to the Complainant.
Dr. V. K. Agarwal
Sole Panelist
Dated: October 11, 2001
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