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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
M/s. Asian Paints (India) Limited v. Domain Admin
Case No. D2002-0649
1. The Parties
The Complainant is M/s. Asian Paints (India) Limited of 6A, Shanti Nagar, Santacruz (E), Mumbai – 400 055, India, represented by Ms. Jennifer Fernandes of Krishna & Saurastri of Mumbai.
The Respondent is Domain Admin, GPO Box 8558, Hong Kong, SAR of China.
2. The Domain Name and Registrar
This dispute concerns the domain name <asianpaint.com>.
The Registrar is Computer Data Networks dba Shop4Domain of Safat, Kuwait.
3. Procedural History
This is an administrative proceeding pursuant to the Uniform Domain Name Dispute Resolution Policy (the "Policy") adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999, the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999, (the "Rules") and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules") of the WIPO Arbitration and Mediation Center (the "Center").
The Complaint was received by the Center by email on July 12, 2002, and in hardcopy on July 22, 2002. The Complaint was acknowledged on July 12, 2002. On July 16, 2002, registration details were sought from the Registrar. On July 27, 2002, the Registrar confirmed that the disputed domain name is registered in the name of the Respondent; that the Policy applies to the disputed domain name and that the language of the Registration Agreement is English. The Registrar also provided contact details for the registrant.
On July 29, 2002 the Center formally dispatched a copy of the Complaint to the Respondent by post/courier (with enclosures) and by email (without attachments) together with a letter to notify the Respondent of the commencement of this administrative proceeding. The Center sent copies to the Complainant, the Registrar and ICANN.
In conformity with Rule 5(a), the last day specified by the Center for a Response was August 18, 2002. No Response was received. On August 19, 2002, the Center issued a Notification of Respondent Default.
On August 21, 2002, the Center notified the parties of the appointment of Alan L. Limbury to serve as panelist, Mr. Limbury having submitted a Statement of Acceptance and Declaration of Impartiality and Independence. On that day, the Center transmitted the case file to the Panel and notified the parties of the projected decision date of September 4, 2002.
The Panel is satisfied that the Complaint was filed in accordance with the requirements of the Rules and Supplemental Rules and complied with formal requirements; the Center discharged its responsibility under paragraph 2(a) of the Rules to employ reasonably available means calculated to achieve actual notice to the Respondent of the Complaint; no Response was filed and the administrative panel was properly constituted. The language of the proceeding is English.
4. Factual Background
The Complainant, one of India’s best known companies, carries on a substantial business, originally established in 1942, of manufacturing and marketing paints, varnishes and associated products. Its operations extend beyond India, particularly in the Asia-Pacific region, where it has several joint ventures.
For many years the Complainant has been known by and has used the abbreviated trade name ASIAN PAINTS. Since February 1, 1990, it has been the proprietor of Indian registered trade marks Nos. 523719 and 523723 in Class 2 for, inter alia, paints, lacquers and varnishes. Those marks appear to be labels, the first "3 mangoes synthetic enamel" and the second "Asian metal primer redoxide". Both marks include instructions for use and the words ASIAN PAINTS together with a cartoon-type character known as Gattu, a mischievous-looking boy with a shock of unruly hair, dressed in shirtsleeves and half pant with braces, holding a bristling, dripping paintbrush in one hand and standing next to a dripping can of paint. The Gattu "mascot" has become one of the most widely recognized advertising symbols in Corporate India since its adoption by the Complainant over 40 years ago.
In February 2000, the Complainant applied in India to register the words ASIAN PAINTS as a trademark, claiming use since 1952. That application remains pending, as do several other applications, in India and other countries, to register marks including those words in combination with other words or with depictions of Gattu.
Since 1990 the Complainant has held the registered copyright in India in the artistic work comprising a logo depicting Gattu and the corporate name Asian Paints (India) Limited ("the Asian Paints logo"). On January 21, 1997, the Complainant registered the domain name <asianpaints.com> and on March 4, 2002, it registered the domain names <asianpaints.biz>, <asianpaint.biz>, <asianpaints.net> and <asianpaint.net>.
In August 2001, the Complainant discovered that the disputed domain name <asianpaint.com> had been registered in April 2001 anonymously by someone with an address in Texas, United States of America. By letter to that address dated September 6, 2001, the Complainant requested transfer to it of that domain name. There was no reply. Subsequently, the Complainant found the disputed domain name to have been registered on March 24, 2002, in the name of the Respondent "Domain Admin", with a username of "jeffbhav". No response was received to a similar request for transfer, dated June 26, 2002.
5. Parties’ Contentions
Identical or Confusingly Similar Domain Name
As a result of the longstanding extensive use of the trading name and trade mark ASIAN PAINTS by the Complainant, the mark has become internationally known for the Complainant’s activities. Therefore a minor misspelling or typographical variation is not enough to distinguish the disputed domain name from the Complainant’s trade mark.
The disputed domain name is identical or confusingly similar to the Complainant’s mark.
In view of the fame of the Complainant’s mark, the Respondent’s choice of the disputed domain name could not result from mere coincidence. The Respondent is not associated with the Complainant. It has no activities in the field of paint nor any trade mark rights in the words ASIAN PAINT. The Complainant did not authorize the Respondent to register the disputed domain name nor to use its trade mark. The contents of the Respondent’s website, a commercial site with a listing of Internet links to commercial providers of goods and services, have nothing to do with paint. The Respondent can have no plausible explanation for registering the disputed domain name and has no rights or legitimate interests in it.
Being located in Hong Kong, the Respondent must have been aware of the Complainant’s enormous reputation and goodwill acquired over the years, particularly in Asia. Accordingly, the Respondent must have registered the disputed domain name in order to sell it to the Complainant or a competitor; to prevent the Complainant from reflecting its mark in a corresponding domain name; to disrupt the Complainant’s business or misleadingly to divert Internauts to its website for commercial gain. The omission of the letter "s" is a deliberate attempt to exploit users’ typographical errors when seeking the Complainant’s website <www.asianpaints.com>. The absence of any legitimate interest in the disputed domain name and the lack of any association with paint on the Respondent’s website demonstrate registration and use in bad faith.
No Response was filed.
6. Discussion and Findings
The Panel is required by Rule 15(a) to decide a Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
To qualify for cancellation or transfer, a Complainant must prove each element of paragraph 4(a) of the Policy, namely:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights: and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Failure to file a Response
The Panel draws two inferences where the Respondent has failed to submit a response: (a) the Respondent does not deny the facts which the Complainant asserts and (b) the Respondent does not deny the conclusions which the Complainant asserts can be drawn from those facts: Reuters Limited v. Global Net 2000, Inc. (WIPO Case No. D2000-0441). See also Hewlett-Packard Company v. Full System (NAF Case No. FA 0094637); David G. Cook v. This Domain is For Sale (NAF Case No. FA0094957) and Gorstew Jamaica and Unique Vacations, Inc. v. Travel Concierge (NAF Case No. FA0094925). Nevertheless, the Panel must be satisfied that the material put forward by the Complainant supports its assertions.
Rights in a trade mark
The Complainant does not have a registered trade mark comprising the words ASIAN PAINTS alone. Its registration applications do not give rise to trade mark rights: see Aspen Grove, Inc. v. Aspen Grove, WIPO Case No. D2001-0798 and Spencer Douglass MGA v. Absolute Bonding Corporation, WIPO Case No. D2001-0904. Much of the material presented by the Complainant reveals use of those words as an abbreviated corporate name or trade name rather than as a trade mark. The Complainant does not distinguish between the two. However, there are examples of the use as a trade mark of the words ASIAN PAINTS on paint can labels and (together with the mascot Gattu) in advertisements. In light of the undisputed history of extensive use, the Panel concludes that the Complainant has demonstrated that it has common law rights in the trade mark ASIAN PAINTS.
Identity or Confusing Similarity
It has been decided in many cases under the Policy that "essential" or "virtual" identity is sufficient for the purposes of the Policy. See The Stanley Works and Stanley Logistics, Inc v. Cam Creek. Co., Inc, WIPO Case No. D2000-0113 and Nokia Corporation v. Nokiagirls.com, WIPO Case No. D2000-0102.
The disputed domain name is clearly virtually identical to the Complainant’s trade mark ASIAN PAINTS.
The Complainant has established this element.
The Complainant has asserted and the Respondent has not denied that the Complainant’s mark is well known, particularly in Asia, that the Respondent must have been aware of the Complainant’s mark when registering the disputed domain name, that the Complainant has not authorized the Respondent to register the disputed domain name and that the Respondent can have no plausible (i.e. legitimate) explanation for having done so. These circumstances are sufficient to constitute a prima facie showing by Complainant of absence of rights or legitimate interest in the disputed domain name on the part of Respondent. The evidentiary burden therefore shifts to Respondent to show by concrete evidence that it does have rights or legitimate interests in that name: Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624 and the cases there cited.
It follows that, in the absence of a Response, the Complainant has established that the Respondent has no right to or interest in the disputed domain name.
Bad Faith Registration and Use
There is no evidence that the Respondent is associated with the person with an address in Texas who registered the disputed domain name in April 2001. Nevertheless the identity of the person responsible for registering the disputed domain name in the name of "Domain Admin" is equally as obscure as that of the person in Texas.
In the absence of a Response, the Panel accepts that whoever is responsible for the Respondent was aware of the Complainant’s mark when registering the disputed domain name and that the domain name was chosen in order to attract Internauts to the Respondent’s website www.asianpaint.com (by misleading them into thinking they were travelling to the Complainant’s website www.asianpaints.com) for commercial gain (having regard to the commercial links displayed at the Respondent’s site).
Accordingly, pursuant to paragraph 4(b)(iv) of the Policy, the Complainant has established that the disputed domain name was registered and is being used in bad faith.
Pursuant to Paragraphs 4(i) of the Policy and 15 of the Rules, Panel directs that the domain name <asianpaint.com> be transferred to the Complainant.
Mr. Alan L. Limbury
Dated: August 31, 2002