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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Mawana Sugars Limited v. Panalink Infotech Limited

Case No. D2005-1170

1. The Parties

The Complainant is Mawana Sugars Limited, New Delhi, India, represented by Pavan Duggal Associates, India.

The Respondent is Panalink Infotech Limited, New Delhi, India.

2. The Domain Name and Registrar

The disputed domain name <mawanasugar.com> is registered with Nameview Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 9, 2005. On November 11, 2005, the Center transmitted by email to Nameview Inc. a request for registrar verification in connection with the domain name at issue. On November 14, 2005, Nameview Inc. transmitted by email to the Center its verification response. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint electronically on December 2, 2005 and received in hardcopy on February 6, 2006. The Center verified that the Complaint together with the amendment to 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 February 7, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was February 27, 2006. The Response was filed with the Center on February 27, 2006. Following receipt of the Response, the Complainant requested a suspension of the proceeding, a request to which the Respondent agreed. The proceeding was suspended until March 31, 2006. The suspension period was extended until April 30, 2006. At the request of the Complainant, the proceeding was re-instituted on May 1, 2006.

The Center appointed Harini Narayanswamy as the sole panelist in this matter on May 5, 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, Mawana Sugars Limited, is a company of the DCM Shriram conglomerate. It has a lengthy history, which is traced back to the year 1949, when “Mawana Sugar Works” was established in the state of Uttar Pradesh in India. Numerous documents filed along with the Complaint bear testimony to the fact that the Complainant has been in the business of sugar manufacture in India for the past fifty five years.

In the year 1992, Shriram Industrial Enterprises Limited, the Complainant’s predecessor, launched the consumer sugar pack under the brand name “MAWANA”. The name “Siel Sugar Limited” was changed to Mawana Sugars Limited on June 16, 2004, on which date, the official domain name <mawanasugars.com> was also registered.

Invoices filed by the Complainant show substantial sale of Mawana Sugar Consumer Packs from 1999 till 2005, and the use of the mark in trade. The Complainant states it exports high quality sugar to countries like Yemen, Bangladesh, Indonesia and Pakistan. It has filed for trademark and copyright registrations pertaining to its brand “MAWANA SUGARS”, which are pending registration.

In June 2004, M/s Panalink Infotech Limited registered the domain names <mawanasugars.com> and <mawanasugars.net> for the Complainant. Panalink Infotech Limited is the Respondent in these proceedings and, according to the Complainant, it had provided the web space for the websites. The Complainant operates its official websites using these domain names, which it mentions on the company’s official letterhead. It is also used by its employees on visiting cards and for their email addresses.

The Complainant states that during an internal audit process, conducted in the first week of November 2005, it discovered a variant of its trademark, without the letter “s” (<mawanasugar.com>), had been registered as a domain name. The domain name being almost identical to its trademark, the Complainant immediately lodged a police complaint with the local police at Delhi on November 9, 2005, and later filed the Complaint in these administrative proceedings.

The Respondent in these proceedings, Panalink Infotech Limited, New Delhi, filed a Response, which offers no information regarding the nature of its business. Reading between the lines, it is evident that the Respondent is in the business of registration of domain names and the Complainant is one of the Respondent’s clients. Other contentions made in the Response which are not substantiated with supporting documents are discussed below.

5. Parties’ Contentions

A. Complainant

The Complainant’s contention is that the Respondent has registered and used a domain name which is identical and confusingly similar to the Complainant’s mark. The Complainant uses the name “Mawana Sugars” as a corporate name and for marketing its products. It is a reputed company with a long history in the sugar business and has established trademark rights in the said name.

The Complainant claims it had engaged the Respondent to register the domain names <mawanasugars.com> and <mawanasugars.net>, which are used by the Complainant for its official website. The disputed domain name <mawanasugar.com> however, was registered and used by the Respondent without its permission, and the Respondent does not have any legitimate rights in the name.

The deletion of the letter “s” from its trademark, for registering the disputed domain name, according to the Complainant constitutes “mutilation of a famous mark”, which can be termed “typopiracy” or “typosquatting”. The Complainant quotes from the WIPO UDRP case, Dell Computer Corporation v. Clinical Evaluations, WIPO Case No. D2002-0423, to elucidate the point: “Typosquatting seeks to take advantage of errors by users in typing domain names into their web browser’s location bar.”

According to the Complainant, the disputed domain name capitalizes on the Complainant’s mark to attract web traffic. The website linked to the domain name is used for hosting various sponsors. It includes popular searches, dating portals and links to other websites which are not connected to the business of the Complainant. The Complainant fears this unauthorized, bad faith registration and use of the domain name would tarnish its reputation and requests for transfer of the domain name.

B. Respondent

The Respondent on its part denies having registered the disputed domain name. The Respondent states that the domain name was booked by someone else who has mischievously put the Respondent’s name as the registrant and its address for the contact details. The Respondent also requests the Panel to deny the remedy requested by the Complainant.

The Respondent disclaims having any rights in the domain name. It is the contention of the Respondent that on finding its email address mentioned in the contact details, the Domain Registration Department of the Respondent retrieved the password from the “Forgot your password” option provided by the registrar, and changed the name of the registrant to that of the Complainant, on December 5, 2005. The Respondent claims to have taken this action due to the fact that the Complainant is its client.

The Respondent finally adds that the Complainant has filed a civil suit to claim an amount of USD 45,000 (Rupees 20,25,820/-) from the Respondent. The suit was filed, it alleges, for setting the records straight regarding the contact details of the domain names <mawanasugars.com>, <mawanasugars.net>, <mawanasugar.com> and <sielsugar.com>. The Respondent states that it has to expend considerable efforts and costs to defend the suit.

The statements in the Response are not corroborated with any evidence or documents.

6. Discussion and Findings

The Complainant in a UDRP proceeding has to establish three elements under paragraph 4(a) of the Policy, which are:

1. The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights, and

2. The Respondent has no rights or legitimate interests in the domain name, and

3. The domain name has been registered and used in bad faith.

A. Identical or Confusingly Similar

The Complainant has shown substantial use of the mark and has demonstrated its rights in the trademark. The Panel finds the disputed domain name is virtually identical to the trademark except for the deletion of the letter “s” from the disputed domain name.

It is informative to note that there are other UDRP cases where the only difference between the Complainant’s mark and the domain name was the deletion of the letter “s”. The observations made in Neurones SA v. Madame Chantal Weber, WIPO Case No. D2003-0883 (February 23, 2004) regarding this point are instructive:

“The disputed domain name comprises Complainant’s trademark ‘NEURONES’, but for the letter ‘s’. Like in Citigroup Inc. v. Ling Shun Shing, WIPO Case No. D2003-0328, June 2, 2003, where it was held that ‘The spelling of the name CITIGROUP is unique and exclusively referable to the Complainant. While there may be circumstances where a plural is sufficient to distinguish a domain name from the singular form, this is not such a case.’, in the present case, the spelling of the name NEURONES is unique and the fact that the disputed domain name does not end with the letter ‘s’ is not sufficient to distinguish the disputed domain name from Complainant’s trademark.”

In the present case, the Complainant’s official domain names combine the terms “mawana” and “sugars”, which are associated with the Complainant and is its unique trademark. Merely deleting the letter “s” from the trademark and registering the disputed domain name <mawanasugar.com> is viewed by the Panel as not distinguishing the domain name from the trademark in question.

The Panel accordingly finds that the disputed domain name is virtually identical and confusingly similar to the Complainant’s mark.

B. Rights or Legitimate Interests

The Respondent has clearly admitted that it has no rights or interests in the domain name and has not attempted to give any justifications under paragraph 4(c) of the Policy. It is evident from the submissions made in both the Complaint and in the Response that the Respondent was engaged by the Complainant as an agent to register its official domain names.

The question then arises as to whether an agent has a right to use the trademark without the express permission of the trademark holder and whether the agent has a duty not to corner the market in domain names that reflect the mark. In the Overview of WIPO Panel Views, under paragraph 2.3, this issue has been discussed, particularly with reference to authorized sales and service agents for trademarked goods.

The other instructive cases on the point are Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (November 6, 2001) and Experian Information Solutions, Inc v Credit Research,Inc, WIPO Case No. D2002-0095 (May 7, 2002) where it was held that an agent has no right or authority to use the trademark or to register domain names that reflect the mark without the knowledge or express permission of the trademark holder. Given the facts of the present case, the Panel finds the reasoning articulated in those cases hold good for an agent who registers domain names on behalf of the trademark owner.

The Panel has no hesitation in finding the second element is satisfied, since both the parties are in agreement that the Respondent has no rights to the disputed domain name.

C. Registered and Used in Bad Faith

The facts and circumstances in this case persuade the Panel to find that the domain name was registered and used in bad faith. Given the specific unique combination of words used in the domain name, it is clear the domain name registrant ought to have been aware of the Complainant’s trademark.

Registration and use of a domain name, that is obviously connected with the Complainant’s business, by someone who has no authorization from the Complainant has been found in several previous UDRP decisions to constitute “opportunistic bad faith”. See Veuve Cliquot Ponsardin, Maison Fondйe en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000 -0163 (May 1, 2000).

“Typosquatting”, or registration of domain names with a common misspelling of trademarks, as asserted by the Complainant, is often a factor in determining that a registration has been made in bad faith. In Yurtici Kargo Servisi A.S. v. Yurticicargo Yurticikargo, WIPO Case No. D2003-0707 (October 24, 2003) it was found, by this Panel, that a domain name similar to the trademark, which had merely interchanged or replaced a phonetically similar letter, was held to be a case of “typosquatting” and registration in bad faith. The sole intent of “typosqatting” is to create confusion in the minds of internet users and derive benefit from the resultant confusion. Similarly, in the present case, merely deleting the letter “s” from the trademark, the Panel finds, constitutes a case of “typosquatting” domain name registration.

In Bits & Pieces Inc. d/b/a Bits and Pieces v. LaPorte Holdings, Inc., WIPO Case No. D2006-0244 (May 8, 2006) it was held that: “Manifest typosquatting is sufficient to support an inference of bad faith shifting the burden to respondent to offer contrary evidence.”

The Panel finds, in the present case, the Respondent has not shown that the website linked to the domain name is being put to any good faith use. The website linked to the disputed domain name is allegedly being used only to provide links to other web sites. This is sufficient evidence that the website is primarily being used for diverting internet traffic. It is reasonable to assume that much of this web traffic would be intended for the Complainant. The Panel finds an obvious attempt to attract internet users to the website and to other online locations by creating a likelihood of confusion with the Complainant’s mark, as to the source, affiliation or sponsorship.

This is an unusual case where the Respondent has filed a Response which largely supports the Complainants claims, and yet urges the Panel to deny the remedies requested by the Complainant. The Respondent also denies registering the domain name and consequently any bad faith associated with it. However, the statements made by the Respondent are mere bald assertions, without any supporting evidence. The Panel however finds the Respondent’s name is mentioned as the registrant of the domain name on the records and this fact is verified by the Registrar.

The Panel also observes that the Respondent had taken upon itself the task of trying to change the records, in a rather devious manner. The Panel finds this type of action taken by the Respondent does cast a shadow of doubt and suspicion regarding the propriety of the Respondent’s actions.

The Panel finds, based on the totality of facts and circumstances discussed above, that the domain name has been registered and used in bad faith under paragraph 4(b) of the Policy.

Other Legal Proceedings

The Respondent has mentioned concurrent court proceedings in the Delhi High Court. These statements are unsubstantiated or unsupported with any documentary evidence. The Panel further notes that no details such as suit number or other relevant details regarding the suit are provided.

It is to be noted, however, that this is not the appropriate forum to take up such issues. The Policy deals with only the limited problem of cyber squatting and is not designed to address or resolve issues such as those mentioned by the Respondent, namely, amounts claimed by the Complainant in a civil suit. The Respondent will have to pursue those issues in the appropriate forum.

7. Decision

For all the foregoing reasons discussed by the Panel, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <mawanasugar.com> be transferred to the Complainant.

Harini Narayanswamy
Sole Panelist

Date: May 19, 2006