The Complainant is Mawana Sugars Limited New Delhi, India, represented by Pavan Duggal & Associates, India.
The Respondent is Josh Joffe, Riverdale, United States of America.
2. The Domain Name and Registrar
The disputed domain name <mawana.net> is registered with Register.com.
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 Register.com a request for registrar verification in connection with the domain name at issue. On November 30, 2005, Register.com 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 Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 21, 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 Complainant is a company founded in 1949 as Mawana Sugar Works and, following a series of structural and name changes, has been doing business under the name Mawana Sugars Limited since July 16, 2004.
The Complainant is a sugar company and is the owner of 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.
On accessing the website identified by the domain name at issue, one finds a table containing various categories of activities referring to different market sectors. Clicking on one of these categories opens up a new screen containing information on specific ways in which to access the product or service of interest.
The following facts should also be taken into account:
- The domain name in dispute was registered on May 14, 2001.
- “MAWANA” is a geographical name that
identifies a city located in India.
5. Parties’ Contentions
A. Complainant
The Complainant contends:
- That Mawana Sugars Limited and its predecessors have been active in the sugar market for over 55 years, and have been using the name MAWANA throughout that time.
- That it has filed applications for Indian trademarks Nos. 1294607 MAWANA SUGARS LIMITED and 1294608 MAWANA, filed on July 6, 2004, and Indian trademark No. 1330184 MAWANA CONSUMER PACK, filed on January 5, 2005.
The remaining signs cited either refer to marks that are completely irrelevant to this Complaint or are in the names of other companies.
- That it discovered that the domain name at issue had been registered by the Respondent during an internal audit of its intellectual property assets begun in the first week of November 2005.
- That there is no relationship of any kind between Mawana Sugars Limited or its predecessors and the Respondent. Consequently, no authorisations or licenses of use have ever been granted to the Respondent by the Complainant.
- That the Respondent is using a “pay per click” program in order to capture web traffic of Internet users looking for information on the Complainant under the term MAWANA.
- That the Respondent does not own any business or known establishment by the name of MAWANA or MAWANA SUGARS.
- That the contested domain name is identical to the Complainant’s trademarks MAWANA, and very similar to its trademark MAWANA SUGAR.
- That there are no elements on the website corresponding to the domain name at issue that in any way justify the use of MAWANA in the domain name.
- That the contested domain name was registered with a view to preventing the legitimate owner of the trademark from reflecting the mark in a domain name and that the Respondent’s objective in using said domain name is to attract internet users for financial gain and thus take advantage of the resulting confusion with the Complainant’s mark.
- That the fact that the domain name at issue has been used for the purpose of hosting sponsored results for financial gain is evidence of the Respondent’s bad faith.
- That the Respondent has registered and is using the contested domain name in bad faith.
Consequently, the Complainant petitions that the domain name in dispute be transferred to Mawana Sugars Limited.
B. Respondent
The Respondent did not reply to the Complainant’s
contentions.
6. Discussion and Findings
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 of an earlier date than the disputed domain name, 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.
As was stated in WIPO Case No. D2005-1097:
“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 evidence the trademark right through a
registration or some other sufficiently relevant means of proof 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.”
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 third element below, it is not necessary to conclude under this element.
B. Rights or Legitimate Interests and Bad Faith
The absence of any response to the Complaint from the Respondent means that the panel does not have the Respondent’s version of what its intentions were in registering the domain name in dispute.
However, in assessing whether or not the Respondent has registered the domain name in bad faith, the Panel has borne in mind the following facts:
- Firstly, MAWANA is a geographical indication that identifies a city located in India.
- The proof of use of the name MAWANA contained in the Complainant’s brief of contentions has been found to be very deficient. Here it should also be remembered that the Respondent is a physical person residing in New York, U.S., and that the aforementioned brief does contain any proof whatsoever that the mark has been sufficiently used in the U.S. to acquire a reputation that would serve to completely dispel any doubts about whether the Respondent was aware of the mark.
In addition, the Panel has thoroughly reviewed the website corresponding to the contested domain name and come to the conclusion that there is no bad faith whatsoever in guiding internet users, albeit indirectly, to information regarding third parties that provide the goods or services of interest. In this regard it should be emphasised that not one of the categories searched refers to sugar or even to the corresponding food sector.
When taking into account the above and the fact that the contested domain name was registered in 2001, the Panel finds, based on the case file, that it is not likely that the Respondent had prior knowledge of the Complainant and its products. On the contrary, if any knowledge is to be assumed, it is more likely that the Respondent registered the domain name with the geographical name Mawana in mind.
Consequently, the Panel concludes that bad faith element has not been met.
7. Decision
For all the foregoing reasons the Panel finds that no evidence of bad faith in registration or use could be found. The Panel therefore denies the Complaint and orders that the domain name in dispute remain registered in the name of the Respondent.
Alberto de Elzaburu
Sole Panelist
Dated: January 31, 2006
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