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Express Publications (Madurai) Ltd. v. Murali Ramakrishnan [2001] GENDND 990 (21 May 2001)

The Complainant is Express Publications (Madurai) Ltd., a company registered under the Indian Companies Act 1956 and having its registered office at Express Estates, Mount Road, Chennai-600034, India, and its principal place of business at Chennai, Tamilnadu, India.

The Respondent is Murali Ramakrishnan of 1921 Slippery Rock Road, Naperville, IL 60565, U.S.A.

The dispute concerns the domain name <dinamani.com> (the said Domain Name) registered with Register.Com (the Registrar) of 575, 8^th Avenue, 11^th Floor, New York, NY 10018, U.S.A.

On December 5, 2000, the Complainant submitted a complaint against Fusion Resources Inc. in hard copy to the World Intellectual Property Organization Arbitration and Mediation Center (the Center) for a decision in accordance with 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). The Center assigned the case number D2000-1700 to this complaint. On December 12, 2000, the Center acknowledged receipt of the said complaint. On the same date, the Center sent an e-mail to the Complainant’s legal representative stating that the Complainant or its authorized representative had not signed the complaint; that the Center had not received the required fee and that the Center was unable to access the electronic version of the complaint because it contained a virus. The Center requested the Complainant to re-send the electronic version of the complaint, provide evidence of payment of the required fee and send a signed version of the complaint.

On December 11, 2000, the Center sent the Request for Registrar Verification to the Registrar. On December 15, 2000, the Registrar sent its Whois Results with a cover letter of the same date, confirming that it was the Registrar of the said Domain Name. While in the cover letter it said that the Registrant was the Respondent, in the Whois Results it gave two names, ‘Fusion Resources Inc.’ and ‘Murali Ramakrishnan’ under the heading ‘Organization’.

On December 15, 2000, the Complainant’s legal representative sent an e-mail to the Center enclosing the electronic version of the complaint free of virus and informed the Center that she would send the signed copy of the complaint and the proof of payment of the required fee to the Center shortly. On December 18, 2000, the Center sent an e-mail to the Complainant’s legal representative stating that the electronic version of the complaint still contained a virus.

On January 3, 2001, the Center confirmed with the Complainant’s legal representative that it had received the electronic version of the complaint but had not received the required fee and the signed copy of the complaint. On the same date, the Center sent a reminder to the Registrar for its response to the Request for Registrar Verification since the Center appeared not to have received the communication from the Registrar dated December 15, 2000. On January 5, 2001, the Center received from the Registrar the communication dated December 15, 2000, minus the cover letter.

On January 5, 2001, the Center sent the Complaint Deficiency Notification (the Deficiency Notification) to the Complainant’s legal representative, notifying the Complainant of the formal deficiencies in the complaint namely, that the required fee was not paid in accordance with paragraph 19(a) of the Rules and that the Complainant or its authorized representative had not signed the copy of the complaint as required by paragraph 3(b)(xiv) of the Rules (the deficiencies). The Deficiency Notification required the Complainant to cure the deficiencies within five (5) calendar days. On January 15, 2001, the Center reminded the Complainant’s legal representative that the complaint would be deemed to be withdrawn if the Center did not receive the requested information by January 19, 2001.

On January 24, 2001, the Center sent the Notification of Termination to the Complainant’s legal representative and extended a copy of the same to the Respondent, the Internet Corporation for Assigned Names and Numbers (ICANN) and the Registrar.

On January 25, 2001, the Center received another copy of the complaint against Fusion Resources Inc. On January 28, 2001, the Complainant’s legal representative sent an e-mail to the Center stating that the required fee had been paid on January 19, 2001, and that the details of payment and the signed copy of the complaint had been couriered to the Center on January 20, 2001. She also requested the Center to withdraw the Notification of Termination. On February 9, 2001, the Center informed the Complainant’s legal representative that it could not rescind the Notification of Termination because it had received the e-mail from the Complainant’s legal representative after the Notification of Termination of the complaint. The Center was willing to re-process the case and it assigned a new case number, D2001-0208.

On February 9, 2001, the Center sent the Request for Registrar Verification to the Registrar and informed the Registrar that the complaint formerly known as D2000-1700 had been re-filed under the new case number, D2001-0208. On February 20, 2001, the Registrar sent its Whois Results with a cover letter of the same date, confirming that it was the Registrar of the said Domain Name. While in the cover letter it said that the Registrant was the Respondent, in the Whois Results it gave two names, ‘Fusion Resources Inc.’ and ‘Murali Ramakrishnan’ under the heading, ‘Organization’.

On February 15, 2001, the Complainant’s legal representative sent an e-mail attaching a copy of the complaint to the Respondent and informed him that the complaint had been re-processed and re-numbered as D2001-0208. She extended a copy of the e-mail to the Center.

On February 22, 2001, the Center sent the Notification of Complaint and Commencement of Administrative Proceeding (the Notification) by post/courier (with enclosures) and e-mail (with the complaint but without the attachments) to the Respondent and transmitted by e-mail (without attachments) to the Complainant’s authorized representative and the Complainant’s legal representative. The Center also extended copies of the Notification to ICANN and the Registrar. The Notification set the formal date of the commencement of the administrative proceeding as February 22, 2001, and required the Respondent to submit a response to the Complainant and the Center within 20 calendar days from the date of receipt of the Notification i.e., by March 13, 2001, failing which the Respondent would be considered to be in default.

On March 15, 2001, the Center sent the Notification of Respondent Default to the Respondent and copied it to the Complainant’s legal representative via e-mail. On the same date, the Respondent sent an e-mail to the Center stating that he had sold the said Domain Name in January 2001, and that the Registrar was working on transferring the said Domain Name. On March 16, 2001,the Center acknowledged receipt of the e-mail from the Respondent. On the same date, the Center sent an e-mail to the Registrar requesting confirmation as to whether the Respondent had indeed sold or transferred the said Domain Name and if so, to whom. In response to the e-mail the Registrar responded by its e-mail dated March 16, 2001, that the Respondent had attempted to transfer the said Domain Name but no such transfer had occurred and its records showed that the Respondent was still the registrant of the said Domain Name and that it would not cancel or transfer the said Domain Name while this administrative proceeding was pending. On the same date, the Respondent sent an e-mail to the Center stating that if the Registrar was not transferring the said Domain Name, he would need an extension of time of two weeks to respond to the complaint.

On March 20, 2001, the Center sent an e-mail to the Respondent enclosing the e-mail from the Registrar dated March 16, 2001, and informed the Respondent that the Center would proceed with the appointment of the Panel for this administrative proceeding and that it would send his request for an extension of time to respond to the complaint to the Panel for a decision.

After receiving the Statement of Acceptance and Declaration of Impartiality and Independence from Mr. Hariram Jayaram on March 19, 2001, the Center appointed him to be the panelist (the Panel) on March 20, 2001.

On March 20, 2001, the Center sent the Notification of Appointment of Administrative Panel and Projected Decision Date to the Complainant, the Complainant’s legal representative and the Respondent and copied it to the Panel by e-mail. The Center also sent the Transmission of Case File to the Panel.

On March 22, 2001, on the instruction of the Panel, the Center gave the Respondent until April 6, 2001, to respond to the complaint. On April 4, 2001, the Respondent submitted his response to the Center via e-mail.

On April 9, 2001, the Center sent the Acknowledgement of Receipt (Response) to the Respondent, the Complainant, the Complainant’s legal representative and the Panel by e-mail. On April 12, 2001, the Panel acknowledged receipt of this document.

By its e-mail to the Center on April 20, 2001, the Panel requested the Center to clarify with the Registrar whether Fusion Resources Inc. or Murali Ramakrishnan was the registrant of the said Domain Name. At the request of the Center, the Registrar clarified on the same date that the registrant was the Respondent. On April 21, 2001, the Center conveyed the message of the Registrar to the Panel.

On April 23, 2001, on the instruction of the Panel, the Center gave the Complainant until April 30, 2001, to amend the complaint by substituting the name of the Respondent from ‘Fusion Resources Inc.’ to ‘Murali Ramakrishnan’. On April 30, 2001, the Complainant’s legal representative sent an e-mail to the Center and requested for time until May 7, 2001, to file its amended complaint.

On May 4, 2001, having received the amended complaint from the Complainant, the Center sent it to the Panel via e-mail. On May 8, 2001, the Panel acknowledged receipt of the amended complaint and asked the Center to find out whether the Respondent would like to stand by the contents of his earlier response or file an amended response, in which event, he would be given a week’s time to do so.

On May 8, 2001, the Center communicated with the Respondent in the said manner. The Center gave the Respondent until May 15, 2001, to file his amended response, if any. On May 14, 2001, the Center received an e-mail from the Respondent without any text attached to his message and on May 15, 2001, the Center informed the Respondent of the same.

On May 16, 2001, the Respondent sent an e-mail to the Center stating that he would stand by the contents of his earlier response. On May 16, 2001, the Center acknowledged receipt of the e-mail of the Respondent and informed him that his reply would be transmitted to the Complainant and the Panel.

The Panel finds that the Center has discharged its obligations and responsibilities under the Rules. The Panel will issue its decision based on the amended complaint and the response and in accordance with the Policy, the Rules, the Supplemental Rules and principles of law, which the Panel deems to be applicable.

In its complaint, the Complainant says that it owns Dinamani, a reputed Tamil language newspaper which is published in four Indian cities namely Chennai, Madurai, Coimbatore and Bangalore. It has owned this newspaper for well over 60 years. The name Dinamani is also registered with the Registrar of Newspapers for India (RNI), New Delhi, since 1957 and the registration was renewed in 1960 and 1988. The average net paid circulation of the newspaper, Dinamani based on the reports of the Audit Bureau of Circulation are as follows:-

The circulation figures show the popularity and reach of the newspaper amongst the general public.

In October 1996, upon the Complainant’s authorization, Amitec Software of 156, Baypoint, Parkway, San Jose, CA 95134 (then with offices in Mumbai) registered a site <dinamani.com> with Network Solutions Inc. All news reports published in the newspaper, Dinamani from February 1997, were hosted on the said site. The Complainant used the said site until December 1999 and it was attracting an average of 600,000 page views per month. In December 1998, the Complainant changed its web-hosting agency from Amitec Software to Front Point Systems Inc., U.S.A. This fact was conveyed to Amitec Software which allowed traffic to be redirected from its servers on to the servers of Front Point Systems Inc. in U.S.A. On December 21,1999, the Complainant sent the Registrant Name Change Agreement (the Agreement) duly notarized by an American notary to the Registrant Name Change Group of 505, Huntmar Park Drive, Herndon, VA 20170, U.S.A to transfer the said Domain Name to the Complainant. On January 5, 2000, instead of transferring the said Domain Name, the Registrant Name Change Group chose to revert the said Domain Name to the Internet database. As the Complainant later learned, the reason for this was that the said Domain Name had lapsed because the renewal fee of US$35 had not been paid to Network Solutions Inc. in time.

On January 13, 2000, the Complainant noticed from the Whois database that the said Domain Name had been registered by an entity it thought was Fusion Resources Inc. However, after the complaint was filed and on further enquiries made by the Center, the Complainant learned that the current registrant was Murali Ramakrishnan. To salvage the situation, the Complainant registered a similar sounding domain name <www.dinmani.com> to host the articles appearing in its newspaper, Dinamani. The Complainant used the subscriber database which it had assiduously built up over three years to inform the general public of the new site. Despite these steps taken by the Complainant, there has been a steep drop in page views and the number of visitors visiting the site.

In his response, the Respondent states that he registered the said Domain Name as part of his family domain names, <muraliramakrishnan.com>, <sabitha.net> and <earchana.com>. He is in the process of creating a website for all his family members. He registered all the domain names in the past year. He plans to start a website as soon as he finds an affordable web hosting service.

The Complainant says that it has instituted the present administrative proceeding on account of misappropriation of the trademark "dinamani" by the Respondent. The said Domain Name is identical to the name of the newspaper, Dinamani, owned by the Complainant and is also identical to the domain name <dinamani.com> which was registered for and on behalf of the Complainant by Amitec Software in October 1996. This act of the Respondent was an ‘act of squatting’. The Complainant suffered severe financial loss because the registration of the said Domain Name by the Respondent was attracting an average of 600,000 page views per month, a browsership which had been built over a period of three years. The Respondent has registered the said Domain Name with the sole intention of selling or otherwise transferring the said Domain Name for pecuniary benefit. This is clear from the fact that the Respondent has still not hosted any content on the site. The website as at the date of the amended complaint displays a message "Coming Soon". The Respondent has even entered into correspondence showing his intention of trading the said Domain Name for pecuniary benefit with one Ramesh, who is a well wisher of the Complainant. According to the e-mail forwarded by Ramesh, the Respondent’s reply brazenly states, "I am interested in selling the domain name to you. Please let me know what is the price range you are willing to pay".

The Respondent says that he has checked with the trademark system of U.S.A before registering the said Domain Name and found nothing about the said Domain Name. He does not know anything about the said Domain Name or its registration since he lives in U.S.A. He has a legitimate interest in the said Domain Name because he had registered it as part of his family domain names. He has not tried to make commercial gain or mislead users to his website. After registering the website, he received an e-mail from ramesh@frontpoint.com. The sender of the e-mail wanted to buy the said Domain Name for a price. He was just asking how much the sender of the e-mail was willing to pay for the said Domain Name but did not demand a price or a lot of money to transfer the website. He was merely responding to Ramesh’s request. He was planning to build his website soon. It had been just a year since the registration of the website and he needed time to build it.

Paragraph 4(a) of the Policy envisages that to succeed, the Complainant must establish that:

i) the said Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

ii) the Respondent has no rights or legitimate interests in respect of the said Domain Name; and

iii) the said Domain Name has been registered and is being used in bad faith.

The Complainant must prove that all the aforesaid three elements are present.

The Complainant claims rights in "Dinamani". It owns the Tamil language newspaper by that name, published in four Indian cities for over 60 years. Rights in the word "Dinamani" may accrue to the Complainant if it is registered as a trademark. In its complaint, the Complainant claims to have a statutory right by virtue of "Dinamani" being registered as a trademark. He has not produced any document to show that the trademark is a registered trademark in any part of the world. It is not possible for the Panel to conclude that the Complainant has such a statutory right merely from his bare statement in the complaint. The Complainant also claims rights in "Dinamani" by virtue of long and substantial use. The Complainant has furnished particulars of the average net paid circulation of this newspaper for the years 1981 to 1999 and the figures indicate that the newspaper is read widely in India. Until February 1997, the news items were carried on the site <dinamani.com>, which had been earlier registered as a domain name for and on behalf of the Complainant with Network Solutions Inc. It attracted visits from a sizeable number of Internet users looking for news. The registration of the said Domain Name lapsed on the failure of the Complainant to pay the renewal fee. However, on account of the continuous and long use of "Dinamani" for the newspaper, this word has acquired the status of a common law trademark in which the Complainant has rights.

The Panel has compared the said Domain Name with the Complainant’s common law trade mark "dinamani" and finds that the second level domain "dinamani" is identical letter-by-letter to the Complainant’s common law trade mark.

Under paragraph 4(c) of the Policy, the Respondent may demonstrate his rights and legitimate interests in the said Domain Name by showing inter-alia:

(i) his use, of or demonstrable preparation to use, the said Domain Name or a name corresponding to the said Domain Name in connection with a bona fide offering of goods or services;

(ii) he has been commonly known by the said Domain Name, even if he has acquired no trademark or service mark rights or

(iii) he was making a legitimate non-commercial or fair use of the said Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

In his response, the Respondent does not say that he is using or preparing to use the said Domain Name for goods or services. He is not known by the said Domain Name. However, he says he has registered the said Domain Name as part of his family domain names which include <muraliramakrishnan.com>, <sabitha.net> and <earchana.com>. If in fact he is making a legitimate non-commercial or fair use of the said Domain Name, he should produce the evidence to the said effect. A bare statement is of no help to the Panel. He has in no way explained in what sense the said Domain Name will constitute a part of his family domain names. The Panel is left to wonder whether the said Domain Name or a part of it is the name of a family member of the Respondent. It is not the role of the Panel to indulge in such an exercise.

Paragraph 4(b) of the Policy sets out non-exhaustive circumstances which serve as evidence of the registration and use of a domain name in bad faith. Such circumstances include a situation where a Respondent has registered a domain name primarily for the purpose of selling the domain name registration to the Complainant, the owner of a trade mark or to a competitor for a consideration in excess of the disbursements incurred in registering the said Domain Name. There are allegations and counter-allegations by the Complainant and the Respondent as to who initiated the offer for sale/purchase of the said Domain Name. There is no indication of what the intended price is to enable the Panel to ascertain whether the consideration expected by the Respondent is in excess of his out-of-pocket costs. The Panel is unable to make a finding of bad faith from the exchange of correspondence between the well wisher of the Complainant and the Respondent. However, the Panel notes that the Respondent is an Indian by name, although the contact address is in the United States. The said Domain Name incorporates the name of a well-known newspaper circulated in India and made available to the public at large including those in the United States, through the Internet and he ought to have known that the said Domain Name belongs to the owner of the said newspaper. His acquisition of the said Domain Name should be inferred as having been done in bad faith since he has not substantiated his allegation of the said Domain Name being a part of his family domain names with any evidence.

The Panel finds that the Complainant has proved each of the three elements of paragraph 4(a) of the Policy. It requires that the said Domain Name be transferred to the Complainant.

Hariram Jayaram
Sole Panelist

Dated: May 21, 2001