WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Mahashian Di Hatti Limited v. Syed Hussnain Ali Kazmi Case No. D2009-0845 1. The Parties
The Complainant is Mahashian Di Hatti Limited of New Delhi, India, represented by Lall Lahiri & Salhotra, India.
The Respondent is Syed Hussnain Ali Kazmi of Lahore, Pakistan, represented by Punjab Law Associates, Pakistan. 2. The Domain Name and Registrar
The disputed domain name is registered with OnlineNic, Inc. d/b/a China-C. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 26, 2009. On June 26, 2009, the Center transmitted by email to OnlineNic, Inc. d/b/a China-C a request for registrar verification in connection with the disputed domain name. On June 29, 2009, OnlineNic, Inc. d/b/a China-C transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on July 9, 2009. 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” or “UDRP”), 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 July 10, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was July 30, 2009. The Response was filed with the Center on July 29, 2009.
The Center appointed Alan L. Limbury as the sole panelist in this matter on August 10, 2009. 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. 4. Factual Background
The Complainant was founded by its predecessors in 1913 as a small shop in Sialot in what is now Pakistan, selling spices under the name Mahashian Di Hatti, which means “the shop of the Magnanimous” in the Punjabi language. After the partition of India in 1947, the enterprise moved to Delhi in India and has since grown substantially, selling spices and condiments under the logo MDH around the world, including under the domain name , but because of trade restrictions between the two countries, it does not sell into Pakistan.
The Complaint exhibits numerous label trademarks dating back to 1990, many of which are registered in the name Mahashian Di Hatti Pvt. Ltd. It is unclear whether this is an associated company or the former name of the Complainant. However, there are also exhibited trademark registrations in the name of the Complainant in respect of spices, such as United States of America federally registered trademark No. 2,896,049 for the logo MDH, registered on October 19, 2004. Similar MDH logo registrations obtained by the Complainant in other countries prior to the registration of the disputed domain name include Australia, Japan, Singapore, Canada, The Kingdom of Saudi Arabia, the United Arab Emirates, Switzerland, and the European Community.
The disputed domain name was registered on February 21, 2008. It resolves to a website headed “MDH food. Set your life standard. Since 1984. Welcome to Muhammad Dawood Hassan Food Company”. The website offers spices and food products. At the foot of the home page is a 2008 copyright notice in the name “MDH Food Company.”
On November 27, 2007, The Respondent, MDH Food Company filed two Pakistan trade mark registration applications, Nos. 244006 and 244007 for MDH (logo) and M.DAWOOD HASSAN FOOD COMPANY in class 30 for “spices/sauces/pepper/salt”. These applications remain pending.
On March 5, 2009, the Complainant applied to register its MDH logo mark in Pakistan. That application remains pending. 5. Parties' Contentions A. Complainant
The Complainant says although its products are not sold in Pakistan, since 1949 they have been sold under its MDH mark in many countries having large Indian and Pakistani expatriate populations. Hence the MDH logo is well known to Pakistani nationals and has become a household name with substantial goodwill in India and neighboring countries including Pakistan.
The Complainant says the disputed domain name is identical and confusingly similar to the Complainant's MDH mark, since it incorporates the mark in its entirety and the addition of “foods” does not detract from its distinctiveness. The Respondent has no rights or legitimate interests in the disputed domain name since the Complainant, as the prior user and hence the lawful owner of the mark, has not licensed or otherwise permitted the Respondent to use it. The Respondent, purporting to be Muhammad Dawood Hassan, is claiming to be in the business of selling spices since 1984 and is purporting to manufacture and sell goods identical to the well known goods of the Complainant. The domain name was registered and is being used in bad faith in that the parties are direct competitors and the Respondent has acquired a deceptively similar domain name to mislead and divert consumers and to tarnish the Complainant's well known mark. B. Respondent
The Response proceeds on the footing that the Respondent is MDH Food Company.
The Respondent denies all the Complainant's claims and says that the Respondent has been selling spices and food products in Pakistan since 1984 under the name MDH, which stands for Muhammad Dawood Hassan Food Company. Copies of recent packaging materials for a range of foods and spices are provided, bearing the logo MDH and the words “Since 1984”. Also provided are advertisements dating from 2002 which include the MDH logo. The Respondent says that in Pakistan its name MDH is unique, sovereign, autonomous, special, independent and commonly known. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Under this heading, it is sufficient for a complainant to show that it has a trademark somewhere in the world, whether registered or not, at the time of the filing of the complaint.
The Complainant has registered trademark rights in the logo MDH in many countries and the distinctive feature of that mark is the letters MDH.
The test of identity or confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone: Wal-Mart Stores, Inc. v. Traffic Yoon,WIPO Case No. D2006-0812. The top level domain “.com” is to be disregarded: Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429. Likewise the content of the Respondent's websites would be disregarded: A&F Trade Mark, Inc. and Abercrombie & Fitch Stores, Inc v. Justin Jorgensen, WIPO Case No. D2001-0900.
The disputed domain name is not identical to the Complainant's mark but the addition of the descriptive word “foods” to the mark does nothing to detract from its distinctiveness. Accordingly the Panel finds the disputed domain name to be confusingly similar to the Complainant's mark.
The Complainant has established this element of its case. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples
which, if established by the respondent, shall demonstrate its rights to or legitimate
interests in the domain name for purposes of paragraph 4(a)(ii) of the Policy, i.e.
(i) before any notice to the respondent of the dispute, the use by the respondent 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 trademark 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 customers or to tarnish the trademark or service mark at issue.
Once a Complainant establishes a prima facie case against the Respondent, the burden is on the Respondent to provide evidence of its right or legitimate interests under the Policy: Cassava Enterprises Limited, Cassava Enterprises (Gibraltar) Limited v. Victor Chandler International Limited,WIPO Case No. D2004-0753.
As mentioned, the Response proceeds on the footing that the Respondent is MDH Food Company, stating the address of the named Respondent, Syed Hussain Ali Kazmi, as “MDH (Muhammad Dawood Hassan) Food Company”. The Complaint also appears to proceed on this basis in addressing the claim “that Muhammad Dawood Hassan has been in the business of selling spices since 1984”. Since the trademark applications of MDH Food Company were filed in the name of an individual “trading as” the company, the Panel considers that the same is likely to have happened when the disputed domain name was registered. It is therefore appropriate to treat the company as the Respondent. Accordingly, references hereafter to the Respondent are to MDH Food Company.
The Complainant cites prior cases establishing that rights or legitimate interests cannot be created where the user of the domain name at issue would not choose such a name unless he was seeking to create an impression of association with the complainant: eBay Inc. v. Akram Mehmood, WIPO Case No. DAE2007—0001 and Drexel University v. David Brouda,WIPO Case No. D2001-0067. Here however, the Complainant, for whom the initials MDH stand for Mahashian Di Hatti, has not cast sufficient doubt on the possibility that the Respondent adopted those same letters, standing for Muhammad Dawood Hassan, without seeking to create an impression of association with the Complainant. The fact that the Complainant does not sell its goods into Pakistan (and consequently may not enjoy there the same fame as it claims to enjoy elsewhere) leaves open the possibility that the Respondent's state of mind was that it did not have the Complainant in mind when registering the disputed domain name.
There is evidence before the Panel that the Respondent, whose trading name incorporates the initials MDH (standing for Muhammad Dawood Hassan), has been trading in foods and spices and advertising under the MDH mark in Pakistan since 1984 and that, before any notice of this dispute, the Respondent applied to register that mark in that country. Accordingly the Panel finds that before any notice to the Respondent of this dispute, the Respondent used the disputed domain name in connection with a bona fide offering of goods or services and that the Respondent has been commonly known by the domain name.
The Complainant has failed to establish the absence of rights or legitimate interest in the disputed domain name on the part of the Respondent. C. Registered and Used in Bad Faith
It is unnecessary to address this element in light of the finding just made. 7. Decision
For all the foregoing reasons, the Complaint is denied.
Alan L. Limbury
Sole Panelist
Dated: August 19, 2009
Full & Egal Universal Law Academy