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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Sukhsagar Enterprises v. Sanskruti International

Case No. D2007-1409

1. The Parties

The Complainant is Sukhsagar Enterprises, Bangalore, India, represented by Holla Associates, India.

The Respondent is Sanskruti International, Sydney, Australia.

2. The Domain Name and Registrar

The disputed domain name <sukhsagar.com> is registered with GoDaddy.com Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 21, 2007. On September 25, 2007, the Center transmitted by email to GoDaddy.com Inc. a request for registrar verification in connection with the domain name at issue. On September 25, 2007, GoDaddy.com Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. 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, that the proceedings commenced on October 10, 2007 and that the last day for filing a Response was October 30, 2007. On October 13, 2007, the Respondent’s administrative contact and presumed representative wrote to the Center questioning why the Complaint was lodged when the Respondent had had the disputed domain name for many years. (The domain name was registered in 2001.)

On October 16, 2007, the Center enquired of the Respondent if the e-mail communication of October 13, 2007, was the Respondent’s complete Response. In an e-mail reply of October 17, 2007, the Respondent’s administrative contact and presumed representative replied that it was not the complete Response, that he was overseas and needed more time to collect information and in a further e-mail of October 19, 2007, stated that he would not be able to reply to any communication as he was overseas on a business trip.

On October 22, 2007, the Center asked the Complainant for comments regarding the Respondent’s request for an extension of time to file a Response, to which the Complainant replied agreeing to an extension of time for fifteen (15) days. On October 23, 2007 the Center advised the Respondent that, taking into account the latter’s reasons for requesting an extension and after consultation with the Complainant, the Center granted an extension of time until November 14, 2007.

As no Response was received by that due date, on November 16, 2007, the Center issued Notification of the Respondent’s Default. This was followed on November 17, 2007, by an e-mail communication from Respondent’s administrative contact and presumed representative repeating previous claims and requesting that its “initial response”, presumably the email communication of October 13, 2007, be considered with “follow up for later date”.

On November 19, 2007, the Center again communicated with the Complainant asking for comments or advice pursuant to the latest communication from the Respondent. On November 20, 2007, the Complainant in a reply to the Center strongly opposed the granting of any further extension of time and expressed the view that the Respondent had adopted dilatory tactics. Later that day, November 20, 2007, the Center communicated with the Respondent, advising that the Notification of Respondent’s Default was issued after expiry of the requested extension to file a Response, that the Center would proceed with the appointment of the Administrative Panel, and that any late submission of Response would be left to the Panel’s discretion for consideration.

The Panel notes that paragraph 5(d) of the Rules authorizes the Center, in exceptional cases, to extend the period of time for filing of the response and that the period may also be extended by written stipulation between the parties, provided the stipulation is approved by the Provider, in this case the Center.

In accordance with the Rules, paragraphs 5(a) and 5(d), the final due date for Response was November 14, 2007. The Respondent did not file a complete Response, but had requested on November 11, 2007, that its “initial response (of October 13, 2007) and follow up for later date” be considered.

The Center appointed Joan Clark as the sole panelist in this matter on November 28, 2007. 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

According to the WhoIs search results provided by GoDaddy.com Inc, the Respondent, Sanskruti International, is the registrant of the domain name <sukhsagar.com> which was created on May 3, 2001 to expire on May 3, 2013.

The Complainant is the registered owner of the following trademarks, among others, registered in the trademarks registry of the government of India:

- SUKH SAGAR registered January 8, 1987, for preserved, dried and cooked fruits and vegetables, and other food and dairy products;

- SUKH SAGAR registered January 8, 1987, for scented betelnut powder;

- SUKHSAGAR registered January 8, 1987, for aerated waters and other non-alcoholic drinks;

- SUKH SAGAR registered January 8, 1987, for biscuits, bread, buns, cakes, confectionery, ice cream and other preparations for human consumption

5. Parties’ Contentions

A. Complainant

The Complainant asserts that it is a partnership firm, carrying on business in running a vegetarian restaurant, and that it has been using the trademark SUKHSAGAR for vegetarian restaurants in India since 1976. The Complainant further avers that, due to the intrinsic value, salesmanship and quality of food prepared by the Complainant, the trademark SUKHSAGAR has become popular all over India. The Complainant states that, at present, it has three branches in Bangalore and one at Mumbai.

The Complainant avers that its trademarks listed above have been renewed from time to time and are valid and subsisting, and that they have been continuously used by the Complainant since 1976 in India. The Complainant has produced advertisements and articles in newspapers concerning its products, and also a decision of the High Court of Karnataka at Bangalore confirming a lower Court’s injunction against Shri Sukhsagar Hotel, preventing the latter from carrying on business under its trade name and style as a result of being deceptively similar to the Complainant’s trading style Sukhsagar Enterprises.

The Complainant maintains that the disputed domain name is identical or confusingly similar to the Complainant’s trademarks in which it has rights.

The Complainant also maintains that the Respondent has no rights or legitimate interests in respect of the domain name and that it never used the same in connection with bona fide offering of goods or services.

The Complainant provides a copy of the notice it sent to the Respondent on June 25, 2007, setting forth the Complainant’s rights in its trademarks and trading style SUKHSAGAR, and calling upon the Respondent to transfer the disputed domain name to the Complainant.

The Complainant states that the Respondent failed to reply to this notice.

The Complainant further states that the Respondent is not commonly known by the domain name and has not acquired any trademark or service-mark rights thereto.

The Complainant avers that the disputed domain name was registered or acquired primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainant or to a competitor for valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the domain name, that the Respondent has registered the domain name in order to prevent the owner of the trademark from reflecting the mark in the corresponding domain name, and that the Respondent is using the domain name intentionally to attract for commercial gain Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s marks.

The Complainant has requested that the domain name in dispute, <sukhsagar.com>, be transferred to the Complainant.

B. Respondent

The Respondent has not filed a complete Response, but has through its administrative contact and presumed representative requested that its initial communication of October 13, 2007, to the Center be considered “together with follow up for future date”. The communication of October 13, 2007 to the Center enquires why the Respondent should waste time with someone who “just comes up and complains”, and further states that there was an attempt to persuade the Respondent to sell its domain name, that the Respondent was threatened, and that the Respondent sees no reason why the Complaint should be lodged since the Respondent has had the domain name “for many years”. This informal communication does not benefit from a certification of its completeness and accuracy as required by the Rules, paragraph 5(b)(viii).

6. Discussion and Findings

Paragraph 4(a) of the Policy states that, in order to be successful with respect to a disputed domain name, Complainant has the burden of proving that all three elements are present in the Complaint, namely:

(i) that the domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) that Respondent has no rights or legitimate interests in respect of the domain name; and

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

Paragraph 4(b) of the Policy sets out four illustrative circumstances which, for the purpose of paragraph 4(a)(iii) above, shall be evidence of registration and use of a domain name in bad faith but are not limitative.

Paragraph 4(c) of the Policy sets out three illustrative circumstances each of which, if proven, shall demonstrate Respondent’s rights or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) above.

A. Identical or Confusingly Similar

The Complainant is the registered owner of the trademarks SUKH SAGAR and also SUKHSAGAR, both of which are registered on the trademarks registry in India. The Panel finds that the disputed domain name <sukhsagar.com> is identical to the mark SUKHSAGAR and confusingly similar if not identical to the mark SUKH SAGAR in both of which marks the Complainant has shown it has rights. As has been consistently held in past decisions, the addition of the suffix “.com” to a top level domain should not be taken into consideration in making the determination as to identity or confusing similarity.

The Complainant has therefore satisfied the first criterion for a successful challenge to the disputed domain name.

B. Rights or Legitimate Interests

The Complainant has asserted that the Respondent has no rights or legitimate interests in the disputed domain name. Against this assertion, the Respondent has produced no contrary evidence but has merely questioned, in its incomplete and uncertified email communication to the Center, as to why the Complaint should be lodged when the Respondent has had the domain name “for many years”. This communication does not assist the Respondent in establishing any rights or legitimate interests in the disputed domain name.

It has been held in a number of decisions that, while the overall burden of proof is on the Complainant, this element of proving the Respondent has no rights or legitimate interests in a domain name involves the Complainant in proving matters which are peculiarly within the knowledge of the Respondent, that is, of proving a negative, which is often an impossible task for the Complainant. When the Complainant has made the allegation with some facts in support, the Respondent has a case to answer. See INTOCAST AG v. LEE DAEYOON, WIPO Case No. D2000-1467; Julian Barnes v. Old Barn Studios Limited, WIPO Case No. D2001-0121; Frontier Distribution LLC v. Belize Domain WHOIS Service Lt., WIPO Case No. D2007-1203.

In this case, the Complainant has asserted, inter alia, that the Respondent is not known by the domain name, has never used it in connection with a bona fide offering of goods or services and has never acquired any rights or legitimate interests in the name. In the matter before the Panel, despite several email communications emanating from the Respondent, the latter has failed to respond to and to answer the Complainant’s prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.

The Panel finds that, in the light of the evidence placed before it in these proceedings, it has been established that the Respondent has no rights or legitimate interests in the disputed domain name and the second criterion has been satisfied.

C. Registered and Used in Bad Faith

The Complainant has established that it has used its trademarks SUKH SAGAR and SUKHSAGAR since 1976, has shown considerable use and renown of the marks and has provided evidence of registration on the trademarks registry in India since 1987.

The disputed domain name was registered in 2001. The Complainant has made several allegations indicating the bad faith registration and use of the disputed domain name by the Respondent, to which the Respondent has provided no defence.

As the Respondent has given no reason for its adoption and registration of the domain name, in view of the prior use and registration of the Complainant’s trademarks and the evidence that they have been continuously used since 1976, the Panel is of the opinion, on the balance of probabilities, that the Respondent must have been aware of the Complainant’s trademarks when the Respondent registered the domain name in 2001.

The Panel therefore concludes on balance that the domain name was registered in bad faith.

While there has been no evidence of actual “use” of the domain name by the Respondent, passive holding of a domain name may in certain circumstances be held to constitute a “use” of a domain name particularly where as in the present instance, it would prevent the Complainant from registering its trademark in a corresponding domain name. The Panel finds the Respondent’s passive holding of the domain name in this case satisfies the requirement of paragraph 4(a)(iii) that the domain name “is being used in bad faith” by the Respondent. See Telstar Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Tengizchevroil v. Hardinvestments Limited, WIPO Case No. D2002-0061; Plymouth Savings Bank v. Telmex Management Services, WIPO Case No. D2001-1333; Marie Claire Album v. ATS, WIPO Case No. D2003-0096.

The Panel therefore concludes that the disputed domain name <sukhsagar.com> was registered and is being used in bad faith, and the third criterion for a successful challenge to the domain name has been met.

7. Decision

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

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Joan Clark
Sole Panelist

Dated: December 6, 2007

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ADDENDUM TO ADMINISTRATIVE PANEL DECISION

In this case there was considerable correspondence and confusion involving the Respondent’s representative who requested an extension of time to file a Response. When the Response was finally filed after the latest deadline it had not been included in the formal file although a copy of the Response was sent by the Center to the Complainant. The Panel’s Decision ordering the transfer of the domain name was rendered on December 6, 2007 and was notified to the parties on December 13, 2007. Subsequently the Respondent, realizing from the text of the Decision that its ultimate Response had not been considered by the Panel, brought the matter to the attention of the Center which so advised the Panel.

In these circumstances, in all fairness the Panel felt compelled to review the late-filed Response when informed of its existence. In doing so, the Panel notes that as with the Respondent’s initial email communication of October 13, 2007 (as considered in the decision), the Response does not benefit from a certification of its completeness and accuracy as required by the Rules, paragraph 5(b)(viii).

The Respondent states in the Response that the word “Sukhsagar” means “Happy Ocean” in the Hindi language, and that it is “widely used throughout India and overseas for definition of place, lake, temple etc.” The Respondent provides no evidence in support of this statement, although it does invite the Panel to conduct its own Internet search regarding the meaning of the word “Sukhsagar”. The Panel has done so. The Panel’s Internet search did not immediately reveal ready information indicating a specific meaning for the word or expression “Sukhsagar” in the Hindi language. However, the Panel has independently confirmed its meaning as consistent with “happy ocean”. The Panel also notes that the word “Sukhsagar” appears in the names of a number of different enterprises or locations listed by an Internet search such as Sukhsagar beach resort, Goa, India; Sukh Sagar Hotel, Shimla, India; Sukh Sagar Enclave, Jaipur; Sukhsagar Hotel Bangalore, India; Sukhsagar Sweet Mart, London; Sukh Sagar Hotels Limited, Bangalor; Sukhsagar Vegetarian restaurant, Bangalore; Sukhsagar Chemists, Mumbai, India; Sukh Sagar Valley; SukhSagar Radio located in Middlesex, U.K.; Sukhsagar Apartment with address on Sarat Bose Road Kolkata; Sukhsagar Institute, Mumbai; and, Sukhsagar Restaurant, Serat; Sikh Temple Sukhsagar in New Westminster, British Columbia; and, Sukhsagar distributors Trade Leads.

While this suggests that the word or words “Sukhsagar” or “Sukh Sagar” may be in relatively common use in the Hindi language, this of itself does not establish a right or legitimate interest for the Respondent in this particular disputed domain name.

The Panel also notes that SUKH SAGAR is clearly in use as a mark by what would appear to be a considerably sized global chain of “Sukh Sagar” Indian vegetarian restaurants, of which the Complainant’s restaurant appears to form a part. According to the “Sukh Sagar” website at “www.sukhsagarworld.com”, the Sukh Sagar chain of restaurants is “one of the oldest and most loved vegetarian restaurants in India”. The information also indicates that the Sukh Sagar restaurant chain has over 20 branches and employs 2,500 people. This chain claims to be a growing global franchise, and indicates offices and restaurants not just in India, but in other countries such as the UAE and Canada. The Sukh Sagar chain was apparently founded in 1962, with the Complainant’s restaurant in particular stated to have been established in 1976. The Panel has also taken note of a number of posted comments and references relating to the Sukh Sagar restaurant chain, consistent with a fairly well-established reputation. In short, notwithstanding what may be its relatively common use in Hindi as a generic word or term, the mark SUKH SAHAR appears to have achieved a considerable measure of distinctiveness if not fame in relation to the Indian restaurant business.

The Respondent states in its Response that it has been “running” <sukhsagar.com> for the last seven years as a business in Australia, describing itself as an “Internet business”. However, the Response contains no evidence in support of this contention, other than a printout of registration details for a business name registration in the state of New South Wales. The registration information indicates a business name of “SUKHSAGAR.COM”, described as a “consultancy and information provider” trading from “30/10/2007”. The date given for the business name registration is October 30, 2007. Without more, such evidence does little to assist the Respondent’s case here. Not only are such business name registrations normally relatively straightforward to obtain, but this particular registration was obtained by the Respondent only after the Complaint was first filed with the Center in September, 2007, and the formal commencement of the proceedings on October 10, 2007. On its face, this rather supports an inference that registration may have been little more than a defensive reaction to the Complaint. However this may be, in the absence of further indicia, it is insufficient to establish to this Panel’s satisfaction that the Respondent is commonly know as “Sukh Sagar”.

The Panel has again attempted to access the disputed domain name in order to assess whether there are any indications of current usage of the domain name by the Respondent, but without success. There appears to be no website at the disputed domain name. An examination of a history of the site on the Wayback Machine (“www.archive.org”) also indicates little if any active use of the domain name by the Respondent for seven years (other than certain brief periods early in its history where it appears to have been ‘parked’). Such apparent non-use does not strike the Panel as consistent with a bona fide offering of goods or services, nor has the respondent provided evidence of demonstrable preparation to do so.

The Respondent claims that while it “still has to bring the website…we are still using the domain name for remote access such as SFTP, SSH and electronics communication”, and that evidence can be provided. Evidence has not been provided.

In sum, other than a number of brief and largely unpersuasive claims advanced by the Respondent, the current record remains consistent on its face with a case of passive holding.

Moreover, having regard to the apparently longstanding use by the Complainant of the SUKH SAGAR mark, the apparent familiarity of the Respondent with Indian culture and language, and the nature of the Internet in which business reputations often transcend geographical boundaries, this Panel is not persuaded that the Respondent in this case was unaware of the SUKH SAGAR restaurants and trademark at the time of registering the disputed domain name, nor has the Respondent claimed to be so unaware. The Respondent’s argument is that SUKH SAGAR is a widely used generic term. The Respondent appears to claim that because the Complainant has no Australian trademark for SUKH SAGAR, the Complainant therefore has no basis for prevailing in a complaint against the Respondent under the Policy. But the Policy is not the same as national trademark law. It is not necessary for a Complainant under the Policy to show that it has trademarks in a Respondent’s jurisdiction provided it can show that it has trademark rights, and that the Respondent, irrespective of its stated location, is in bad faith.

The Policy recognizes and Panels have consistently found bad faith to be conduct for which the types of evidence are non-exhaustive, and the assessment of which must be weighed in the balance having regard to the particular circumstances of a case. Here, there is no evidence that the domain name is in use by the Respondent, or that any active website has been posted on it for several years. Previous panels have recognized that in certain circumstances an inactive website (or, as in this case, an absence of website) can be indicative of bad faith. See Mondich and American Vintage Wine Biscuits v. Shane Brown, WIPO Case No. D2000-0004; Brown & Williamson et al v. Dennis Wilkins, WIPO Case No. D2001-0865; Staples, Inc. et al v. Ryan Conrad, WIPO Case No. D2003-0713. One of the circumstances that panels have taken into consideration in assessing bad faith is a respondent’s failure to reply to a cease and desist letter, which the Respondent here has failed to do. See e.g. HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager, WIPO Case No. D2007-0062.

The “bad faith” which must be established in order for a complainant to succeed in having a domain name cancelled or transferred is typically based on the premise that the domain name holder has sought to profit from another’s trademark, requiring the subjective intention to so profit. While it can be difficult to supply absolute evidence of subjective intent to profit from a third party’s trademark, the effect may be the same with or without evidence of such intent.

In the present case, the Respondent has claimed that it adopted the word or expression “sukhsagar” (included in the domain name without any distinguishing addition, which addition would appear to be a reasonable choice for the Respondent) to describe an “Internet business”, without providing any visible evidence, that is, without making use of the domain name and without creating a website for the domain name. At the same time the Complainant’s mark SUKHSAGAR which has a lengthy history appears to have achieved a considerable measure of distinctiveness. Whatever its subjective intent may have been, the Respondent has, for all apparent intents and purposes, monopolized the term SUKHSAGAR as a domain name for seven years without providing any persuasive explanation or evidence of use. While there is no dispositive evidence that the Respondent had the intention to deprive the Complainant of the possibility of registering the domain name, this was the result. On the basis of the record in the present proceedings, the Panel considers that the non-use of the domain name for an inactive or non-existent website for seven years supports the inference of bad faith on the part of the Respondent.

In issuing the present Addendum, the Panel also wishes to stress the patchy nature of the parties’ submissions. Indeed, it would in the Panel’s view have behooved the Complainant to have addressed at the very least the issue of the meaning of “Sukhsagar” in the Hindi language. The omission of such information not only makes the Panel’s job more difficult, but may also give rise to suspicion that this may have been done selectively. Such omissions are not in Complainant’s favor.

As it is, the Panel wishes to emphasize that in affirming its previous decision to transfer the disputed domain name to the Complainant, it is doing so on the balance of the present record. It may be that if this Respondent were to exercise its right to pursue this matter in court, with fuller provision for examination of all relevant evidence from both parties, a more fully documented result may be reached.

Finally, in confirming its order to transfer the disputed domain name to the Complainant, the Panel notes that this is without prejudice to any trademark rights that may be asserted by third parties in relation to the SUKH SAGAR mark.

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Joan Clark
Sole Panelist

Dated: January 21, 2008