WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Mawana Sugars Limited v. Panalink Infotech Limited
Case No. D2005-1169
1. The Parties
The Complainant is Mawana Sugars Limited, New Delhi, India, represented by Pavan Duggal Associates, India.
The Respondent is Panalink Infotech Limited, New Delhi, India.
2. The Domain Names and Registrar
The disputed domain names and are registered with Direct Information Pvt Ltd d/b/a PublicDomainR.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 9, 2005, against Indian Dairy Association, New Delhi, India on the basis of the WHOIS record showing the said respondent as registrant of the disputed domain names. On November 11, 2005, the Center transmitted by email to Direct Information Pvt Ltd d/b/a PublicDomainR a request for registrar verification in connection with the domain names at issue. On November 12, 2005, Direct Information Pvt Ltd d/b/a PublicDomainR transmitted by email to the Center its verification response. On verification, it was noticed that contact details of the domain names and at the time of verification had been modified to that of the Complainant of the present case. However, the Complainant does not have control of the domains. The registrar informed by e-mail of December 21, 2005, that Mr. Subhash Palsule, Panalink Infotech Limited, New Delhi, India, has the control of the domain names. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on December 23, 2005, against Panalink Infotech Limited, New Delhi, India. 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 February�7,�2006. In accordance with the Rules, paragraph 5(a), the due date for Response was February�27,�2006. The Response was filed with the Center on February 27, 2006.
The Center appointed Amarjit Singh as the sole panelist in this matter on March�17,�2006. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
The Panel considers that according to Paragraph 11 of the Rules the language of the proceedings be English.
4. Factual Background
4.1 The Complainant in this administrative proceeding is “Mawana Sugars Limited” (formerly known as Siel Sugar Ltd), a company incorporated on December�26,�2002, under the Companies Act, 1956 under the laws of India having its principal place of business at New Delhi, hereinafter referred to as the “Company” or the “Complainant”. The Company and/or its predecessor entities have been in the sugar producing and marketing business under the name and style of MAWANA for the past 55 years. The Company produces white crystals of sugar from the sugarcane fields of the Gangetic plains in India. The Company produces hygienically processed and packaged Mawana Sugar. The company claims proprietorship of trademark MAWANA on account of priority of adoption and long use under the common law.
4.2 That various trademarks concerning MAWANA have been applied for by the Company in different classes with the Registrar of Trademarks in India.
4.3 For the purposes of registering its domain names and , the Complainant company contacted M/s Panalink Infotech Limited, New Delhi, India in the year 2004. The domain names and were registered by the Complainant through M/s Panalink Infotech Limited sometime during June, 2004.
4.4 The Complainant company has rights in the trademarks MAWANA and MAWANA SUGARS due to their long usage for the last 55 years. The Complainant company has sought to reinforce these rights by moving appropriate applications for registrations with the Registrar of Trademarks. The domain names and are identical to the trademarks MAWANA and MAWANA SUGARS in which the Complainant has rights.
4.5 The Complainant company also took webspace from M/s Panalink Infotech Limited and started operating its website on the domain names and . The said websites are the official websites of the Company. The Company gave email addressesto its employees on the domain name .
4.6 In the first week of November 2005, the Complainant company embarked upon a process of internal audit of its intellectual property assets. During the course of the said audit, the WHOIS record for the Company’s domain names and were checked on November 8, 2005. It was then that the Complainant company came to know that the domain names and had been registered in the name of Indian Dairy Association. The Complainant lodged a complaint with the local police at Delhi on November 9, 2005. It was only after the present proceedings had been filed with WIPO that the issue arose as to who was the registrant and in actual control of the domain names in question. The verification confirmed that the registrant details have been changed to reflect those of the Complainant company but that the Respondent has control of the domain names.
4.7 The website of the Complainant company resolves when one types in the browser the domain names and . In fact, when one types in the browser the domain name , it automatically takes you to the official website of the Company at . The domain name is parked upon the domain name .
4.8 The Respondent Panalink Infotech Limited (formerly Panalink Internet Services) is a company incorporated under the Companies Act, 1956, having its registered office at New Delhi, India. The Respondent is engaged in the business of developing and hosting websites, giving email solutions, developing software and booking domain names.
4.9 The Respondent does not claim any rights or legitimate interest in respect of domain names and , as the same had been booked by the Respondent on behalf of the Complainant company.
4.10 The Respondent admitted in its Response that the name of Indian Diary Association was appearing as the registrant of the disputed domain names and was subsequently changed to the name of the Complainant.
4.11 According to a WHOIS search of November 8, 2005, the registered holder of disputed domain names was Indian Diary Association. The Complaint was filed with the Center on November 9, 2005. However, when the Center contacted the registrar to verify the information, the registrar indicated that the registered holder of the disputed domain names was Mawana Sugars Limited.
4.12 It is also an admitted fact that Mawana Sugars Limited, being the registrant of the disputed domain names does not have control of the domains and the same is held by the Respondent. It is also an undisputed fact that the name of the domain holder Indian Diary Association was changed to Mawana Sugars Limited between November 8, 2005 and November 12, 2005. The said changes could only be effected by the Respondent being in control of the domain names. No explanation has been given by the Respondent as to the circumstances in which the name of Indian Diary Association was entered as registrant of the domain names when the same were booked by the Respondent on behalf of the Complainant company.
4.13 This Panel is of the view that Panalink Infotech Limited has been properly made a respondent, properly notified about this proceeding and the jurisdiction of the Panel is properly invoked.
4.14 In accordance with Paragraph 4(a) of the Policy, the Complainant company requests the Administrative Panel appointed in this administrative proceeding to issue a decision that the domain names and be transferred back to the Complainant.
5. Parties’ Contentions
A. Complainant
5A.1 Mawana Sugars Limited has a long history of evolution. The Complainant company and/or its predecessor entities have been in the sugar producing and marketing business under the name and style of MAWANA for the past 55 years.
5A.2 Details of the Complainant company’s evolution are as follows:
(i) In 1949, Mawana Sugar Works was started in Village Mawana, District Meerut, UP by Delhi Cloth & General Mills Company Ltd. On October�6,�1983, the name of Delhi Cloth and General Mills Company Ltd was changed to DCM Limited. On March 1, 1990, the name of Rath Foods Limited was changed to Shriram Industrial Enterprises Limited.
(ii) On April 16, 1990, the Hon’ble Delhi High Court sanctioned a scheme of arrangement whereby DCM Limited was divided into 4 companies:
1. DCM Shriram Industries Limited
2. DCM Engineering Limited
3. Rath Foods Limited
4. DCM Limited
In terms of the scheme of arrangement, Mawana Sugar Works was transferred to Shriram Industrial Enterprises Limited, being one of the companies emerging from the scheme of arrangement.
(i) In 1992, Shriram Industrial Enterprises Limited launced the consumer sugar pack under the brand name MAWANA.
(ii) On May 10, 1995, the name of Shriram Industrial Enterprises Limited was changed to SIEL Limited. On August 26, 2003, pursuant to the scheme of arrangement approved by the Hon’ble High Court of Delhi, SIEL Limited was restructured pursuant to which the sugar business units of SIEL Limited consisting of two undertakings including the one namely Mawana Sugar Works was transferred and vested into SIEL Sugar Limited. The name of Siel Sugar Limited was changed to Mawana Sugars Limited on June 16, 2004, which coincides with the date of registration of the domain name .
(iii) The Complainant company, which has its registered office at New Delhi, India, also has another office at Mawana. The Company has got a wide spread marketing network in the whole of North India. The Company is also engaged in the business of exporting high quality sugar to countries like Yemen, Bangladesh, Indonesia and Pakistan.
(iv) The Complainant and/or its predecessor legal entities have been in the field of manufacturing premium crystal sugar for the last more than 55 years. The Company has been in the business of manufacturing consumer pack sugar from 1993 onwards for consumption by the consumer. The Company is identified in India by its high quality sugar. The Company is a member of the Indian Sugar Manufacturers Association. The Company’s employee Dr. S.S.Srivatsa has been appointed as as Associate Referee of the international organziation known as ICUMSA (International Commission for Uniform Methods of Sugar Analysis) which checks the quality of sugar worldwide.
(v) HDFC Securities Limited in a document/industry referencer in its India research series covering the Sugar Industry has reported about Mawana Sugars Limited as follows:-
“The Company is a stand alone sugar Company with two manufacturing facilities located in Western Uttar Pradesh. The Company has one of the best efficiencies in the industry with recovery rates comparable to the best in the Industry. The mills of Mawana are located in the cane rich areas of Meerut and Muzaffarnagar and also enjoy good relationship with farmers, which is critical for any sugar Company. The Company is a big player in the branded sugar market and thus commands a price premium for its sugar…. MSL(the Company) is a preferred vendor to institutional customers like Coca Cola, Pepsi, Nestle, Perfetti and Dabur as it supplies low sulphur content sugar which is perceived to be of superior quality.”
5A.3 Various trademarks concerning Mawana have been applied for in different classes with the Registrar of Trademarks.
(i) The trademark MAWANA has been applied for registration of products of pure crystal sugar in Class 30 vide application/registration no. 629171. The said application was initially filed in the year 1994 for Shriram Food and Fertilizers Industries (SFFI), a unit of Siel Limited ( predecessor entity of the Company) and subsequently, the request for change of registration to the name of Siel Limited was made on March 2, 2001. The said request has been allowed.
(ii) Further, the trademark MAWANA has been applied for registration under classes 29, 31, 32, 33 vide application/registration no. 1250287. This was one multi class application under the new Act and was filed on November�18, 2003, and has been examined and accepted for advertisement in Trade Mark Journal. Also, request for change of name to Siel Limited has been filed. Similarly, the said name has been applied for registration under class 30 vide application/registration no. 1287102. This application was filed on May 31, 2004, and has been examined and accepted for advertisement.
(iii) Similarly, MAWANA SUGARS LTD. and MAWANA (logo) have been applied for registration under class 29,30,31, 32,33,35,36,37,38,39,40,41 and 42 vide application/registration no. 1294608. Applications were filed on July�6, 2004, and are pending. Applications were advertised in Trade Mark Journal being TMJ 1328 Supp (1) dated February 7, 2005, and published on April 14, 2005.
(iv) Similarly, the trademark MAWANA CONSUMER PACK is applied for registration under class 30 vide application/registration no. 1330184. The application was filed on January 5, 2005 and is under examination and pending.
(v) Further, the Company has applied for copyright registration of different artistic and literary works. The copyright of “Mawana (poly pack)” has been granted.
(vi) Similarly, the Company has applied for copyright registration for its advertisement tag lines and jingle being “For a sweeter life”, “Mithas Zindagi Ki” and also for “Mawana Consumer Pack”, which are pending. Copies of all the applications for the aforesaid trademark registrations are detailed in Annex 15 to the Complaint. Copies of the applications for the aforesaid copyright registrations are detailed in Annex 16 to the Complaint.
(vii) In the year 2004, the Complainant company decided to launch its own website. For the purposes of registering its domain names and , it contacted M/s Panalink Infotech Limited , K-128, Mohammad Pur, Bhikaji Cama Place, New Delhi with whom it had already registered its earlier domain names. The domain names and were registered by the Complainant through M/s Panalink Infotech Limited sometime during June, 2004.
(viii) Thereafter, the Complainant also took webspace from M/s Panalink Infotech Limited and started operating its website on the domain names and . The said websites are the official websites of the Company. The Company has given email addresses to its employees on the domain name .
(ix) The Company has got is stationery in the form of letterheads and visiting cards which bear the website of the Company as “www.”.
(x) In the first week of November 2005, the Complainant embarked upon a process of internal audit of its intellectual property assets. During the course of the said audit, the WHOIS record for the Company’s domain names and were checked on November 8, 2005. It was only then that the Complainant company came to know that the domain names and had purportedly been registered in the name of Indian Dairy Association. The Complainant lodged a complaint with the local police at Delhi on November 9, 2005. It was after the present proceedings had been filed with WIPO that the issue arose as to who was in actual control of the domain names in question. The verification confirmed that the Respondent is the entity which has control of the domain names.
5A.4 The Respondent has never been commonly known in the normal course of business by the trademark, trade name or domain names of MAWANA or MAWANA SUGARS.
5A.5 The present conduct of the Respondent in keeping the control of registering the domain name and displaying the website of the Complainant company complete with all its logos and information, data and other intellectual property assets including the trademarks of the Complainant clearly shows that the Respondent has no right or legitimate interest in respect of the domain names and .
5A.6 The Complainant’s trademark applications predate the domain names registration by the Respondent. The Respondent had constructive notice of the trademark and other intellectual property rights of the Complainant in its trademarks MAWANA and MAWANA SUGARS (and the domain names and )
5A.7 The Complainant contends that, after the date of the original Complaint was electronically filed, the Respondent without the knowledge and approval of the Complainant ostensibly transferred the disputed domain names to the name of the Complainant with a view to circumvent the Policy, which prohibits a domain name holder from transferring the domain name to another during the pendency of an administrative proceeding. The Complainant contends that the Respondent continues to retain control over the disputed domain names and the said conduct is sufficient evidence of bad faith.
B. Respondent
5B.1 In 2004, the Complainant contacted the Respondent to book the domain names , , and and configure them in such a way so the official website of the Complainant starts appearing on the Internet whenever someone types the domain names , , , and (which was booked earlier by the Respondent on behalf of the Complainant in December�2003). The Respondent booked the domain names and configured them as per directions of the Complainant so that its official website was appearing whenever someone typed the domain names , , , and .
5B.2 The Respondent also provided the ftp id and password of the server space to the Complainant. The Complainant is hosting and updating the contents of its website using this ftp id and password.
5B.3 The Respondent received a telephone call and an email in November 2005, from another of its customers, Indian Dairy Association (IDA), saying that its name was appearing in the registrant, administration contacts of the domain names , . The Domain Registration Department of the Respondent on realising the error contacted the computer department (IT) of the Complainant and obtained the necessary contact information of the Complainant and updated the registrant, administration, technical and billing details of the domain names , , and immediately to reflect the details provided by the Complainant.
5B.4 The Domain Registration Department of the Respondent later found that due to some error the name of Indian Dairy Association was appearing as the registrant, administration, technical and billing contact for a number of domain names booked by the Respondent through the registrar Direct Information Pvt Ltd. The Domain Registration Department of the Respondent was already rectifying these errors on an on going basis by contacting clients or whenever clients contacted them.
5B.5 The Complainant never informed or complained to the Respondent regarding the incorrect contact details in the domain names so that the same could be rectified by the Domain Registration Department of the Respondent. Nor did the Complainant ever request the domain name user id/password from the Respondent so that it could get control and make changes to its domain names, even though the Complainant was in regular touch with the Respondent from December 2003, for other complaints and problems related to website and email services provided by the Respondent.
5B.6 The Domain Registration Department of the Respondent also tried to create and provide a user id and password for the Complainant so that it could manage its domain name details but could not do so as the domains names , , and were locked by the registrar (Direct Information Pvt Ltd.) due to the Complaint filed by the Complainant.
5B.7 The Respondent does not claim any rights or legitimate interests in respect of domain names , and as the same had been booked by the Respondent on behalf of the Complainant and that the Respondent are service provider of the Complainant.
5B.8 The Respondent did not book the domain names with the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant for any consideration as the Complainant had already paid for them. The Respondent did not demand any consideration or money from the Complainant for transferring the domain name registrations to the Complainant or for making changes to the domain name details.
5B.9 The Respondent did not disrupt the business of the Complainant in any way. On the contrary the Respondent facilitated the Complainant’s business as its website and emails were running on services provided by the Respondent. The Respondent has acted in good faith as the Complainant has been renewing the domain name booking, website hosting and email services provided by the Respondent since 2003.
5B.10 The Respondent did not benefit in any way - financially or by way of goodwill or reputation - by Indian Dairy Association’s name being in the contact details of , and instead of the Complainant’s.
5B.11 The Respondent has never offered the domain names , and for sale to any third party or competitor of the Complainant.
5B.12 The Respondent is not cybersquatting on the domain names , and as alleged by the Complainant, as the Complainant confirms that its official website is appearing when someone types the domain names , and . The Respondent never tried to sell back to the Complainant the domain names.
5B.13 The Respondent denies that it has ever acted unprofessionally or acted with an malafide intent to capitalize on the trademarks, goodwill, credibility or reputation of the Complainant.
5B.14 The Complainant has filed a suit with the Honorable High Court of Delhi for recovery of costs even before the Complaint was accepted by WIPO and actual fees was paid to WIPO.
5B.15 The Complaint is filed with WIPO through Mr. Pavan Duggal, Advocate Supreme Court of India who is also on the administrative panel of WIPO.
6. Discussion and Findings
Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted. It is therefore appropriate to examine the issues in the light of the evidence. The Complainant company has filed evidence by way of Annexure No. 1 to Annexure No. 19 in support of its contentions. The Respondent has not filed any documentary evidence along with its Response, as noticed above. Paragraph 4 of the Policy provides that the onus of proof is on the Complainant. As the proceeding is of a civil nature, the standard of proof is on the balance of probabilities. The Respondent has not denied the correctness or genuineness of any of the annexures to the Complaint. The Panel therefore accepts the evidence filed by the Complainant and concludes that the same stand admitted and proved.
Paragraph 4.9 of the Policy provides that the remedies available to a complainant pursuant to any proceedings before an administrative panel shall be limited to the cancellation or transfer of domain name registration to the complainant.
Paragraph 4(a) of the Policy lists three elements that the Complainant must prove to merit a finding that the domain names of the Respondent be transferred to the Complainant or cancelled:
1. The domain names are identical or confusingly similar to a trademark or service mark (“mark”) in which the Complainant has rights; and
2. the Respondent has no rights or legitimate interests in respect of the domain names; and
3. the domain names have been registered and are being used in bad faith.
That being so, the Panel will now proceed to enquire if the Complaint has discharged its onus to prove each of the three elements specified in paragraph 4(a) of the Policy.
A. Identical or Confusingly Similar
6A.1 The Complainant has rights in the trademark MAWANA SUGARS due to its long usage of the said trademarks for the last 55 years and has sought to reinforce these rights by moving appropriate applications for registrations with the Registrar of Trademarks. The domain names and are identical to the trademark MAWANA SUGARS in which the Complainant has rights. The Complainant and its legal predecessor entities had been using the trademark MAWANA SUGARS and have consistently used the same in connection with its business of manufacturing and selling premium crystal sugar.
6A.2 The evidence produced on record by the Complainant sufficiently establishes the prior adoption and use of the trademarks, as aforesaid, by the Complainant. The said material facts are not disputed by the Respondent and are deemed to be admitted.
6A.3 The Complainant has thus discharged its onus in establishing its proprietary rights in the trademark MAWANA SUGARS on account of priority in adoption, use and registrations. The Complainant has also succeeded in establishing his right to the domain names consisting of the mark MAWANA SUGARS on account of their prior use and registrations.
6A.4 As mentioned above, when one accesses the website at the domain name , the site shows the official site of and hosted by the Complainant company and has all the text and other information, data and material of the Complainant company. In fact, when the site loads, it begins with the audio of the famous advertisement jingle of the Complainant company, which has the following words, “Mawana Sugar- For a sweeter life”. The said website is exactly the website of the Complainant company which has the relevant inputs and artistic designs, logos and trademarks of the Complainant company. Further, when one types in the browser the domain name , it automatically takes you to the official website of the Company at . The domain name is parked upon the domain name . The Panel hold that the domain names and are identical to the trademark of the Complainant.
B. Rights or Legitimate Interests
6B.1 Paragraph�4(c) of the Policy lists the following three non-exclusive methods for determining whether the Respondent has rights or legitimate interests in a disputed domain name:
“(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.”
6B.2 As to the circumstances under paragraph�4(c)(i) of the Policy, the Complainant has not consented to the Respondent’s use of the domain names, which incorporates the Complainant’s trademark MAWANA SUGAR or the marks as are deceptively similar thereto. The domain names and bear no relationship to the business of the Respondent. The Respondent bears no relationship to the business of the Complainant. The Respondent is neither a licensee of the Complainant, nor has it otherwise obtained authorization, of any kind whatsoever, to use the Complainant’s mark. The Respondent has nothing to do remotely with the business of manufacturing sugar. The Respondent has never been commonly known by the domain names in question. The Respondent is not at all making a legitimate non-commercial or fair use of the domain names but has retained the control of the official website of the Complainant displaying complete information, data and intellectual property assets including trademarks of the Complainant company.
6B.3 Once a complainant makes a prima facie showing that a respondent lacks rights to the domain name at issue, the respondent must come forward with proof that it has some legitimate interest in the domain name to rebut this presumption. Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
6B.4 As a matter of fact, the Respondent admitted that it does not claim any right or legitimate interest in the domain names in question and that the same were registered on behalf of the Complainant. The Respondent has not disputed the claims of the Complainant on merit of the case but has chosen to contest the Complainant’s charge of “cyberflying”. Under the circumstances, the Panel is inclined to consider the Response under paragraph 4(c) as an admission that the Respondent has no right or legitimate interest in the disputed domain names. See Do the Hustle, LLC v. Tropic Web, WIPO Case No.2000-0624.
6B.5 Nevertheless, in the absence of any relevant submission by the Respondent, this Panel is inclined to accept all reasonable inferences and allegations included in the Complaint as true. See Talk City, Inc. v. Robertson, WIPO Case No.�D2000-0009. The Respondent makes no claim to have been authorized by the Complainant to use the Complainant’s marks. Similarly, the Respondent makes no claim that it has been commonly known by the disputed domain names, or that it has attempted to make any legitimate noncommercial or fair use of the domain names.
6B.6 The Panel therefore holds that none of the circumstances listed under 4(c) of the Policy, possibly demonstrating rights or legitimate interests of the Respondent, are present.
C. Registered and Used in Bad Faith
6C.1 For a complainant to succeed, the Panel must be satisfied that a domain name has been registered and is being used in bad faith.
6C.2 Paragraph 4(b) of the Policy states circumstances which, if found, 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 purpose 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 our 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 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 your website or location or of a product or service on your website or location.”
6C.3 Paragraph 8(a) of the Policy prohibits the transfer of a domain name registration to another holder during a pending administrative proceeding brought pursuant to Paragraph 4 of the Policy. Paragraph 8(a) is susceptible to an interpretation that would permit transfer of registration after notice of the complaint to the respondent but before official commencement of the proceedings by way of notification from the provider. Prior Panel decisions have refused to embrace this interpretation, noting that to do so would cause an injustice on complainants who have initiated complaints in accordance with the Policy and the Rules. See, e.g., Kirkbi AG v. Company Require / Karlina Konggidinata and P, Inc., WIPO Case No. D2004-0359; British Broadcasting Corporation v. Data Art Corporation / Stoneybrook, WIPO Case No. D2000-0683. Indeed, the distinguished panelists in these decisions aptly observed that such an interpretation would appear to permit, if not actually encourage, the phenomenon of “cyberflying”, where a registrant of a domain name, when named as the respondent in a domain name dispute case, systematically transfers the domain name to a different registrant to disrupt the proceeding.
6C.4 This Panel is in agreement with the prior decisions of these distinguished panelists. Further, even if Paragraph 8(a) were to be narrowly read to provide that a proceeding is pending only upon commencement of the proceeding in a formal sense, the Panel concludes from the circumstances of this case that the named respondent in the original Complaint – Indian Diary Association – has been the beneficial holder of the disputed domain names on November 8, 2005 and the name was changed to that of the Complainant between November 9, 2005 i.e. date of filling the Complaint with the Center and November 12, 2005 i.e. date on which the registrar of the disputed domain names submitted the verification report to the Center. The Respondent Panalink Infotech Limited still controls the domain names and is therefore the proper Respondent in this proceeding, notwithstanding the ostensible transfer of the registrations to the Complainant following the filing of the Complaint. See British Broadcasting Corporation v. Data Art Corporation / Stoneybrook, WIPO Case No. D2000-0683. In the said case the Panel decided that a change in the registrant of the disputed domain name after notice to the respondent of the complaint but before formal commencement did not affect the proceedings.
6C.5 The evidence on record shows that the Respondent, having full knowledge of its obligation under Paragraph 8(a) of the Policy, being in the business of developing and hosting websites, giving e-mail solutions, developing software and booking domain names, proceeded to change the contact details of the registrations of the disputed domain names to that of the Complainant without the knowledge, consent or information of the Complainant. The Respondent did not furnish any plausible explanation as to in which circumstances the name of Indian Diary Association was entered as registrant of the disputed domain names except to pretend that the same was an error. This Panel is unable to accept the theory of “error” propounded by the Respondent keeping in view the nature of the business in which the Respondent is engaged. The Respondent is fully aware about the implications, rights and liabilities of the registered holder of domain names and also the powers of the person in control of such domain names. The Respondent, for all material times, has been in control of the disputed domain names and as such no other person could effect the changes in the contact details of the registrant. The circumstances of the case clearly demonstrate that the Respondent did transfer the disputed domain names to Indian Diary Association without the knowledge, consent and approval of the Complainant company. The object of such transfer could not be other than to have commercial gain, to prevent the owner of a trademark to reflect the mark in corresponding domain names and thereby create confusion in the mind of internet users. The change of the registrant name from Indian Diary Association to that of the Complainant could only be made by the Respondent alone and none else. It was not for the Complainant to complain to the Respondent about the illegal transfer but for the Respondent to get the consent of the Complainant prior to the transfer of the domain names to Indian Diary Association.
6C.6 This Panel finds that this a typical case of “cyberfyling” in an attempt to circumvent the Policy. In response to the Complaint, the Respondent states as under :
“That the Domain Registration Department of respondent also tried to create and provide a user id and password to the complainant so that he could manage his domain name details but could not do so as the domains names , , and were locked by the registrar (Direct Information Pvt Ltd.) due to complaint made by complainant.”
6C.7 The overriding objective of the Policy is to prevent abusive domain name registration and use for the benefit of legitimate trademark owners, and the Panel notes that the examples of bad faith registration and use set forth in paragraph�4(b) are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No.�D2000-0003. The Panel in the Telstra case interpreted the third element of paragraph 4 of the Policy in the following manner:
“It is less clear cut whether the Complainant has proved the third element in paragraph 4(a) of the Uniform Policy, namely that the domain name “has been registered and is being used in bad faith” by Respondent. The Administrative Panel notes two things about this provision. First, the provision contains the conjunction “and” rather than “or”. Secondly, the provision refers to both the past tense (“has been registered”) and the present tense (“is being used”).
The significance of the use of the conjunction “and” is that paragraph 4(a)(iii) requires the Complainant to prove use in bad faith as well as registration in bad faith. That is to say, bad faith registration alone is an insufficient ground for obtaining a remedy under the Uniform Policy. This point is acknowledged in the Administrative Panel Decision in the WIPO Case No. D99-0001, the first case decided under the Uniform Policy. In paragraph 6 of that Decision, the Administrative Panel refers to the legislative history of the Uniform Policy, and in particular to the Second Staff Report on Implementation Documents for the Uniform Dispute Resolution Policy submitted to the ICANN Board at its meeting on October 24, 1999. That Report, at paragraph 4.5, contains the following relevant statement and recommendation:
Several comments (submitted by INTA and various trademark owners) advocated various expansions to the scope of the definition of abusive registration. For example:
These comments suggested that the definition should be expanded to include cases of either registration or use in bad faith, rather than both registration and use in bad faith. These comments point out that cybersquatters often register names in bulk, but do not use them, yet without use the streamlined dispute-resolution procedure is not available. While that argument appears to have merit on initial impression, it would involve a change in the policy adopted by the Board. The WIPO report, the DNSO recommendation, and the registrars-group recommendation all required both registration and use in bad faith before the streamlined procedure would be invoked. Staff recommends that this requirement not be changed without study and recommendation by the DNSO.
From the fact that the ICANN Board accepted the approach recommended in the Second Staff Report, and thus adopted the Uniform Policy in the form originally proposed, it is clear that ICANN intended that bad faith registration alone not give rise to a remedy under the Uniform Policy. For a remedy to be available, the Complainant must prove both that the domain was registered in bad faith and that it is being used in bad faith.
This interpretation is confirmed, and clarified, by the use of both the past and present tenses in paragraph 4 (a)(iii) of the Uniform Policy. The use of both tenses draws attention to the fact that, in determining whether there is bad faith on the part of the Respondent, consideration must be given to the circumstances applying both at the time of registration and thereafter. So understood, 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.
Has the Complainant proved that the domain name “has been registered in bad faith” by the Respondent? In light of the facts established in paragraphs 4.6 to 4.8, the Administrative Panel finds that the Respondent does not conduct any legitimate commercial or non-commercial business activity in Australia. In light of the facts established in paragraphs 4.6 to 4.8, the Administrative Panel further finds that the Respondent has taken deliberate steps to ensure that its true identity cannot be determined and communication with it cannot be made. Given the Complainant’s numerous trademark registrations for, and its wide reputation in, the word , as evidenced by the facts established in paragraphs 4.2 to 4.5, it is not possible to conceive of a plausible circumstance in which the Respondent could legitimately use the domain name . It is also not possible to conceive of a plausible situation in which the Respondent would have been unaware of this fact at the time of registration. These findings, together with the finding in paragraph 7.2 that the Respondent has no rights or interests in the domain name, lead the Administrative Panel to conclude that the domain name has been registered by the Respondent in bad faith.
Has the Complainant proved the additional requirement that the domain name “is being used in bad faith” by the Respondent? The domain name does not resolve to a web site or other on-line presence. There is no evidence that a web site or other on-line presence is in the process of being established which will use the domain name. There is no evidence of advertising, promotion or display to the public of the domain name. Finally, there is no evidence that the Respondent has offered to sell, rent or otherwise transfer the domain name to the Complainant, a competitor of the Complainant, or any other person. In short, there is no positive action being undertaken by the Respondent in relation to the domain name.
This fact does not, however, resolve the question. As discussed in paragraph 7.6, the relevant issue is not whether the Respondent is undertaking a positive action in bad faith in relation to the domain name, but instead whether, in all the circumstances of the case, it can be said that the Respondent is acting in bad faith. The distinction between undertaking a positive action in bad faith and acting in bad faith may seem a rather fine distinction, but it is an important one. The significance of the distinction is that the concept of a domain name “being used in bad faith” is not limited to positive action; inaction is within the concept. That is to say, it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith.
This understanding of paragraph 4(a)(iii) is supported by the actual provisions of the Uniform Policy. Paragraph 4(b) of the Uniform Policy identifies, without limitation, circumstances that “shall be evidence of the registration and use of a domain name in bad faith”, for the purposes of paragraph 4(a)(iii). Only one of these circumstances (paragraph 4(b)(iv)), by necessity, involves a positive action post-registration undertaken in relation to the domain name (using the name to attract custom to a web site or other on-line location). The other three circumstances contemplate either a positive action or inaction in relation to the domain name. That is to say, the circumstances identified in paragraphs 4(b)(i), (ii) and (iii) can be found in a situation involving a passive holding of the domain name registration. Of course, these three paragraphs require additional facts (an intention to sell, rent or transfer the registration, for paragraph 4(b)(i); a pattern of conduct preventing a trademark owner’s use of the registration, for paragraph 4(b)(ii); the primary purpose of disrupting the business of a competitor, for paragraph 4(b)(iii)). Nevertheless, the point is that paragraph 4(b) recognises that inaction (eg. passive holding) in relation to a domain name registration can, in certain circumstances, constitute a domain name being used in bad faith. Furthermore, it must be recalled that the circumstances identified in paragraph 4(b) are “without limitation” - that is, paragraph 4(b) expressly recognises that other circumstances can be evidence that a domain name was registered and is being used in bad faith.
The question that then arises is what circumstances of inaction (passive holding) other than those identified in paragraphs 4(b)(i), (ii) and (iii) can constitute a domain name being used in bad faith? This question cannot be answered in the abstract; the question can only be answered in respect of the particular facts of a specific case. That is to say, in considering whether the passive holding of a domain name, following a bad faith registration of it, satisfies the requirements of paragraph 4(a)(iii), the Administrative Panel must give close attention to all the circumstances of the Respondent’s behaviour. A remedy can be obtained under the Uniform Policy only if those circumstances show that the Respondent’s passive holding amounts to acting in bad faith.
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. It concludes that it does.”
6C.8 This Panel is in full agreement with the view taken in the Telstra case. Even if there is no evidence to conclude that the Respondent has made any active use of the domain names, the Respondent’s passive holding the control of the domain names would not preclude a finding of bad faith registration and use under the circumstances of this case. The transfer of the disputed domain names did take place at the instance of the Respondent in the name of Indian Diary Association without the Complainant’s consent or knowledge. The second transfer made by the Respondent in the name of the Complainant after initiation of administrative proceedings is a deliberate attempt to circumvent the Policy. The expression “transfer” includes effective transfer of control and management of the subject transferred. There would be no effective transfer in law if the transferee is deprived of or is unable to exercise its rights in the enjoyment of the property so transferred. The Respondent controls the domain name and thus the Complainant is deprived of his right to the disputed domain names.
6C.9 Finally, and as discussed at some length above, the circumstances of this case also compel a conclusion that the Respondent has engaged in the practice commonly referred to as “cyberflying”. Prior Panels have found such a practice to be clear evidence of a respondent’s bad faith under the Policy. Kirkbi AG v. Company Require / Karlina Konggidinata and P, Inc., WIPO Case No. D2004-0359; Sony Kabushiki Kaisha also trading as Sony Corporation v. Admin www@ +41.227347210promo, WIPO Case No. D2004-1040; British Broadcasting Corporation v. Data Art Corporation / Stoneybrook, WIPO Case No. D2000-0683. This is a conclusion with which this Panel agrees.
7. Decision
In accordance with Paragraph 4(i) of the Policy and for the reasons stated above, the Panel directs that the domain names and be transferred to the Complainant.
Amarjit Singh
Sole Panelist
Dated: March 31, 2006
Full & Egal Universal Law Academy