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Generic Top Level Domain Name (gTLD) Decisions |
WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
DLF Universal Ltd. v. Ricky Warrik
Case No. D2000-1111
1. The Parties
DLF Universal Ltd., DLF Centre, Sansad Marg, New Delhi -110001, India (Complainant).
Ricky Warrik, M-12/8, DLF Phase-II, DLF City, Haryana-122002, India (Respondent).
2. The Domain Name and Registrar
The Respondent is the registrant of the following domain name: "dlf-city.com", registered with Alabanza Inc. d/b/a BulkRegister, BulkRegister.com, Inc., 10 East Baltimore St. MD 21202.
3. Procedural History
The Complaint in this case was filed by e-mail on August 23, 2000, and in hardcopy on August 28, 2000, with the WIPO Arbitration and Mediation Center.
The Center has found that the Complaint satisfies the formal requirements of the Policy, Rules and Supplemental Rules, in accordance with the Rules for Uniform Domain Name Dispute Resolution Policy and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy.
On August 28, 2000, the Center transmitted a request to Alabanza Inc. d/b/a BulkRegister, BulkRegister to verify the following facts:
On September 6, 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. This was done by e-mail. The Administrative Panel finds that the WIPO Center has satisfied its notification obligations under Rule 2(b).
The Center on September 27, 2000, received response from the Respondent.
On October 8, 2000, the Center acknowledged receipt of the response from the Respondent.
On October 30, 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.
4. Factual Background
The Complainant in this administrative proceeding is DLF Universal Limited having its registered office at DLF Centre, Sansad Marg, New Delhi-110001, India. Its principal place of business is New Delhi, although the Complainant has its housing buildings in several other cities of India.
The dispute arises out of the grievance of the Complainant that the Complainant is engaged in the business of real estate development. It has developed DLF City on the outskirts of New Delhi at Gurgaon in the state of Haryana, INDIA. The term "DLF-City" has been exclusively associated with the Complainant.
According to the Complainant the Respondent has registered the domain name "dlf city.com" on June 6, 2000, thereby misappropriating illegally and without authority, the trade/service mark DLF and DLF-City which are exclusive property of the Complainant.
5. Parties Contentions
The Complainant's contentions in brief are as under:
The Complainant, DLF Universal Limited (DUL) along with its subsidiary companies, (hereinafter referred to as "the DLF Group") are engaged in the business of real estate development.
DLF has been a pioneer in real estate development since the independence of India in 1947. The group has an established track record, which has made the name DLF synonymous with good real estate development in & around the Indian capital of New Delhi.
DLF Universal began in 1947, when as a result of the partition of British India into India and Pakistan, the city of New Delhi witnessed a huge influx, resulting in its population doubling overnight. The Indian government was hit by the need to provide for this burgeoning population. DLF took up the challenge and developed as many as 25 urban townships in Delhi, housing half a million residents served by 2,00,000 metres of road, 1,00,000 metres of sewer lines and more than 1,50,000 metres of water mains. It was in South Delhi that well planned development took place – resulting in the creation of several colonies like Greater Kailash, South Extension, Hauz Khas, Rajouri Garden, Model Town etc, which today are considered the most trendy localities for both business houses as well as residents. DLF then went on to develop two townships on Delhi’s north-eastern borders of the State of Uttar Pradesh – Ankur Vihar in Wazirabad and Dilshad Extension near Shahdara.
It is the case of the Complainant that with a view to provide cheaper accommodation in clean environment it started a project at the outskirts of Delhi and named it as "Qutab Enclave Complex". The Complainant has further contended that however, with the efflux of time, this township began to acquire all the characteristics of a unique city, so much so that the city began to be perceived by visitors, residents, corporate houses and taxi drivers as "DLF" alone. It was then that the Complainant decided to rechristen the city as "DLF-City". Since then, the term "DLF-City" has been exclusively associated with the Complainant and has been advertised by them as such.
DLF Universal Limited is the holding and flagship company of the DLF Group. It spans the entire spectrum of real estate activities ranging from development of residential, commercial and recreational complexes to development of infrastructure. DLF Universal Limited has attained a prominent position in the real estate industry. Other companies that form part of the DLF Group are as follows:-
1. DLF Property Management Services Limited
2. DLF Services Limited
3. DLF Recreational Foundation Pvt. Limited
4. DLF Golf Resorts Limited
5. DLF Power Limited
6. DLF Infrastructure Limited.
It has been contended that the annual turnover of the DLF Group is well over Rs. 800 crores and the Complainant today has an unmatchable reputation in the field of real estate and construction and boasts of several of the finest looking buildings and townships that have been constructed in India. Some of the noted buildings that have been constructed by the DLF Group are as follows:-
1. DLF Plaza Tower, which currently houses corporate heavy weights such as British Airways, DuPont, and SmithKline Beecham.
2. DLF Gateway Tower: Universally acknowledged as the ultra-modern corporate landmark on the city skyline, it houses multi-nationals such as Rolls Royce and Svedala.
3. Hamilton Court
4. Windsor Court
5. Regency Park
In the complaint the Complainant has further stated that the DLF Group is well known for constructing recreational outlets as well, the most famous being DLF Gymkhana and DLF Golf Resorts. It is this combination of providing cheaper accommodation in a cleaner environment, along with all necessary amenities such as hospitals, schools, health clubs etc., that has made DLF city or for that matter any other township developed by the DLF Group, an irresistible proposition for individuals as well as corporate houses. In fact, the DLF Group does not stop with construction. It guarantees all follow up services such as electricity supply, water supply, sewerage system, etc.
The Complainant and its group companies have been the recipients of several awards, including interalia, the following:
i) Best stall award for it’s stall "Propshop 98", during the India Home exhibition conducted at Dubai in both 1998 as well as 1999.
ii) Best stall award during the NAREDCO (National Development Real Estate Consultancy Organisation) exhibition conducted at New Delhi in March,2000.
iii) DLF Industries Ltd., which is the leading player in the medium size (2 MW to 150 MW) power plant segment was awarded the prestigious ISO 9001 certification by Lloyds Register Quality Assurance (LRQA) Ltd.
The term "DLF city" was coined by the Complainant to refer to the township in Gurgaon that is considered to be a milestone in the building and real estate sector. DLF City has been heralded as perhaps the largest private sector mega township in Asia. The Complainant is credited with bringing into India the "walk to work" concept, with the result that a significant portion of corporate Delhi has shifted to DLF city.
From the above, the Complainant contends that it is entitled to protection of the DLF trade/service mark under common law by virtue of the fact that the said service mark has been continuously and extensively used by the Complainant since over fifty years. This mark which was newly and freshly coined by the Complainant originally stood for "Delhi Land and Finance" and is thus an invented mark having the highest degree of inherent distinctiveness. Even the term "DLF city" by virtue of it’s extensive use and intensive advertisements has come to be exclusively associated with the Complainant and the goods/ services provided by it.
The trade/service marks, DLF and DLF City, have also been used by the Complainant in relation to all its stationery articles, including letterheads, visiting cards, order forms, bill books, envelopes etc. and in relation to sales promotion materials such as brochures, newsletters etc.
The marks DLF and DLF City have also been used in relation to advertisements inserted in several print media, both national and international, such as newspapers, magazines etc. In each of the aforesaid instances of use, the marks DLF and DLF City are prominently displayed and has thus become the focus of the Complainant’s entire business. Additionally, the customers recognize the Complainant’s business by reference to the marks DLF and DLF City. In the year 1999-2000 the Complainant has spent Rs.2.81 crores for advertisements.
The marks DLF and DLF City, having been extensively used in relation to the business of the Complainant and its group companies, have acquired distinctiveness and is understood and associated by consumers in India as well as abroad as the mark of the Complainant denoting its goods and business.
It is further contended by the Complainant that on account of the high degree of inherent and acquired distinctiveness which the marks DLF and DLF City are possessed of, the use of these marks, or any other phonetically, visually or deceptively similar marks, by any other person would result in immense confusion and deception in the trade, leading to passing off.
The Complainant further informs that it has registered a series of domain names incorporating it’s trade/service mark "DLF", as listed below:
1. "dlfcity.com"
2. "dlfcity.org"
3. "dlfcity.net"
4. "dlfgroup.com"
5. "dlfgroup.org"
6. "dlfgroup.net"
7. "dlfuniversal.com"
8. "dlfuniversal.org"
9. "dlfuniversal.net"
10. "dlfgolfonline.com"
Respondent’s Contentions:
The Respondent's contention in brief are as under:
The Respondent has contended that DLF City is a colony for the people who have come to live in this suburb of Delhi. This colony was earlier promoted by the Complainant as Qutab Enclave and was subsequently changed to DLF City. It is further contended by the Respondent that the Complainant does not own the trade/service mark DLF City. The contention of the Complainant that the name is identical or confusingly similar is not at all a relevant issue inasmuch all national dailies carry the same service/trade mark in advertisements from property dealers advertising properties for sale/rent in this area.
It cannot be imagined that the Respondent is trying to misappropriate the reputation of the Complainant. The Respondent intends to advise buyers of properties in this area about the pros and cons of buying real estate and to form self-help group to counter any high-handedness by the Complainant and which intention is clearly reflected in the pamphlet circulated by the Respondent in national dailies.
Filing of the caveat in the city courts by the Respondent does not help the Complainant because that is only an attempt on the part of the Respondent to protect what is well within his rights.
It is the contention of the Respondent that a common man/buyer of property in India has always been given short shrift in the matters of real estate by big players in the business. The Complainant has registered the website "dlf-city.com" with a view to enable prospective buyers to arrive at an informed decision regarding purchase of properties in this area. It is a sort of information centre to enable other buyers to get into the information at the site registered by the Complainant for their planned purchase of property in DLF City. According to the Respondent, it would be difficult for any one to believe that the Complainant company could claim a right to any website with the name dlf-city prefixed to it. The Complainant is locked in several law suits with residents’ welfare associations for failing to provide what the Complainant had promised at the time of promoting DLF City colony.
6. Discussion and Findings
Paragraph 4(a) of the Policy directs that 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.
Identity and confusing similarity:
It is clear from the record that the impugned domain name is identical to the trade/service marks of the Complainant i.e. DLF and DLF-City. There is no doubt that the trade name DLF and DLF-City belongs to the Complainant and the impugned domain name i.e. "dlf-city.com" by the Respondent is identical and confusingly similar to the trade/service name of the Complainant.
Legitimate interest:
The trade/service name DLF and DLF-City clearly belongs to the Complainant. The Complainant is a well reputed company in the field of development of residential colonies in and around Delhi. The Complainant company is involved in this business for last about five decades. The Complainant is clearly associated with their trade/service name DLF and DLF-City.
On the other hand, the Respondent has not been able to show any justification for adopting the name 'DLF-City' for its domain name on the website . The contentions of the Respondent that the Complainant itself had started the development of the colony as Qutab Enclave which was subsequently changed to DLF-City, does not in any manner help the Respondent. The bald statement of the Respondent that Complainant does not own the trade/service mark DLF-City is also misconceived. Similarly, the contentions of the Respondent that a common man/buyer of a property in India is taken for a ride by the big players in the business and that according to the Respondent the Complainant company is also having a number of litigations against it, are also misconceived and are of no help to the Respondent for the adjudication of the issue involved in the present case.
The Respondent has also neither denied nor has given any answer to a relevant contention of the Complainant that the Respondent has also got registered other domain names such as "Sushantlok.net", "Esselproperties.com" and "Malibutowne.net" which are the trade marks of other reputed parties who are also engaged in the business of real estate and building township.
I also find force in the argument of the Complainant that just because the Respondent has a residential address in the DLF City he is not entitled to claim any right or interest in the registration of a website with the name "dlf-city.com" and for which the Complainant places reliance on another decision of WIPO in case No.D2000-0113 - The Stanley Works and Stanley Logistics, Inc. v. Camp Creek Co., Inc. In that case it has been held that even a retail seller of the products of a Complainant cannot claim any right to use the trade marks of the Complainant for selling his goods by the Respondent. Thus the contention of the Complainant that the Respondent who is fully aware of prior rights of the Complainant in the words DLF and DLF-City, the appropriation of the website "dlf-city.com" by him can never be said to be for a legitimate use, deserves to be accepted.
The Respondent has no right or legitimate interest in the marks "dlf-city.com" due to the Complainant's long prior use of the mark. The Complainant has not licensed or otherwise permitted the Respondent to use the mark(s) or to apply for any domain name incorporating the mark(s). The Respondent cannot claim any right in this name just because he is a resident of DLF City.
Bad faith
I am inclined to accept the reasons given by the Complainant for establishing that the registration by the Respondent is in Bad Faith. The Respondent being an Indian living near Delhi is presumed to be aware of the prior rights of the Complainant in the marks "dlf" and "dlfcity". It was open to the Respondent to create any website under some other domain name for the purpose contended by him for providing service to the persons intending to buy properties. The disputed domain name clearly gives an indication that it is associated with the Complainant and has the potential of inviting customers to deal with the Respondents believing that they may have some relationship with the Complainant. The registration of the Respondent is in Bad Faith.
7. Decision.
The Panel decides that the Respondent's domain name "dlf-city.com" should be transferred to the Complainant.
Maninder Singh
Panelist
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