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Hindustan Petroleum Corporation Limited v. Neel Punatar [2004] GENDND 1130 (15 August 2004)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

Hindustan Petroleum Corporation Limited v. Neel Punatar

Case No. D2004-0351

1. The Parties

The Complainant is Hindustan Petroleum Corporation Limited of Mumbai, India, represented by Anand & Anand, of New Delhi, India.

The Respondent is Neel Punatar of Petaluma, California, United States of America.

2. The Domain Name and Registrar

The disputed domain name <hindpetro.com> is registered with Domainsite.com.

3. Procedural History

The Complaint was received by the WIPO Arbitration and Mediation Center (the “Center”) by e-mail on May 12, 2004, and in hardcopy on May 18, 2004.

On May 12, 2004, the Center transmitted by e-mail to Domainsite.com a request for registrar verification in connection with the domain name at issue. On May 24, 2004, Domainsite.com transmitted by e-mail to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact.

In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed two amendments to the Complaint by e-mail on May 26, 2004. The second Amended Complaint was received in hardcopy on June 1, 2004. The Center verified that the Complaint, together with the amendments to the Complaint, satisfied the formal requirements of 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”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 3, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was June 23, 2004. The Response was filed with the Center on June 23, 2004.

The Center appointed Mary Padbury as the sole panelist in this matter on July 2, 2004. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

By e-mail to the Center of July 21, 2004, the Complainant’s representative forwarded an e-mail from the Respondent of July 13, 2004, asking them to call him and informing the Center that the Respondent had subsequently left a voicemail on July 17, 2004, seeking US$24,000-25,000 for transfer of the domain name. The Center copied this e-mail to the Respondent who indicated his intention to file a response/make a supplemental filing by e-mail of July 27, 2004. To date there has been no response.

4. Factual Background

The Complainant was renamed the Hindustan Petroleum Corporation Limited with effect from 1974 when the Government of India nationalised the Indian entities of Esso and Lube India. The undertakings of Caltex in India were nationalised in 1976, and merged with the Complainant in 1978.

The Complainant is in the business of refining and marketing petroleum products. It is the second largest company in India with a turnover of US$11,000 million in fiscal year 2002-2003. It has 4,800 petrol pumps, 17.3 million consumers and 17 registered domain names in its name.

The Complainant registered the disputed domain name <hindpetro.com> in 1996. “Hindpetro” is also the Complainant’s ticker tape representation on India’s National Stock Exchange and the Bombay Stock Exchange and a common abbreviation for the Complainant.

The domain name registration was not renewed from 2003, as the Complainant thought that a software company would do so based on an invoice which is Annexure F to the Complaint. The Complainant subsequently discovered that the name had been registered by the Respondent.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it coined the mark HINDPETRO with HIND meaning Hindustan for India and PETRO for petroleum products. It contends that the mark has been used continuously by it since 1974, and is associated exclusively with the Complainant in connection with its business. Reference is made to extensive use of the mark in India and elsewhere.

The Complainant contends that the domain name is identical to its trademark.

The Complainant contends that the Respondent has no legitimate interests in the domain name. The Respondent made initial use of the website as a Pay Per Click site (Annexure I to the Amended Complaint) but ceased after notification on behalf of the Complainant. The Respondent is not commonly known as an individual, business or other organisation by the name in issue or been licensed or otherwise permitted by the Complainant to use the mark or apply for a domain name incorporating the mark.

The Complainant contends that there has been bad faith. Reliance is placed on the Complainant’s extensive use of the mark such that use of the mark by the Respondent would lead to passing off. Reliance is also implicitly placed on the Respondent’s request for a transfer sum which seems to be in excess of likely out-of-pocket costs.

B. Respondent

The Respondent relies on the non-registration of the mark in issue in the United States and contends that the Policy does not arbitrate on claims on trade names.

The Respondent also contends that “hind” and “petro” are also generic terms for ‘skilled farmer’ and ‘rock,’ respectively, and are intended by the Respondent to be used for a rock collection and informational site and refers to a demo site.

The Respondent contends that he was contacted by the Complainant first about purchasing the domain name, that the fields of use are different, that he has not made any money off the site to date and that the site relied upon by the Complainant is not owned by him. He claims that the fact that the Complainant is a big company in India does not automatically mean he was aware of their rights.

6. Discussion and Findings

Paragraph 4(a) of the Policy requires the Complainant to make out three elements.

A. Identical or Confusingly Similar

The domain name is identical to a trademark in which the Complainant has rights. Although there is no evidence of registration of HINDPETRO it has clearly been used continuously and extensively as an abbreviation for the Complainant and as its stock exchange representation. As such, the reputation acquired through such use would be capable of protection as a trademark at common law.

B. Rights or Legitimate Interests

If the Panelist finds any of the matters set out in paragraph 4(c) of the Policy to be proved, based on the evaluation of all the evidence, that is said to demonstrate the Respondent’s rights or legitimate interests in the domain name.

There is no evidence, before any notice to the Respondent of the dispute, of any use of, or demonstrable preparations to use, the domain name in connection with a bona fide offering of goods or services in terms of Paragraph 4(c)(i) of the Policy.

There is no evidence that the Respondent is commonly known by the domain name even though it acquired no trademark or service mark rights in terms of Paragraph 4(c)(ii) of the Policy.

Lastly, there is no evidence that the Respondent is making a legitimate non- commercial use of the domain name without intent for commercial gain to misleadingly divert consumers or tarnish the trademark or service mark in issue in terms of Paragraph 4(c)(iii) of the Policy. The demo site does not seem to predate this dispute.

There is no other evidence that the Respondent has rights or a legitimate interest in the domain name, although an explanation is proffered by the Respondent for the choice of the name which relies on a less well known derivation for the roots of the portmanteau word in question.

C. Registered and Used in Bad Faith

There must be evidence of registration and use in bad faith.

If the panelist finds evidence of any of the matters set out in Paragraph 4(b) of the Policy, that shall be evidence of bad faith.

There is evidence of registration of the domain name for the purpose of selling it to the Complainant for valuable consideration in excess of the Respondent’s apparent out-of-pocket expenses in terms of Paragraph 4(b)(i). There is also, arguably, evidence of the matters addressed in Paragraph 4(b)(iv) of the Policy.

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <hindpetro.com> be transferred to the Complainant.

Mary Padbury
Sole Panelist

Dated: August 15, 2004