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The Chartered Institute of Management Accountants v. Ashok Bhatia [2005] GENDND 648 (5 August 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

NIIT Limited v. National Institute for Information Technology

Case No. D2005-0363

1. The Parties

The Complainant is NIIT Limited, New Delhi, India, represented by Anand & Anand, Attorneys of New Delhi, India.

The Respondent is National Institute for Information Technology, Ramallah, Palestinian National Authority Territories, with a postal address in Jerusalem, Israel, represented by Adel Lafi.

2. The Domain Name and Registrar

The disputed domain name <ni-it.org> is registered with Network Solutions, LLC. It was registered on February 23, 2002.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 8, 2005. On April 8, 2005, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain name at issue. On April 8, 2005, Network Solutions, LLC 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. The Center verified that 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 April 11, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was April 16, 2005. The Response was filed with the Center on April 14, 2005.

The Center appointed the Honourable Sir Ian Barker QC as the sole panelist in this matter on April 26, 2005. 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 is an Indian public company. The name NIIT derives from its trading style, ‘National Institute of Information Technology’.

Since its inception in 1981, the Complainant has been heavily engaged in the business of education in the computer and IT fields. It has delivered IT education and training to India and has over a million alumni. It has also extensively developed and marketed computer software in India and elsewhere.

It has exported its training programmes to many countries world-wide with export foreign currency earnings from 1994–2002 of some US$200 million. Its total income for 2000-01 was 11,389 million rupees and its advertising expenses were 200.35 million rupees. In addition to its educational centres in the principal cities of India, the Complainant has 100 franchise centres in several countries.

The mark NIIT has been used since 1981 for all aspects of the Complainant’s business. The Complainant has registered trademarks for the word NIIT in India, and in 17 other countries. It has relevant registration for the words ‘NIIT LTD’ in Israel, registered on March 2, 1997. The Complainant has domain name registration for <niit.com> and for other domain names incorporating the word “niit”. It advertises throughout Asia, using the mark in a prominent position. The mark is used in all its publications, including training manuals. It advertises in print, satellite television and electronic media.

The Complainant has developed new initiatives such as hyperlinking and multimedia as part of its contribution to education and research into computer software systems. The Complainant has offices in Bahrain and Dubai using the NIIT name.

The Respondent was established in 2000 as a subsidiary of the Palestinian Economic Council for Development and Reconstruction (PECDAR). Its establishment was financed by the World Bank and it was set up as a specialized educational institute to deliver training in IT. As a subsidiary of PECDAR, it is a non-profit organization. The Respondent has entered into partnership arrangements with international IT companies such as Microsoft.

5. Parties Contentions

Complainant

Identical or confusingly similar

The domain name <ni-it.org> is identical to the trademark NIIT in which the Complainant has exclusive rights. It is the trademark and company name of the Complainant, which was derived as an acronym of its trading style: National Institute of Information Technology.

Rights/Legitimate Interests

The Respondent is not, either as an individual, business or other organization, commonly known by the name NIIT. The Complainant has neither licensed nor otherwise permitted the Respondent to use its trademark NIIT or to apply for any domain name incorporating this mark.

Bad Faith Registration

The Respondent has both registered and is using the disputed domain name in bad faith for the following reasons:

(i) The mark NIIT, having been extensively used in relation to the business of the Complainant, has acquired distinctiveness and is understood and associated by consumers worldwide as the mark of the Complainant denoting its goods and business. Any incorporation of the said mark in a domain name is bound to be in bad faith. Further, the Respondent would be aware of the reputation of the trademark NIIT by virtue of being involved in a similar activity.

(ii) Additionally, the trademark NIIT is registered in favour of the Complainant in the territories where the Respondent voluntarily carries on business.

(iii) Any use of the said domain name by the Respondent would necessarily be in bad faith. This is because in the cases of Xpedia Travel.com, WIPO Case No. D2000-0137 and Goodfoodguide.net, WIPO Case No. D2000-0019, it was held that owing to a wide public knowledge of the Complainant’s mark, the Respondent cannot be said to have a legitimate interest in the concerned marks since he ought to have known of the Complainant’s mark.

The Respondent’s website leads to confusion since any consumer would be likely to associate the said website with the Complainant and its goods/services. More specifically, customers would be induced to:

- Believe that the Respondent has some connection with the Complainant in terms of a direct nexus or affiliation with NIIT;

- Believe that the Respondent is carrying on activities that have been endorsed by the Complainant and the services that are sought to be offered by the Respondent are at the same level of quality and reliability as those offered by the Complainant and its group companies.

Thus, the mark NIIT, having been extensively used in relation to the business of the Complainant and its group of companies, has acquired distinctiveness and is understood and associated by consumers worldwide as the mark of the Complainant, denoting its goods and business. The mark can be said to have acquired the status of a “well known mark”, as understood under Article 6 bis of the Paris Convention.

On account of the high degree of inherent and acquired distinctiveness of the mark NIIT, the use of this mark, or any other phonetically, visually or deceptively similar mark, by any other person would result in immense confusion and deception in the trade, leading to passing off.

Respondent

The Respondent’s main activity is to design, implement and deliver innovative training/educational solutions in the field of IT. It delivers high-tech training solutions to individuals and public and private sector personnel and is the top IT training/education provider in the Palestinian National Authority Territories. Its high standards, motivation and dedication to excellence have gained it great respect nationwide. NIIT’s graduates are highly desired for employment by firms and institutes on the national level.

The Respondent has established international partnerships with Microsoft, Bradford Learning, Prometric Inc. and Human Soft Inc. to improve the standards of its services.

The Respondent provided its training/educational services in the Palestinian National Authority Territories with no intention to deliver these services outside these geographic territories.

The reasons why the Respondent uses a postal address in Israel are:

(i) “When established, NIIT operated from PECDAR’s offices. Therefore the postal address of PECDAR was used. The Respondent continued to use this address since it did not see any reason why it should stop using it, and because the address became widely used as a major method of communications directed to the Respondent.”

(ii) “The postal address was used in East Jerusalem, which has been unfairly declared as part of Israel. Whereas the international community considers it as an occupied territory which falls under the United Nation’s Security Council Resolutions no. 242, and 338. Furthermore, East Jerusalem’s status is to be decided through direct negotiations between Palestinians and Israelis according to the Oslo Peace Accord. Therefore, the postal address used cannot be considered Israeli since Palestinians claim the right to retrieve East Jerusalem and declare it the capital of a future independent state.”

The name NIIT, used by the Complainant, reflects a national scope of business because its name is derived from “National Institute of Information Technology”. The name does not reflect any international or worldwide scope of services and goods delivered or marketing that the Complainant claims to possess. The Complainant should have used another name for its international activities. The use of the word “National” in the Complainant’s marketing of goods/services outside its country of origin misleads and confuses consumers to think that the goods and services being marketed and sold by the Complainant outside India (country of origin of the Complainant) are nationally produced at the country of sale.

The word “NIIT” is derived from a world-widely known set of words that are commonly used to reflect the basic nature of the business delivered by the name holder and the area which the holder covers in delivering its business. The name reflects that the holder of the name is an academic organization that is operating on a national level in the field of Information Technology which is exactly the scope of the Respondent. Similar names to “National Institute for Information Technology”, which is the Respondent’s name, could be found in each and every country as such.

The Respondent has been delivering training/educational services since its establishment. The Respondent neither in the past intended nor in the present and future intends to use the Complainant’s trademark to promote its services. That is because the Respondent does not deliver its services outside the areas of the Palestinian National Authority Territories. Therefore, Internet users who seek training services by searching/browsing the Internet will not benefit from the Respondent’s services, unless they are residents of the PalestinianNational Authority Territories.

The Respondent registered the domain name to reflect its name and the nature of its services. All of the Respondent’s trainees/beneficiaries and partners refer to the Respondent by the name NIIT. The Respondent produced copies of advertisements, letters, and business contracts containing the name NIIT and/or the domain name <ni-it.org> as referring to the Respondent.

Trainees/beneficiaries and partners use the Respondent’s website for information about the Respondent’s services and training program offerings. All electronic on-line registrations to the Respondent’s training programs are usually made through the Respondent’s website using the disputed domain name.

The Respondent has never considered the Complainant as a competitor. That is because the Respondent operates only in the Palestinian National Authority Territories, in which the Complainant has no business activities and/or commercial activities. Having said that, the Respondent does not find any commercial gain in using a domain name that is similar to the mark of the Complainant. The Respondent is recognized by the Palestinian Ministry of Higher Education (MOHE) as a Continuing Education Institute. Therefore, the Respondent has bona fide rights and legitimate interests in the disputed domain name.

The Respondent denies that it registered or used the domain name <ni-it.org> in bad faith. The Respondent had no knowledge of the Complainant prior to the date in which it received the Complaint. Therefore, the Respondent was not aware, until that date, of the name NIIT being registered as a mark in other countries. That is because the Respondent had never, and does not intend to, conduct any research about institutes that are engaged in the business of computer education and technology. The business researches conducted by the Respondent, in relation to computer education, were always about giant international software and systems developing firms, such as Microsoft, Oracle, Cisco, etc.

The territories in which the Respondent operates are the Palestinian National Authority Territories. The Respondent is not bound to any legal or procedural actions with regard to trademarks registered in Israel.

During the Respondent’s existence over the Internet, the Respondent had never received any communication from individuals or establishments that confused the Respondent with the Complainant. This is simply because the Respondent’s scope of business has always been at the national level.

The Respondent disputes that the mark NIIT has acquired the status of “well-known mark” or is distinct.

It has never been the intention of the Respondent to sell, rent or transfer the domain name <ni-it.org> to the Complainant or any competitor of the Complainant.

The Respondent has not been engaged in any pattern of conduct resulting in the Complainant not being able to reflect its mark in a corresponding domain name. The Complainant is using the domain name <niit.com> to reflect its mark.

Based on the fact that the Respondent is not interested to attract Internet users from outside the Palestinian National Authority Territories, the Respondent does not find any commercial gain by creating a likelihood of confusion with the Complainant’s mark with regard to its domain name.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel to:

“decide a Complaint on the basis of the statements and documents submitted in accordance with the Policy, these rules and any rules and principles of law that it deems applicable.”

The burden for the Complainant, under paragraph 4(a) of the Policy, is to show:

- that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark 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 has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

In the Panel’s view, the disputed domain name <ni-it.org> is clearly confusingly similar to the Complainant’s registered trademarks NIIT and NIIT LDT (the Israeli registration). Were it not for the hyphen between the two ‘i’s, it would be identical. For the purposes of this criterion, it does not matter in what country the trademark registrations occurred. The first criterion under the Policy is therefore proved.

B. Legitimate Rights and Interests

The Complainant gave the Respondent no rights in respect of its registered marks. However, if the Respondent can show that paragraph 4(c) of the Policy covers the situation, the Complaint may fail under this criterion.

Paragraph 4(c) of the Policy provides that a respondent may demonstrate rights or legitimate interests thus:

“(i) Before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) You (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) You are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

This is not the case where the respondent has registered a domain name of a well-known institution as a speculative exercise without any proof of operating a business under that name despite a lack of authorisation from the trademark owner. One of the decisions cited by the Complainant (NIIT Ltd v. Vanguard Design, WIPO Case No. D2003-0005) is but one of many examples of this sort of respondent tactic. That was a case where no response had been filed and the domain name had links to a pornographic site. Likewise, in NIIT Ltd v. Parthasarathy Venkatram, WIPO Case No. D2000-0497, a defended case, the panel had little difficulty in rejecting as implausible the US-resident Respondent’s excuses for using a domain name confusingly similar to the Complainant’s.

A case with more common features with the present is NIIT Ltd v Ghazanfair, Ali, on behalf of the National Institute of Information Technology, WIPO Case No. D2000-1718. There, the Respondent claimed that it had the support of the Government of Pakistan as a trainer in computer science. There was evidence of use of the NIIT name in that country but the panel was unable to find evidence of a common-law mark in favour of the respondent.

The panel pointed out that the use of the name “National Institute of Information Technology” by the respondent was not the issue, which was the use of the disputed domain name (<niit.com>). On the facts, the respondent was held to have no legitimate interest in the name and to have registered it in bad faith. The panel also considered that it stretched belief that a respondent in a neighbouring country would not have heard of the complainant which provided IT services throughout the sub-continent and beyond.

The Complainant in effect asks the Panel to make a similar inference here, i.e. that the Respondent must have heard of the Complainant’s mark before it registered the disputed domain name. As in NIIT Ltd v Ghazanfair, Ali, on behalf of the National Institute of Information Technology, WIPO Case No. D2000-1718, the fact that the Respondent uses the same full trading name as the Complainant is not the issue.

In the plethora of material submitted by the Complainant as appendices to its case, there are numerous reports, advertisements, etc. showing its activities in a variety of countries. In the Panel’s view, the amount of material submitted by the Complainant bordered on the oppressively excessive. It is hardly necessary for the Panel to be provided with full financial statements and annual reports from many subsidiaries, or copies of all trademark registrations for example.

Nowhere in this material is there any reference to the Complainant having business activities in Israel or the Palestinian National Authority Territories. In one report, 40 countries are listed where the Complainant conducts its global operations. In the Middle East, Bahrain, Dubai, Oman, Qatar, Saudi Arabia and Yemen are specifically mentioned. In one advertisement, it is said that the Complainant’s training network covers 2,000 centres in 26 countries, including relevantly Bahrain, Egypt, Oman, Qatar, Saudi Arabia, United Arab Emirates and Yemen, which are all Middle East Arab states.

From a perusal of the Respondent’s documents, it is clearly a bona fide operation formed by the Palestinian National Authority Territories for the IT training in the Palestinian National Authority Territories.

Does paragraph 4(c)(i) of the Policy apply to the Respondent? The answer depends on whether the Respondent has proved that, before it had notice of the dispute, it had used the disputed domain name in connection with a bona fide offering of goods or services. There is no affidavit or other evidence in support of the Respondent’s denial that it did not know about the Complainant when the name was registered. It says it was not interested in researching other IT trainers.

More than such a bare denial is desirable, see, for example, Cosmos European Travels AG v. Eurotech Data Systems Hellos. Ltd, WIPO CaseNo. D2001-0981 and KCTS Television Inc. v Get-on-the-Web Ltd, WIPO Case No. D2001-0154, where the Respondent filed affidavits as to when the deponents in England had first heard of the Complainant which operated in the North-West Coast of the United States. The question therefore comes down to the onus of proof which under paragraph 4(c) rests on the Respondent, once the Complainant has shown a prima facie case. Here, the Complainant has done this by showing that it gave the Respondent no rights in the disputed domain.

In the above mentioned WIPO Case No. D2001–0154, the panel was not prepared to infer that the respondent had heard of the complainant before the dispute arose. Representatives of the respondent had sworn affidavits to this effect. In that panel’s view only a Court, seeing and hearing witnesses, could decide whether the respondent had heard of the complainant.

It may well be that the person preparing and signing the Response had not personally been aware of the Complainant and its mark at the time of registration of the disputed domain name. However, a bare assertion of lack of knowledge by the Respondent is not enough. There could have been some evidence of enquiries made by those associated with the registration of the domain name and/or a signed statement (preferably an affidavit) from some senior executive to the effect that due enquiry had been made of relevant people which showed that none of them at the relevant date had this knowledge. That was the sort of exercise undertaken by the respondent in WIPO Case No. D2001-0154 which inclined the panel to find for the respondent in a similar issue.

Although there is no evidence of the Complainant doing business ineither Israel or the PalestinianNational Authority Territories, in the absence of better proof of lack of knowledge of the Complainant, the Panel finds it hard to believe that persons as necessarily knowledgeable about IT, as those responsible for setting up the Respondent must be, would not have heard of the Complainant and its mark. Particularly so, when the Complainant has significant outreach in several Arab countries in the Middle East.

The breadth of the Complainant’s advertising, not only in the countries where it is represented, but on satellite television and in international magazines and newspapers must have impacted on everybody in the IT field worldwide. Moreover, the Complainant’s IT innovations and inventions, must be well-known. The Respondent, in its Response, did not deny the Complainant’s contentions as to the nature and scope of its activities.

The annexures to the Response include a strategy document which refers to the provision of internationally certified training programmes and partnering with international IT companies (such as Microsoft). Under the heading of NIIT’s Commitment to Excellence is included a promise of access to technical, IT-oriented books and a software library containing advanced technical books and latest software demonstrations. It is hard to believe that there would be no reference to the Complainant in these resources.

Consequently, although the Respondent has shown that it has used the disputed domain name in connection with a bona fide business, it has not shown that this use was before it had any knowledge of the Complainant and its mark. Paragraph 4(c)(i) refers not to the date when knowledge of the Complainant and its mark was acquired, but to the date of notice of the dispute with the Complainant. This date was when the Complaint was filed in April 2005, there having been no prior ‘cease and desist’ letter from the Complainant. Knowledge of a Complainant’s mark by a respondent at the date of registration of a domain name often provides a strong inference that the respondent would know a dispute over the name would be likely to occur. This inference is possible here. Accordingly, in the Panel’s view, the Respondent has not shown that it comes within paragraph 4(c)(i) of the Policy.

The Panel is puzzled by the hyphen in the disputed domain name. No explanation for its presence was offered by the Respondent. No comment on it was made by the Complainant. In none of the Respondent’s exhibited documents, does the word “NIIT” appear with a hyphen between the two letters “i”. Consequently,it is hard to say, in terms of paragraph 4(c)(ii) of the Policy that the Respondent is commonly known by the disputed domain name which includes the hyphen. This interpretation may seem pedantic but there is just no explanation given by the Respondent for the use of the hyphen in the disputed domain name and all its documents show no has the hyphen.

hyphen.

In terms of paragraph 4(c)(iii) of the Policy, is the Respondent’s use of the disputed domain name a legitimate non-commercial or fair use without intent for commercial gain misleadingly to divert customers of the Complainant or to tarnish its mark? It is hard to say that the use is non-commercial, given that the Respondent, although a non-profit organisation, has to act commercially in providing its services. It is doubtful whether the use is fair, given the knowledge imputed to the Respondent of the Complainant and its mark at the time of registration of the domain name.

Because the Panel is of the view that the ‘bad faith’ criterion has not been made out, it does not rule definitively on the issues raised under paragraphs 4(c)(ii) and (iii).

C. Bad Faith

Out of the illustrative, but not exhaustive, list of indicia of bad faith found in paragraph 4(b) of the Policy, only paragraph 4(b)(iv) might possibly apply in this case. Given the world-wide reputation of the Complainant as a leader in IT, it must be expected that many Internet users would want to consult the Complainant’s website. There could easily be confusion with the Complainant’s mark on the part of those who visit the Respondent’s website. However, the Panel is not satisfied that the Respondent attempted intentionally to attract users to the site for the purposes of confusion with the Complainant’s website. The Respondent’s focus is solely on its constituency in the Palestinian National Authority Territories where the Complainant does not operate.

Bad faith is not confined to the indicia in paragraph 4(b) and is always an issue at large. The Panel has found, by inference, in the absence of evidence to the contrary, that the Respondent has not shown on the balance of probabilities, that it did not know about the Complainant and its mark at the date of registration of the disputed domain name.

The question is whether this inference which was strong enough to overcome the Respondent’s bare assertion (by one person) of the lack of relevant knowledge, is strong enough to convey a positive finding of bad faith. In the unusual circumstances of this case, the Panel does not find this to be so.

The Respondent’s documentation shows an impressive operation which has the laudable aim of promoting IT education amongst the population of the Palestinian National Authority Territories. Even if the Respondent knew about the Complainant before it registered the disputed domain name, the documentation indicates that the Respondent was not motivated by this knowledge when it registered the disputed domain name in order to reflect what it saw as its own business, confined to one clearly-defined geographical area. Mere knowledge of a trademark does not necessarily constitute bad faith registration and use. See KBSJ Education Foundation Inc. v World Scope Press Inc., WIPO Case No. D2001-0480.

This is an exceptional case where any inference of bad faith use arising out of the Respondent’s inferred prior knowledge of the mark is countered by the following considerations:

a) The Respondent is an officially-backed organization which has the laudable aim of promoting IT education amongst persons living in the Palestinian National Authority Territories.

b) The Respondent does not see itself as a competitor of the Complainant since it restricts its activities solely to the Palestinian National Authority Territories where the Complainant has no operations. The Respondent has no wish to extend its operations into other territories.

c) There is no evidence that registration of the disputed domain name was effected for the purpose of disrupting the Complainant’s business.

d) There is nothing to suggest that the Respondent wishes to dispose of the disputed domain name for financial gain.

e) The letters of the disputed domain name are an acronym for the Respondent’s trading entity, i.e. “National Institute of Information Technology”. As noted earlier, this proceeding is not about the Respondent’s right to use those words in its title.

f) There may be a certain genericism about the name National Institute of Information Technology.

g) The Respondent is neither a cybersquatter nor a domain name wholesaler, seeking to make money out of the disputed domain name.

In the unusual facts of this case, the Panel finds the third criterion not proven. The Complaint must therefore fail.

The Complainant may choose to pursue any claim in the courts to which it sees itself as entitled. This UDRP decision does not prejudice its case in any relevant jurisdiction.

7. Decision

For the foregoing reasons, the Complaint is denied.

Sir Ian Barker QC
Panelist

Date: June 9, 2005