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NIS Sparta Ltd. v. VenturaDomains [2004] GENDND 1233 (5 September 2004)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

NIS Sparta Ltd. v. VenturaDomains

WIPO Case No. D2004-0544

1. The Parties

The Complainant is NIS Sparta Ltd., Sudarshan Munjal Marg, Kalkaji, New Delhi of India, represented by Anand & Anand, India.

The Respondent is VenturaDomains, Stockholm of Sweden.

2. The Domain Name and Registrar

The disputed domain name <nisspartaonline.com> is registered with OnlineNic, Inc. d/b/a China-Channel.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 22, 2004. On July 22, 2004, the Center transmitted by email to OnlineNic, Inc. d/b/a China-Channel.com a request for registrar verification in connection with the domain name at issue. On July 23, 2004, OnlineNic, Inc. d/b/a China-Channel.com transmitted by email 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 an amendment to the Complaint on July 29, 2004. The Center verified that the Complaint together with the amendment 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 July 30, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was August 19, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 23, 2004.

The Center appointed David Levin Q.C. as the sole panelist in this matter on August 27, 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.

4. Factual Background

The Complainant, NIS Sparta Limited is a company originally incorporated under the Indian Companies Act, 1956, under the name NIIT World Trade Corporation Ltd. (‘NIIT’) which changed its name to the current name on June 20, 1996. NIIT Limited, a global IT company engaged in the business of inter alia providing education and training in the field of computers and information technology had created the National Institute of Sales (NIS) in 1991, as a separate sales education division to provide training solutions for marketing and sales professionals.

From information obtained from the OnlineNIC WHOIS database, the domain name in question, <nisspartaonline.com>, was registered to the Respondent on April 21, 2004.

5. Parties’ Contentions

A. Complainant

Trademarks and Service Marks

The trademark/ service mark NIS is an acronym coined from National Institute of Sales which had been extensively used by NIIT Limited in relation to its NIS Business from 1991 until 1996. NIS is an inherently distinctive trademark having no obvious or inherent meaning. NIIT Limited has from time to time filed various applications for registration of the trademark NIS and various other trademarks incorporating the NIS trademark.

The Complainant’s Rights to the Marks

By an Agreement dated June 21, 1996, NIIT appointed the Complainant to conduct and develop the existing and future NIS Business. As part of the arrangement, NIIT relieved itself of all management, control and financial obligations in relation to the NIS Business and NIS SPARTA was made completely responsible for the independent development of the NIS business. NIS SPARTA was, inter alia, granted the right to use the trademarks NIS and the NIS logo and also to use and exploit the technical know-how.

The Complainant has been using the trade name/ trademark/ service mark NIS SPARTA in relation to the NIS Business of NIIT Limited since 1996. The trade name/ trademark/ service mark NIS SPARTA is a combination of the coined mark NIS and the word SPARTA that have been arbitrarily combined by the Complainant. Being an arbitrary composite trademark, NIS SPARTA is inherently distinctive of the products and services offered by the Complainant. The pending trademark applications for the mark NIS SPARTA (No. 812830 in class 16 and Application No. 812831 in class 9) were also assigned to the Complainant by NIIT Limited in the year 2001, as a result of which, the Complainant is the proprietor of the trademark NIS SPARTA in relation to the said business.

Eventually by way of a Deed of Agreement-cum-Assignment dated March 26, 2001, NIIT assigned its rights in the trademark/ service mark NIS and various other marks incorporating the trademark NIS including but not limited to NIS SPARTA (the marks numbered 22 in all) to the Complainant. Included in the marks were the registered trademarks for NIS of which the Complainant is now the registered proprietor in India as follows:

S. No.	Trade Mark	Reg. No.	Date	Class
1.	NIS (Solid)	553573B	January 28,  1991	9
2.	NIS (Solid)	553580B	June 28, 1991	16
3.	NIS (Empty Logo)	554040B	July 8, 1991	9
4.	NIS (Empty Logo)	554041B	July 8, 1991	16

The Agreement/Assignment also assigned rights in relation to artistic copyright in six further representations of the NIS word or logo either alone or in combination with other words. One of the artistic copyright items was the representation of the phrase ‘NIS SPARTA ONLINE LEARNING IS COOL’ which was then the subject of a pending copyright application. In due course that application was registered by the Indian Copyright Office in favour of NIIT Limited under registration No. A-60156/2001, and by reason of the earlier Deed of Agreement/Assignment the rights in and to that registration passed to the Complainant.

The Complainant maintains that it has a team of over 600 training consultants and associates drawn from diverse backgrounds such as engineering, management sciences, social sciences and financial disciplines to undertake its work in a diverse range of commercial fields. With five offices in India and 107 regional centres, it claims to have provided training and consulting to over 550,000 professionals in over 350 companies across five countries.

According to the Complainant the trademarks/ service marks NIS and NIS SPARTA have been used by it in relation to various products and services offered by it and also for related goods such as computer software, printed manuals, publications, magazines, study materials etc. The Complainant has devoted considerable resources in the form of time, money and effort in the promotion and publicity of its products and services under the trademarks NIS & NIS SPARTA in print and electronic media. By reason of its promotional activities and use of the trademarks/ servicemarks NIS and NIS SPARTA the Complainant maintains that the marks have come to acquire a reputation and goodwill that is truly trans-border in nature.

Internet Activities

The Complainant maintains a considerable presence on the Internet through its website “www.nissparta.com”. In particular the website “www.nissparta.com” contains information about the Complainant, its solutions and services, methodologies, training programmes, online programmes, contact details, press room etc. The domain name <nissparta.com> was registered by the Complainant in 1997, and has been continuously used in respect of its website since then.

The Complainant has for the last several years been the Registrant of the domain name < nisspartaonline.com>. The Complainant’s website “www.nisspartaonline.com” provided detailed information about the Complainant’s activities, solutions and services and also its contact details. The said domain name was renewed annually by the Complainant by paying the requisite annual fee until April 21, 2004. However, due to an inadvertent error in the Complainant’s office, the registration of the said domain name was not renewed and expired on April 21, 2004. The error was realized when the Complainant received complaints from its clients who had been formerly communicating with the Complainant at the aforesaid website. Thereafter, the Complainant’s queries revealed that the domain name <nisspartaonline.com> had been registered by the Respondents who have activated a pornographic site at that address.

An Internet user, who wishes to reach the Complainant’s website, would be expected to type in the corporate name “NIS SPARTA”, at one of the various search engines. The search result would include the Respondent’s web site as well as the web sites of the Complainant. This will lead the Internet user to believe that the Complainant is associated with or owns the web site bearing the domain name <nisspartaonline.com>. The scope of confusion is further compounded by the fact that the Complainant has operated the website “www.nisspartaonline.com” for the last several years and the Complainant’s clients have been communicating with it via the said website.

The Complainant maintains that in the circumstances set out above:

(i) The domain name <nisspartaonline.com> incorporates the Complainant’s trademarks/service marks NIS and NIS SPARTA in which the Complainant has rights, both by virtue of a statutory registration as well as by virtue of a long and continuous use;

(ii) The Respondent has no rights or legitimate interests in respect of the domain name <nisspartaonline.com>;

(iii) The domain name <nisspartaonline.com> has been registered and is being used in bad faith;

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

Since the Panel was appointed on August 27, 2004, it has been informed by the Center that an offer has been received by the Center to sell the domain name <nisspartaonline.com> to the Center for US$1,000. The source of this offer is uncertain. It was contained in a reply to the email notification to the Respondent of the Notification of Appointment of Panel together with a copy of the letter relating to Transmission of Case File addressed to the Administrative Panel. It is unclear whether the offer was genuine or was made with the authority of the Respondent. In the circumstances the Panel has ignored the existence of the offer.

6. Discussion and Findings

This Panel, as directed by paragraphs 14(a), 14(b) and 15(a) of the Rules, comes to its determination on the basis of the statements and documents submitted, in accordance with the Policy, the Rules and principles of law that it deems applicable. The Panel is entitled to draw such inferences as it deems appropriate on the basis of Respondent’s lack of response to the complaint, and give such weight as it considers appropriate to the Complainant’s undisputed representations.

A. Identical or Confusingly Similar

The Panel finds that the domain name <nisspartaonline.com> incorporates the Complainant’s trademarks/ service marks NIS & NIS SPARTA and is hence confusingly similar to the Complainant’s trademarks. That part of the domain name, which is “nissparta” is identical to the Complainant’s trademark. The addenda “online” in the domain name does not prevent the domain name from being confusingly similar to the Complainant’s trademark: see Barclays Bank PLC v. Mr. Mohammed Hassan, (WIPO Case No. D2001-0253) in relation to <barclaycardonline.com>, <barclaycardonline.net>, <barclaycard-online.com> and <barclaycard-online.net>; Calvin Klein Trademark Trust and Calvin Klein, Inc. v. Steven Heiberger and Legacy Development USA Corp. (WIPO Case No. D2002-0336) in relation to <calvinkleinonline.com>; Habib Bank AG Zurich v. Jay Smith (WIPO Case No. D2003-0216) in relation to <habib-bankonline.com>; Merck KGaA v. Blue Sea Co. Inc (WIPO Case No. D2003-0394) in relation to <merckonline.com> wherein it has been held that the suffix “online” is a generic term and does not differentiate the disputed domain name from a trade or service mark.

Indeed it was found in Marie Claire Album v. Marie-Claire Apparel, Inc. (WIPO Case No. D2003-0767), that the addition of the word “online” aggravates the likelihood of confusion and this Panel finds that in the present case there is an increased likelihood of confusion given that the domain name has been used by the Complainant as part of its promotion of its online activities for many years until April 21, 2004.

B. Rights or Legitimate Interests

The Respondent has made no claim to any rights/ legitimate interest in the domain name <nisspartaonline.com>.

Given that

(a) the Respondent is not, either as an individual, business or other association commonly known by the name NIS or NIS SPARTA;

(b) the Complainant has not licensed or otherwise permitted the Respondent to use its trademarks/ service marks NIS and NIS SPARTA nor to apply for any domain name incorporating the said trademarks;

(c) there is no explanation by the Respondent for the use of the domain name <nsisspartaonline.com>, a name which is a unique and arbitrary combination of the Complainant’s trademark NIS with the word SPARTA and has been adopted and extensively used by the Complainant well prior to the Respondent’s registration;

the Panel finds that the Respondent has no Rights nor Legitimate Interests in the disputed domain name.

C. Registered and Used in Bad Faith

Given the Respondent’s lack of rights and legitimate interests, and the fact that the Complainant’s mark is a unique and arbitrary combination of words the Panel determines that the only reasonable inference to draw from the facts established by the Complainant is that the purpose of the registration by the Respondent is to misappropriate the reputation associated with the Complainant’s well-known and famous trademarks/ service marks NIS & NIS SPARTA. The Panel finds also that the fact that the domain name <nisspartaonline.com> is the entrance to a pornographic site leads to the inference that this site provides financial gain for the Respondent as a result of the aforesaid misappropriation. This amounts to bad faith under paragraph 4(b)(iv) of the Policy.

The Panel is satisfied and concludes that the trademarks NIS & NIS SPARTA are solely associated, recognized and identified with the Complainant’s business and have acquired the status of well-known trademarks in India and elsewhere. Registration of a well-known trademark of which it may be properly inferred that the Respondent was aware can amount to bad faith: see Marie Claire Album v. Marie-Claire Apparel, Inc. (supra); Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co. (WIPO Case No. D2000-0163) and Adidas-Salomon AG v. Domain Locations (WIPO Case No. D2003-0489).

On the evidence the Panel finds that both the registration and the use by the Respondent of the domain name <nisspartaonline.com> has been undertaken in bad faith.

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 <nisspartaonline.com> be transferred to the Complainant.

David Levin Q.C.
Sole Panelist

Dated: September 5, 2004