The Complainant is Neerja Kumar Mangalam Birla (Mrs.) of Mumbai, India, represented by Udwadia Udeshi & Argus Partners, India.
The Respondent is Ali Madencioglu of Kyrenia, Cyprus. 2. The Domain Names and Registrar
The disputed domain names (the “First Domain Name”) and (the “Second Domain Name”) (together the “Domain Names”) are 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 Names. 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 July 5, 2013, the Center received an informal email communication from the Respondent. The Center acknowledged receipt of the Respondent’s email communication on July 9, 2013. 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.
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.
The Complaint was filed by Neerja Kumar Mangalam Birla (Mrs.) on behalf of two of her children, Aryaman Vikram Birla and Advaitesha Birla, both of whom are minors. The issues in respect of each of the Domain Names are very similar and the Panel directs that it is appropriate that they be dealt with by way of a single complaint. In this decision references to “the Complainants” are references to the named Complainant’s children on behalf of whom the Complaint was filed. 4. Factual Background
The Complainants are an Indian boy and his younger sister, the children of the Complainant and her husband, 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 Complainants’ parents, in which the Complainants are said to be 15 years of age and 8 years of age respectively.
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 First Domain Name on March 13, 2013 and the Second Domain Name on March 14, 2013. The Respondent registered also the name of the Complainant’s elder daughter as a domain name on March 9, 2013 and that domain name is the subject of a parallel UDRP proceeding (Ananyashree Birla v. Ali Madencioglu,WIPO Case No. D2013-1123) against the Respondent.
The Panel has not been provided with evidence showing how the Domain Names have been used, but it appears from the correspondence between the parties that the Respondent admits that at one time he was advertising them for sale. Currently the First Domain Name resolves to a webpage featuring the picture of a dog wearing goggles and the inscription “MY BOY”. Currently the Second Domain Name resolves to a webpage featuring the picture of a puppy and the inscription “MY NEW PUPY”.
On April 8, 2013 the Complainants’ representatives wrote to the Respondent drawing the Respondent’s attention to the fame of the Aditya Birla Group and its Chairman, the Complainants’ father. The letter refers to the Complainants being children of “one of the most respected and well-known persons in India.” The letter demands transfer of the Domain Names.
On April 9, 2013 the Respondent emailed the Complainants’ representatives stating inter alia that he bought the Domain Names (and that relating to their elder sister) 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 in issue up for sale. He says that he received 9 offers, but rejected them all. The email concludes with a statement that the Domain Names will be connected to “product sales sites”.
On June 21, 2013 the Complainants’ 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 Names as a gift because Mr. Aditya Vikram was one of the best friends of his grandfather the Complainants’ father. He goes on to say that he does not want any money and will transfer the Domain Names 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 July 5, 2013 the Respondent emailed the Center asking for “a copy of the icann rules about buying normals names which is not a celebrity, Brand or any other trade marks registered company names.” The email claims that the First Domain Name was acquired because it represents the names of his son (Mr. Aryamanvik Rambirla Madencioglu) due to be born shortly thereafter.
On August 7, 2013 the Respondent emailed the Center on a number of matters. One 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.” Another passage repeats the claim made earlier that he acquired the First Domain Name in anticipation of the birth of his son to be named “Aryamanvik Rambirla Madencioglu”. 5. Parties’ Contentions A. Complainants
The Complainants contend that they have common law rights in their names and in consequence that the Domain Names are identical to their unregistered trade marks.
In support of their claims to unregistered trade mark rights both the Complainants rely upon the fact that (a) they are members 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) they are well-known to be members of the Birla family, their names having appeared in print and the electronic media on various occasions, as a result of which “their names have acquired a meaning whereby they and their names would directly be associated with business or philanthropic activities of the [Aditya Birla] Group and/or Birla family.”
In addition, it is said on behalf of Aryaman Vikram Birla, whose name features in the First Domain Name, that the Birla family has a school in Haldwani named Aryaman Vikram Birla Institute of Learning.
The Complainants point to the content of the Respondent’s communications, which they contend demonstrate that the Respondent has no rights or legitimate interests in respect of the Domain Names which he knows to be their names and not his.
The Complainants point to a notice said to have been posted to the websites connected to the Domain Names, which indicates that the Domain Names were at one time being offered for sale.
The Complainants contend that the Domain Names were registered and are being used in bad faith on the basis that all along the Respondent’s intention has been to profit by the Domain Names whether through selling them at a profit or, as he has threatened, by connecting them to product sale sites. B. Respondent
The Respondent did not reply formally to the Complainants’ contentions, but he has communicated by email with both the Complainants and the Center. He has said variously that he acquired the Domain Names because he is a collector and that he acquired them to make them as a gift to the Complainants’ father of whom he is a fan. He has also said in relation to the First Domain Name that he registered it for the impending arrival of a son whom he plans to name “Aryanmanvik Rambirla Madencioglu”.
He has contended in emails to the Center that the Complainants’ names are not trade marks. 6. Discussion and Findings A. General
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to each of the Domain Names, the Complainant must prove each of the following, namely that:
(i) The First Domain Name or the Second Domain Name (as the case may be) is identical or confusingly similar to a trade mark or service mark in which the First Complainant or Second Complainant (as the case may be) has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Names or either of them; and
(iii) The First Domain Name or the Second Domain Name (as the case may be) 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 Names are identical to the Complainants’ names, “Aryaman Vikram Birla” and “Advaitesha Birla”.
The sole issue is as to whether or not the Complainants’ names are trademarks. There are no relevant registered trade marks, but the Complainants contend that their names are unregistered trade marks or common law trade marks.
What needs to be shown for the Complainants 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, there is no suggestion that either of the Complainants has played any part in the operation of the business. Indeed, it would be surprising if they had done so in light of their ages 15 years old and 8 years old respectively as at June 2012.
The Complaint states that the Complainants’ names “have 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.
It is said on behalf of Aryaman Vikram Birla, whose name features in the First Domain Name, that the Birla family has a school in Haldwani named Aryaman Vikram Birla Institute of Learning, which was founded in 2004. However, there is nothing in the Complaint to establish that the existence of that school has given rise to any trade mark rights in the hands of Aryaman Vikram Birla himself. The Birla family may have relevant trade mark rights (the Panel does not know), but the Birla family is not a party to this proceeding.
It is noteworthy that the letter written by the Complainants’ representatives to the Respondent on April 8, 2013 and seeking transfer of the Domain Names makes no reference to any trade mark rights in the hands of the Complainants.
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 Complainants rely almost exclusively upon the fame of their father and his antecedents and the very substantial goodwill associated with the business of which he is Chairman. The Panel is willing to accept that in their own environment they are likely to have achieved celebrity status as members of the Birla family, which is well-known in India for its philanthropic activity. However, there is nothing before the Panel to show that the Complainants’ names are used as the identifiers of any particular goods or services giving rise to trade mark rights in their hands. As indicated, the school bearing the name of one of the Complainants may have given rise to trade mark rights, but the Complainants’ evidence is that if any such rights exist, they lie with the Birla family, which is not a party to this proceeding.
The evidence filed on behalf of the Complainants 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 Complainants, 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 Complainants.
The Complainants have failed to persuade the Panel that the Domain Names are identical or confusingly similar to any trade marks in which the Complainants or either of them have 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 Complainants and there is nothing before the Panel to indicate that the Respondent has any rights or legitimate interests in respect of the Domain Names. 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 Names was to exploit them for commercial gain either by selling them at a profit or by connecting them to “product sales sites” (as indicated by the Respondent) and will have known that as they include the name “Birla” they 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 (Ananyashree Birla v. Ali Madencioglu, WIPO Case No. D2013-1123) 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, 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 Complainants. 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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