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Generic Top Level Domain Name (gTLD) Decisions |
WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
DM Entertainment Pvt. Ltd. v. Mr. Hemant Kumar
Case No. D2001-1267
1. The Parties
Complainant: DM Entertainment Pvt. Ltd.
F-55A, Lado Sarai
New Delhi, India
Respondent: Mr. Hemant Kumar
13711-72 Avenue,
Surrey Baco, Canada
2. The Domain Name and Registrar
Domain Name: <dalermehndi.com>
Registrar: BulkRegister.com
3. Procedural History
The Complaint was received by WIPO by email and in hardcopy form on October 19, 2001. WIPO has verified that the Complaint satisfies the formal requirements of the Policy, the Rules and the Supplemental Rules and that payment was properly made. The Administrative Panel ("the Panel") is satisfied that this is the case.
The Complaint was properly notified in accordance with the Rules, paragraph 2(a). BulkRegister.com has confirmed that <dalermehndi.com> ("the Domain Name") was registered through BulkRegister.com and that Mr Hemant Kumar is the current registrant. The Registrar has further confirmed that the Policy is applicable to the Domain Name.
On November 1, 2001, WIPO notified the Respondent of the Complaint in the usual manner and informed the Respondent inter alia that the last day for sending its Response to the Complainant and to WIPO was November 21, 2001.
An email was received by WIPO from the Respondent on November 21, 2001, saying that the Respondent was in touch with his attorneys and would submit a reply early the next week. No Response was received. WIPO issued a Respondent Default Notification on November 27, 2001.
The Panel was properly constituted. The undersigned Panellist submitted a Statement of Acceptance and Declaration of Impartiality and Independence.
No further submissions were received by WIPO or the Panel, as a consequence of which the date scheduled for the issuance of the Panel’s Decision is January 24, 2002.
4. Factual Background
Daler Mehndi, Chairman and Managing Director of the Complainant, is claimed by the Complainant to be probably the most famous contemporary Punjabi performing artist, composer and lyricist.
The press cuttings and other material exhibited to the Complaint bear out that claim. Over the years, since at least 1987/88 (the date of release of his first album) he appears to have developed a significant reputation and goodwill under and by reference to his name.
The Respondent, with an address in Canada, registered the Domain Name on December 17, 1999.
On May 23, 2001, Daler Mehndi executed a Deed of Assignment in favour of the Complainant, which was expressed to take effect from November 13, 1996. The subject of the Assignment was the trademark DALER MEHNDI.
On May 31, 2001, the Complainant sought and obtained from the High Court of Delhi interim injunctive relief against a third party who had registered the domain name <dalermehndi.net>. The Judgment, which was exhibited to the Complaint, makes it clear that the Court recognised DALER MEHNDI as a trademark of the Complainant.
5. Parties’ Contentions
A. Complainant
The Complainant contends that the Domain Name is identical or confusingly similar to DALER MEHNDI, a trademark in which it has unregistered rights. It has filed applications for registration of the name, but no registrations have yet come through.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Complainant states that it has never licensed the Respondent to use its trademark. The Complainant further contends that the Respondent is not known by the name Daler Mehndi and states that so far as it is aware, the Respondent has never carried on any business or other activity under or by reference to the name Daler Mehndi. The Complainant is not aware that the Respondent has made any use of the Domain Name since registering it in December 1999.
The Complainant contends that the Respondent registered the Domain Name in bad faith and is using it in bad faith within the meaning of paragraph 4(a)(iii) of the Policy. The Complainant points out that the Domain Name is exclusively referable to the Complainant’s Chairman and Managing Director whose affairs it manages. The Complainant repeats that so far as it is aware, the Respondent has no rights or legitimate interests in respect of the Domain Name and claims that the Domain Name cannot be used by way of business, without there being a severe risk of confusion or deception. This is a view endorsed by the High Court of Delhi in respect of the sister domain name, <dalermehndi.net>, the subject of the High Court action referred to above. The Complainant accepts that it has no evidence of any use or indeed any planned use of the Domain Name by the Respondent, but contends that the bad faith claim should succeed on the basis of the rationale set out in the case of Cellular One Group v. Paul Brien (WIPO Case No. D2000-0028) (see below).
B. Respondent
The Respondent has not responded.
6. Discussion and Findings
General
According to paragraph 4(a) of the Policy, the Complainant must prove that
(i) The 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 interest in respect of the Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith.
Where a Respondent who has been properly notified of the Complaint fails to respond, the Panel is entitled to draw such inferences as it considers appropriate (Rule 14(b)). The facts of this case speak for themselves.
Identical or confusingly similar
The Domain Name comprises the Complainant’s unregistered trademark DALER MEHNDI and the generic <.com> suffix.
The Complaint contains substantial and uncontradicted evidence to the effect that the Complainant and its predecessor, the Complainant’s Chairman and Managing Director, have generated a very substantial business under and by reference to the name DALER MEHNDI. The Panel adopts with respect the finding of the High Court that the Complainant has common law rights in the name DALER MEHNDI.
Accordingly, the Panel finds that the Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights.
Respondent’s Rights or Legitimate Interests
While the obligation is on the Complainant to prove all the elements of paragraph 4(a) of the Policy, paragraph 4(a)(ii) calls for the Complainant to prove a negative. Accordingly, for the purposes of paragraph 4(a)(ii) it is sufficient for the Complainant to make out a prima facie case and, that having been done, the obligation is then on the Respondent to answer that prima facie case.
The Complainant’s case is that the Respondent is not known as Daler Mehndi and has never been licensed or otherwise authorised to use the Complainant’s name. Nor, so far as the Complainant is aware, has the Respondent ever traded under the name Daler Mehndi. The website contains nothing having any bearing on the Complainant or the name of the Complainant.
The Panel finds that the Complainant has made out a very strong prima facie case under this section.
In the absence of any Response and in the absence of any obvious reason for supposing that the Respondent might have rights or legitimate interests in respect of the Domain Name, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
Bad Faith
A non-exhaustive list of examples of circumstances which constitute bad faith registration and use within the meaning of paragraph 4(a)(iii) of the Policy is to be found in paragraph 4(b) of the Policy.
Each of the examples set out in paragraph 4(b) of the Policy requires the Respondent to have had the Complainant and/or the Complainant’s trademark in mind when registering the Domain Name in issue.
While the fame of Daler Mehndi is predominantly in the Indian Sub-Continent, it is a peculiarly distinct name and although the Respondent’s address is in Canada, the Panel takes the view, on the balance of probabilities, that the Respondent had the Complainant’s trademark in mind when registering the Domain Name.
However, that in itself is not enough. All the examples set out in paragraph 4(b) of the Policy involve the Respondent having an intention at the time of registration to cause damage to the Complainant (whether by way of extorting money, disrupting the Complainant’s business, etc.) or to take a free ride on the back of the Complainant’s goodwill. The problem here for the Complainant, which the Complainant recognises, is that the Complainant has no evidence as to the Respondent’s state of mind when the Respondent registered the Domain Name, nor is there any evidence of use.
It is in these circumstances that the Complainant has cited the case of Cellular One Group v. Paul Brien (WIPO Case No. D2000-0028), in an attempt to demonstrate Respondent's bad faith.
The Panel has no hesitation in adopting the rationale of the Panelist in that case, Thomas D. Halket, the relevant part of which reads as follows:-
"The Panel is mindful of the requirement of Paragraph 4(a)(iii) of the Policy that the Respondent must both register and use the domain name in question in bad faith. See, e.g., World Wrestling Federation Entertainment, Inc. v. Michael Bosman, Case No. D99-0001 (January 14, 2000). But the Panel finds that the Complaint here does not allege any facts which would constitute use of any kind. It does allege that Domain Name was registered either to attract the public and divert Internet traffic away from the official Cellular One Group web site or for the purpose of selling the Domain Name to Complainant, but these are mere allegations with no words or deeds of Respondent sited to support them. Indeed, Respondent appears to have taken no action with respect to the Domain Name other than to have registered it, a state of affairs which the Complaint itself admits. In fact, he has ignored both a letter from the Complainant as well as the Complaint in this action. The question is thus presented as to whether no action at all can ever constitute use of a domain name in bad faith.
Paragraph 4(b) of the Policy provides some guidance on this question. It provides:
"b. Evidence of Registration and Use in Bad Faith. For the purposes of Paragraph 4(a), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location."
Subparagraphs (ii), (iii) and (iv) are not applicable here. There is no evidence of a pattern of conduct required by (ii), the Respondent is not the competitor of the Complainant as required by (iii) and there is not the use of the Domain Name required by (iv). Thus, the express factors in paragraph 4(b) reduce to whether the circumstances indicate that the Respondent registered the Domain Name in order to improperly sell it.
While in most situations of non-use, it may be impossible to draw any conclusion about a party’s intent to sell, the facts here do permit such an inference. It has been noted that the Domain Name contains only Complainant’s coined registered trademark and the country name "China." It would be difficult, perhaps impossible, for Respondent to use the Domain Name as the name of any business, product or service for which it would be commercially useful without violating Complainant’s rights. Accordingly, in the absence of any claim by the Respondent that he intends to do otherwise, it is a permissible inference to conclude, and the Panel does conclude, that subparagraph (i) is applicable to the instance situation.
The Panel, however, also notes that subparagraphs of Paragraph 4(b) are not intended to be the exclusive criterion of bad faith use. The Panel believes that bad faith use can also exist in situations, such as the instant one, where (i) the Domain Name contains in its entirety, and is for all essential purposes only, Complainant’s trademark, (ii) such trademark is a coined word, has been in use for a substantial time prior to the registration of the Domain Name and is a well known mark, and (iii) Respondent has alleged no good faith basis for use by it of the Domain Name. Among other things, in these circumstances and absent a transferral, Complainant is deprived of the use of the Domain Name and must always be concerned about the possibility of a confusing future site. And this harm to the Complainant is not balanced by a showing of any legitimate use or potential use by Respondent.
Accordingly, the Panel finds that the Domain Name violates Paragraph 4(a)(iii) of the Policy."
As indicated, the Panel adopts that reasoning in its entirety and finds that the Domain Name was registered in bad faith and is being used in bad faith within the meaning of paragraph 4(a)(iii) of the Policy.
7. Decision
In light of the foregoing findings, namely that the Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights and that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Domain Name was registered in bad faith and is being used in bad faith, this Complaint succeeds.
The Panel directs that the Domain Name, <dalermehndi.com>, be transferred to the Complainant.
Tony Willoughby
Sole Panelist
Dated: January 24, 2002
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