Generic Top Level Domain Name (gTLD) Decisions

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

The Complainant is Permacel, A Nitto Denko Company of U.S. Highway No. 1 New Brunswick, New Jersey 08903, United States of America.

Complainant is represented by Peter Toren of Sidley Austin Brown & Wood, 875 Third Avenue, New York, New York 10022, United States of America.

The Respondents are Axis Interactive and PRS Permacel Private Limited ("Respondent") of Mumbai, India.

Respondent is represented by Sanjay Asher of Crawford Bayley & Co., State Bank of India Building, N.G.N. Vaidya Marg, Fort, Mumbai 400023, India.

The domain name with which this dispute is concerned is: <prs-permacel.com>.

The Registrar with which the domain name is currently registered is Network Solutions, VeriSign Worldwide Headquarters, 487 East Middlefield Road, Mountain View, CA 94043, United States of America.

3.1 The Complaint was filed electronically on October 17, 2001, and in hard copy on October 22, 2001, at the WIPO Arbitration and Mediation Center (the "WIPO Center").

3.2 On October 24, 2001, the WIPO Center acknowledged receipt of the Complaint and requested verification of the domain name details from the Registrar.

On October 25, 2001, the Registrar verified:

(i) that the domain name is registered with it;

(ii) that the current registrant of the domain name is Axis Interactive ("Axis");

(iii) that its Service Agreement Version 5 (English) is in effect;

(iv) that the domain name is currently in "Active" status;

(v) that the Administrative Contact and Billing Contact for the domain name is:

Ganesh, Shrikanth (SG14471) axisindia@YAHOO.COM
Axis Interactive
188, Alvares House, Veer savarkar Marg
Mahim (w)
Mumbai, XX 400016
India

(vi) that the Technical Contact is:

Services, Administration (SA271-ORG) admin@MEDIA3.NET
Media3 Technologies
North River Commerce Park
Pembroke, MA 02359
United States of America

(vii) that a copy of the Complaint had been served on it.

3.3 A formal deficiency in the Complaint was rectified on November 2, 2001, and on November 5, 2001, all formal requirements for the establishment of the Complaint having been checked by the WIPO Center were found to be in compliance with the applicable ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"), and the ICANN Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules").

3.4 On November 5, 2001, the WIPO Center sent the Notification of Complaint and Commencement of Administrative Proceeding by courier, facsimile and by e-mail to Respondent, Axis, the Administrative Contact and Billing Contact, and the Technical Contact, and by e-mail to the postmaster at the domain name.

3.5 The Administrative Proceeding commenced on November 5, 2001, and the Response was due on November 25, 2001.

3.6 A Response was filed on November 23, 2001.

3.7 Respondent requested the appointment of a three member panel and Panelists Paul E. Mason and Tony Willoughby, and Presiding Panelist Mr. Desmond Ryan, having filed Statements of Acceptance and Declaration of Impartiality and Independence, the Panel was appointed on January 14, 2002.

3.8 The language of the Proceeding is English.

4.1 On November 29, 2001, Complainant submitted a Brief in Reply to the Response and on December 7, 2001, Respondent submitted a request for a right of reply to that Brief. WIPO Center replied on December 4, 2001, and December 11, 2001, respectively pointing out that there are no express provisions in the Policy or the Rules for Supplemental Filing absent a request from the Center or the Panel.

Supplemental Filings will be accepted by the Panel only in exceptional circumstances – see, for example, Document Technologies Inc v. International Electronic Communications Inc, WIPO Case D2000-0270, Gordon Summer p/k/a "Sting" v. Michael Urvan, WIPO Case D2000-0596, Office Club, Ltd. v. John Adem, WIPO Case D2000-1480. No special circumstances appear to be present in this case and accordingly the Panel declines to accept Complainant’s Reply Brief.

4.2 The Panel therefore proceeds to decide the matter in accordance with Rule 15(a) on the basis of the Complaint and the Response.

5.1 The Registrant for the domain name is Axis located at Mumbai in the state of Maharashtra, India. It is common ground however, that Axis holds the domain name as agent for, and on behalf of, PRS Permacel Private Limited and the parties have, throughout the proceedings, proceeded on the basis that PRS Permacel is the Respondent. The Panel also proceeds on that basis.

5.2 Complainant is a large scale producer of tape products, and claims to be the world's leading manufacturer of premium specialised tapes for the electrical and electronics market. It claims a sales revenue for the year 2000, in excess of 128 million dollars. The corporate history of Complainant is that it was founded in 1927, and until 1982, was a division of Johnson & Johnson Inc. In 1982, subject to the reservation in paragraph 5.4 below, Johnson & Johnson sold the Permacel business to Avery Sub., Inc. and in 1988, Avery Sub., Inc. on-sold the business to Nitto Denko.

5.3 Complainant is the owner in the United States and several other countries of trademarks and service marks consisting of, or including the word "Permacel" (Complaint Annex 4). Complainant has, since 1997, been the registrant of the domain name <permacel.com>.

5.4 The sale in 1982, of the Permacel business from Johnson & Johnson to Avery Sub., was subject to a provision stating that Seller (Johnson & Johnson) and Buyer (Avery Sub) agree that seller's subsidiaries in India and Brazil "own, and may continue to own and use the trade marks currently owned by the said subsidiaries……" (Complaint Annexure 10).

5.5 According to Respondent, Permacel's operations in India continued as part of Johnson & Johnson India (Johnson & Johnson Limited), until August 1999, when they were acquired by the PRS Group. The letters PRS stand for "Premchand Roychand & Sons", an Indian financial and business group having its origins in India dating from 1856. A company, Permacel Private Limited, was incorporated on June 22, 1999, and on August 20, 1999, that company changed its name to PRS Permacel Private Limited, the Respondent in the present dispute.

5.6 On August 10, 1999, Johnson & Johnson Limited sold its business to Respondent as a going concern, including its registered and unregistered trademarks. On November 22, 1999, Johnson & Johnson Limited executed a formal assignment of those trademarks to Respondent. The marks so assigned included Indian Registration No. 243699 "Permacel Logo", registered in respect of "adhesive tapes for insulating and hermetically sealing", and a number of unregistered trade marks, including marks consisting of, or including the word "Permacel" in respect of adhesive tapes of various kinds (Response Annexure A).

5.7 Respondent's web-site homepage, accessible at the domain name, prominently features the words "PRS Permacel" and "Permacel and P Logo" device in respect of goods including electrical insulation tape (Complaint Annexure 14).

5.8 It is apparent from correspondence passing between Complainant and Respondent, that the parties have been in communication and correspondence regarding their respective rights in the "Permacel" trade mark (Complaint Annexures 11 and 12), (Response Annexures G and H).

6.1 Complainant's contentions may be summarised as follows:

(i) The word "Permacel" is a fanciful mark which has been widely registered by Complainant both in USA and elsewhere, and which has, through decades of continuous widespread use, acquired extensive secondary significance. Complaint contends that it is a famous mark under the Federal Dilution Act (USA).

(ii) The domain name is confusingly similar to Complainant's name and trademarks comprising as it does, Complainant's trademark with the addition of the prefix "PRS-". Complainant contends that consumers expect to find a company on the Internet at a domain name address comprised at the company's name or mark and cite in support the decision of the US Federal Court in Panavision Int'l, L.P. v. Toeppen, [1998] USCA9 991; 141 F.3d 1316 (9^th Cir. 1998).

(iii) Internet users looking for Complainant's web site may be directed to Respondent's web site, and persons finding Respondent's web site will believe that they have arrived at Complainant's web site or at least that the site is endorsed, authorised, sponsored by or affiliated with Complainant.

(iv) Respondent's registration of the domain name in October 1999, was well after Complainant acquired exclusive U.S. rights in the "Permacel" mark.

(v) As the domain name has global effect and Respondent's rights in the "Permacel" mark are limited to India, Respondent has no rights or legitimate interest in the domain name, is not licensed by Complainant or authorised to use the mark outside India, has no trade mark rights outside India and is not making legitimate non-commercial or fair use of the domain name.

(vi) Complainant's U.S. trade mark registrations constitute constructive notice of Complainant's ownership of the "Permacel" trade mark and Respondent was fixed with such notice at the time of registration of the domain name.

(vii) Respondent chose to register the domain name in order to divert Internet traffic to its web site; or to sell it for substantial profit to Complainant.

(viii) Complainant has no control over products sold from Respondent's web site and the likelihood of confusion is increased by the prominent display of the "Permacel" mark on the web site.

6.2 Respondent's contentions may be summarised as follows:

(i) The domain name is not confusingly similar to the trademark "Permacel" and is sufficiently distinguished therefrom by the addition of the prefix "PRS" and the association thereby created with the Premchand Roychand & Sons Group.

(ii) Respondent has established rights and legitimate interests in the domain name by reference to its ownership of, and succession in title to the trademark "Permacel" in India. Respondent submits that such rights or legitimate interests are not to be denied merely because Respondent's trademark rights may be confined to India. Respondent submits that:

Respondent cites G.A. Modefine S.A. v. A.R. Mani, Case D2001-0537 and other WIPO Panel cases in support of its contention.

(iii) Respondent carries on a substantial business under the "Permacel" trademark with an annual turnover for the year 2000/2001, of approximately 8.85 million U.S. dollars.

(iv) Respondent's use and registration of the domain name is in good faith, having regard to its established trade mark rights, the legitimate business which it conducts under its name PRS-Permacel Private Limited and the clear identification in the domain name and on the web site with the PRS Group.

(v) Complainant has in the past made several unsuccessful attempts to acquire rights to the "Permacel" trademark in India (Response Annexures G and H).

7.1 This dispute is one to which the Policy applies. By registering the domain name, Respondent accepts the dispute resolution Policy adopted by the Registrar. The Registrar's current policy under its domain name registration Service Agreement is the Policy.

7.2 To succeed in its Complaint, Complainant must show that each of the conditions of Paragraph 4(a) of the Policy are satisfied, namely that:

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

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

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

8.1 The domain name contains the trademark "Permacel". However, the effect of this is modified by the prominent PRS prefix. Whilst there was some debate among the Panelists as to whether the domain name was confusingly similar to Complainant's trade mark, it is unnecessary to resolve this question in view of the unanimous conclusions reached by the Panel in relation to the requirements of paragraphs 4(a)(ii) and 4(a)(iii) of the Policy.

8.2 Respondent has demonstrated and Comaplainant has conceded (Complaint paragraph 12(c)) that Respondent has rights in the trademark "Permacel" in India. The Panel accepts Respondent's submission that the Policy does not require that Respondent's right be commensurate with those of Complainant or that they extend throughout the world. The policy does not seek to resolve genuine conflicting interests between parties.

Respondent has further demonstrated that it, and its predecessors in business, have legitimately and extensively used the domain name in connection with the bona fide sale or offering for sale of its goods or services.

Respondent has therefore clearly established the circumstance defined in paragraph 4(c)(i) of the Policy, and has demonstrated its rights or legitimate interests in the domain name for the purposes of paragraph 4(a)(ii).

8.3 Complainant having failed under paragraph 4(a)(ii) of the Policy, the Panel is not required to further consider the issue of bad faith under paragraph 4(a)(iii). For the record however, the Panel notes that there is no evidence of bad faith use or registration by Respondent. Respondent uses the domain name for the purpose of attracting consumers to its web site, but it has a perfect right to do so by virtue of its rights in the trade mark "Permacel" in India and has, in any event, adopted in the domain name its own distinctive prefix "PRS". Complainant's assertion that "Respondent has deliberately registered <prs-permacel.com> in order to improperly divert Internet traffic looking for Complainant's web site; and/or to sell the domain name registration to Complainant", is totally unsupported by Complainant's evidence.

9.1 The Panel decides and orders that:

(i) Complainant has failed to show that Respondent has no rights or legitimate interests in the domain name or that the domain name was registered or is being used in bad faith.

(ii) The Complaint is dismissed.

D. J. Ryan
Presiding Panelist

Tony Willoughby
Panelist

Paul E. Mason
Panelist

Dated: January 23, 2002