WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Kishore Biyani v. Ronak Shah Case No. D2009-1284 1. The Parties
The Complainant is Kishore Biyani, Mumbai, Maharashtra, India, represented by Krishna & Saurastri, India.
The Respondent is Ronak Shah, Maharashtra, India. 2. The Domain Name and Registrar
The disputed domain name is registered with I Corp. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 29, 2009. On September 30, 2009, the Center transmitted by email to I Corp. a request for registrar verification in connection with the disputed domain name. On September 30, 2009, I Corp. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that 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 October 19, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was November 8, 2009.
The Respondent did not file any formal Response. The Respondent transmitted three emails to the Center on October 20, 2009, November 9, 2009 and November 17, 2009 respectively. After receiving first email of the Respondent, the Center had offered to consider a request for suspension of the proceedings if any made by the Complainant to explore possible settlement between the parties but the Complainant on October 22, 2009 informed the Center that he is not interested in suspending the proceedings and he would like to proceed with the present proceedings under UDRP. Second e-mail was sent by the Respondent on November 9, 2009 after expiry of the Response due date. The Complainant replied to the Respondent and denied all averments and statements made by the Respondent in the said mail.
The Center appointed Ashwinie Kumar Bansal as the sole Panelist in this matter on November 12, 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. Third email has been received by the Centre after constitution of the Panel for a meeting somewhere in India (Mumbai) for discussions, which has been sent to the Panel. 4. Factual Background
The Complainant Mr. Kishore Biyani is the founder, promoter and CEO of Future Group of Companies which is a leading business house with multiple businesses spanning across the consumption space. The Respondent had registered the disputed domain name on June 16, 2008 and launched website “www.” and posted information relating to the Complainant on the website. On July 13, 2009, the Counsel for the Complainant had sent a legal notice to the Respondent to deactivate the website “www. ” and transfer the disputed domain name to the Complainant within 15 days from the receipt of the notice. In response to said notice, the Respondent had sent three emails to the counsel for the Complainant on July 24, 2009, August 5, 2009 and August 6, 2009 but he did not transfer the domain name to the Complainant. Hence the Complainant had filed a Complaint before WIPO on September 29, 2009 for transfer of the disputed domain name to the Complainant. 5. Parties' Contentions A. Complainant
The Complainant contents that he is the founder, promoter and CEO of Future Group of Companies which includes well known businesses like Pantaloon Retail (India) Ltd. and Big Bazaar. He is involved in high profile trade and commercial ventures and his name has become linked to his enterprises. The Complainant Mr. Kishore Biyani has put his personal imprint on the companies promoted and led by him. Future Group of Companies has collaboration with various foreign companies for joint ventures in India. He has gained tremendous popularity in the public. General public and trade associate the name of the Complainant with Future Group of Companies. The name of the Complainant has gained secondary significance which has become synonymous with the said Future Group of Companies and with the retail business in India. The Complainant has been awarded the “Ernst and Young Entrepreneur of the Year (Services)” and the “CNBC First Generation Entrepreneur of the Year in 2006” and further Pantaloon Retail India Ltd. was awarded the “International Retailer of the Year 2007” by the US based National Retail Federation. Over the years tremendous reputation and goodwill has been acquired by the Complainant and use of name, word and mark KISHORE BIYANI is associated with the Complainant giving rise to unregistered trademark rights. The Complainant has acquired valuable trademark in his name and he is entitled to the exclusive use thereof. The Respondent has registered the disputed domain name in bad faith. The Complainant through his counsel had served a legal notice on the Respondent to deactivate the website and to transfer the disputed domain name i.e. to the Complainant but to no use. B. Respondent
The Respondent had sent three emails to the Center. In first e-mail dated October 20, 2009 the Respondent has stated that he has not provided any misleading information or personal contact information of the Complainant on his website but admitted that his website provides information about the Complainant Mr. Kishore Biyani. He has further claimed that he has made the disputed website ranked very well with his efforts and experience.
In his second e-mail of November 9, 2009, the Respondent has contended that there can be many persons with similar name in India as of the Complainant. He has further offered to remove the contents from the disputed website. The Respondent has made the website for normal Internet users and that there is nothing on the site which contained personal information like address, email and phone number of the Complainant. He has further admitted that he respects the Complainant and offered for having a talk on the issue. In his third email he has requested a meeting for discussions only without any concrete proposal to transfer the domain name or substantive defence. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel as to the principles the Panel is to use in rendering its decision: “A panelist shall 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.” Applied to this case, paragraph 4 (a) of the Policy directs that the complainant must prove each of the following:
(i) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) that the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and used in bad faith. A. Identical or Confusingly Similar
The domain name wholly incorporates the name of the Complainant Mr. Kishore Biyani who is the founder, promoter and CEO of Future Group of Companies. The Panel concludes that the disputed domain name is, for all intents and purposes, identical to the Complainant's name “Kishore Biyani”. However, this aspect of the Policy also requires evidence that the Complainant has trademark rights in the name.
To succeed, the Complainant is required to show that he has an interest in a trademark or service reflecting his personal name Kishore Biyani. The Complainant contends that his personal name is in an unregistered trademark or service mark. This question raises the contentious issue of whether a personal name that has not been registered as a trademark can constitute a common law trademark. The question whether the Complainant can show rights in a personal name has been discussed in “the WIPO Overview of WIPO Panel Views on Selected UDRP Questions”1. While the UDRP does not specifically protect personal names, in situations where an unregistered personal name is being used for trade or commerce, the Complainant can establish common law trademark rights in the name. Reference can be made to the test required for the common law action of passing off. Personal names that have been trademarked are protected under the UDRP2. The name in question should be actually used in trade or commerce to establish unregistered trademark rights. Merely having a famous name (such as a businessman, or religious leader) is not necessarily sufficient to show unregistered trademark rights3.
In a decision Nick Cannon v. Modern Limited - Cayman Web Development,WIPO Case No. D2005-0757, it was held that the complainant had trademark rights in his own name because he could rely on “… his movie experience (six films, from 2002 to 2005) and his extensive career as an actor, writer, producer, and musical composer and performer under his name since the 1980s…” The panel verified the number of appearances of the complainant's name “Nick Cannon” on “” and at least one hundred thousand appearances of the complainant's name were observed. It was held that the complainant has demonstrated substantial use of the name “Nick Cannon” in association with his professional career and consequently enjoys common law trademark rights in “Nick Cannon”.
In Soin International LLC v. Michael W. Solley, PrivateRegContact Admin/TECH, WIPO Case No. D2007-0094, the panel had concluded that the complainant had trademark rights in the name “Raj Soin” who was the founder, chairman, and chief executive officer of Soin International and that his name had become known through its use in high profile trade and commercial ventures and had become inextricably linked. In Chung, Mong Koo and Hyundai Motor Company v. Individual,WIPO Case No. D2005-1068, the domain name was confusingly similar to the name of the chairman and chief executive of the Hyundai Motor Company. The panel had ordered that the domain names be transferred for the reason that although the trademark and service mark embody Mr. Chung's name, it is because of his association with the company that it is a trademark and service mark at all, so the link with the company is of paramount importance.
In Kotak Mahindra Bank Limited v. Richard Brown,WIPO Case No. D2008-0243, the panel has concluded that the complainant has rights in his name, Uday Kotak. The commercial community identifies the complainant with the bank which he founded and which Kotak Mahindra Bank Limited continues to operate under his leadership. He is seen by the media and the public, particularly in India, as the alter ego and driving force behind the company. He retains a substantial shareholding. He is identified with its achievements. The enterprise has a clear interest in protecting his name for commercial use, in view of the complainant's association with the bank and the fact that it trades under its registered mark KOTAK, his surname as a mark.
In another case Hillary Rodham Clinton v. Michele Dinoiaaka SZK.com, NAF Case No. FA414641, it was held that (then) Senator Clinton had common law trademark rights in her own name, not simply because she was famous, for that would not have got her over the hurdle, but because she was also a best-selling author who has written four novels. In other words, her name had been used to sell books written in her capacity as an author.
The Complainant Mr. Kishore Biyani is CEO of Future Group of Companies which deals in number of fields like consumer finance, capital, insurance, laser entertainment, brand development, retail real estate development, retail media and logistics, etc. Pantaloon Retail India Ltd. and Big Bazaar are important identities in retail business in India. The name of the Complainant Kishore Biyani keeps on appearing now and then in various newspapers and web articles. By use of name of the Complainant in the commercial ventures and trade, it has associated with the business of the Complainant and acquired unregistered trademark rights for the purpose of paragraph 4 (a) (i) of the policy.
The record indicates that the Complainant Mr. Kishore Biyani has written a book titled as “It Happened in India” published in 2007. The said book gained popularity and achieved sale target of over 80,000 copies in about two years. He is also apparently popular as an author. A search conducted by the Panel on the Google search engine for the Complainant's name Kishore Biyani reflects around 29,500 results which are mostly in connection with his companies and business. The name of the Complainant had been used extensively in the media and Internet. The companies promoted by him are identified and associated with his name. The Respondent has admitted that he respects the Complainant and he provides information to the readers about the Complainant. Several customers have in fact, posted their queries and grievances seeking redressal from the Complainant on the website “www.”, due to confusion created by the Respondent.
In view of the discussion made above, the Panel finds that the disputed domain name is confusingly similar to the name of the Complainant. B. Rights or Legitimate Interests
The Respondent has not filed a formal Response to the Complaint. In the absence of an explanation for the conduct, in Pharmacia & Upjohn AB v. Dario H. Romero,WIPO Case No. D2000-1273, the panel had drawn inferences adverse to the respondent's interests on that issue and to assume that “any evidence of the respondent would not have been in his favour”.
In email dated October 20, 2009, the Respondent has admitted that he is ready to transfer the domain name and stated: “I am still wishing to give you this domain, but can you pay me remuneration's and cost + efforts which I made for getting ranked well on Google and promoting his information.”
After considering that the Respondent had taken the Complainant's personal name without his consent for registration of the domain name and his admission in his email, the inference can be drawn that the Respondent has no rights or legitimate interests in the domain name. C. Registered and Used in Bad Faith
The requirement in paragraph 4(a) (iii) of the Policy is that the domain name “has been registered and is being used in bad faith” would be satisfied only if the Complainant proves that the registration was undertaken in bad faith and the circumstances of the case are such that the Respondent is continuing to act in bad faith.
Paragraph 4(b) of the Policy provides that 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 the respondent has registered or he has 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 the complainant, for valuable consideration in excess of his documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has 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 the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to his 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 his web site or location or of a product or service on his web site or location.
The Complainant is required to prove both that the domain name was registered in bad faith and that it is being used in bad faith because in paragraph 4(a) (iii) of the policy, the provision contains the conjunction “and” rather than “or” and it refers to both the past tense (“has been registered”) and the present tense (“is being used”) hence circumstances at the time of registration and thereafter have to be considered by the Panel. The Complainant is required to prove the registration was undertaken in bad faith and circumstances of the case are such that the Respondent is continuing to act in bad faith.
The Complainant had sent through his counsel a legal notice on July 13, 2009 to the Respondent which was responded by the Respondent stating that he would like to discuss that matter in person. The Respondent in his email dated October 20, 2009 has enquired “if he could be paid remuneration's and costs + efforts which he had made for good ranking of the website at Google and promoting information about the Complainant”. It is a clear admission of the Respondent that he had registered the personal name of the Complainant as a domain name for transferring the same to the Complainant for valuable consideration in excess of his documented out of pocket cost directly related to the domain name. The Respondent had further admitted that he has posted the information for the readers to know the Complainant Mr. Kishore Biyani. The Complainant has never authorised the Respondent to register a domain name and promote a website for this purpose. Several customers had posted their queries and grievances on the website and they had sought redressal from the Complainant due to confusion created by the Respondent. The Respondent has intentionally attempted to attract the Internet users to his website by creating a likely hood of confusion with the name of the Complainant as to the source of his website.
The domain name is confusingly similar with the name of the Complainant and its use by the Respondent suggests opportunistic bad faith. The Panel finds that domain name has been registered and is being used by the Respondent 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 domain name be transferred to the Complainant.
Ashwinie Kumar Bansal
Sole Panelist
Dated: November 19, 2009
Full & Egal Universal Law Academy