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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Nishan Systems, Inc. v. Nishan Ltd.

Case No. D2003-0204

 

1. The Parties

The Complainant is Nishan Systems, Inc. of San Jose, California, United States of America, represented by Pillsbury Winthrop LLP of United States of America.

The Respondent is Nishan Ltd. of Harrow, United Kingdom of Great Britain and Northern Ireland.

 

2. The Domain Name and Registrar

The disputed domain name <nishan.com> is registered with BulkRegister.com.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 14, 2003. On March 17, 2003, the Center transmitted by email to BulkRegister.com a request for registrar verification in connection with the domain name at issue. On March 17, 2003, BulkRegister.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 March 19, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was April 8, 2003. The Response was filed with the Center on April 1, 2003.

The Center appointed Andrew Brown as the sole panelist in this matter on April 17, 2003. 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 located in the United States of America. It is a technology company which is involved in IP storage. It is the registered proprietor in the United States of the following trademarks:

hNISHAN SYSTEMS (US Reg No. 2526144)

hNISHAN SYSTEMS and design (US Reg No. 2586398)

Both trademarks are registered in international class 9 in respect of "computer hardware and computer software for use in computer network management and computer data transfer management". The first use of these trademarks is given as January 1, 2001.

The Complainant also owns the domain name <nishansystems.com> which was registered on November 13, 1998.

The Respondent is located in the United Kingdom and sells computer-related goods. It registered the disputed domain name on August 22, 1997.

In 2000, negotiations commenced between the Complainant and the Respondent regarding a possible sale of the disputed domain name to the Complainant. The negotiations continued for approximately 18 months, but no agreement was ever reached.

On April 14, 2000, the Complainant also registered the domain name <nishan.net>.

 

5. Parties’ Contentions

A. Complainant

The Complainant alleges that the disputed domain name is confusingly similar to its US registered trademarks, and that the omission of the word "SYSTEMS" from the disputed domain name is insufficient to differentiate it from those registered trademarks.

It states that the word "Nishan" or "Nishaan" comes from the ancient Urdu language and means "mark, sign, signal, emblem, target, scar or trace". It claims that the term "Nishan" has no known meaning in any other "common" language.

The Complainant alleges that the Respondent has no rights to, or legitimate interest in, the disputed domain name because:

(a) The Respondent may have gone out of business; and

(b) The Respondent appears to have relinquished control of the disputed domain name to its technical/administrative contact, trc.NET;

(c) trc.NET is not using the domain name in connection with the Respondent’s former business or trade name.

The reasons given for the Complainant’s allegation that the Respondent may have gone out of business are as follows:

- there is no current web site corresponding to the Respondent’s business. The web site is currently dedicated to the Ramgarhia Gurdwara (Sikh place of worship) in Bradford.

- Kellysearch (a business index) and Google searches both show results for the Respondent, Nishan Limited. The Kellysearch shows two business addresses for the Respondent, one in Watford and one in Harrow. The telephone and facsimile numbers given for the Watford address in the Kellysearch listing are non-functional.

The Complainant alleges that some time before June 19, 2001, a banner stating "this domain is for sale" was posted on the web site. It also claims that the disputed domain name was advertised for sale on the web site "afternic.com", with an original price of $10,000, which was subsequently increased to $300,000. (No evidence was produced to substantiate any of these claims.)

The Complainant’s reasons for asserting that the Respondent has relinquished control of the disputed domain name to trc.NET are as follows:

- the final archived page of the Respondent’s original web site was posted by trc.NET and features the trc.NET logo.

- the Respondent has given trc.NET’s telephone number as Administrative Contact for the disputed domain name.

- the Complainant originally negotiated with the Respondent regarding the purchase of the disputed domain name, but communications between the Complainant and the Respondent ceased in 2002 and were taken up by trc.NET.

- the disputed domain name has pointed to several different web sites over the last six months, none of which appear to have any connection with the Respondent’s business.

- if the Respondent has moved from Harrow to Watford (which the Panel notes seems unlikely as of the two addresses given in the Kellysearch index the Watford numbers were non-functional), then the Respondent has not updated its registration contact information. Presumably it would have done so were it still in control of the disputed domain name.

The Complainant acknowledges that the Respondent registered the disputed domain name on August 22, 1997, i.e. before the Complainant began using its trademarks on January 1, 2001. The Complainant therefore concedes that the Respondent did not register the disputed domain name in bad faith.

The Complainant’s case rests on an allegation that the disputed domain name has been effectively transferred from the Respondent to trc.NET, notwithstanding the fact that trc.NET is not the named registrant according to Whois.

The Complainant alleges that trc.NET (which is not a party to these proceedings) acquired the disputed domain name for the purpose of selling, renting, or otherwise transferring the domain name to a competitor of the Complainant for valuable consideration in excess of trc.NET’s out-of-pocket costs directly related to the domain name. It also alleges that trc.NET has used the disputed domain name for the purpose of disrupting the Complainant’s business and has intentionally attempted to attract Internet users to various web sites by creating a likelihood of confusion with the Complainant. Finally, it alleges that trc.NET has used the disputed domain name to tarnish the Complainant’s business.

B. Respondent

The Respondent provided evidence that it has been trading under the trademark NISHAN since at least 1997. It also claims that the principal of the business, Angela Bindra, is known by the name Nishan (no evidence of this was provided.)

The Respondent claims that the Complainant has added a generic word to the Respondent’s domain name and trading name. The Respondent claims that, as its use of the domain name significantly predates the Complainant’s use of the name "NISHAN SYSTEMS", if anything, the Respondent is entitled to request the revocation of the Complainant’s domain name <nishansystems.com> – not the other way around. The Respondent states that when the Complainant first decided to use the name "NISHAN SYSTEMS", the Respondent’s domain name was internationally known and had been used for some time.

The Respondent disputes the Complainant’s allegation that the term "NISHAN" has no meaning in any common language. It asserts that possibly more than a billion people would be familiar with the term, which has meanings in Pakistani, Punjabi, Chinese, Turkish and Armenian. It is, variously, the name of a Bollywood movie, an Indian political party and a common boys’ name. The Respondent also points out that there are more than 180 domain names which contain the letters "NISHAN", more than half of which begin with those letters.

The Respondent strongly denies that it has gone out of business. It also denies that it has ever relinquished control of the disputed domain name to trc.NET. It states that trc.NET has never had any connection with the domain name other than providing domain name, e-mail and web-hosting services to the Respondent.

The Respondent states that if the Complainant had any doubts regarding the existence of the Respondent, it could have easily resolved the issue by replying to one of the emails which passed between the Respondent and the Complainant during the period in which the Complainant was negotiating to purchase the disputed domain name. It did not do so.

The Respondent claims that the Complainant knew, or could have also easily determined, the position regarding the Respondent’s address details. The principal of the Respondent, Ms. A.N. Bindra, moved into the Watford address in 1972, with her parents. She ran her business from there until she moved out to her new home and business address in Harrow. The details of the domain name as reflected in the Whois database have always been correct.

The Respondent denies that merely listing trc.NET’s telephone number as the administrative contact demonstrates that it has relinquished control of the disputed domain name to trc.NET. It denies that the number listed is that of trc.NET in any case.

In relation to the Complainant’s allegation that because one of the archived pages of the Respondent’s web site featured the trc.NET logo, it meant that trc.NET "controlled" the domain name, the Respondent points out that the archived page referred to explicitly states that there was a server problem and that the page with the trc.NET logo was therefore a temporary page (it was displayed for less than two hours over the course of the entire year on that server). At the time that the Respondent’s web site was down, so were the approximately 100 other different domain names hosted by trc.NET.

Finally, the Respondent requests that the Panel order a transfer of the Complainant’s domain name, <nishan.net>.

 

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel to:

"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".

The burden for the Complainant, under Paragraph 4(a) of the Policy, is to show:

- 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

- That the Respondent has no rights or legitimate interests in respect of the domain name; and

- That the domain name has been registered and is being used by the Respondent in bad faith.

A. Identical or Confusingly Similar

The Complainant has provided evidence of its trademarks NISHAN SYSTEMS in the United States of America.

Pursuant to the Policy, the sole issue for the Panel to decide is whether the disputed domain name is identical or confusingly similar to trademarks in which the Complainant has rights. The Policy does not inquire, under this limb at least, as to which party has the better right to a trademark in circumstances where both parties have at least some rights to the trademark.

Plainly, the disputed domain name is confusingly similar to the Complainant’s registered trademarks. It is identical to the distinctive part of those trademarks, namely "NISHAN". Moreover, there is evidence of actual confusion arising – although the Respondent alleges that at least some of this confusion arose as a result of the Complainant’s own actions.

The Panel therefore finds that the disputed domain name is confusingly similar to the Complainant’s registered trademarks.

B. Rights or Legitimate Interests

The Policy outlines (Paragraph 4(c)) circumstances which, if found by the Panel to be proved, shall demonstrate the Respondent’s rights or legitimate interest in the domain name. These circumstances are:

(i) before any notice to the Respondent of the dispute, the Respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with the bona fide offering of goods or services; or

(ii) the Respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights; or

(iii) the Respondent is making a legitimate non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The situation clearly falls within Paragraph 4(c)(i). Before any notice of this dispute, the Respondent had made extensive use of the disputed domain name in connection with the bona fide offering of goods or services.

At the time the Respondent began using the domain name <nishan.com> in connection with its business, the Complainant, self-described as a ‘start-up’ company, had not commenced use of the trademark NISHAN SYSTEMS.

Further, the Panel sees no reason why it should treat trc.NET as the true Respondent. There is no convincing evidence that the Respondent has relinquished control, much less ownership, of the disputed domain name to trc.NET and this allegation is strongly disputed by the Respondent.

The Respondent is entitled to authorize trc.NET to act on its behalf in relation to the domain name <nishan.com> if it wishes. There is nothing to suggest that anything more than this has occurred here.

Nor does the Panel accept that the Respondent has gone out of business. While the web site "nishan.com" does not currently relate to the Respondent’s business and apparently has not done so for some time, it seems that the Respondent’s primary use of the domain name is for email, not as a web site. The Respondent advised the Complainant that this was the case well before the commencement of this proceeding.

The Panel therefore concludes that the Respondent does have a right or interest in the disputed domain name. The Complainant has failed to meet the requirement in Paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

There is absolutely no evidence that the Respondent registered or used the disputed domain name in bad faith. In fact, the Complainant concedes that the Respondent did not register the disputed domain name in bad faith.

The Complainant alleges that the Respondent has "relinquished control" of the disputed domain name to trc.NET, and that trc.NET acquired and used the domain name in bad faith. The Panel has already rejected this allegation. There is no evidence of a transfer of the disputed domain name from the Respondent to trc.NET, nor even of any informal relinquishing of control.

The Panel therefore finds that the Respondent did not register the domain name <nishan.com> in bad faith, nor has it used the domain name in bad faith.

Reverse Domain Name Hijacking

Paragraph 1 of the Rules defines Reverse Domain Name Hijacking as "using the Policy in bad faith to attempt to deprive a registered domain name-holder of a domain name". (See also Paragraph 15(e) of the Rules). To prevail on such a claim, a Respondent must show that the Complainant knew of either the Respondent’s unassailable right or legitimate interest in the disputed domain name or the clear lack of bad faith registration and use, and nevertheless brought the Complaint in bad faith: see e.g. Sydney Opera House Trust v. Trilynx Pty Limited, WIPO Case No. D2000-1224 (October 31, 2000).

Further, when determining whether the Complainant brought the Complaint in bad faith, the Panel should consider both "malicious intent and recklessness or knowing disregard of the likelihood that the Respondent possessed legitimate interest": Goldline International, Inc v. Gold Line, WIPO Case No. D2000-1151 (January 4, 2001) citing Loblaws, Inc. v. Presidentchoice.inc/Presidentchoice.com, Case Nos. AF-0170a to 0170c (eResolution, June 7, 2000).

The Respondent in this case registered and used the disputed domain name <nishan.com> at least one year before the adoption of the trademark NISHAN SYSTEMS by the Complainant. Plainly, the Complainant has long desired to acquire the disputed domain name from the Respondent. Negotiations regarding the potential purchase of the domain name spanned a period of some 18 months. It was only when those negotiations failed that the Complainant issued these proceedings.

Plainly, the Complainant is aware of the Respondent’s rights to the domain name and it conceded that the Respondent did not register the domain name in bad faith. It has therefore attempted to base its Complaint on a purported transfer of the domain name to the Respondent’s Administrative and Technical Contact, trc.NET. While such a transfer would no doubt have suited the Complainant’s purpose, there is no evidence that any such transfer occurred.

The Panel cannot accept that the Complainant’s allegations that the Respondent had gone out of business were made in good faith. The Complainant negotiated with the Respondent for some time and knew how and where to contact it. It could have easily verified whether or not the Respondent was still in business.

Accordingly, the Panel finds that the Complainant’s filing of its Complaint constitutes Reverse Domain Name Hijacking.

 

7. Decision

For all the foregoing reasons, the Panel orders that:

(a) the domain name <nishan.com> is confusingly similar to trademarks in which the Complainant has rights;

(b) the Respondent has a legitimate right and interest in respect of the domain name <nishan.com>;

(c) the domain name <nishan.com> was not registered or used in bad faith;

(d) the Complainant’s filing of its Complaint constitutes Reverse Domain Name Hijacking.

Accordingly, the Panel refuses to order that the disputed domain name <nishan.com> be transferred to the Complainant.

The Panel does not have any jurisdiction to act on the Respondent’s request that the Complainant be deprived of the registration in respect of the domain name <nishan.net>. This would require a separate application.

 

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Andrew Brown QC
Sole Panelist

Dated: May 1, 2003