The Complainant is Dr. Kumar Mangalam Birla of Mumbai, India, represented by Arjun T. Bhagat & Co. of Mumbai, India.
The Respondent is William, Well domains, United States of America.
2. The Domain Name and Registrar
The disputed domain name <kumarmangalambirla.com> is registered with
Direct Information Pvt Ltd. dba Directi.com, of Mumbai, India.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 24, 2004. On September 24, 2004, the Center transmitted by email to the registrar a request for its verification of the registration details in connection with the domain name at issue. On October 1, 2004, 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 for the administrative, billing, and technical contact for the disputed domain name. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 6, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was October 26, 2004. The Center received an e-mail on October 11, 2004, from a registered email address of the Respondent’s. No formal Response was filed and no further communication was received from the Respondent. Accordingly, the Respondent’s communication of October 11, 2004, was acknowledged by the Center as the Response.
The Center appointed James A. Barker as the sole panelist
in this matter on November 9, 2004. 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.
4. Supplemental Filing
On November 11, 2004, the Complainant made a supplemental
filing with the Center, consisting of an email it had received from a third
party to this proceeding. The Complainant made no particular submission in relation
to that email. The Rules make no provision for supplemental filings by the parties.
As such, and because the Complainant made no submission about its relevance,
the Panel did not consider the Complainant’s supplemental filing.
5. Factual Background
The Complainant is Chairman of the Aditya Birla Group. Through its associated companies, the Aditya Birla Group is the largest producer of cement in India. It controls 45 per cent of aluminium and 40 per cent of India’s copper markets. It is India’s market leader in insulators, viscose staple fibre and yarns and carbon black. Today 30 per cent of its turnover is from the Group’s overseas operations.
The Complainant is Chairman of all the Group’s blue-chip companies in India, and also serves as a director on the board of the Group’s international companies spanning Thailand, Indonesia, Malaysia, Philippines and Egypt. The Group’s operations extend to Canada, China, the United States of America, the United Kingdom and Australia as well. The Complainant is on the board of a number of other companies, regulatory and professional boards. The Complainant has received a large number of business awards and accolades.
At the date of notification of the Complaint, the
domain name did not revert to an active website. Rather, the domain name reverted
to a page at “http://linux.webzoneindia.com/suspended.page”, which
contained only the text “This Site Is Under Construction!”.
6. Parties’ Contentions
A. Complainant
The following is summarised from the Complaint:
Identical or Confusingly Similar
The name Kumar Mangalam Birla is associated with endeavour, endurance and economics. The name is highly distinctive and rare. The name is exclusively associated with Dr. Kumar Mangalam Birla.
Over the years, the goodwill and reputation earned by the Aditya Birla Group has been due to the hard work and image of Dr. Kumar Mangalam Birla. The Complainant’s name is thus distinctive as a trademark and any use of the word/name/mark ‘Kumar Mangalam Birla’ by anyone is likely to be associated with the Complainant. The word/name ‘Kumar Mangalam Birla’ is a mark of quality and excellence. The name and mark has acquired a secondary meaning giving rise to unregistered trademark rights and therefore is a trademark for the purposes of paragraph 4(a)(i) of the Policy.
Rights or Legitimate Interests
The Respondent has no legitimate rights in respect of the disputed domain name as the domain name is not functional or operative but has been put up for sale by the Respondent on the Internet. The Respondent can have no plausible reason for adoption of the name of one of the business icons of modern India.
Bad Faith
The registration of the domain name by the Respondent has been done in bad faith. By registering the domain name, the intention of the Respondent was to prevent the Complainant from using it. Further, the registration was done to disrupt and usurp the Complainant’s business and with a malafide motive of attracting, for commercial gains and for making illegal profits, Internet users to the Respondent’s website causing Internet users to believe that the Respondent is associated with, has some sponsorship and/or affiliation with the Complainant when no such thing exists. The Complainant fears that the Respondent has knowingly used the impugned name to derive illegal gains and benefits to which it is not entitled and/or with the motive of selling, renting and transferring the impugned domain name to him for a valuable consideration.
There is a reasonable presumption that the Respondent ought to have been aware of the Complainant’s name/mark and the goodwill and reputation associated with it. The Respondent has not been associated with the Complainant, nor with his merchandise, nor has the Respondent been legally authorised, permitted and/or licensed by the Complainant to use and/or register the name/word as a domain name.
The Complainant has not given any permission to the Respondent to register the disputed domain name which is identical to the Complainant’s name and mark in which the Complainant has exclusive rights. The Respondent is not making any legitimate non-commercial or fair use of the domain name. The Complainant is not aware that Respondent has made use of the domain name since registering it in July 2004.
B. Respondent
No formal Response was filed. On October 4, 2004, two days prior to the formal notification of the dispute, the Center received the following communication from an email address, confirmed by the registrar as the Respondent’s:
“Ours is an company deals in domain registration.
We have collection of more than 50000 domains.
Same has been checked and found that it has been taken by an Indian company through our net process.
It will be better if can contact to buyer directly..
thanks
welldomains team.”
A similar, although shorter, email was sent from the same address on October 6, 2004.
Then, on October 11, 2004, the following communication was sent from the same email address:
“Thanks for your mail. case has been given to our advocate,Who will contact you soon. Meanwhile I would Like to say that The fellow who is demanding this domain is totally incorrect as he is :Some of the matter taken from google/http://www.google.co.in/search?hl=en&ie=UTF-8&q=kumaramangalam+birla&spell=1
1.Kumaramangalam Birla whereas I have registered KUMARMANGALAMBIRLA.COM
2. Personality in focus - Kumaramangalam Birla - by K Gopalakrishnan ...
3.Rs 970,000 cr - The Times of India
... Getting felicitated will be Kumaramangalam Birla
4.Businessworld: Not such a bad Idea
... The buzz now is that Kumaramangalam Birla,
5.Rediff.com: The Biz Quiz
... Headed by Kumaramangalam Birla,
6.Who is the 1st woman director on L&T board?
... Rajashree, wife of the late Aditya Birla and mother of Kumaramangalam Birla,
He is kumaramangalam not kumarmangalam.
It is a false notice & making issue just for nothing.
Thanks.
Mahendra”.
The Center also received a brief email on November 3, 2004, apparently from the Respondent, although from a different email address. That email did not materially add to those referred to above.
All of these communications were sent from an email address of the Respondent. Accordingly, the Panel has treated all of these emails as emails originating from the Respondent.
The emails do nothing to help the Respondent’s case. The email of October 4, 2004, suggests that the domain name was transferred. But, in its verification response of October 1, 2004, the registrar confirmed that the registration of the domain name has remained ‘locked’ for the duration of this proceeding, as required by the Policy. The email of October 11, 2004, states that the Complaint is “totally incorrect”. But the email makes little sense. Not much of it is coherent. No part of it responds specifically to the statements and allegations in the Complaint, as required by paragraph 5(b)(i) of the Rules. No evidence supports it. There is nothing in it which the Panel can use to contrast the Complaint.
The only, limited relevance of the Respondent’s
emails is to the issue of bad faith, addressed below. With that exception, the
Panel has decided this dispute based on the Complaint. The content of the Respondent’s
emails do not enable the Panel to do otherwise.
7. Discussion and Findings
Under paragraph 4(a) of the Policy, for the Complaint to succeed it must prove that:
- the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- the Respondent has no rights or legitimate interests in respect of the domain name; and
- the domain name was registered and is being used in bad faith.
A. Identical or Confusingly Similar
The disputed domain name is identical to the name Kumar Mangalam Birla. It is well established in panel decisions that the domain name extension - in this case .com - is not relevant in considering identicality.
The Complainant must then prove that it has trademark or service mark rights in the personal name Kumar Mangalam Birla. The Complainant did not claim that the name is registered as a mark. The Complainant states that it has rights because the name has a distinctive reputation and association with the Aditya Birla Group of which the Complainant is the prominent Chairman. As evidence, the Complaint attached copies of articles about Kumar Mangalam Birla from the magazines “Business India” and “Business today,” including articles relating to the Complainant’s award of Business India’s 2003 Businessman of the Year. Because of the business prominence of the Complainant, the Complaint states that the name is a “common law mark.”
A trademark or service mark is, fundamentally, a mark which is used to distinguish goods or services from those of others. Whether the Complainant has rights in its name depends on whether the name has been used to distinguish the Complainant’s business, regardless of whether that name is also a personal name.
In Chinmoy Kumar Ghose v. ICDSoft.com and Maria Sliwa, WIPO
Case No. D2003-0248 (‘the Sri Chinmoy case’), the then panel
noted a difference of emphasis between panels, which have generally applied
one of two tests to determine whether the complainant’s name is distinctive
as an unregistered mark:
- that the name has acquired a secondary meaning associated with some specific goods or services;
- that the complainant would succeed in an action for passing off against another trader using the complainant’s mark.
As indicated in the Sri Chinmoy case, the second of these tests would be easier to satisfy than the first. Which is applied by a panel in any particular case may, of course, depend on the location of the parties and “the rules and principles of law that [the panel] deems applicable” (Rules, paragraph 15(a)).
In this case, it is unnecessary to decide between these tests. For the reasons set out below, the Panel considers that the Complainant could satisfy both of them.
In this case, the Complainant has obviously used its name, at least in the publicity of its associated business - the Aditya Birla Group. The evidence attached to the Complaint sufficiently indicates that the Complainant’s name is distinctively associated with that business and, by extension, the goods and services collectively traded by that business. The Complainant’s family name Birla has, for generations, been closely associated with the business that incorporates that name. Nothing to the contrary was contended by the Respondent. Accordingly, and in the absence of a substantive Response, there is sufficient evidence that the Complainant has rights in the mark KUMAR MANGALAM BIRLA.
It is also important to distinguish this case from others, which involved somewhat
similar facts, but which reached a different result. In particular, in R.E.
‘Ted’ Turner and Ted Turner Film Properties, LLC v. Mazen Fahmi,
WIPO Case No. D2002-0251 (the ‘Ted
Turner case’), the Complainant was the well-known American businessman
and philanthropist, Ted Turner. In that case, as in this one, the disputed domain
name incorporated the complainant’s name. The complainant’s name
formed part of the name of businesses owned by the complainant. The majority
of the panel in that case denied the Complaint.
This case is different in two significant respects:
Firstly, there was no substantive Response in this case. The Complainant’s case is naturally stronger as it is not contested.
Secondly, the facts and evidence in every case will, almost invariably, be different. The panel in the Ted Turner case found that there was “insufficient evidence produced in the Complaint that the Complainant, Ted Turner, has ever offered goods or services under that name, or that that name has acquired any secondary meaning in relation to any goods or services.” In this case, the particular evidence put forward by the Complainant, although not substantial, is sufficient to support a finding that the Complainant’s name has acquired a secondary meaning: It calls to mind the Complainant’s business.
The Panel therefore finds that the disputed domain name is identical to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy requires the Complainant to prove that the Respondent has no rights or legitimate interests in the domain name. The burden on the Complainant in this respect is to establish a prima facie case.
The Panel is satisfied that the Complainant has established a prima facie case against the Respondent. It is clear from the Complaint that the domain name is the name of a very well-known Indian businessman, distinctively associated with the business run by the Complainant. The Complainant states that it did not give any permission for the Respondent to use its name in a domain name.
The Respondent must then successfully answer that case, or fail on this element of the Policy. Paragraph 4(c)(ii) of the Policy sets out a number of examples of circumstances which a respondent may use to demonstrate its rights or legitimate interests.
The Respondent gave no real answer to the Complainant’s contentions. Nothing in the communications from the Respondent, or otherwise available to the Panel, demonstrates the circumstances in paragraph 4(c)(ii) of the Policy. There is no evidence that the Respondent used the domain name in connection with a bona fide offering of goods or services. No evidence is provided that the Respondent is commonly known by the domain name, or even that the Respondent “William” is a real person or entity. No evidence is provided that the Respondent is making a legitimate non-commercial or fair use of the domain name.
The Panel therefore finds that the Respondent has no rights or legitimate interests in the domain name.
C. Registered and Used in Bad Faith
Paragraph 4(b)
The Complainant claims, in effect, that the Respondent registered and used the domain name in bad faith as described in paragraph 4(b)(i)-(iv) of the Policy. No evidence supported those contentions, such as printouts of any website to which the domain name referred, or evidence of the claimed attempts by the Respondent to sell the domain name. Parts of the Complainant’s case also appear to be self-contradictory. The Complainant contends that the Respondent sought to attract “Internet users to his web site.” But the Complainant also states that “it has no evidence of any use or indeed any planned use of the domain name by the respondent.”
For these reasons, the Panel makes no finding of bad faith under paragraph 4(b) of the Policy. In any event, the success of the Complainant’s case does not require such a finding.
Other evidence of bad faith
The terms of paragraph 4(b) clearly indicate that it is inclusive, not exhaustive, of the circumstances in which bad faith can be found. The Complainant claims that the Respondent can have no plausible reason for registration of the domain name; and the Respondent would be “well aware of the goodwill, name and fame” associated with the Complainant’s mark, particularly having regard to the Complainant’s common law trademark rights.
The circumstances of this particular case support those claims against the Respondent. Three circumstances are particularly relevant:
Firstly, the domain name incorporates entirely the Complainant’s name and mark. The entire incorporation of the Complainant’s mark makes it less likely that it was done by accident, without knowledge of the Complainant’s rights. And it seems more than a coincidence that the Respondent registered the domain name with a registrar based in India, where the Complainant resides. The Respondent also self-addressed one of its emails in these proceedings with an apparently Indian name. It seems likely to the Panel that the Respondent has at least some connection with India. As such, it is likely that the Respondent was aware of the Complainant’s reputation when it registered the domain name, and so registered it in bad faith.
Secondly, the first email from the Respondent was self-addressed from “the welldomains team” and suggested that the sender was a company that “deals in domains registration.” However, the email of October 11, 2004, from the same address, was self-addressed from “Mahendra.” There was no evidence in those emails that the Respondent had registered and has used the domain name in good faith. The inconsistent addressing and content of those emails suggests that the Respondent was unwilling to confirm its own identity and motives in respect of the domain name. That suggests more strongly that the Respondent was not acting with an intention to make a genuine use of the domain name, without infringing the Complainant’s rights.
Thirdly, the Respondent’s registered incorrect postal address details in respect of the domain name. Although the Respondent is registered at a physical address in the United States of America, attempts to post it to that address failed. It is well established that the provision of false contact details provides evidence of bad faith registration and use.
In these three circumstances, the Panel finds that, on the balance of probabilities,
the Respondent registered and used the domain name in bad faith.
8. 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, <kumarmangalambirla.com> be transferred to the Complainant.
James A. Barker
Sole Panelist
Dated: November 23, 2004
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