Generic Top Level Domain Name (gTLD) Decisions

e-enterprises

[Contact details omitted]

Administrative Contact, Billing Contact:

Network op Centre net4india

[Contact details omitted]

Technical Contact, Zone Contact:

Network op Centre net4india

[Contact details omitted]

On August 28, 2000, the Respondent was notified of the Complaint filed by the Complainant and opportunity was granted as per the Rules for filing of a Response.

The Administrative Panel finds that the WIPO Center has satisfied its notification obligations under Rule 2(b).

The Center on September 21, 2000, received response dated 17^th September from the Respondent. In view of this, the Center, on September 25, 2000, gave an acknowledgment of the Response to the Respondent and informed the Respondent that the Administrative Panel would be appointed as per the Rules.

On October 10, 2000, the Center appointed an Administrative Panel consisting of a single member viz., Maninder Singh and this was notified to the Complainant and the Respondent.

The language of the administrative proceedings is English.

Complainant in this administrative proceeding is a company duly registered under Indian Companies Act, 1956.

The Complaint is based on the trademark and corporate trade name and service mark 'Maruti'.

The goods and services in connection with which the mark is used by the Complainants include manufacturing of and dealing in automobiles, motor cars, vans, apparatus for locomotion by land, bus bodies and automobile parts and fittings, industrial oils and greases.

The Complainant further intend to use the mark in respect of goods and services in future as to garage keepers and suppliers of and dealers in petrol, electricity and other motive power for motors and other things and iron founders, mechanical engineers and manufactures of machinery, etc.

The company Maruti Ltd. was incorporated under the provisions of Indian Companies Act, 1956, on June 14, 1971. On October 30, 1980, the Central Legislature (Parliament) of India passed the Maruti Limited Act, 1980, which acquired the undertaking of the aforesaid company. On February 24, 1981, Maruti Udyog Limited was incorporated under the Indian Companies Act, 1956, as a Government Company for modernization of Indian automobiles industry and production of fuel-efficient vehicles. It is popularly known as Maruti.

The trademark 'Maruti' of Complainant is duly registered with respect to vehicles, bus bodies, automobile parts and fittings, under the Indian Trade and Merchandise Marks Act, 1958, since October 25, 1976. The Complainant No.1 has also applied for the registration of the trade mark Maruti and Wing device in class 4 in respect of industrial oils, greases and lubricants and the trade mark Maruti in class 9 in respect of audio systems for the vehicles under the Trade and Merchandise Marks Act, 1958.

The trade mark 'Maruti' and the logo of Wing device with word/mark 'Maruti' underneath is also registered under the relevant trade mark laws in nineteen countries, namely India, Poland, Italy, Portugal, Malta, Nigeria, Sri Lanka, Argentina, Nepal, Hungary, France, Australia, Uruguay, Ethiopia, Zimbabwe, Kenya, South Africa, Sudan and Egypt.

The Complainant has used the mark since a very long time. Since December 1983, till date the Complainant has sold 2.9 million vehicles including the domestic sales and export to 36 countries across the world. The Complainant has sold 16,50,826 number of its most popular small car namely Maruti 800. The domestic sales during the said period were 15,47,184 numbers and the export sales during the said period were 1,03,642 number of vehicles. Complainant is exporting vehicles under the trade name and trademark 'Maruti' to the countries in the continent of Americas, Asia, Middle East, Africa, Europe & Oceania.

The Complainant has since 1983, expended enormous amount of money in publicizing and promoting their Maruti trade mark/ trade name and these have appeared in various prominent newspapers, magazines and the electronic media including the satellite television channels and radios..

The trademark 'Maruti ' has also been used by Complainant in relation to all its stationery articles including letterheads, visiting cards, order forms, bill books, envelopes, etc. and in relation to all the sales promotion materials such as brochures, catalogues, price lists, etc.

The Complainant is the registrant of the following domain names containing word Maruti: 'Marutiudyog.com', 'Maruti.net', 'Marutizen.com', 'Marutiesteem.com', 'Marutibaleno.com', 'Marutiomni.com', 'Marutiomni.com', 'Marutigypsy.com', and 'Marutiwagonr.com' with respect to its world wide web site which provide up to date information about the Complainant and its products.

That the complaint is based on the trademark and corporate trade name 'Maruti'.

That the domain name 'Marutidealers.com' is identical and confusingly similar to the trade mark in which the Complainants have a statutory as well as a right in common law, by virtue of long and continuous use and being the registered proprietors thereof.

That the Respondent has no rights or legitimate interests in respect of the domain name 'Marutidealers.com'.

That based on its long and continuous use, the mark 'Maruti' is associated exclusively with Complainants and their mark is very well known to the general public.

That the trademark 'Maruti' is registered in nineteen countries including India as aforesaid. The registration of the aforesaid trade mark is a prima facie evidence of the validity of the said trade mark under the relevant trade mark laws in which the said trade mark is registered.

That the trademarks 'Maruti' is highly distinctive on account of its acquired strength due to extensive use.

That the Complainant has acquired considerable reputation and goodwill in the use of the trademark 'Maruti'. On account of the outstanding reputation and goodwill in the use of the trade mark 'Maruti', the exclusive use of the trade mark 'Maruti ', the extensive advertising of the said mark and the inherently strong nature of the said mark, the purchasing public and the trade associate goods bearing the mark 'Maruti' solely with the complainants

That the trade mark 'Maruti' has inherited and subsequently acquired a vast reputation so that the use of the said trade marks or variation thereof, in relation to any goods, would create immense confusion and deception in the trade and result in passing off of such traders goods as those of the Complainants.

That the Complainant has since 1983, expended enormous amount of money in publicizing and promoting their 'Maruti' trade mark/trade name.

That on account of priority in adoption and use, the Complainant is the proprietors of the trade mark and trade name 'Maruti' and being so, are exclusively entitled under the relevant statutory laws of the countries in which the trade marks 'Maruti' and '' are registered and common law rights to use the said mark to the exclusion of all others.

That the Respondent in the present dispute has registered domain name 'Marutidealers.com' and thereby misappropriating illegally and without authority the trade mark 'Maruti', which is exclusive property of the Complainant. The media, newspapers and general public refer to the complainant as `Maruti'. The suffix `dealers' used after the trademark of the complainant `Maruti' means the dealers of the complainant.

That the Complainants trade mark 'Maruti' is already perceived as a leading name in the automobile industry, being the trademark of one of the most successful joint ventures in the automobile sector.

That the Complainant is the registrant of various domain names containing word 'Maruti' as aforesaid. The Respondent has not hosted any website after registering the domain name and the same has been registered only to encash upon the goodwill and reputation of the complainant.

That under these circumstances, if the Respondent is allowed to proceed to operate the web site under the said domain name, the potential customers would be induced to:

- subscribe to the services of the impugned web site to deal with the Respondent believing it to be licensed or authorized by the Complainants;

- believe that the Respondent has some connection with the Complainants or in terms of a direct nexus or affiliation with the Complainants or either one of its joint venture partners;

- believe that the Respondent is carrying on activities that has been endorsed by the Complainants and services/goods that are sought to be offered by the Respondent have the same level of quality and reliability that is synonymous with the goods and services of the Complainants

That the Respondent therefore, to derive illegal benefit, has misappropriated the trademarks of the Complainant in order to pass off its goods and services as for those of the Complainant. That the Respondent's registration of the domain name identical to the trademark of the Complainant is aimed at diverting the business of the Complainants by the tarnishment of the asset, which is the trademark 'Maruti' owned and used exclusively by the Complainant.

That the Respondent has no rights or legitimate interests in respect of the domain name at issue due to the Complainant's "long prior use" of the mark.

That by adopting the Complainant’s trade mark and registering the impugned domain name 'Marutionline.com' the Respondent has deliberately and intentionally attempted to create likelihood of confusion for the trade marks and the aforesaid web sites of the Complainants and other online location as to source, sponsorship, affiliation and endorsement to get financial gain.

That the Complainant does not have any exclusive right to use the trade mark MARUTI and that there is no attempt to pass off its website as having any affiliation or sponsorship of the complainant.

That the Complainant has a good reputation only as an automobile company but has no repute as a company providing, sponsoring or affiliating any web page or services on the internet.

The Respondent admits the following:

That the Respondent's intention is to provide a platform where information about dealers of maruti cars can be obtained. The word `dealers' is a generic word and cannot be exclusive to any party.

That there is a conspicuous disclaimer disowning any affiliation, sponsorship etc., to the complainant on the respondent's website. That the commercial interest for this website is the advertisements, which the Respondent can book on it. That the Complainant does not have a similar website.

From the facts narrated on behalf of the Complainant, there is no doubt that MARUTI is a well-known mark/name, which has attained distinctiveness/secondary meaning with the Complainant. The Respondent admits this position but seeks to raise a defense that it is only hosting a website for providing information in relation to dealers of the Complainant. The Respondent nowhere states that it has obtained any consent from the Complainant for this purpose.

There is no doubt that the domain name registered by the Respondent is identical/confusingly similar to that of the complainant and in any case there is every likelihood of confusion in the mind of the users that there is a connection/sponsorship/affiliation between the complainant and the Respondent. The Respondent further admits that he has hosted the website under the impugned domain name with a view to collect advertisements. It is obvious that collection of such advertisements by the Respondent would primarily be due to the popularity of the name and mark of the complainant. This clearly expresses lack of bona fides and Good Faith in the registration of the impugned domain name by the Respondent. It is obvious that the Respondent has no legitimate interest in the impugned domain name.

It is open to the Respondent to host a website incorporating details of any car dealer(s) under any other name which is neither identical nor similar to that of the respondents. I therefore find that the registration of the impugned domain name by the Respondent is in Bad Faith in as much as the same is an intentional and deliberate attempt by the Respondent to attract, for commercial gain, Internet users to its website. This squarely falls under the definition of Bad Faith Registration in Section 4(b) of the Policy.

Under Paragraph 4(a) of the Policy the Complainant must prove each of the following:

(1) That the domain name registered by the Respondent is identical or confusingly similar to a service mark or trade mark in which the Complainant has rights; and

(2) That the Respondent has no legitimate interests in respect of the domain name; and

(3) That the domain name has been registered and used in bad faith.

All the above conditions are fully satisfied in the present Complaint.

In view of all the above mentioned facts and circumstances, it is found:

That the Respondent's domain name "marutidealers.com" is identical to the trade mark/name MARUTI in which the Complainant has rights;

That the Respondent has no legitimate interest in the domain name

"marutidealers.com";

That the registration of the domain name "marutidealers.com" is a "Bad Faith registration".

The Panel decides that the Respondent's domain name "marutidealers.com" should be transferred to the Complainant.

Maninder Singh
Sole Panelist