Wipro Limited; Wipro Trademards Holding Limited v. Global Link.Com, Ltd.

WIPO Case No. D2000-0656

Outcome: Transfer
Domain names: globalwipro.com, globalwipro.net, globalwipronet.com, globalwipronet.net, globalwipronet.org, globalwiproonline.com, globalwiproonline.net, globalwipro.org, golwipro.com, golwipro.net, wiprocorporation.com, wiproinfotech.com, wiprolimited.com, wiproltd.com
Complainant: Wipro Limited; Wipro Trademards Holding Limited
Respondent: Global Link.Com, Ltd.
Decided: 19 Sept 2000
Response: The respondent did not reply
Language: English

Source: WIPO Arbitration and Mediation Center. Official copy: https://www.wipo.int/amc/en/domains/decisions/html/2000/d2000-0656.html

WIPO Arbitration

and Mediation Center

ADMINISTRATIVE

PANEL DECISION

Wipro Limited

and Wipro Trademarks Holding Limited v. Global Link.Com, Ltd d/b/a/ Global Online

Case No.

D2000- 0656

1. The Parties

The complainants are Wipro

Limited and Wipro Trademarks Holding Limited of Doddakannelli, Sarjapur Road,

Bangalore- 560 035, Karnataka, India. The respondent is Global Link.Com, Ltd

d/b/a/ Global Online of 50 North Third Street, Fairfield, IA 525556, United

States of America.

2. The Domain Name(s)

and Registrar(s)

This dispute concerns the

15 domain names identified below:

(i) globalwipro.com

(ii) globalwipro.net

(iii) globalwipro.org

(iv) globalwipronet.com

(v) globalwipronet.net

(vi) globalwipronet.org

(vii) globalwiproonline.com

(viii) golwipro.net

(ix) globalwiproonline.net

(x) golwipro.com

(xi) wiprolimited.com

(xii) wiproltd.com

(xiii) wiprocorporation.com

(xiv) wiproinfotech.com

(xv) wipronet.org

The Registrar with which

the domain names are registered is DomainBank, Inc. of Bethlehem, Pennsylvania,

United States of America.

3. Procedural History

The complaint was received

by the Center by email on June 22, 2000 and in hardcopy on June 27, 2000. It

related only to the first 14 domain names. The complaint was acknowledged on

June 29, 2000, when registration details were sought from the registrar. Correspondence

ensued between the parties and the Center, amongst the parties and between the

Center and the registrar, as a result of which the complainant sought to add

the 15th disputed domain name to the complaint.

It was not until August

11, 2000 that registration details were confirmed by the registrar (in respect

of all 15 domain names) and on that day the Center satisfied itself that the

complainant had complied with all formal requirements, including payment of

the prescribed fee. On August 14, 2000 the Center formally notified the respondent

by post/courier, fax and email of the complaint and of the commencement of this

administrative proceeding and sent copies to the complainant, the registrar

and ICANN.

The last day for a response

was September 2, 2000. None was received. On September 4, 2000 the Center formally

notified the respondent of its default in failing to file a response and on

September 5, 2000 invited Alan L Limbury to serve as panelist. On September

6, 2000 Mr Limbury accepted the appointment and submitted a Statement of Acceptance

and Declaration of Impartiality and Independence. That day the Center transmitted

the case file to the panel and notified the parties of the projected decision

date of September 20, 2000.

The language of the proceeding

was English.

The panel is satisfied

that the complaint was filed in accordance with the requirements of the Rules

and Supplemental Rules; payment was properly made; the panel agrees with the

Center’s assessment concerning the complaint’s compliance with the formal requirements;

the complaint was properly notified to the respondent in accordance with paragraph

2(a) of the Rules; no formal response was filed and the administrative panel

was properly constituted.

4. Factual Background

(undisputed facts)

The principal complainant

was incorporated in 1945 in India as Western India Vegetable Products Limited.

In 1977 it changed its name to Wipro Products Ltd. and in 1984 Wipro Limited.

Wipro Infotech Private Limited was a group company that has now merged into

Wipro Limited (and currently forms the hardware division).

The word "wipro" is an

invented word being an abbreviation of the original name of Wipro Limited i.e

Western India Vegetable Products Limited.

The complainant is a leading

India based provider of Information Technology ("IT") services globally. It

provides high-end IT solutions to leading companies worldwide and has also been

engaged in the consumer care business since its inception in 1945 and the lighting

business since 1992.

Since at least 1974 the

complainants have registered and applied for registration of several trademarks

in India, the United States and other jurisdictions (spread over several categories

such as consumer products, vegetable oils, lighting, computers, software, etc.)

which use the word WIPRO alone and in various combinations with other words.

The complainants have also

registered numerous domain names incorporating the trademark WIPRO.

All 15 of the disputed

domain names were registered on February 23, 2000. On the same day as it registered

the 15 disputed domain names, the respondent registered the domain names azimpremji.net,

azimpremji.org, apremji.com and premjifamily.com based on various permutations

of the name of the chairman of the complainants - Mr. Azim H. Premji.

On March 9, 2000 a magazine

article reproduced on the respondent’s website reported that, in a rush to secure

domain names which the COO of the respondent, Dr Lee Fergusson, compared to

the "land grab of the 19th Century U.S. frontier", the

respondent had ‘branded’ some 5,500 domain names at a cost of about half a million

dollars which are now valued at between $3 billion and $5 billion. Dr Fergusson

was reported to have said: "All the good names are taken. It couldn’t be

planned in the way we are planning now and accomplishing the same ‘land grab’

would be difficult today" and "We decided to aggregate all the domain

names under one domain. Instead of having little piece of land, we have …a virtual,

digital conglomerate existing in virtual space. We grabbed a lot of land and,

as a result, Global Online is the largest owner of singly branded domain names

in the world".

Amongst the numerous domain

names registered by the respondent beginning with the word GLOBAL are globalheartattack.com,

globalstorage.com, globalpsychology.com, globalabrasives.com, globaltoothbrushes.com,

globalmenshealth.com, globalvietnamesefoods.com and globalfixtures.com.

Other domain names registered

by the respondent include usinternetbank.com, royalindustrialbank.com, unioninternetbank.com,

internetbankofjapan.com, globaltokyobank.com, americanholdingbank.com, globalamazon.com

and westministerbank.com.

Following the filing of

the complaint, the respondent on June 29, 2000 stated in an email to the Center

that it registered the 15 disputed domain names in furtherance of proposals

for a potential joint venture which it claimed had been under discussion between

the respondent and the complainant "in order to protect both WIPRO and

GLOBAL ONLINE from the possibility that these domain names might be taken by

someone else instead of being available for their joint venture, if one was

consummated".

The complainant had not

authorized the registration of the disputed domain names.

5. Parties’ Contentions

A. Complainant

The disputed domain names

are identical and confusingly similar to the marks of the complainants.

The respondent has no rights

or legitimate interests in the domain names.

The domain names have been

registered and are being used in bad faith

B. Respondent

The respondent did not

file a response but it did communicate by email with the Center and, pursuant

to Rule 2(h), its communications were sent to the complainant and form part

of the case file sent by the Center to the panel.

6. Discussion and Findings

Amendment of the complaint

The panel is satisfied

that the respondent (which by email of June 29, 2000 to the Center itself drew

attention to its registration of the 15th domain name, wipronet.org,

as having been apparently overlooked by the complainant) has had the same opportunity

to respond to the complaint insofar as it relates to that domain name as it

has had in relation to the others. The respondent would not be prejudiced by

the proposed amendment of the complaint to include this name and accordingly

the panel allows the amendment.

Substantive issues

To qualify for cancellation

or transfer, a complainant must prove each element of paragraph 4(a) of the

Policy, namely:

(i) the disputed 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 interests in respect of the domain name; and

(iii) the disputed domain

name has been registered and is being used in bad faith.

Identity or confusing similarity

The domain names wiproltd.com,

wiprolimited.com and wiprocorporation.com comprise the trademark

WIPRO followed by the legal description of the complainant’s corporate entities.

The domain name wiproinfotech.com comprises the trade name of Wipro Infotech

Private Limited, a group company now merged into Wipro Limited.

The domain names globalwipro.com,

globalwipro.net, globalwipro.org, globalwipronet.com, globalwipronet.net,

globalwipronet.org, globalwiproonline.com, globalwiproonline.net and wipronet.org

comprise the trademark of the complainant in conjunction with other generic

words such as "global" and "online" or a generic word associated with the Internet,

"net". The domain names golwipro.net and golwipro.com combine

the complainant’s trademark with an acronym for the generic words "global

online". The suffixes ".com", ".net" and ".org"

are recognized as associated with the Internet and as having no capacity to

distinguish a trademark from a domain name.

The generic words global

and online and the acronym gol do not serve to distinguish

the disputed domain names from the complainants trademark: see The Stanley

Works and Stanley Logistics, Inc v. Cam Creek. Co., Inc, (Case D2000-0113)

and Nokia Corporation v. Nokiagirls.com (Case D2000-0102), holding that

the disputed domain names were confusingly similar to the trademark of the complainant,

despite the addition of generic words.

The fact that the word

"global" forms part of the trade name of the respondent does not alter the fact

that it is a generic and descriptive word when used with other words. As the

complainants are globally recognized and are global players, the use of such

generic words would only add to the confusion in the mind of Internet users

as to whether these domain names are associated with the complainants.

In Microsoft Corporation

v. Microsof.com aka Tarek Ahmed (Case D2000-0548) contributing factors to

the likelihood of confusion were held to be the visual similarity between the

domain name and the complainant’s mark and the mark being strong and immediately

recognizable. Here the domain name is not as closely similar to the trade mark

as in that case but confusing similarity is present here for the same reasons.

The complainants have proved

that all 15 of the disputed domain names are confusingly similar to their WIPRO

marks.

Illegitimacy

WIPRO is a distinctive

and invented word, forming the main part of many of the trademarks of the complainants,

including those registered in the United States, the country of residence of

the respondent.

Without the authority of

the complainant, the respondent chose to register the domain names in order

to create an impression of an association with the complainant, anticipating

that negotiations would result in a joint venture. No authorized association

between the parties existed at the time of registration, nor has any subsequently

come into being. Under these circumstances the respondent’s interest in the

domain names is not legitimate. Telstra Corporation Limited v. Nuclear Marshmallows

(Case D2000 – 0003).

The complainant has proved

that the respondent has no rights or legitimate interest in any of the disputed

domain names.

Bad faith registration

and use

In SportSoft Golf, Inc.

v. Hale Irwin’s Golfers’ Passport (Case FA94956) a finding of bad faith

was made where the respondent "knew or should have known" of the registration

and use of the trade mark prior to registering the domain name. Likewise Marriott

International, Inc. v. John Marriot (Case FA94737); Canada Inc. v. Sandro

Ursino (Case AF-0211) and Centeon L.L.C./Aventis Behring L.L.C. v. Ebiotech.com

(Case FA95037).

Here the respondent clearly

knew of the complainants’ marks before registering the disputed domain names,

otherwise the respondent would not have perceived the need to "protect"

the names as it has asserted. However, it did not obtain the complainant’s consent

to this course of conduct before proceeding. Accordingly the registration was

made in bad faith.

Further, the use of the

word WIPRO in the domain names was intended by the respondent to create the

impression of an authorized association between the complainant and the respondent

which, at the time of registration, the respondent knew did not exist. The panel

finds this also to constitute registration in bad faith.

Registration by the respondent

of the word WIPRO as part of each of the 15 disputed domain names prevents the

complainants from reflecting their trademarks in corresponding domain names.

In each case this is evidence of both bad faith registration and use, pursuant

to sub-paragraph 4(b)(ii) of the Rules, provided the respondent has engaged

in a pattern of such conduct.

Amongst the numerous domain

names registered by the respondent, most of which incorporate only generic words

and were legitimate objects of a "land grab" in cyberspace, there

are some, such as globalamazon.com and westminsterbank.com which

incorporate well known trade marks belonging to others.

The panel finds that, by

registering the domain names globalamazon.com and westminsterbank.com

and by registering the invented word WIPRO in various combinations and permutations

over 15 domain names along with generic words that are in synergy with the business

of the complainants, the respondent has engaged in a pattern of conduct that

prevents trademark owners from reflecting their marks in corresponding domain

names. Similar cases have been held to be classic cases of cybersquatting: Sanrio

Company, Ltd and Sanrio, Inc. v. Neric Lau, (Case D2000-0172) and Stanley

Works and Stanley Logistics, Inc v. Cam Creek. Co., Inc, (Case D2000-0113).

The panel finds that the

disputed domain name was registered and used in bad faith.

7. Decision

Pursuant to Paragraphs

4(i) of the Policy and 15 of the Rules, the panel directs that the following

15 domain names be transferred to the complainant:-