The Complainant is MindTree Consulting Pvt. Ltd., a company incorporated In
India, with its principal place of business in Bangalore, India.
The Respondent is Mr. Rajesh Shrestha, an individual residing in Nepal. The
address of the Respondent as contained in the domain name registration is Hattisar,
Kathmandu, Kathmandu G.P.O. 8975, Nepal.
2. The Domain Name and Registrar
The domain name that is the subject of this Complaint is <mind-tree.com>.
The Registrar of this domain name is eNom Inc., 16771, NE 80th Street,
Suite #100, Redmond, WA 98052, United States of America.
3. Procedural History
This is an administrative proceeding pursuant to the Uniform Domain Name Dispute
Resolution Policy ("the Policy") adopted by the Internet Corporation
for Assigned Names and Numbers ("ICANN") on August 26, 1999,
the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN
on October 24, 1999, ("the Rules") and the Supplemental
Rules for Uniform Domain Name Dispute Resolution Policy ("the Supplemental
Rules") of the WIPO Arbitration and Mediation Center ("the Center").
The Complaint was received by the Center via email on May 6, 2002,
and in hard copy on May 14, 2002. The Center acknowledged receipt
of the Complaint on May 10, 2002. On May 10, 2002, a Request
for Registrar Verification of registration details was made by the Center and
on May 14, 2002, the Registrar confirmed that the disputed domain
name is registered in the name of the Respondent, who is also the Administrator,
Technical and Billing Contact; that the Policy applies to the disputed domain
name; that the domain name is active and that the language of the registration
agreements of the disputed domain name is English.
On May 16, 2002, the Center satisfied itself that the Complainant had complied
with all formal requirements (including payment of the prescribed fee).
On May 16, 2002, the Notification of Complaint and Commencement of Administrative
Proceeding together with the Complaint with Transmittal Coversheet in English
were electronically transmitted to the parties.
On June 14, 2002, the Notification of Respondent Default was electronically
dispatched to the parties.
On June 28, 2002, having received a completed and signed Statement of Acceptance
and Declaration of Impartiality and Independence from Susanna H.S. Leong (the
"Panelist"), the Center notified the parties of the appointment of
a single-member panel (‘the Panel") consisting of the Panelist. That day,
the Center transmitted the case file to the Panel and notified the parties of
the Projected Decision Date of July 12, 2002.
The Panel is satisfied that the Complaint was filed in accordance with the
requirements of the Rules and Supplemental Rules; payment was properly made;
the Panel agrees with the Center’s assessment concerning the Complainant’s compliance
with the formal requirements and the administrative Panel was properly constituted.
4. Factual Background
The Complaint asserted, and provided evidence in support of, and the Administrative
Panel finds established, the following facts:
The Complainant’s Business and Commercial Activities
The Complainant is an integrated e-business and networking Technology Company
founded in the year 1999. The Complainant was set up with an aim to effectively
tackle issues which conventional software consulting companies had failed to
address in the age of e-business. The Complainant enjoys the distinction of
having created a new synergetic model of consultancy that combines the traditional
US-based consulting practices with the benefits of off-shore development. The
Complainant’s main activities are the provision of web-enabled services in the
twin spheres of e-commerce and telecommunications and over the years, the Complainant
has in its list of clients some of the world’s leading technology players including
Alcatel, Ariba, Cisco Systems, Epson, Fujitsu, Hitachi, Lucent Technologies,
Sun Microsystems etc. The client list also includes business players such as
Avis, Business Standard, Fabmart, Franklin Templeton, Inc., Global Trust Bank
Ltd., Hindustan Lever Ltd., Prudential ICICI etc. The Complainant having established
credible presence in the US and Europe has strengthened its Indian operations
to provide world-class consulting and implementation services to Indian customers
who account for 20% of its revenues and is now in the process of starting its
third line of operations aimed at the enterprise space. The Complainant has
posted an annual revenue in excess of US$ 15 million in the very first year
of its operations, hiring over 400 employees and has established fully functional
development centers in Bangalore and New Jersey as well as a business development
office in the Silicon Valley, California.
The Complainant’s Trade Name and Trademarks
The Complainant is the proprietor of the trademark MindTree, which has been
adopted and used by the Complainant in relation to its goods and services, since
August 5, 1999. The name MindTree not being a commonplace dictionary
word of the English language or for that matter, of any other language is a
coined word which connotes no other meaning than as a trademark in relation
to the goods and services of the Complainant. In order to protect its inherently
distinctive trademark MindTree, the Complainant has filed numerous trademark
applications in several countries of the world. The applications have been filed
in inter alia India, United States of America, United Kingdom, Australia,
Singapore, Japan and European Community. The trademark applications for MindTree
in United Kingdom, Australia, European Community and Singapore have materialised
into registrations. The other applications are pending at the moment. Besides
having filed applications for the trademark "MindTree", the Complainant
has also filed applications for the marks "MindTree Consulting & Design"
and "MindTree Technologies" in India.
The Complainant’s Domain Names and Web Sites
The Complainant has a website <www.mindtree.com>, which contains information
with regard to the Complainant’s business, contact details, clients and latest
news.
The Complainant is also the registrant of the following domain names containing
the word <mindtree>:
The Respondent is the registrant of the domain name <mind-tree.com>,
the Registrar of which is eNom Inc. According to the eNom’s Whois database,
the date of registration of the disputed domain name January 11, 2002.
This domain name resolves to a web site entitled "MindTree" which
is under construction.
The address of the Respondent as contained in the domain name registration
is Hattisar, Kathmandu, Kathmandu G.P.O. 8975, Nepal. From the e-mail correspondences
between the Complainant and the Respondent, which are adduced before the Panel
as supporting evidence, the Respondent claims to have a company registered by
the name of Mind-Tree Solutions in the cottage and small industries department
under the Ministry of Industry, commerce and supplies in Nepal. A copy of the
registration certificate has been submitted by the Respondent but as the certificate
is in the Nepalese language and no translation for the certificate has been
undertaken, it is not possible for the Panel to verify the claims of the Respondent
on this matter.
5. Parties’ Contentions
A. Complainant
The Complainant contends that each of the three elements specified in the paragraph
4(a) of the Policy are applicable to this dispute.
In relation to element (i) that the domain name in dispute is identical or
confusingly similar to a trademark or service mark in which the complainant
has rights, the Complainant contends that the disputed domain name <mind-tree.com>
contains the word Mindtree in its entirety and is therefore identical with or
confusingly similar to the Complainant’s trademark/trade name MindTree.
In relation to element (ii), that the Respondent has no rights or legitimate
interests in respect of the domain name, the Complainant contends that the word
MINDTREE is a coined word, and as such is not one that traders would legitimately
choose except for the sole purpose of misappropriating the reputation associated
with the Complainant’s famous trade mark MindTree. The Complainant also contends
that it has not authorized the Respondent to use its trade marks and trade name.
Furthermore, it is the Complainant’s contention that the Respondent is neither
known commonly by the MindTree name nor has he made any demonstrable preparations
to use the disputed domain name in connection with a bona fide offering of goods
and/or services. As of the date of filing of the Complaint, the Respondent’s
website has remained inactive and as such, the Respondent cannot be said to
have any rights or legitimate interests in the domain name.
In relation to element (iii), that the disputed domain name has been registered
and is being used in bad faith by the Respondent, the Complainant contends that
evidence of bad faith registration and use is established by the following circumstances:
(a) That the trade mark MindTree is distinctive and famous and the respondent
knew or ought to have known of the Complainant and its exclusive rights in the
trade mark. Accordingly, the Respondent can have no legitimate interest in the
disputed domain name which is identical with or similar to the Complainant’s
famous trade mark and the sole purpose of the registration is to misappropriate
the reputation associated with the Complainant’s famous trademark. In this way,
the Respondent’s appropriation of the trade mark or trade name as a domain name
is clearly in bad faith.
(b) The malafides of the Respondent can be inferred from the website of the
Respondent wherein the trade mark or trade name MindTree is represented in exactly
the same way as the Complainant’s mode of representation. There is a great likelihood
that actual or potential visitors to the Respondent’s website, using the disputed
domain name, will be induced to believe that the Complainant has licensed its
trademark MindTree or authorized the Respondent to register the disputed domain
name and/or believe that the Respondent has some connection with the Complainant
in terms of a direct nexus or affiliation with the Complainant.
(c) That the unlawful adoption of the disputed domain names by the Respondent
would result in the dilution of the Complainant’s trademark MindTree. The illegal
adoption of the disputed domain name will cause irreparable damage and injury
to the Complainant’s reputation and goodwill which cannot be ascertained and/or
quantified due to the intangible nature of goodwill.
B.Respondent
The Respondent did not file a Response to the Complaint. In accordance to the
Rules for Uniform Domain Name Dispute Resolution Policy, paragraph 14, the Administrative
Panel thus draws such inferences as she considers appropriate.
6. Discussion and Findings
Identical or Confusingly Similar Domain Name
The domain name in issue is <mind-tree.com>. The relevant parts of this
domain name are the two words "mind" and "tree", separated
by a hyphen. The Panel finds that the relevant parts of the domain name are
identical to the Complainant’s trade mark, MindTree. In addition, the Panel
finds that the whole of the domain name is confusingly similar to the Complainant’s
trade mark.
Respondent’s Rights or Legitimate Interests in the Domain Name
The Respondent has not provided evidence of circumstances of the type specified
in paragraph 4(c) of the Policy, or of any other circumstances giving rise to
a right to or legitimate interest in the domain name. Based on the following
reasons the Panel finds that the Respondent has no rights or legitimate interests
in the disputed domain name:
(i) That the Respondent has not provided evidence of honest concurrent user
in the trade mark or trade name MindTree or reasons to justify the choice of
the word MindTree in its business operations;
(ii) That the Complainant has not licensed or otherwise permitted the Respondent
to use its trade mark or to apply for or use any domain name incorporating the
trade mark; and
(iii) that the word MindTree appears to be a coined word and as such is not
one that traders would legitimately choose unless the sole purpose is to create
an impression of an association with the Complainant.
Domain Name Registered and Used in Bad Faith
It is important to note on the outset 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 the Respondent
is continuing to act in bad faith.[1]
Has the Complainant proven that the domain name "has been registered in
bad faith" by the Respondent?
In the light (i) that the trade mark or trade name MindTree is a coined word
that is distinctive and has acquired a strong reputation and goodwill over the
years; (ii) that the Complainant has also acquired strong business reputation
and goodwill since its incorporation in 1999 and has enjoyed substantial press
coverage and publicity, often in association with its trade mark or trade name
MindTree; (iii) that the Respondent has not provided evidence of honest concurrent
user in the trade mark or trade name MindTree or reasons to justify the choice
of the word MindTree in its business operations; (iv) that it is not possible
to conceive of a plausible circumstance in which the Respondent could legitimately
use the domain name <mind-tree.com> unless the sole purpose is to create
an impression of an association with the Complainant; (v) that it also not possible
to conceive of a plausible situation in which the Respondent would have been
unaware of the distinctiveness and strong reputation of the Complainant’s trade
mark or trade name MindTree; and (vi) that given that the Panel has found that
the Respondent has no rights or interests in the domain name, the Panel concludes
that the domain name <mind-tree.com> has been registered by the Respondent
in bad faith.
Has the Complainant proven the additional requirement that the domain name
"is being used in bad faith" by the Respondent?
The disputed domain name <mind-tree.com> resolves to a web site that
is under construction and on that web site the trade mark or trade name MindTree
is represented in exactly the same way as the Complainant’s mode of representation.
The Panel finds that there is a great likelihood that actual or potential visitors
to the Respondent’s website, using the disputed domain name, will be induced
to believe that the Complainant has licensed its trademark MindTree or authorized
the Respondent to register the disputed domain name and/or believe that the
Respondent has some connection with the Complainant in terms of a direct nexus
or affiliation with the Complainant. Under Paragraph 4(a)(iv), this shall be
evidence of use of a domain name in bad faith.
Accordingly, the Panel finds that the Complainant has proven that the domain
name is being used in bad faith by the Respondent.
7. Decision
In accordance to paragraphs 4(i) of the Policy and 15 of the Rules, the Panel
orders that the domain name in dispute, <mind-tree.com>, be transferred
to the Complainant.
