The Complainant is Mawana Sugars Limited New Delhi, India, represented by Pavan Duggal & Associates, India.
The Respondent is Mawana Establishment, Riyadh, Saudi Arabia, represented by
Mr. Aladin Pargoss, Saudi Arabia.
2. The Domain Name and Registrar
The disputed domain name <mawana.com> is registered with Domain Bank,
Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 11, 2005. On November 14, 2005, the Center transmitted by email to Domain Bank, Inc. a request for registrar verification in connection with the domain name at issue. On that same day, Domain Bank, Inc. 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. 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 November 30, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was December 20, 2005. The Response was filed with the Center on December 20, 2005.
The Center appointed Alberto de Elzaburu as the Sole
Panelist in this matter on January 17, 2006. 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. Factual Background
The domain name <mawana.com> was registered on February 23, 2000. It currently leads to an active website which bears the indication “this domain is currently under construction”. Notwithstanding this circumstance the site contains sponsored links to various sites, the majority relating to foodstuffs and to sweets.
The Complainant is a sugar company doing business under the name Mawana Sugars Limited has filed the following trademark applications currently under prosecution before the Indian Trademark Office:
- Application No. 1294608 MAWANA SUGARS (& logo), filed on July 6, 2004, in respect of goods and services in Classes 29, 30, 31, 32, 33, 35, 36, 37, 38, 39, 40, 41 and 42.
- Application No. 1330184 MAWANA PURE CRISTAL SUGAR (container), filed on January 5, 2005, in respect of goods in Class 30.
- Application No. 1294607 MAWANA SUGARS LIMITED, filed on July 6, 2004, in respect of goods and services in Classes 29, 30, 31, 32, 33, 35, 36, 37, 38, 39, 40, 41 and 42.
The following applications, which are similarly under prosecution, were filed in the Complainant’s former name of Siel Sugar Limited.
- Application No. 1287102 MAWANA, filed on May 31, 2004, in respect of goods in Class 30.
- Application No. 1250287 MAWANA, filed on November 18, 2003, in respect of goods in Classes 29, 30, 31, 32 and 33.
The Complainant likewise figures as the holder of the domain name <mawanasugar.com> which, according to the corresponding whois details, was registered on June 10, 2005.
The Respondent is a company offering waterproofing services.
The Respondent is the owner of the following trademark registration in Saudi Arabia:
Trademark registration No. 389/31 MAWANA (& logo), filed in 1995 and registered in 1996 in respect of goods in Class 17.
It is to be noted, lastly, that Mawana is a geographical
name.
5. Parties’ Contentions
A. Complainant
The contentions of the Complainant are that:
- Mawana Sugars Limited is a company with a great reputation and that it and/or its predecessors have been doing business in the sugar market under the name MANAWA for the past 55 years.
- Mawana Sugars Limited has filed the Indian trademark applications mentioned in point 4 above and, in addition, Siel Sugar Limited (predecessor entity of the Complainant) filed trademark application No. 629171 for MAWANA in Class 30 in 1994.
- At the beginning of November 2005, the Complainantembarked upon a process of internal audit of its intellectual property assets. In the course thereof it learned of the existence of the domain name <mawana.com> in the name of the Respondent.
- That domain name is confusingly similar to the trademark applications MAWANA and MAWANA SUGARS, the rights which are invoked by the Complainant, and it was registered and is used in bad faith, given that the “www.mawana.com” website contains sponsored links to different categories relating to products made from sugar, such as cookies, cakes and brownie.
- The Respondent has no rights or legitimate interests in the disputed domain name, as it has no connection with the business of the Complainant and has not been commonly known by the name of Mawana or Mawana Sugars.
In view of the foregoing it is requested that the domain name <mawana.com> be transferred to the Complainant.
B. Respondent
In its reply to the Complaint, the Respondent contends that:
- Its company was formed and registered under the name MAWANA ESTABLISHMENT in Saudi Arabia in 1995.
- In Arabic the word MAWANA has the meaning of “defences, obstacles” and thus makes reference to the business conducted by the company: waterproofing.
- The Respondent is the owner of the MAWANA trademark mentioned previously, which was filed in 1995 and granted registration in 1996.
- The disputed domain name is therefore identical to the Respondent’s own trademark and not to the trademark applications of the Complainant.
- The Respondent has rights and legitimate interests in the disputed domain name, given that the domain name coincides with its company name, trademark and line of business.
- That domain name was not filed in bad faith and has at no time been used in bad faith. None of the circumstances evidencing bad faith under the Policy arise in this case, nor is the Respondent a competitor of the Complainant.
- Nonetheless, the Respondent has put enquiries in
hand to determine who has hijacked its website and introduced the sponsored
links mentioned above.
6. Discussion and Findings
For a complaint lodged under the Uniform Domain Name Dispute Resolution Policy to succeed, it is necessary that the three requirements laid down in paragraph 4(a) of the Policy be met. Those requirements are:
(a) that the domain name be identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(b) that the Respondent has no rights or legitimate interests in respect of the domain name; and
(c) that the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has failed to prove the existence of exclusive rights in the term MAWANA for the following reasons:
- The trademark applications filed in India and owned by the Complainant are still under prosecution.
- Although it has been shown that there was also an application (No. 629171) filed in 1994, from the documentation submitted it is not to be gathered that the application was granted. In addition, it has not been proved that the company figuring as the applicant is the same as the Complainant.
- From the plentiful material submitted by the Complainant it may be gathered that one of its predecessors was indeed identified on legal documents as Mawana Sugar Works. However, at no point has the Complainant proved that the name MAWANA had acquired a reputation or that it had taken on particular importance in trade. The name appears in a secondary manner on some legal documents but it has not been proved that the company may have been well known to do business under the name MAWANA.
- Furthermore, from that same material it may be seen that the Complainant adopted its current name of Mawana Sugars Limited in June 2004. Similarly, 2004 is given as the date of first use of the pending trademark applications owned by the Complainant. Evidently, the Respondent had registered the disputed domain name some time previously.
In the absence of a granted trademark registration the burden is on the Complainant to show that it had acquired a trademark right through extensive use or some other legally relevant circumstance. The evidence to that effect must be sufficiently clear and convincing.
“There is general agreement among panelists
that a trademark application does not establish a trademark right within the
meaning of paragraph 4(a)(i) (usDocuments, Inc. v. Flexible Designs, Inc.
/ Craig Dinan, WIPO Case No. D2003-0583
<usdocuments.com>; Aspen Grove, Inc. v. Aspen Grove, WIPO
Case No. D2001-0798 <aspengrove.com>).
“As regards the question whether Complainant has rights in an unregistered trademark, the Panel notes that Complainant has not relied on a common law trademark in the United States of America where the Respondent residues or an unregistered trademark right under Art. 2 of the Swedish Trademark Act. Complainant has only submitted evidence that it has registered “24hPoker AB” in the Register of the Swedish Companies Registration Office and has started to use that name as a company name or business identifier. Furthermore, no circumstances have been submitted in the case to suggest that the company name is actually used as trademark or service mark even if it seems to have been used to identify Complainant’s activities.”
The need to prove trademark right through a registration
use in relation to an activity carried out by the Complainant is particularly
clear when we are faced with a name which is in turn a geographical indication.
In WIPO Case No. D2004-0242 it was observed
in this regard that:
“The name Mexico is a geographical indication. While geographical indications
are not protected as such under the Policy, they may nevertheless qualify for
protection under the Policy as trademarks if registered as such or if shown
by evidence of their use to have become distinctive of the goods or services
of a particular trader. In this respect they may be protected as trademarks
in the same way as descriptive (generic) words shown to have become distinctive:
Brisbane City Council v. Warren Bolton Consulting Pty Ltd, WIPO
Case No. D2001-0047; City of Hamina v. Paragon International Projects
Ltd., WIPO Case No. D2001-0001; Port
of Helsinki v. Paragon International Projects Ltd., WIPO
Case No. D2001-0002; Wembley National Stadium v. Tim Gordon, WIPO
Case No. D2000-1218; Skipton Building Society v. Peter Colman, WIPO
Case No. D2000-1217; City of Salinas v. Brian Baughn, NAF Case FA104000097076;
Empresa Municipal Promoción Madrid v. Planners Planners, WIPO
Case No. D2002-1112; HER MAJESTY THE QUEEN, in right of her Government
in New Zealand et. al. v. Virtual Countries, Inc, WIPO
Case No. D2002-0754; Kur- und Verkehrsverein St. Moritz v. StMoritz.com,
WIPO Case No. D2000-0617; Kur- und
Verkehrsverein St. Moritz v. Domain Finance Ltd, WIPO
Case No. D2004-0158.”
Thus, this Panel considers it doubtful whether the Complainant has proven in a clear and sufficient manner the exclusive rights to which it lays claim in the term MAWANA, particularly when it is to be borne in mind that MAWANA is a geographical name. Having said that, the Panel notes that it seems more likely that the Complainant may have acquired unregistered rights through use of the terms MAWANA SUGAR or other similar terms such as MAWANA CRYSTAL SUGAR. Be that as it may, as the Complaint fails under the second and the third element below, it is not necessary to conclude under this element.
In short, the first of the requirements laid down under the Policy is not met.
B. Rights or Legitimate Interests
The Respondent has submitted documentation from which it may reasonably be determined that it does have rights or legitimate interests to support its use of the domain name <mawana.com>.
First, the Respondent conducts business under the name “Mawana Trading Establishment”. A certificate has been submitted as evidence of that circumstance.
Second, the Respondent is the owner of Saudi Arabian trademark No. 389/31 MAWANA (& logo) in Class 17, which was filed in 1995 and granted registration in 1996. That was prior to the date of registration of the disputed domain name.
Lastly, from the documentation submitted by the Respondent it may likewise reasonably be concluded that it is making use of the MAWANA mark in the course of its business.
Thus, the Panel concludes that the Respondent has clearly shown that its use of the disputed domain name is indeed supported by rights and legitimate interests.
C. Registered and Used in Bad Faith
The Respondent has shown that the disputed domain name matches its corporate name and the registered trademark which it owns and uses. In this light it may be presumed that the Respondent registered the domain name so as to be able to use the same name in the Internet environment. All this is in accordance with fair and common business practices.
It is true that the content of the website “www.mawama.com” could,
nonetheless, give rise to certain doubts as to whether there is good faith in
the current use of the disputed domain name. However, given that in this case
the first two of the three elements required under paragraph 4(a) of the Policy
are not present, as we have seen in sections 6A and B above, the Complaint must
necessarily be denied, while the circumstances show that the choice of the domain
name <mawana.com> on the part of the Respondent was, in principle, very
reasonable, this Panel will not enter into an examination of the specific content
of the website concerned. The task of this Panel is to determine whether the
requirements laid down in the Policy for the acceptance of a complaint have
or have not been met. Other issues should be referred to an authority with appropriate
jurisdiction.
7. Decision
For all the foregoing reasons, the Complaint is denied.
Alberto de Elzaburu
Sole Panelist
Dated: January 31, 2006
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