maruti.com

The Complainant is Maruti Udyog Limited of New Delhi, India.

The Respondent is maruti.com, Acuway Services Inc, Ann Arbor, MI, United States of America.

The domain name at issue is <maruti.com> and the Registrar is Bulkregister.com.

The WIPO Arbitration and Mediation Center [the "Center"] first received the Complaint on January 31, 2003, [electronic version] and on February 4, 2003, [hard copy]. Complaint Deficiency Notification was sent by the Center on February 4, 2003, requesting amendment of the Complaint to identify maruti.com as Respondent in place of Mr. Rao Tella and to comply with the 5,000 word limit [paragraph 3(b)(ix) of the Rules and paragraph 10 of the "Supplemental Rules"]. The amended Complaint was received by the Center on the due date, February 19, 2003, in compliance with the said Rules and Supplemental Rules. The Center verified that the Amended Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy [the "Policy"], the Rules for Uniform Domain Name Dispute Resolution Policy [the "Rules"], and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy [the "Supplemental Rules"]. The Complainant made the required payment to the Center.

The formal date of the commencement of this administrative proceeding is February 20, 2003.

On February 3, 2003, the Center transmitted via email to Bulkregister.com a request for registrar verification in connection with this case and on the same day Bulkregister.com transmitted by email to the Center Bulkregister's verification response confirming that the registrant is maruti.com and that the contact for both administrative and billing purposes is Mr. Rao Tella at Acuway Services Inc.

Having verified that the Complaint satisfied the formal requirements of the Policy and the Rules, the Center transmitted on February 19, 2003, to Mr. Rao Tella on behalf of the Respondent Notification of Complaint and Commencement of the Administrative Proceeding. The Center advised that the Response was due by March 11, 2003. On March 11, 2003, the Center received the Response. On March 13, 2003, Response Deficiency Notification was sent by the Center to the Respondent requesting the Respondent to comply with the 5,000 word limit [Rules paragraph 5(b)(i) and Supplemental Rules paragraph 10(b)]. On the same day, the Amended Response was received by the Center in compliance with the Rules and Supplemental Rules.

On March 17, 2003, the Complainant requested permission to file a Rejoinder to the Response on the basis that the Response contained allegations and raised certain new issues which required clarification. On the same say the Center advised the Complainant that any unsolicited supplemental filing would be forwarded to the Panel for them to decide, in their discretion, whether or not it should be admitted.

Then, on April 2, 2003, the Center received a Rejoinder from the Complainant. The Rules paragraph 12 provide the Panel with discretion to admit or reject further statements or documents in addition to the Complaint and the Response submitted by either of the Parties. The Panel have considered the Rejoinder filed by the Complainant but find it contains nothing which would alter the Panel's Decision based solely on the Complaint and the Response. Accordingly, the Rejoinder is not admitted into this administrative proceeding.

The criteria justifying admissibility of a Rejoinder to the Response are that the Rejoinder should be necessitated to clarify an issue under dispute between the parties and/or to respond to matters raised in the Response which the Complainant could not reasonably have anticipated at the time of filing the Complaint. The Rejoinder in this case is, in the Panel's opinion, on the borderline with respect to meeting these thresholds. On that basis, but for the Panel's Decision that the Rejoinder does not alter the outcome in this case, the Panel would have been inclined to admit the Rejoinder and to have afforded the Respondent the opportunity of filing a supplemental submission to the Rejoinder.

Having received Declarations of Impartiality and Independence and Statements of Acceptance from Sir Ian Barker, Pavan Duggal and David Perkins, on March 26, 2003, the Center transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date, in which Sir Ian Barker and Pavan Duggal were formally appointed Panelists and David Perkins was appointed Presiding Panelist. The Panelists find that the Administrative Panel was properly constituted and appointed in accordance with the Rules and the Supplemental Rules.

Having verified the communication records in the case file, the Administrative Panel finds that the Center has discharged its responsibility under para. 2(a) of the Rules "to employ reasonably available means calculated to achieve actual notice to Respondents". Therefore, the Administrative Panel shall issue its Decision based upon the Complaint, the Response, the Policy, the Rules and the Supplemental Rules.

4.1 The factual background to this administrative proceeding is set out in the Decision in WIPO Case No. D2000-0518 Maruti Udyog Limited .v. Tella Rao. The Respondent in this case is, however, maruti.com rather than Mr. Tella Rao. But, the domain name in issue, <maruti.com>, is the same in both cases. That domain name was originally registered in the name of Mr. Tella Rao. However, at some stage subsequent to the Decision in WIPO Case No. D2000-0518, the domain name was transferred from Network Solutions, Inc to Bulkregister.com and it appears that at the same time the identity of the Registrant was changed to maruti.com. But, as set out in paragraph 3 above, the Bulkregister verification response in this administrative proceeding gives the address for maruti.com as Acuway Services Inc of Ann Arbor, Michigan. The contact for administrative and technical purposes is Mr. Tella Rao at Acuway Services Inc.

4.2 From the Response it is clear that Mr. Tella Rao is the alter ego of maruti.com and Acuway Services Inc. Indeed, he makes no effort to distance himself from the Respondent. In the Response, Mr. Tella Rao gives his own name as the contact for the purpose of this administrative proceeding, he signs the Response and he refers to the Response "… as an extension to the earlier response WIPO Case No. D2000-0518": [Response, paragraph 4].

4.3 So, for the purpose of this administrative proceeding, the Panel regard the Respondent [maruti.com] as synonymous with the Respondent [Mr. Tella Rao] in WIPO Case No. D2000-0518. The Panel, therefore, adopts the analysis of the Factual Background and the Parties' Contentions in the Decision in that case.

5.1 The Panelist in that case rejected the Complaint for failure by the Complainant to satisfy the requirements of paragraphs 3(a)(ii) and (iii) of the Policy.

5.2 As to rights or legitimate interests in respect of the domain name, the Panelist found that the Respondent had produced evidence that the domain name was registered on January 19, 1999, due to the name of his nephew, Tella Maruti Srinivas [emphasis added], who was born on August 5, 1989. This was registered for family purposes and was consistent with the Respondent registering domain names named after other members of his family. For example:

<purma.com> [Respondent's father] registered March 18, 1999;
<vimala.com> [Respondent's mother] registered March 18, 1999;
<lavanya.com> [Respondent's wife] registered December 7, 1999;
<veena.com> [Respondent's daughter] registered December 2, 1998.

5.3 The Panelist further found that the Respondent had not used the website to which the domain name resolved for commercial purposes. Nor was there any suggestion of an intention to tarnish the Complainant's MARUTI registered trademark.

5.4 The Panelist then set out the indicia of bad faith in paragraph 4(b) of the Policy concluding that none of the circumstances applied to the Respondent's conduct. In particular, the Panelist distinguished the facts from those in WIPO Case No. D2000-0365 which was decided on July 16, 2000, shortly before the Decision in WIPO Case No. D2000-0518 on August 14, 2000.

6.1 The Complaint having been denied in WIPO Case No. D2000-0518, the question arises as to whether this Complaint should also be denied applying the general principle that a case should not be re-litigated except where certain listed conditions apply.

6.2 A summary of the leading decisions under the Policy is set out in WIPO Case No. D2001-1041 <jonesapparelgroup.com>. The guidelines set out in Grove Broadcasting Co Ltd .v. Telesystems Communications Ltd WIPO Case No. D2000-0703 and in Creo Products Inc .v. Website in DevelopmentWIPO Case No. D2000-1490 have subsequently been applied by panelists and are adopted for the purpose of this administrative proceeding. In Grove Broadcasting the Panelist identified the limited grounds justifying reconsideration of a decision rendered as including:

- serious misconduct by a judge, juror, witness or lawyer;

- perjured evidence being offered to the Court;

- the discovery of credible and material evidence which could not have been reasonably foreseen or known at the time; and

- a breach of natural justice / due process.

6.3 As to the admissibility of new evidence:

- first, it must be shown that the evidence could not have been obtained with reasonable diligence for use at trial;

- second, that the new evidence must be such that, if given, it would probably have an important influence on the result of the case, although it need not be decisive; and

- third, the evidence must be apparently credible, although it need not be incontrovertible.

6.4 In the Creo Products case, the Panelist agreed that where the act complained of in both Complaints is the same, the grounds for permitting re-litigation should be limited. Acts which have occurred subsequent to the decision on the original Complaint must be such as to give rise to "… a truly new action under the Uniform Policy". The burden is on the Complainant to establish that the refiled Complainant should be entertained and that burden is high.

7. What is the new evidence relied upon by the Complainant?

It is said that the Birth Certificate dated April 7, 1995, recording the birth on August 5, 1989, of Mr. Tella Rao's nephew, Tella Maruti Srinivas, is a forgery. So, the Complainant's case is that the nephew is a fiction and the Decision in WIPO Case No. D2000-0518, cannot stand. That Decision was based on the existence of a genuine nephew of the Respondent bearing that name for whom the domain name in issue was registered.

March 22, 1999: the maruti-com website was activated [Decision in Case No. D2000-0518 paragraph 5B(vi) and paragraph 48 of the Response in this administrative proceeding].

April 15, 2000: cease and desist letter sent to Mr Tella Rao from Advocate Bansal, [the Complainant's counsel - see, Annex L to the Complaint]

May 7, 2000: Respondent's website was changed to depict his nephew, [Annex M to the Complaint].

May 29, 2000: Complaint in Case No. D2000-0518 filed.

August 14, 2000: Decision in Case No. D2000-0518.

Post August 14, 2000: the Respondent's website was changed to provide a portal to services offered by getfound.com and the photograph of the Respondent's nephew was removed.

December 14, 2002: the Registrant of the domain name in issue was changed from the Respondent to maruti.com.

In the light of the forgoing circumstances which post date the Decision in WIPO Case No. D2000-0518, the Complainant's case is that the Respondent can no longer assert bona fide use of the domain name which was found by the Panelist in that administrative proceeding to be a legitimate non-commercial or fair use without intent to tarnish the Complainant's registered MARUTI trademark. Plainly, commercial use is being made of the domain name in issue, since under the getfound.com Affiliate Program, an affiliate, receives 35% of the click through revenue generated by users of the site. That use is not fair, it will misleadingly divert the Complainant's customers and potential customers and will tarnish the Complainant's MARUTI trademark.

Here the Complainant's case is that it is only now apparent that the circumstances set out in paragraph 4(b) of the Policy are present.

Under paragraph 4(b)(i) the Complainant relies on the evidence of Rajiv Khanna [Annex K to the Complaint] which refers to a suggestion from a Mr. Jay Bigos in August 2001, [12 months after the Decision in WIPO Case No. D2000-0518] that the Respondent would be willing to sell the domain name in issue to the Complainant for US$480,000.00.

Under paragraph 4(b)(ii) the Complainant relies on a pattern of conduct by the Respondent of registering domain names in order to prevent the trademark owner from reflecting the mark in a corresponding domain name. In this connection, the Complaint cites 3 cases under the Policy involving Mr. Tella Rao or a company controlled by him, all decided after the date of the Decision [August 14, 2000] in WIPO Case No. D2000-0518. Those Decisions are:

- Mirc Electronics Ltd .v. omida.com, WIPO Case No. D2001-1061. There the administrative contact for the domain name in issue was Acuway Services Inc which, as described in paragraph 4.2 above, is an alter ego of Mr Tella Rao.

- HeroHonda Motors .v. Rao Tella, WIPO Case No. D2000-0365 referred to in paragraph 5.4 above.

- America Online .v. Rao Tella, NAF Case No. FA 0111000101820.

Under paragraph 4(b)(iv) of the Policy, the Complaint points to the Respondent's lack of legitimate rights or interests by reason of the change of use of the website to which the domain name in issue resolves from depicting the Respondent's nephew prior to August 14, 2000, [the date of the Decision in WIPO Case No. D2000-0518] to subsequent use after that date for commercial gain as a portal for getfound.com. By reason of the very well known status of the Complainant's MARUTI trademark, particularly in India, it follows likelihood of confusion with that mark as to source, sponsorship, affiliation or endorsement of the Respondent's website will result.

Because the Birth Certificate is a forgery and the existence of Mr. Tella Rao's nephew, Tella Maruti Srinivas, is a fiction, the Complainant says it is plain that the domain name was originally registered in bad faith to profit unlawfully from their MARUTI trademark. The Decision in WIPO Case No. D2000-0518 was, accordingly, made on a misconception of the actual facts which, had they been available to the Panelist in that administrative proceeding, would have led to a finding in the Complainant's favour.

In the Panel's view, the additional assertions and facts set out in the present Complaint are such that, prima facie, it should be admitted for consideration. The question then is whether the new evidence is, in fact, sufficiently persuasive to lead to a different Decision from that rendered in WIPO Case No. D2000-0518.

9.1 At the outset, members of this Panel indicate that they would not have taken such a benign view of the Respondent's operations as did the Panelist in WIPO Case No. D2000-518, particularly in the finding of legitimate rights and interests. However, this Panel cannot hold itself out as an appellate body from the decision of another Panelist. Its duty is to accept the previous finding unless and until the Complainant has discharged the heavy onus of establishing the right to relitigate on the criteria discussed above.

9.2 The Policy paragraph 4a provides that the Complainant must prove each of the following in order to succeed in an administrative proceeding:

- that the Respondent's domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

- that the Respondent has no rights or legitimate interests in respect of the domain name; and

- that the domain name has been registered and is being used in bad faith.

9.3 The Policy paragraph 4c sets out circumstances which, in particular but without limitation, if found by the Panel to be proved shall demonstrate the respondent's rights or legitimate interest in the domain name in issue.

9.4 The Policy paragraph 4b sets out circumstances which, again 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.

9.5 As stated, the circumstances set out in paragraphs 4b and 4c of the Policy are not exclusionary. They are without limitation. That is, the Policy expressly recognises that other circumstances can be evidence relevant to the requirements of paragraphs 4(a)(ii) and (iii) of the Policy.

9.6 The Panel adopts the same findings as in WIPO Case No. D2000-0518. However, the Panel disassociates itself from the doubts expressed by the Panelist in WIPO Case No. D2000-0518 that the MARUTI trademark is not exclusively associated with the Complainant. It is not for the Panel to speculate whether the trademark should have been denied registration on the grounds that MARUTI is a generic name. The domain name in issue, <maruti.com>, is identical to the Complainant's MARUTI registered trademark. The Complainant succeeds in establishing the first requirement of the Policy.

9.7 This hinges on the issue of the Respondent's bona fides. If the Birth Certificate is a forgery and his nephew, Tella Maruti Srinivas, is a fiction, then clearly the basis for the Panel's Decision in WIPO Case No. D2000-0518 under this requirement of the Policy is destroyed. Were that to be the case, the Panel would find for the Complainant not only under this head of the Policy [paragraph 4(a)(ii)] but also under the third requirement [paragraph 4(a)(iii)]. What then is the new evidence in the Complaint in this administrative proceeding and how does it impact on the earlier Decision?

9.8 The main grounds found by the Panelist in WIPO Case No. D2000-0518 to support the Respondent's rights or legitimate interests in the domain name were as follows:

9.8.1 The Respondent had registered the domain name due to the name of a member of his family for family purposes;

9.8.2the Respondent had not used the site for commercial purposes; and

9.8.3 there was no suggestion of tarnishment of the MARUTI name or mark.

9.9 The Panel now turns to examine the new evidence relied upon in this re-filed Complaint. The Complainant's case and the Respondent's answers can be summarised as follows:

- The birth was not entered into the Madhapuran village Birth & Death Register in 1989: see, Affidavit of Brigadier Mishra, paras. 10 & 17 [Annex #D to the Complaint].

But, it is apparently not uncommon for births to be registered years after the actual date of birth. In this respect, the respondent's own Birth was not apparently registered until August 27, 1996, when he was born June 25, 1970; see, Annex H to the Response.

- When certifying the birth in April 1995, the Mandal Revenue Officer [Rama Chandra Murthy], therefore, had no evidence of the birth.

- The maternal uncle of Maruti's mother was Shri Mullapudi Venkata Trishna Rao [a Member of the Legislative Assembly of Andra Pradesh in the Tanuku Constituency, who also worked in the Mandal Revenue Office]. He exercised improper influence over Rama Chandra Murthy in April 1995 to certify Maruti's birth.

But, this is hearsay, evidence only: see, Affidavits of Brigadier A K Mishra [Annex #D Complaint] and Ved Prakash Saini [Annex #F Complaint]. It is not even hinted at in the signed Statement from Rama Chandra Murthy [Annex #E Complaint].

- There is no record of Maruti attending the Mullapudi School from the Village School records between 1993, and October 2002 [Annex #H Complaint].

But, it appears that Maruti never attended that school. In fact, he was admitted to Gitanjali School, Hyderabad and the Birth Certificate of August 1995, was obtained for gaining admission to that school. Maruti has attended that school since 1996 [Annexes O and Q to the Response].

- Evidence that Maruti is not a common name for the people of Mullapudi Village is that none of the 1,774 inhabitants bear that name.

But, Maruti is apparently a common boy's name in India according to the www.babynamesindia.com website [Annex #E Response].

9.10 The Birth Certificate

9.10.1 The Complainant says that the earlier Decision in WIPO Case No. D2000-0518 was based on a forged birth certificate dated April 7, 1995, of the Respondent's nephew "Tella Maruti Srinivas".

9.10.2 Forgery is a criminal offence which involves forging a document. It is not the same as using a document, properly signed under false pretences. Undue influence is procuring the signature of an official is not forgery.

9.10.3 Is there then evidence of undue influence? As noted in paragraph 9.9 above, the statement by the person signing the Birth Certificate [Rama Chandra Murthy] does not say that he was leant on as Brigadier A K Mishra suggests. The Brigadier's statement is hearsay in that respect. It would be inadmissible at a criminal trial where the judge sees and hears witnesses. Still less is it admissible in this proceeding where the Panel deal only with written averments.

9.10.4 Indeed, the evidence seems to indicate that the Respondent's nephew is named Tella Maruti Srinivas and that he does exist. See, for example, the School Certificate, the affidavits from the boy's father, mother, the mother's uncle in whose house the boy was born, his grandfather and the certified copy of the Birth Certificate [Annexes L3; O; P; and Q].

9.10.5 Accordingly, the Panel finds that the Complainant fails to make out a case that the Birth Certificate was either a forgery or was wrongfully obtained by undue influence.

9.10.6 Further, according to the law of India, the Panel find that the birth certificate fails to fulfil the requirements of that law and, consequently, is of no evidential value in the context of this administrative proceeding.

Births in India are registered in the Births and Deaths Register maintained by the Government's offices. Certified copies of entries in the Births and Deaths Register can only be provided in the appropriate form. The birth certificate of the Respondent's nephew is neither a certified copy of the entry in the Births and Deaths Register nor does it fulfil the requirements of Section 76 of the Indian Evidence Act 1872, as detailed in para. 11 of Annexure D to the Complaint. As a result, the document on which the Respondent relies does not qualify as a legal document evidencing the birth of his nephew.

9.10.7 The Respondent has, however, produced evidence of the existence of his nephew Maruti, who has attended Geetanjali School at Hyderabad since 1996: see paragraph 9.10.5 above. But that alone is not determinative that the Respondent has rights or legitimate interests in the domain name. That issue requires evaluation against the overall conduct of the Respondent.

9.11 The Respondent's use of the domain name is catalogued in paragraph 7.2 above. Was that use, before notice of this dispute, in connection with a bona fide offering of goods or services [Policy, paragraph 4(c)(i)]? Here, the sequence of events was that 3 weeks after being put on notice by the Complainant's lawyer's cease and desist letter dated April 15, 2000, the Respondent's website was changed to depict Mr. Tella Rao's nephew. Up to that date there was no ostensible connection between the domain name and Mr. Tella Rao's nephew, Maruti. The Respondent fails, in the Panel's view, to bring himself within the circumstances of paragraph 4(c)(i).

9.12 Is the present use of the domain name a legitimate non-commercial or fair use in accordance with the Policy, paragraph 4(c)(iii)? Here the sequence of events is that, after the Decision in the Respondent's favour in WIPO Case No. D2000-0518, the Respondent's website was changed to provide a revenue producing portal for services offered by getfound.com and the photograph of Mr. Tella Rao's nephew was removed. Given the undoubted goodwill and reputation of the Complainant's MARUTI trademark in India, the Panel does not consider this to be fair use within paragraph 4(c)(iii).

9.13 The Respondent's explanation that the pictures of Maruti and of his daughter, Veena, were removed from the respective websites for the safety of those children would be plausible but for the circumstances taken as a whole. The picture of Maruti was posted on the website to legitimise the Respondent's registration of the domain name but, once that had succeed in persuading the first Panelist of his bona fides, Mr. Tella Rao then removed it and converted the website to a commercial unfair use trading on the repute of the Complainant's MARUTI trademark. Further, the Panel is not persuaded by the Respondent's submission that it is fair use of the domain name to use it commercially as a portal to derive revenue for the benefit of Mr. Tella Rao's nephew, Maruti, until he becomes of age and is able to ruin the website himself.

9.14 In the light of the changed circumstances which have given rise to facts not available to the Panelist in WIPO Case No. D2000-0518, the Panel takes the view that the Respondent fails to establish rights or legitimate interests in the domain name in issue and, consequently, the Complaint succeeds in establishing the second requirement of the Policy under paragraph 4(a)(ii).

9.15 The Complaint asserts that the suggestion from Mr. Bigos that the Respondent would be willing to sell the domain name in issue to the Complainant for US$480,000.00 evidences bad faith registration and use under paragraph 4(b)(i) of the Policy. The Respondent denies any connection with Mr. Bigos. There is nothing in Mr. Khanna's evidence [see, paragraph 7.3 above] to connect the Respondent and Mr. Bigos and, in the absence of persuasive evidence from the Complainant, the Panel rejects its case under paragraph 4(i)(b) of the Policy.

9.16 The Complaint also asserts [pursuant to paragraph 4(b)(ii) of the Policy] that the Respondent registered <maruti.com> in order to prevent the Complainant owner of the MARUTI trademark from reflecting that mark in a corresponding domain name, and that the Respondent has engaged in a pattern of such conduct. In that respect, the Complainant points [see, paragraph 7.3 above] to the Decisions in WIPO Case Nos. D2001-1061 <onida.com> and D2000-0365 <herohonda.com>, and NAF Case No. FA 0111000101820 <aolbox.com>, in all of which the Respondent was Mr. Tella Rao or his alter ego, Accuway Services [which is administrative and billing contact for the domain name in issue in this administrative proceeding].

9.17 The Respondent's answer is that he has legitimate rights and interest in the domain name in issue and that if the Complainant had wanted to use its MARUTI trademark for the domain name in issue it would have registered that domain name. Instead, the Complainant has chosen to use other domain names, for example <marutiudyog.com> and <marutisuzuki.com>. As to the <onida.com> and <aolbox.com> cases, the Respondent claims that both relate to available city names, namely Onida, South Dakota and Anne Arbor, Michigan. As to the <herohonda.com> case, the Respondent claims this was registered for use as a fan club site for American Honda cars. The Decisions in those cases under the Policy were, however, all in favour of the Complainant.

9.18 The Panel has already decided that the Respondent lacks rights or legitimate interests in the domain name in issue. Further, the Panel considers the cumulative weight of the Decisions in the 3 above cases decided against the Respondent evidence of a pattern of conduct. Accordingly, the Panel finds that the Complainant has established a bad faith case under paragraph 4(b)(ii) of the Policy.

9.19 Mention should also be made of the Complainant's case under paragraph 4(b)(iv) of the Policy [see again paragraph 7.3 above]. Here the Panel has already found in relation to paragraph 4(a)(ii) of the Policy that the changed circumstances - namely, removal of the picture of Mr. Tella Rao's nephew from the website and the subsequent use of the domain name in issue as a portal for commercial gain - does not amount to fair use of the domain name. The Respondent does not dispute that the arrangement with getfound.com is designed for commercial gain. Given the undoubted reputation of the Complainant's MARUTI mark, at least in India, the Panel agree that this use of the domain name in issue is likely to create confusion with the Complainant's customers and potential customers. Accordingly, the Panel finds that the Complainant has also established a bad faith case under this paragraph of the Policy.

Pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the Panel directs that the domain name <maruti.com> be transferred to the Complainant.