WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
NIIT Ltd. v. Vanguard Design
Case No. D2003-0005
1. The Parties
The Complainant is NIIT Limited, of New Delhi 110 019, India.
The Respondent is Vanguard Design, of the United States of America.
2. The Domain Name and Registrar
The domain name in dispute is ("disputed domain name").
The Registrar with which the disputed domain name is registered is Intercosmos Media Group d/b/a directNIC.com ("Registrar").
The disputed domain name was registered on May 11, 2002.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center ("Center") on January 8, 2003.
On January 8, 2003, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day the Registrar transmitted by email to the Center its verification response stating that the Respondent is listed as the registrant of the disputed domain name and providing the contact details for the administrative, billing, and technical contact.
In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on January 14, 2003.
The Center verified that the Complaint, together with the amendment to the Complaint, satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 20, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was February 9, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondent�s default on February 12, 2003.
The Center appointed Alistair Payne as the sole Panelist in this matter on February 19, 2003. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the WIPO Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainant, earlier known by the name of Pace Education Private Limited, was incorporated in India on December 2, 1982.
On November 16, 1990, the name of the Complainant was changed to NIIT Limited. The name "NIIT" is derived from the Complainant�s trading style: National Institute of Information Technology.
Since its inception, the Complainant has engaged in the business of imparting education and training in the field of Computer and Information Technology and has been developing and marketing computer software. The Complainant�s business involves educating the public to become proficient in the use of computers as per the norms and methodologies developed by it and/or to occupy professional positions related to the use of computers. The Complainant has become prominent in the field of computer education and has achieved a national status and reputation in India.
The Complainant initially set up educational centers at Bombay, Delhi, Madras, Bangalore, Hyderabad, Secunderabad, Calcutta and Pune in India. From 1987 onwards, the Complainant has granted licenses to third parties in various territories to set up and conduct NIIT Education Centers. Presently, the Complainant has over 2000 Franchise Centers across India and a further 100 around the world. The Complainant also has operations in several other countries, including but not limited to the United States of America, United Kingdom, Belgium, France, Thailand, Australia and Singapore.
The American Council on Education (ACE) has established credit recommendations for NIIT career courses enabling NIIT students to seek credit in over 1500 American colleges and universities.
The Complainant has set up an office in Atlanta, Georgia, USA and training centers in Singapore, Malaysia and Indonesia. It is one of the top companies in India in the area of software exports.
In 1990, the Complainant set up a research and development centre called the NIIT Centre for Research in Cognitive Systems ("Centre"). This Centre has participated in some of the most prestigious conferences in the world and has brought into the Complainant some of its most recent technologies. In 1992, the Centre took on the Complainant�s first export assignment involving the technology of Object Oriented programming. The Centre�s Human Computer Interaction Laboratory has also attracted worldwide attention with its patented inventions of a device which records human perception and technology that allows computers to respond to the electroencephalic signals from the human brain.
In 1995, the Centre created NetVarsity, the world�s first totally virtual internet university. The Centre has participated in major scientific gatherings around the world. Notable among these are the Institute of Electrical and Electronics Engineers conferences on Systems, Man and Cybernetics, where the Centre�s work on Neutral Networks drew considerable attention.
The business of the Complainant, referred to in the preceding paragraphs, has been conducted under the trade and service mark "NIIT," an invented word, since 1982. The Complainant is the proprietor of the trade mark and trade name "NIIT" in relation to the said business.
The mark NIIT has been used by the Complainant extensively, for example, in relation to all its computer software printed manuals, publications, magazines and study materials. The mark NIIT has also been used in advertisements inserted in the print media, such as newspapers and magazines, both in India as well as abroad. In each of these instances of use, the mark NIIT is prominently displayed and has become the focus of the Complainant�s entire business.
The Complainant has had its trade mark "NIIT" registered in some 18 countries including India, the United States of America, United Kingdom, China, Hong Kong, Israel, Indonesia, Korea, Mauritius, South Africa, Taiwan and New Zealand. The Complainant has pending applications for registrations in India, Australia, Pakistan, Kuwait and Saudi Arabia.
The Complainant�s business, run under the mark "NIIT," has achieved strong growth ever since its inception. The Complainant has also extensively advertised its business and goods under the mark "NIIT" in print, satellite television and electronic media. In the 2000/2001 year, out of a total income of 7108.14 (rupees in millions), it spent 200.35 (rupees in millions) in advertising.
5. Parties� Contentions
A. Complainant
The Complainant submits:
(a) The domain name is identical or confusingly similar to the Complainant�s mark.
The Complainant submits that the mark "NIIT" is associated solely with its company on account of the Complainant�s worldwide registration of the trade mark and history of extensive use. Therefore, any use by another party of an identical or deceptively similar mark would lead to confusion and deception as customers would infer that the other party�s product or service has an association or nexus with the Complainant.
The Complainant submits that such confusion is created by the Disputed domain name, which incorporates the trade mark "NIIT" in its entirety. The Complainant also submits that users searching for its Centre�s website will naturally type in NIITCRCS in the search engine (as CRCS is an acronym for its Centre). This will lead internet users to believe that the Complainant is associated with or owns the Respondent�s website as it has the domain name . The Complainant submits that such an association will damage its reputation and goodwill as the Respondent has established a pornographic website with the disputed domain name.
In summary, the Complainant submits that the disputed domain name is identical to the trade mark "NIIT" in which it has exclusive rights.
(b) The Respondent has no rights or legitimate interests in respect of the domain name;
The Complainant submits that the Respondent is not, either as an individual, business or organization commonly known by the name "NIIT." Also, the Complainant has not licensed or otherwise permitted the Respondent to use its trade mark "NIIT" or to apply for any domain name incorporating its mark.
(c) Registration and use in bad faith.
The Complainant submits that the Respondent has registered and is using the disputed domain name in bad faith for the following reasons:
Any incorporation of the Complainant�s trade mark, which has been used extensively in the Complainant�s business is in itself bound to be in bad faith. Further, the Respondent knew of the Complainant�s prior rights to the mark when the Respondent registered the disputed domain name.
The Complainant relies upon AltaVista Company v Geoffrey Fairbairn WIPO Case No. D2000-0849, Viacom International Incorporation v Emperor Sedusa WIPO Case No. D2001-1438 and Microsoft Corporation v Paul Horner WIPO Case No. D2002-0029 to argue that re-programming a domain name to direct it to a pornographic site is an act of bad faith.
The Complainant submits that as its mark is well known by the public, including the Respondent, the Respondent could not have a legitimate interest in the mark. The use of the disputed domain name will result in confusion and deception with the public assuming that the Respondent is passing off its activities as being endorsed by the Complainant.
B. Respondent
The Respondent did not reply to the Complainant�s contentions.
6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, in order to succeed in this Administrative Proceeding and obtain the requested remedy (in this case transfer of the disputed domain name), the Complainant must prove that each of the three following elements are present:
(i) the domain name is identical or confusingly similar to a trade mark 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 domain name has been registered and is being used in bad faith.
A. Domain Name Identical or Confusing Similarity to the Complainant�s Trade Mark or Service Mark
This element of the Policy requires the Complainant to prove that (a) it has rights in a trade mark or service mark, and (b) the disputed domain name is identical to or confusingly similar to such trade mark or service mark.
The Complainant has shown in its Complaint that it is the owner of registered and pending "NIIT" trade marks in various countries around the world including India, the United States of America and the United Kingdom. In addition, the Complainant has shown that it has common law rights in the "NIIT" mark and in this Panel�s view would have a protectable trading reputation under the "NIIT" mark. Accordingly, the Panel finds that the Complainant has rights in the "NIIT" mark.
The Complainant has not however shown that it has rights in the mark "NIITCRCS." The Complaint refers to the Complainant�s Centre as the NIIT Centre for Research in Cognitive Systems and does not offer any evidence that the Complainant�s Centre trades under the mark "NIITCRCS."
Accordingly, the issue for the Panel to determine is whether the disputed domain name is confusingly similar to the mark "NIIT" in which the Complainant has rights. In the Panel�s view, the disputed domain name comprises two distinct elements, namely the invented word "NIIT" followed by the letters "CRCS."
The Panel accepts that the disputed domain name incorporates the Complainant�s "NIIT" mark in its entirety and that the letters which follow (namely "CRCS") do not remove the scope for confusion with the Complainant�s "NIIT" mark (see Telstra Corporation Limited v. Mr. Jeon, WIPO Case No. D2001-1161). This is especially so as those letters are an acronym for the Centre and in the Panel�s view a significant number of internet users would, when attempting to reach the website for the Centre, type in the disputed domain name to their browser.
For these reasons, the Panel finds that the disputed domain name is confusingly similar to the Complainant�s "NIIT" mark.
B. The Respondent�s Rights or Legitimate Interests in the Domain Name
In accordance with paragraph 4(c) of the Policy, a Respondent may demonstrate its rights or legitimate interests to the domain name by proving, on a non-exhaustive basis, any of the following circumstances:
(i) before any notice to the Respondent of the dispute, the Respondent�s 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) the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the Respondent has acquired no trade mark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
The Respondent has not put forward any evidence as to its rights or legitimate interests in the disputed domain name. It appears that the only use the Respondent has made of the disputed domain name has been as a link to a pornographic website.
From the evidence submitted by the Complainant, the Respondent cannot be said to be using the disputed domain name in connection with a bona fide offering of goods or services. The Respondent has failed to explain why it chose to redirect the disputed domain name to a pornographic website.
There is also no evidence that the Respondent is commonly known by the disputed domain name and there is no use of the disputed domain name in the actual content of the Respondent�s pornographic website itself. In the absence of a Response, the Panel infers that the Respondent�s purpose in registering the disputed domain name was to attract to its website, Internet users looking for sites associated with the Complainant or its Centre (see Enterbrain Inc v. Domain For Sale/Email Your Offers, WIPO Case No. D2002-0009).
The Panel therefore finds that the Complainant has established that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registration and Use of the Domain Name in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances, without limitation, any of which if found by the Panel to be present shall be evidence of the registration and use of a domain name in bad faith.
The relevant circumstance in this case is that set out in paragraph 4(b)(iv), namely by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant�s mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location.
In Enterbrain Inc v. Domain for Sale/ Email Your Offers!, WIPO Case No. D2002-0009 and Paragon Electric Co. Inc v Buy This Domain d/b/a NameRegister.Com, WIPO Case No. D2001-1439, the respective Panels found that adoption of a domain name containing the Complainant�s mark to divert to a pornographic website raises an overwhelming presumption that the purpose of such registration and use is to attract users seeking to contact the Complainant to its website. Similarly, in the absence of a Response, the Panel finds that there is a presumption that the Respondent seeks to benefit financially from such confusion.
The Panel therefore finds that the disputed domain name was registered and is being used in bad faith.
7. Decision
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
Alistair Payne
Sole Panelist
Dated: March 5, 2003
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