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WIPO Domain Name Decision: D2000-1822
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Дела по доменам общего пользования
Дела по национальным доменам
and Mediation Center
Drug Company v. Vikas Jandial
1. The Parties
The Complainant in this
proceeding is the Himalaya Drug Company, a partnership firm, having its office
at Makali Banglore-562123, India.
The Respondent in this
proceeding is Mr. Vikas Jandial, D7-7180, Vasant Kunj, New Delhi-110070, India.
2. The Domain Name and
The domain name at issue
is <liv52.com>, which is registered with Network Solutions, Inc.
3. Procedural History
The WIPO Arbitration and
Mediation Center (the "Center") received the complaint of the Complainant,
the Himalaya Drug Company, on December 27, 2000 in hard copy.
On January 9, 2001 the
Center sent an acknowledgement of the receipt of the Complaint (hard copy) to
the Complainant and requested him to send an electronic version of the complaint.
Accordingly on January 10, 2001 the Complainant sent an electronic version of
the complaint alongwith correspondence between the Complainant and the Respondent.
On January 10, 2001 the Center sent to the Registrar Network Solutions, Inc.,
a request for verification of registration data. On
January 11, 2001 the Registrar
confirmed, interalia, that it is the Registrar of the domain name in dispute,
and that the disputed domain name is registered in the name of the Respondent.
Having verified that the
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 Center on January 12, 2001, sent to the Respondent in accordance
with paragraph 2(a) of the Rules a notification of the complaint and commencement
of administrative proceeding together with copies of the complaint and correspondence.
It has been stated in the notification dated January 12, 2001 that payment in
the required amount to the Center has been made by the Complainant.
The Respondent was given
an opportunity to submit his response. The last date for sending response by
the Respondent was January 31, 2001. On January 23, 2001 the Center received
an email in which the Respondent requested for extension of time for filing
response. On January 24, 2001 the Center sent an email to Complainant’s representative
inviting him to address his views on the issue of extension of time. On January
25, 2001 the Center received an email from the Complainant regarding no objection
for granting an extension of time requested by the Respondent. On
January 25, 2001 the Center
granted the extension of 15 days as requested by the Respondent and fixed the
new deadline for filing a response as February 15, 2001.
On February 15, 2001 the
Respondent submitted a response stating that he had declined ownership of the
domain name and that the Whois search shows erroneously him as the registrant.
On February 21, 2001 the
Center sent an email suggesting to the Respondent to complete transfer forms,
and suggested that the Complainant should request for suspension of Uniform
Domain Name Dispute Resolution Policy proceedings initiated by Complainant in
order to permit the parties sufficient time to complete the transfer forms and
to provide Network Solutions, Inc., the registrar in this case, with an opportunity
to process the transfer documents. In his e-mail dated February 28, 2001 the
Complainant gave his consent subject to the consent of the Respondent to sign
the transfer forms and at his cost. But all efforts failed to bring a final
settlement between the parties. On March 29, 2001 the Center decided to proceed
to appoint the Administrative Panel. More efforts were made for reaching a final
settlement but to no use.
On April 30, 2001 the Center
transmitted to the Complainant and the Respondent via email a notification of
Appointment of Administrative Panel and Projected Decision Date. The notification
advised that Mr. Bansal Ashwanie Kumar had been appointed as the single Panelist,
and that the decision would be due on May 13, 2001.A copy of the notification
was also sent to the Panelist.
The panel after consideration
of the records of the case finds:
- that the complaint
was filed in accordance with the Rules and Supplemental Rules, the payment for
filing the complaint was made, and the complaint complies with the formal requirements,
- that the complaint
was properly notified in accordance with the Rules, paragraph 2 (a),
- that the response
to complaint was filed within the time extended by the Center,
- that the Administrative
Panel was properly constituted.
4. Factual Background
The Complainant has been
carrying on business of manufacturing and marketing of Ayurvedic medicines and
health products. The trademark LIV.52 was registered on January 24, 1959 in
favour of the Complainant in Class 5 as trademark No. 180564 as of the date
July 10, 1957 as per certificate issued by the Registrar of Trade Marks, Government
of India. The trademark registration was renewed as per certificate issued by
the Registrar of Trade Marks for a period of seven years from July 10, 1999.
The trademark is registered
in a few other countries namely Republic of Greece, Mexico, Romania, Switzerland,
Costa Rica, Great Britain and Northern Ireland, and Germany. Photocopies of
the certificates of registration of the trademark LIV.52 in India and other
countries have been annexed as Annexure ‘H collectively’ with the complaint.
The Respondent is the current
registrant of the domain name in issue as per Whois search. E-mail dated January
11, 2001 from Network Solutions, Inc. confirms to Center that the Respondent
is the Registrant of the domain name in issue. The date of registration of the
domain name is February 24, 2000 and registration is valid for a period of two
5. Parties’ Contentions
The Complainant’s contentions
in brief are as under-
(i) that the respondent
registered the domain name<liv52.com> in its favour with the Network Solutions,
Inc. on February 24, 2000. The domain name <liv52.com> is identical and
confusing with the prior registered trademark of the Complainant which is distinctive
and has acquired reputation and goodwill in several countries.
(ii) that the Respondent,
seems to be in the habit of registering domain names consisting of words taken
from reputed and popular Trade Marks. The Respondent has, apart from registering
the domain name <liv52.com> so registered two other domain names being
<laopala.com> and <boroline.com>. The trademark BOROLINE is again
a very old trademark which is a household name being used for the last several
decades. This trademark is registered and owned by G.D. Pharmaceuticals of Calcutta.
The trademark Laopala is also reputed all over India and is used by R.G. Glass
Limited, a Calcutta based company, dealing in international quality tablewares.
The respondent has registered domain names of popular and reputed Trade Marks
to clandestinely negotiate for transfer of the same for consideration.
(iii) that the impugned
‘domain name <liv52.com> is exactly similar and identical to the Complainant’s
registered trademark LIV.52.
(iv) that the Respondent
has no right to and legitimate interest in the domain name <liv52.com>.
(v) that the Complainant
has not licensed or otherwise permitted the respondent to use any of its trademarks,
nor has he licensed or otherwise permitted the Respondent to apply for or use
any ‘domain name’ incorporating the mark.
(vi) that the Respondent
did not make any use of the impugned ‘domain name’.
(vii) that the registration
of the impugned domain name by the Respondent was bad faith registration and
The Respondent’s submissions
in brief are as under-
(i) That he is not a
registrant nor owner the domain name <liv52.com> because he had not paid
(ii) That he had long
ago decided that he would not be retaining this account or developing a website
with this domain name, because of other official preoccupations and other priorities.
That is the reason why he did not pay for it at all. Non deletion of the domain
name is a technical error of the automated process of Network Solutions, Inc.
(iii) That the account,
<liv52.com> is technically dead because as per the Network Solutions,
Inc. rules one is required to make payment within one month of the date of the
booking on receipt of the invoice, otherwise the account lapses and things come
back in the general pool for anyone to register.
(iv) That the internet
has been around for the last seven years, and if for seven years, nobody lays
claim to this domain name, it can give general impression that no one is interested
in a particular domain name, not even the organisation which owns a product
with a similar name.
(v) That he had not
demonstrated any such deed or act with the said domain name which conveys an
impression that he had exploited his ownership in anyway. The registration was
not done in bad faith.
6. Discussion and Findings
Paragraph 15(a) of the
Rules instructs this Panelist as to the principles the Panelist is to use in
rendering its decision: "A panelist shall decide a complaint on the basis
of the statements and documents submitted in accordance with the Policy, these
Rules and any rules and principles of law that it deems applicable." Applied
to this case, Paragraph 4(a) of the Policy directs that the Complainant must
prove each of the following:
(i) that the domain
name registered by the Respondent is identical or confusingly similar to a trademark
or service mark in which the Complainant has rights; and
(ii) that the Respondent
has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain
name has been registered and used in bad faith.
A. Identical or Confusingly
The domain name <liv52.com>
registered by the Respondent is confusingly similar to Complainant’s registered
trademark LIV.52, and is otherwise identical to the Complainant’s mark LIV.52
except for the absence of a dot (.) between ‘LIV’ and ‘52’, which does not change
the likelihood for confusion. The Complainant has submitted certificates of
registration and renewal of the trademark in India as well as a few other countries.
The Registrar, i. e. the
Network Solutions, Inc., has already confirmed vide email dated January 11,
2001 that the Respondent is the current registrant of the domain name at issue.
The Administrative Panel
finds that the domain name <liv52.com> is confusingly similar to the trademark
B. Rights or legitimate
The trademark LIV.52 has
been registered in India and a few other countries like Republic of Greece,
Mexico, Romania, Switzerland, Costa Rica, Great Britain and Northern Ireland,
and Germany. True copies of the certificates of Registration of the trademark
LIV.52 are annexed as Annexure ‘H collectively’ to the complaint.
The Respondent has failed
to present any defense or evidence that would tend to establish that Respondent
has any legitimate interest in respect of the domain name in issue.
The Respondent in his response
dated February 15, 2001 has clearly stated that he is not the owner nor registrant
of the domain name <liv52.com>, because he did not pay for it and that
non deletion of the domain name is a technical error of the automated process
of Network Solutions, Inc.
Accepting the assertions
made in the complaint filed by the Complainant and the response filed by the
Respondent to be correct, the Administrative Panel finds that the Respondent
has no rights or legitimate interests in the domain name in issue.
C. Bad faith
The requirement in Paragraph
4(a)(iii) of the Policy is that the domain name "has been registered and
is being used in bad faith" would be satisfied if the Complainant proves
that the registration was undertaken in bad faith and the circumstances of the
case are such that the Respondent is continuing to act in bad faith.
Paragraph 4(b) of the Policy
provides that for the purposes of Paragraph 4(a)(iii), the following circumstances,
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:
(i) circumstances indicating
that the Respondent has registered or he has acquired the domain name primarily
for the purpose of selling, renting, or otherwise transferring the domain name
registration to the Complainant who is the owner of the trademark or service
mark or to a competitor of that Complainant, for valuable consideration in excess
of his documented out-of-pocket costs directly related to the domain name; or
(ii) the Respondent
has registered the domain name in order to prevent the owner of the trademark
or service mark from reflecting the mark in a corresponding domain name, provided
that the Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent
has registered the domain name primarily for the purpose of disrupting the business
of a competitor; or
(iv) by using the domain
name, the Respondent has intentionally attempted to attract, for commercial
gain, internet users to his website or other on-line location, by creating a
likelihood of confusion with the Complainant’s mark as to the source, sponsorship,
affiliation, or endorsement of his website or location or of a product or service
on his website or location.
Network Solutions, Inc.
Who is search enclosed as Annexure A with the complaint shows that the record
in respect of the domain name was created on February 24, 2000.
The Center received a series
of emails from the respondent and complainant’s representative, indicating that
parties intended to settle the matter and had reached near a point of final
settlement. But finally the Complainant because of lack of support from the
Respondent again approached the Center to proceed with the case.
The Respondent in his response
dated February 15, 2001 has stated:
I would like to confirm
to your esteemed organization that I have never been the "Owner",
or the "Registrant" of the domain name, LIV52.com. In order to be
the registrant/owner of the domain name, I should have paid the registration
fees for it, only then, the registration process can be deemed to be complete,
and consequently I can be termed as the Registrant/owner. As per my records,
there has never been a payment transaction between me and Network Solutions,
Inc. for the said domain name. Since I have never bought it, I am not the owner
of the domain name.
Even in his email sent
to Center on April 2, 2001, the Respondent had again stated that he is not the
owner of the domain name nor does he desire its ownership. On one side the Respondent
says that he has no interest in the domain in issue but on the other side he
fails to take effective steps to transfer the domain name in favour of the Complainant
inspite of repeated request. The Respondent was given sufficient time to transfer
the domain name but he failed to do the needful on merely technical grounds.
The Respondent has admitted
in his email dated June 20, 2000 Annexure ‘L’ to the complaint that he and his
entire family has been the regular user of the product for the last 40 years
and have benefited immensely from it. It implies that Respondent was well aware
of the product LIV.52 manufactured by the Complainant. The Respondent has stated
that he had booked the domain name because he liked the product. The Respondent
has admitted in his email of January 03,2001 that he had temporarily parked
the domain name LIV52.com on February 24, 2000, but eventually decided against
acquiring it for his ownership and did not pay for it or purchase it.
Payment or non-payment
for ownership of domain name is a matter between the Respondent and the Registrar,
Network Solutions, Inc. The Complainant has nothing to do with the same. The
Complainant has concern with the fact that the Respondent is the Registrant
of the domain name <liv52.com> as per Whois search which is his registered
trademark. The fact of registration of domain name in favour of the Respondent
has also been verified by the Registrar Network Solutions, Inc.
Network Solutions, Inc.
Who is search made on May 31, 2000 Annexure ‘A’ to the complaint shows that
the record in respect of the domain name was created on February 24, 2000. There
is no evidence that a web site or other online presence is in the process of
being established which will use the domain name. There is no positive action
being undertaken by the Respondent in relation to the domain name. But, inactivity
by the Respondent may also amount to the domain name being used in bad faith.
In the case No. D2000-0003 Telstra Corporation Limited v. Nuclear Marshmallows,
the Administrative Panel laid down that a passive holding of a domain name by
a Respondent may amount to the domain name being used in bad faith.
The Respondent has, apart
from registering the domain name <liv52.com> also registered two other
domain names being <laopala.com> and <boroline.com> as per Whois
search report produced as ‘Annexure K’ collectively with the complaint. It is
stated in the complaint that the trademark BOROLINE is an old trademark which
is a household name being used for the last several decades. This trademark
is registered and owned by G.D. Pharmaceuticals of Calcutta. The trademark Laopala
is also reputed all over India and is used by R.G. Glass Limited, a Calcutta
based company, dealing in international quality table wares. These facts have
not been opposed by the Respondent in his response.
The conduct of the Respondent
clearly implies that he has acted in bad faith and he has registered the domain
name which is confusingly similar to the trade mark of the Complainant. The
Complainant has substantially used the mark LIV.52 since long and he has got
the trademark registered in his favour since long. The Respondent is not authorised
to use the mark LIV.52 owned by the Complainant. The Respondent is not commonly
known by the domain name registered by him. The domain name at issue is not
a registered business name of the Respondent. The Respondent has provided no
evidence whatsoever of any actual or contemplated good faith use by him of the
domain name. The Respondent has admitted the long use of the product known as
LIV.52 manufactured by the Complainant for last 40 years by him as well as his
family. On one side he has said that he has no interest in the domain name,
but on the other hand he has failed to take effective steps to transfer the
domain name. The Respondent is engaged in a pattern of conduct of registering
popular and well known marks as domain names.
The panel finds that in
the circumstances of this particular complaint, the passive holding of the domain
name by the Respondent amounts to the Respondent acting in bad faith under paragraph
4 (a) (iii) of the policy. The Respondent has registered and used the domain
name in bad faith. The panel further finds that the Complainant has proved each
of the three elements of paragraph 4 (a) of the policy.
This Panel concludes that
the Respondent owns a domain name <liv52.com> which is identical or confusingly
similar to the Complainant’s trademark (LIV.52), has no rights or legitimate
interests in respect of the domain name, and he registered and used the domain
name in bad faith. These three facts entitle the Complainant to an order which
entitles transfer of the domain name from the Respondent. The Panel allows the
complaint and directs that the Respondent’s domain name <liv52.com> be
transferred in favour of the Complainant.