The Complainant is Ananyashree Birla of Mumbai, India, represented by Udwadia Udeshi & Argus Partners, India.
The Respondent is Ali Madencioglu of Kyrenia, Cyprus. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 21, 2013. On June 21, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 21, 2013, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
On June 25, 2013, the Complainant forwarded to the Center two email communications it received from the Respondent on June 24, 2013. On June 26, 2013, the Center informed the parties of the possibility of suspending the proceeding in order to explore a possible settlement.
On July 1, 2013, the Center notified the suspension of the proceeding. On August 2, 2013, the Complainant requested the reinstitution of the proceeding.
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 August 7, 2013. On August 7, 2013, the Center received an informal email communication from the Respondent. The Center acknowledged receipt of the Respondent’s email communication on August 9, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was August 27, 2013.
The Respondent did not submit any formal response. Accordingly, the Center notified the parties about the commencement of the panel appointment process on August 28, 2013.
On August 28, 2013, the Center received another email communication from the Respondent requesting the Center to cease contacting him.
The Center appointed Tony Willoughby, Pravin Anand and Christos A. Theodoulou as panelists in this matter on September 19, 2013. The Panel finds that it was properly constituted. Each member of 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 is a young Indian woman, the elder daughter of Mr. Kumar Mangalam Birla, the Chairman of the Aditya Birla Group, which is one of India’s largest industrial conglomerates.
The Complainant’s evidence includes a copy of an article from the June 2012 issue of “Society”, an article deriving much of its content from interviews with the Complainant’s parents, in which the Complainant is described as a 17 year-old “who is already learning the ropes of the family business by visiting the office regularly”.
By June 2013 when the Complaint was filed, the Complainant had been appointed “the chairperson of an entity within the group viz., SvatantraMicrofin Private Limited which is a microfinance organisation that helps its customers achieve self-sustainability.”
The Respondent is a Turkish speaker living in Cyprus. He describes himself as a collector of domain names holding 3,000 of them. He registered the Domain Name on March 9, 2013. On March 13, 2013 and March 14, 2013 the Respondent registered the names of the Complainant’s younger brother and sister as domain names and they are the subject of a parallel UDRP proceeding (Neerja Kumar Mangalam Birla (Mrs.) v. Ali Madencioglu,WIPO Case No. D2013-1124) against the Respondent.
The Panel has not been provided with evidence showing how the Domain Name has been used, but it appears from the correspondence between the parties that at one time it was connected to an adult website and the Respondent admits that at one time he was advertising it for sale. The Domain Name currently resolves to a webpage featuring the face of a dog and the inscription “MY BEAUTIFUL GIRL”.
On April 8, 2013 the Complainant’s representatives wrote to the Respondent drawing the Respondent’s attention to the fame of the Aditya Birla Group and its Chairman, the Complainant’s father. The letter refers to the Complainant being a child of “one of the most respected and well-known persons in India.” The letter demands transfer of the Domain Name.
On April 9, 2013 the Respondent emailed the Complainant’s representatives stating inter alia that he bought the Domain Name (and those relating to her siblings) legally. The email continued verbatim “I did it to just protect those names and I send 25 emails which I have the copys now to aditya birla company to gave the names as a gift to Mr. Kumar Mangalam Birla cause im fun of this fascinating Business man.” The email goes on to complain that nobody responded to the 25 emails and admit that he did put the Domain Name up for sale. He says that he received 9 offers, but rejected them all. The email concludes with a statement that the Domain Name will be connected to “product sales sites”.
On June 21, 2013 the Complainant’s representatives wrote to the Respondent informing him that this administrative proceeding was about to be launched. The Respondent responded on June 24, 2013 saying that he acquired the Domain Name as a gift because Mr. Aditya Vikram was one of the best friends of his grandfather the Complainant’s father. He goes on to say that he does not want any money and will transfer the Domain Name within 10 minutes of being given the relevant details. An email in similar terms was sent to a member of the legal department of Aditya Birla Management Corporation Private Limited. The Panel has not been informed as to how (if at all) that correspondence progressed, save that it resulted in a suspension of the proceeding until August 2, 2013, when the proceeding was reinstated.
On August 7, 2013 the Respondent emailed the Center on a number of matters. The only pertinent passage is headed “Is there any rules that I can not buy normal human names?” In that passage the Respondent contends that the names in question (one of which is the Domain Name) “are not trade marks, registered company names or a brand.” 5. Parties’ Contentions A. Complainant
The Complainant contends that she has common law rights in her name and in consequence that the Domain Name is identical to her unregistered trade mark.
In support of her claim to unregistered trade mark rights the Complainant relies upon the fact that (a) she is a member of the Birla family and the family’s association with the business run by the Complainants’ father (“Every member of the Birla family carries with him and her the legacy of five generations of this goodwill and automatic association to one of the largest business conglomerates in India.”); (b) in her capacity as chairperson of SvatantraMicroFin Private Limited she is spearheading a business activity of the Aditya Birla Group; and (c) she is well-known to be a member of the Birla family, her name having appeared in print and the electronic media on various occasions, as a result of which “her name today has acquired a meaning whereby she and her names [sic] would directly be associated with business or philanthropic activities of the [Aditya Birla] Group and/or Birla family.”
The Complainant points to the content of the Respondent’s communications which it contends demonstrates that the Respondent has no rights or legitimate interests in respect of the Domain Name which he knows to be the Complainant’s name and not his.
The Complainant points to a notice said to have been posted to the website connected to the Domain Name, which indicates the Domain Name was at one time connected to an adult site.
The Complainant contends that the Domain Name was registered and is being used in bad faith on the basis that all along the Respondent’s intention has been to profit by the Domain Name whether through selling it at a profit or, as he has threatened, by connecting it to a product sale site. B. Respondent
The Respondent did not reply formally to the Complainant’s contentions, but he has communicated by email with both the Complainant and the Center. He has said variously that he acquired the Domain Name because he is a collector and has also said that he acquired it to make it as a gift to the Complainant’s father of whom he is a fan.
He has contended in emails to the Center that the Complainant’s name is not a trade mark. 6. Discussion and Findings A. General
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(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. B. Identical or Confusingly Similar
Apart from the presence of the “.com” generic top-level domain (“gTLD”) identifier and the absence of any spaces, which may be ignored for the purpose of assessing identity and confusing similarity under this element of the Policy, the Domain Name is identical to the Complainant’s name, “Ananyashree Birla”.
The sole issue is as to whether or not the Complainant’s name is a trade mark. There is no relevant registered trade mark, but the Complainant contends that her name is an unregistered trade mark or common law trade mark.
What needs to be shown for the Complainant to demonstrate common law or unregistered trade mark rights? This question is answered in paragraph 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), which reads:
“Consensus view: The complainant must show that the name has become a distinctive identifier associated with the complainant or its goods or services. Relevant evidence of such “secondary meaning” includes length and amount of sales under the trademark, the nature and extent of advertising, consumer surveys and media recognition. The fact that the secondary meaning may only exist in a small geographical area does not limit the complainant’s rights in a common law trademark. For a number of reasons, including the nature of the Internet, the availability of trademark-like protection under passing-off laws, and considerations of parity, unregistered rights can arise for the purposes of the UDRP even when the complainant is based in a civil law jurisdiction. However, a conclusory allegation of common law or unregistered rights (even if undisputed) would not normally suffice; specific assertions of relevant use of the claimed mark supported by evidence as appropriate would be required. Some panels have also noted that in cases involving claimed common law or unregistered trademarks that are comprised of descriptive or dictionary words, and therefore not inherently distinctive, there may be a greater onus on the complainant to present compelling evidence of secondary meaning or distinctiveness. Some panels have noted that the more obvious the viability of a complainant’s claim to common law or unregistered trademark rights, the less onus there tends to be on that complainant to present the panel with extensive supporting evidence. However, unless such status is objectively clear, panels will be unlikely to take bald claims of trademark fame for granted.”
While the Complaint contains impressive figures for the size of the business of the Aditya Birla Group, it contains no information on the part of the business with which the Complainant is associated, SvatantraMicrofin Private Limited. All that is said is that she is “spearheading a business activity of the Group and has become particularly associated with the microfinance activities of the Group.” While the Panel has no reason to doubt the accuracy of that statement, that statement on its own is not enough. The Panel has no evidence upon which to base a finding of common law/unregistered trade mark rights. The Panel has no evidence on the nature and extent of the business in question nor as to how the Complainant’s name is being used in relation to that activity.
The Complaint states that the Complainant’s name “has appeared in the print and electronic media on various occasions”, but the only examples annexed to the Complaint are the society pages of various magazines. Moreover, as indicated in section 4 above, the Complainant’s evidence includes a copy of an article from the June 2012 issue of “Society”, an article deriving much of its content from interviews with the Complainant’s parents, in which the Complainant is described as a 17 year-old “who is already learning the ropes of the family business by visiting the office regularly”. While it is not impossible that over the intervening year the Complainant’s name has been elevated to the level of a trade mark in which she (as opposed to the Aditya Birla Group) has the relevant trade mark rights, it would be a most remarkable achievement and there should be available a large amount of press and other material to demonstrate the fact. None has been produced to the Panel.
It is also to be observed that for an individual to have trade mark rights in his or her name, mere fame is not enough. Paragraph 1.6 of the WIPO Overview 2.0 deals with this topic as follows:
“Can a complainant show UDRP-relevant rights in a personal name?
Consensus view: Personal names that have been registered as trademarks are generally protected under the UDRP. While the UDRP does not specifically protect personal names as such, in situations where a personal name unregistered as a trademark is being used for trade or commerce, the complainant may be able to establish common law or unregistered trademark rights in that name. In order to do so, proof of use of the person’s name as a distinctive identifier of goods or services offered under that name would normally be required […]. A trademark-equivalent basis has been found in the common law action of passing-off, which is generally intended to prevent the making of misrepresentations to the public in the context of trade, and which if established may provide grounds for reliance on a personal name for the purpose of the UDRP.
However: The name in question needs to be actually used in trade or commerce as an identifier of goods or services to establish unregistered trademark rights for the purpose of the UDRP. Merely having a famous name (such as a businessperson who does not actually use his or her name as an identifier for the business engaged in, or a religious leader), or making broad unsupported assertions regarding use of such name in trade or commerce, would not necessarily be sufficient to show unregistered trademark rights.”
The topic has been reviewed very recently in Philippe Pierre Dauman v. Dinner Business, WIPO Case No. D2013-1255 in which the President and Chief Executive Officer of Viacom, Inc., one of the largest and best known entertainment and media companies in the world, failed to satisfy the panel in that case that he had common law trade mark rights in his name. The learned panel in that case stated: “Complainant does not allege use of his name as the identifier of any particular goods or services, merely that his name is well known in the business and entertainment world. His fame is undeniable but under sound Policy precedent not by itself sufficient to establish common law rights in the name for purposes of paragraph 4(a)(i) of the Policy.”
In this case the Complainant relies almost exclusively upon the fame of her father and his antecedents and the very substantial goodwill associated with the business of which he is Chairman. There is nothing before the Panel to show that the Complainant’s name is used as the identifier of any particular goods or services. As indicated, there is no evidence as to how her name is used in the part of the business in which she is involved.
The evidence filed on behalf of the Complainant supports the claim, which is verified by the Indian member of this Panel, that in India BIRLA is a household name not only as the family name of the Complainant, but also as the predominant trading name under which the Aditya Birla Group and its member companies trade. If BIRLA is a trade mark (and the Panel has no reason to doubt that it is), it is a trade mark of the relevant trading entity or entities, not the Complainant.
The Complainant has failed to persuade the Panel that the Domain Name is identical or confusingly similar to a trade mark in which the Complainant has rights. C. Rights or Legitimate Interests
In light of the Panel’s finding under Section B above it is unnecessary for the Panel to address this issue, but it appears that the evidence demonstrates overwhelmingly that the Respondent set out to target the Complainant and her younger siblings and there is nothing before the Panel to indicate that the Respondent has any rights or legitimate interests in respect of the Domain Name. D. Registered and Used in Bad Faith
In light of the Panel’s finding under Section B above it is unnecessary for the Panel to address this issue, but it appears that the evidence strongly suggests to the Panel that the Respondent’s purpose in registering the Domain Name was to exploit it for commercial gain either by selling it at a profit or by connecting it to “product sales sites” (as indicated by the Respondent) and will have known that as it includes the name “Birla” it will feed off the substantial reputation and goodwill of the Aditya Birla Group. E. Conclusion
The Panel takes no pleasure in coming to this decision. Hijacking for commercial gain the names of others who are unable to fight back is an unsavoury, abusive practice. However, it is well-established that the scope of the Policy is a very narrow one designed to give relief in appropriate circumstances to no-one other than those who have rights in trademarks. As the learned panel observed in Philippe Pierre Dauman v. Dinner Business, WIPO Case No. D2013-1255:
“This case gives the Panel but one serious issue to address. The disputed domain name is identical to the name in which Complainant asserts rights. Respondent’s proposed use of it (as alleged by Complainant and acknowledged by Respondent) demonstrate that Respondent lacks any rights to or legitimate interest in the disputed domain name and constitutes bad faith under a host of Policy decisions. The question here is whether Complainant’s name is a “a trademark or service mark in which the complainant has rights,” as required by paragraph 4(a)(i) of the Policy.”
In the view of the Panel this Complaint and the parallel Complaint (Neerja Kumar Mangalam Birla (Mrs.) v. Ali Madencioglu, WIPO Case No. D2013-1124) should have been filed as one complaint in the name of a holder of trade mark rights in the name “Birla”, which features in its entirety in all the domain names the subject of these complaints.
The Panel observes that the rules relating to re-filed complaints (see paragraph 4.4 of the WIPO Overview 2.0) will not apply in relation to any complaint filed by any trade mark owner, which will be a legal entity distinct from the Complainant. 7. Decision
For the foregoing reasons, the Complaint is denied.
Tony Willoughby
Presiding Panelist
Pravin Anand
Panelist
Christos A. Theodoulou
Panelist
Date: September 30, 2013
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