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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

IIT Bombay, Powai, v Indsoft

Case No. D2002-0078

 

1. The Parties

1.1. The Complainant in this administrative proceeding is IIT MUMBAI, Powai, Mumbai, Maharashtra, India.

1.2. The Respondent is Indsoft, D-3 Prashant Apt., Opp IIT Main gate, Powai, Mumbai 400 067, India.

 

2. The Domain Name and Registrar

The Domain Name in dispute is <iitpowai.com> registered with Direct Information Pvt. Ltd., Dba Directi.com

 

3. Procedural History

3.1. Complaint was submitted to the WIPO Arbitration and Mediation Centre (the Center) by e-mail on January 25, 2002, and in hard copy on February 1, 2002.

3.2. An acknowledgement of the receipt of the complaint was sent to the Complainant on January 25, 2002.

3.3. A request for Registrar Verification was sent to the Registrar, Direct Information Pvt. Ltd., Dba Directi.com on January 31, 2002, requesting it to inter alia confirm that a copy of the complaint had been received by them; confirm that the domain name in issue is registered with them; etc. The Registrar’s confirmation letter was received by the Center on January 31, 2002.

3.4. On February 15, 2002, a Complaint Deficiency Notification was sent to the complainant notifying the following formal deficiencies with the complaint (1) the complaint does not identify the registrar with which the domain name is allegedly registered at the time the complaint was filed, (2) according to the information received by the Centre from Network Solutions Inc. the domain name is not registered with them (3) the complaint does not specify the remedies sought.

3.5. On February 19, 2002, the Centre sent an email to the Complainant regarding the concerned Registrar.

3.6. On February 19, 2002, the Complainant sent an email to the Centre with an attachment containing the requested details.

3.7. On February 19, 2002, the Centre replied to the Complainant request, granting them an extension on the due date for curing the specified deficiencies to February 25, 2002.

3.8. On February 20, 2002, the Complainant sent an email to the Centre asking them to confirm receipt of the email dated February 19, 2002, and to confirm if the deficiencies had been removed.

3.9. On March 5, 2002, the Centre was satisfied that the complaint complied with the formal requirements of ICANN’s Uniform Domain Name Dispute Resolution Policy ("Policy"), ICANN’s Rules for Uniform Domain Name Dispute Resolution Policy ("Rules") and WIPO’s Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("Supplemental Rules"). The Panel independently agrees with the assessment of the WIPO Centre in this regard. The Complainant also paid on time and in the required amount the fees for a sole panelist.

3.10. On March 5, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification") was transmitted to the Respondent (with copies to the Complainant, Registrar and ICANN), setting a deadline of March 25, 2002, by which time the Respondent could file a response to the Complaint.

3.11. Having reviewed the communications records in the case file, the Administrative Panel finds that the WIPO Centre has discharged its responsibility under Paragraph 2(a) of the Uniform Rules "to employ reasonably available means calculated to achieve actual notice to Respondent."

3.12. On March 10, 2002, the Centre received an email from the Respondent in which the Respondent stated that he has neither time nor the inclination to follow the dispute.

3.13. On March 28, 2002, not having received any response, the WIPO Centre sent the parties a formal notification of Respondent default.

3.14. In view of the Complainants designation of a single member panel, on April 11, 2002, the WIPO Centre has appointed the undersigned to serve as the sole Panelist. The Panel was required to forward its decision to the WIPO by April 25, 2002.

 

4. Factual Background

4.1. IIT (Indian Institute of Technology) is the name of the Complainant as well as its house mark and service mark. The Complainant has been established under the Institutes of Technology Act, 1961 by the Parliament in India, in six different Cities. The different IIT’s in India (Six in all) are identified by the Institute name "IIT" coupled with the name of the place where it is located such as IIT Kanpur, IIT Delhi etc. The present complainant is located at Powai, Mumbai and is therefore commonly known as IIT Mumbai/ IIT Powai. The Complainant has common law rights over the trademark/ service mark "IIT Powai" under which it renders educational and other selected and socialised academic and research services.

4.2. The Complainant has spent a substantial amount of money on research and development works. They have been involved in developing core competence and self-reliance in areas crucial to national development through noteworthy contributions in high priority areas like Aerospace & Satellite Communications. In all such projects the Complainant has been referred to as "IIT" and "IIT Powai". The Complainant is represented as "IIT Powai" in the newspaper reports too.

4.3. The Complainant has over the years gained immense goodwill and reputation for its superb academic education which is of international standard. Infact Asiaweek.com has rated the Complainant as the number 6 institution in Asia. Owing to the extensive use of the name IIT Powai, the complainant has gained exclusive rights in the trademark/service mark "IIT Powai".

4.4 The Complainant has been involved with several important research projects and in all these projects, the Complainant is referred to as "IIT" and "IIT Powai" for e.g. the project undertaken by the Complainant and the Indian Space Research Organisation (ISRO) is called "IIT-ISRO" project. Various third parties have in their correspondence referred to the complainant as "IIT Powai". There is no establishment, which is identified by the name "IIT Powai" other than the Complainant. The Complainant has also registered the domain names <iitbombay.org>, <iitbombay.com> and <iitb.ac.in>

4.5. Due to long and extensive use the trademarks/service marks "IIT Bombay" and "IIT Powai", the same have acquired distinctiveness and is solely associated with the Complainant.

4.6. The Respondent is Indsoft who has registered the domain name with Direct Information Pvt. Ltd., Dba Directi.com. The administrative contact has been stated as Mr. Vinod Acharya who upon notice of the complaint informed the case manager that the domain name was registered by him two years back, that it was used only for the purpose of his personal email, that the domain name was registered by him and his friends for the purpose of learning and developing their web designing and programming skills and that he does not have the time or the inclination to follow this dispute.

4.7. The Respondent through his website under the impugned domain name provides for different links and one such link is to a computer education service provider by the name "Aptech Computer Education". This institute provides details of different courses offered by the Institute and also includes courses offered by the Complainant. This link in the website under the impugned domain name could confuse the prospective students to believe that the computer institute is an associate or affiliate of the Complainant.

4.8. The Respondent’s website under the impugned domain name also provides links to certain other sellers of draperies, bedding, carpets and allied products under the trademark ‘Home Décor’. Another link is to a restaurant by the name ’Laxmi Hotel’ selling food and providing allied services. Also found are links to an earth moving service provider called ‘Khadka Earth Movers’, a seller of computer hardware software and accessories by the name ‘Mac Computers’, a cricket club/training centre by the name ’Little Star Cricket Club’ and a seller of sanitary ware named ’Glamour Ceramics Centre’.

4.9. The Complainant had not licensed or otherwise permitted the Respondent to use the impugned domain name in any manner whatsoever.

 

5. Parties Contentions

A. The Complainant has raised the following contentions:

Identical or Confusing Similarity

5.1. The impugned domain name <iitpowai.com> is identical or confusingly similar to the Complainant’s trademark "IIT Powai". Due to long and extensive the Complainant has gained common law rights over the trademark "IIT Powai"

Rights/ Legitimate interest

5.2. The Name IIT refers to and is distinctive of the Complainant and of none other. Neither does the Respondent use the impugned domain name to offer bona fide goods or services nor is he known by the said name

Bad Faith

5.3. The domain name <iitpowai.com> incorporates a well-known mark, belonging to the Complainant. Its very use by someone with no connection with the product suggests opportunistic bad faith. The Complainant relies upon Margadarsi Marketing Pvt. Ltd. v Bita Net India (Case No. D2000-1209) and SAP Systems/SAP India System v Davinder Pal Singh Bhatia (Case No. D2001-0504)

5.4. The acts and conduct of the Respondent are calculated to deceive or mislead the trade and public into believing that the impugned domain name is that of the Complainant or is otherwise associate or connected with the Complainant.

5.5. The acts of the Respondent have deprived the Complainant of the right and the opportunity of having a domain name comprising its own trademark.

5.6. The Respondent’s action in activating a website under the impugned domain name and providing links to a computer education centre ‘Aptech Computer Education’ with information about courses offered by the centre as well as by the Complainant is prima facie evidence of registration and use in bad faith.

B. No Response has been filed by the Respondent in these proceedings.

 

6. Discussions and Findings

Paragraph 4(a) of the Policy requires the Complainant to prove the following:

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

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

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

Each of these requirements will be dealt with separately.

A. Complainant’s trademark rights; identical/confusing similarity

6.1. The Complainant has furnished extensive evidence highlighting the use of the name IIT Powai and the reputation associated with the same, including interalia, newspaper reports, communications from third parties referring to the Complainant by this name, evidence that the Complainant has been rated as the number six institution in Asia etc. The Complainant has also registered the domain names <iitbombay.com> and <iitb.ac.in>. The panel therefore finds that the Complainant has clear trademark/service mark rights in the name IIT Powai. The impugned domain name is clearly identical to the Complainants trademark.

B. Rights/Legitimate Interests

6.2. Paragraph 4(c) of the Policy enumerates circumstances which, if found by the panel to be proved will demonstrate the Respondent’s rights or legitimate interests to the domain name.

6.3. The Respondent has not filed a response and the contentions of the complaint have not been met. In the absence of a response, the panel is inclined to believe that the Respondent has no rights or legitimate interest in the domain name. In fact, the evidence on record indicates an overwhelming reputation in the name "IIT Powai". In the light of this reputation and in the light of the fact that the Respondent hails from Mumbai, where the Complainant is located, the panel finds that the Respondent was or should have been aware of the Complainant’s prior trademark rights in the name IIT Powai. Despite this knowledge, the Respondent elected to misappropriate the complainants trademark IIT Powai as a domain name. Apart from demonstrating "bad faith", these facts lead the panel to doubt if a legitimate interest in the name could ever accrue in favour of such a Respondent. Several earlier panel decisions which have been based on the fact that the Respondent knew or should have been known of the complainant’s prior rights. [Illustratively, see Becton,Dickinson and Company v. Garry Harper – Case D2001-1058; SportSoft Golf, Inc. v. Hale Irwin’s Golfers’ Passport, Case FA94956; Marriot International, Inc. v. John Marriot, Case FA94737]. Therefore, the panel agrees with the Complainant that there cannot be a legitimate interest in the domain name.

C. Bad Faith

6.4. Paragraph 4(b) of the Policy enumerates certain illustrative circumstances which, 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.

6.5. As stated in several earlier panel decisions, this paragraph is merely illustrative and the panel may rely on other factors in arriving at a determination that the domain name has been registered and is being used in bad faith. The panel finds that the following circumstances amply reveal that the domain name has been registered and is being used in bad faith:

i) The website under the impugned domain name also provides for links to various commercial service providers such as to a seller of draperies, bedding, carpets and allied products under the trademark ‘Home Décor’, to a restaurant by the name ’Laxmi Hotel’ selling food and providing allied services to an earth moving service provider called ‘Khadka Earth Movers’, a seller of computer hardware software and accessories by the name ‘Mac Computers’, a cricket club/training centre by the name ’Little Star Cricket Club’ and a seller of sanitary ware named ’Glamour Ceramics Centre’ which is in bad faith and dilutes the mark of the Complainant. The panel therefore finds that the impugned domain name has been registered with a view to intentionally attracting traffic for commercial gain by creating a deceptive association with the Complainants famous mark, as provided for in para 4 (b) (iv) of the policy.

ii) The Respondent in an email to the Centre stated that he registered the domain name for personal use i.e. for his personal mail, when in fact he had provided links to several websites including a computer education service provider ‘Aptech Education Centre’, which had information on courses offered by them as well as the courses offered by the Complainant. The panel finds that such misrepresentation is itself evidence of bad faith.

iii) As has already been stressed upon under the paragraph dealing with "bad faith", the Respondent hails from Bombay, the city where the Complainant is located. The Respondent therefore knew or ought to have known of the Complainants prior rights. His action of registering the domain name "IIT Powai", despite this knowledge reeks of mala fide intentions.

iv) The Respondent has not contested any of the Complainant’s allegations above mentioned. For all the reasons mentioned above, the panel finds that the impugned domain name has been registered and is being used in bad faith by the Respondent.

 

7. Decision

For all of the foregoing reasons, the Panel decides that the domain name registered by the Respondent is identical and confusingly similar to the trademark in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the domain name at issue, and that the Respondent’s domain name has been registered and is being used in bad faith. Accordingly, pursuant to Paragraph 4(i) of the Policy, the Panel requires that the impugned domain name be transferred to the Complainant.

The Complainant has prayed that the Respondent be directed to pay the cost of the present proceedings. The panel wishes the Complainant to note that apart from a transfer/cancellation of a domain name, the UDRP does not provide for any other remedy.

 


 

Pravin Anand
Sole Panelist

Dated: April 23, 2002

 

Источник информации: https://internet-law.ru/intlaw/udrp/2002/d2002-0078.html

 

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