Express Publications (Madurai) Ltd. v. Fusion Resources Inc.

WIPO Arbitration

and Mediation Center

ADMINISTRATIVE

PANEL DECISION

Express

Publications (Madurai) Ltd. v. Murali Ramakrishnan

Case No.

D2001-0208

1. The Parties

The Complainant

is Express Publications (Madurai) Ltd., a company registered under the Indian

Companies Act 1956 and having its registered office at Express Estates,

Mount Road, Chennai-600034, India, and its principal place of business at

Chennai, Tamilnadu, India.

The Respondent

is Murali Ramakrishnan of 1921 Slippery Rock Road, Naperville, IL 60565,

U.S.A.

2. The Domain Name(s)

and Registrar(s)

The dispute concerns

the domain name <dinamani.com> (the said Domain Name) registered with

Register.Com (the Registrar) of 575, 8th Avenue, 11th

Floor, New York, NY 10018, U.S.A.

3. Procedural History

On December 5, 2000,

the Complainant submitted a complaint against Fusion Resources Inc. in hard

copy to the World Intellectual Property Organization Arbitration and Mediation

Center (the Center) for a decision in accordance with 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).

The Center assigned the case number D2000-1700 to this complaint. On December 12, 2000,

the Center acknowledged receipt of the said complaint. On the same date,

the Center sent an e-mail to the Complainant’s legal representative stating

that the Complainant or its authorized representative had not signed the

complaint; that the Center had not received the required fee and that the

Center was unable to access the electronic version of the complaint because

it contained a virus. The Center requested the Complainant to re-send the

electronic version of the complaint, provide evidence of payment of the

required fee and send a signed version of the complaint.

On December 11, 2000,

the Center sent the Request for Registrar Verification to the Registrar.

On December 15, 2000, the Registrar sent its Whois Results with a cover

letter of the same date, confirming that it was the Registrar of the said

Domain Name. While in the cover letter it said that the Registrant was the

Respondent, in the Whois Results it gave two names, ‘Fusion Resources Inc.’

and ‘Murali Ramakrishnan’ under the heading ‘Organization’.

On December 15, 2000,

the Complainant’s legal representative sent an e-mail to the Center enclosing

the electronic version of the complaint free of virus and informed the Center

that she would send the signed copy of the complaint and the proof of payment

of the required fee to the Center shortly. On December 18, 2000, the Center

sent an e-mail to the Complainant’s legal representative stating that the

electronic version of the complaint still contained a virus.

On January 3, 2001,

the Center confirmed with the Complainant’s legal representative that it

had received the electronic version of the complaint but had not received

the required fee and the signed copy of the complaint. On the same date,

the Center sent a reminder to the Registrar for its response to the Request

for Registrar Verification since the Center appeared not to have received

the communication from the Registrar dated December 15, 2000. On January

5, 2001, the Center received from the Registrar the communication dated

December 15, 2000, minus the cover letter.

On January 5, 2001,

the Center sent the Complaint Deficiency Notification (the Deficiency Notification)

to the Complainant’s legal representative, notifying the Complainant of

the formal deficiencies in the complaint namely, that the required fee was

not paid in accordance with paragraph 19(a) of the Rules and that the Complainant

or its authorized representative had not signed the copy of the complaint

as required by paragraph 3(b)(xiv) of the Rules (the deficiencies). The

Deficiency Notification required the Complainant to cure the deficiencies

within five (5) calendar days. On January 15, 2001, the Center reminded

the Complainant’s legal representative that the complaint would be deemed

to be withdrawn if the Center did not receive the requested information

by January 19, 2001.

On January 24, 2001,

the Center sent the Notification of Termination to the Complainant’s legal

representative and extended a copy of the same to the Respondent, the Internet

Corporation for Assigned Names and Numbers (ICANN) and the Registrar.

On January 25, 2001,

the Center received another copy of the complaint against Fusion Resources

Inc. On January 28, 2001, the Complainant’s legal representative sent an

e-mail to the Center stating that the required fee had been paid on January

19, 2001, and that the details of payment and the signed copy of the complaint

had been couriered to the Center on January 20, 2001. She also requested

the Center to withdraw the Notification of Termination. On February 9, 2001,

the Center informed the Complainant’s legal representative that it could

not rescind the Notification of Termination because it had received the

e-mail from the Complainant’s legal representative after the Notification

of Termination of the complaint. The Center was willing to re-process the

case and it assigned a new case number, D2001-0208.

On February 9, 2001,

the Center sent the Request for Registrar Verification to the Registrar

and informed the Registrar that the complaint formerly known as D2000-1700

had been re-filed under the new case number, D2001-0208. On February 20,

2001, the Registrar sent its Whois Results with a cover letter of the same

date, confirming that it was the Registrar of the said Domain Name. While

in the cover letter it said that the Registrant was the Respondent, in the

Whois Results it gave two names, ‘Fusion Resources Inc.’ and ‘Murali Ramakrishnan’

under the heading, ‘Organization’.

On February 15, 2001,

the Complainant’s legal representative sent an e-mail attaching a copy of

the complaint to the Respondent and informed him that the complaint had

been re-processed and re-numbered as D2001-0208. She extended a copy of

the e-mail to the Center.

On February 22, 2001,

the Center sent the Notification of Complaint and Commencement of Administrative

Proceeding (the Notification) by post/courier (with enclosures) and e-mail

(with the complaint but without the attachments) to the Respondent and transmitted

by e-mail (without attachments) to the Complainant’s authorized representative

and the Complainant’s legal representative. The Center also extended copies

of the Notification to ICANN and the Registrar. The Notification set the

formal date of the commencement of the administrative proceeding as February 22, 2001,

and required the Respondent to submit a response to the Complainant and

the Center within 20 calendar days from the date of receipt of the Notification

i.e., by March 13, 2001, failing which the Respondent would be considered

to be in default.

On March 15, 2001,

the Center sent the Notification of Respondent Default to the Respondent

and copied it to the Complainant’s legal representative via e-mail. On the

same date, the Respondent sent an e-mail to the Center stating that he had

sold the said Domain Name in January 2001, and that the Registrar was working

on transferring the said Domain Name. On March 16, 2001,the Center acknowledged

receipt of the e-mail from the Respondent. On the same date, the Center

sent an e-mail to the Registrar requesting confirmation as to whether the

Respondent had indeed sold or transferred the said Domain Name and if so,

to whom. In response to the e-mail the Registrar responded by its e-mail

dated March 16, 2001, that the Respondent had attempted to transfer the

said Domain Name but no such transfer had occurred and its records showed

that the Respondent was still the registrant of the said Domain Name and

that it would not cancel or transfer the said Domain Name while this administrative

proceeding was pending. On the same date, the Respondent sent an e-mail

to the Center stating that if the Registrar was not transferring the said

Domain Name, he would need an extension of time of two weeks to respond

to the complaint.

On March 20, 2001,

the Center sent an e-mail to the Respondent enclosing the e-mail from the

Registrar dated March 16, 2001, and informed the Respondent that the Center

would proceed with the appointment of the Panel for this administrative

proceeding and that it would send his request for an extension of time to

respond to the complaint to the Panel for a decision.

After receiving the

Statement of Acceptance and Declaration of Impartiality and Independence

from Mr. Hariram Jayaram on March 19, 2001, the Center appointed him

to be the panelist (the Panel) on March 20, 2001.

On March 20, 2001,

the Center sent the Notification of Appointment of Administrative Panel

and Projected Decision Date to the Complainant, the Complainant’s legal

representative and the Respondent and copied it to the Panel by e-mail.

The Center also sent the Transmission of Case File to the Panel.

On March 22, 2001,

on the instruction of the Panel, the Center gave the Respondent until April

6, 2001, to respond to the complaint. On April 4, 2001, the Respondent submitted

his response to the Center via e-mail.

On April 9, 2001, the

Center sent the Acknowledgement of Receipt (Response) to the Respondent,

the Complainant, the Complainant’s legal representative and the Panel by

e-mail. On April 12, 2001, the Panel acknowledged receipt of this document.

By its e-mail to the

Center on April 20, 2001, the Panel requested the Center to clarify with

the Registrar whether Fusion Resources Inc. or Murali Ramakrishnan was the

registrant of the said Domain Name. At the request of the Center, the Registrar

clarified on the same date that the registrant was the Respondent. On April

21, 2001, the Center conveyed the message of the Registrar to the Panel.

On April 23, 2001,

on the instruction of the Panel, the Center gave the Complainant until April

30, 2001, to amend the complaint by substituting the name of the Respondent

from ‘Fusion Resources Inc.’ to ‘Murali Ramakrishnan’. On April 30, 2001,

the Complainant’s legal representative sent an e-mail to the Center and

requested for time until May 7, 2001, to file its amended complaint.

On May 4, 2001, having

received the amended complaint from the Complainant, the Center sent it

to the Panel via e-mail. On May 8, 2001, the Panel acknowledged receipt

of the amended complaint and asked the Center to find out whether the Respondent

would like to stand by the contents of his earlier response or file an amended

response, in which event, he would be given a week’s time to do so.

On May 8, 2001, the

Center communicated with the Respondent in the said manner. The Center gave

the Respondent until May 15, 2001, to file his amended response, if any.

On May 14, 2001, the Center received an e-mail from the Respondent without

any text attached to his message and on May 15, 2001, the Center informed

the Respondent of the same.

On May 16, 2001, the

Respondent sent an e-mail to the Center stating that he would stand by the

contents of his earlier response. On May 16, 2001, the Center acknowledged

receipt of the e-mail of the Respondent and informed him that his reply

would be transmitted to the Complainant and the Panel.

The Panel finds that

the Center has discharged its obligations and responsibilities under the

Rules. The Panel will issue its decision based on the amended complaint

and the response and in accordance with the Policy, the Rules, the Supplemental

Rules and principles of law, which the Panel deems to be applicable.

4. Factual Background

4.1 Complainant’s

complaint

In its complaint, the

Complainant says that it owns Dinamani, a reputed Tamil language newspaper

which is published in four Indian cities namely Chennai, Madurai, Coimbatore

and Bangalore. It has owned this newspaper for well over 60 years.

The name Dinamani is also registered with the Registrar of Newspapers for

India (RNI), New Delhi, since 1957 and the registration was renewed in 1960

and 1988. The average net paid circulation of the newspaper, Dinamani based

on the reports of the Audit Bureau of Circulation are as follows:-

January- June

July-December

1981

1,79,168

1,69,401

1984

1,85,754

1,90,692

1988

1,79,607

1,70,876

1992

1,51,744

1,49,749

1996

1,69,479

1,81,047

1999

1,90,169

1,87,829

The circulation figures

show the popularity and reach of the newspaper amongst the general public.

In October 1996, upon

the Complainant’s authorization, Amitec Software of 156, Baypoint,

Parkway, San Jose, CA 95134 (then with offices in Mumbai) registered a site

<dinamani.com> with Network Solutions Inc. All news reports

published in the newspaper, Dinamani from February 1997, were hosted on

the said site. The Complainant used the said site until December 1999 and

it was attracting an average of 600,000 page views per month. In December

1998, the Complainant changed its web-hosting agency from Amitec Software

to Front Point Systems Inc., U.S.A. This fact was conveyed to Amitec Software

which allowed traffic to be redirected from its servers on to the servers

of Front Point Systems Inc. in U.S.A. On December 21,1999, the Complainant

sent the Registrant Name Change Agreement (the Agreement) duly notarized

by an American notary to the Registrant Name Change Group of 505, Huntmar

Park Drive, Herndon, VA 20170, U.S.A to transfer the said Domain Name to

the Complainant. On January 5, 2000, instead of transferring the said Domain

Name, the Registrant Name Change Group chose to revert the said Domain Name

to the Internet database. As the Complainant later learned, the reason for

this was that the said Domain Name had lapsed because the renewal fee of

US$35 had not been paid to Network Solutions Inc. in time.

On January 13, 2000,

the Complainant noticed from the Whois database that the said Domain Name

had been registered by an entity it thought was Fusion Resources Inc. However,

after the complaint was filed and on further enquiries made by the Center,

the Complainant learned that the current registrant was Murali Ramakrishnan.

To salvage the situation, the Complainant registered a similar sounding

domain name <www.dinmani.com> to host the articles appearing

in its newspaper, Dinamani. The Complainant used the subscriber database

which it had assiduously built up over three years to inform the general

public of the new site. Despite these steps taken by the Complainant, there

has been a steep drop in page views and the number of visitors visiting

the site.

4.2 Respondent

In his response, the

Respondent states that he registered the said Domain Name as part of his

family domain names, <muraliramakrishnan.com>, <sabitha.net>

and <earchana.com>. He is in the process of creating a website for

all his family members. He registered all the domain names in the past year.

He plans to start a website as soon as he finds an affordable web hosting

service.

5. Parties’ Contentions

A. Complainant

The Complainant says

that it has instituted the present administrative proceeding on account

of misappropriation of the trademark "dinamani" by the Respondent.

The said Domain Name is identical to the name of the newspaper, Dinamani,

owned by the Complainant and is also identical to the domain name <dinamani.com>

which was registered for and on behalf of the Complainant by Amitec Software

in October 1996. This act of the Respondent was an ‘act of squatting’.

The Complainant suffered severe financial loss because the registration

of the said Domain Name by the Respondent was attracting an average of 600,000

page views per month, a browsership which had been built over a period of

three years. The Respondent has registered the said Domain Name with

the sole intention of selling or otherwise transferring the said Domain

Name for pecuniary benefit. This is clear from the fact that the Respondent

has still not hosted any content on the site. The website as at the date

of the amended complaint displays a message "Coming Soon". The Respondent

has even entered into correspondence showing his intention of trading the

said Domain Name for pecuniary benefit with one Ramesh, who is a well

wisher of the Complainant. According to the e-mail forwarded by Ramesh,

the Respondent’s reply brazenly states, "I am interested in selling the

domain name to you. Please let me know what is the price range you are willing

to pay".

B. Respondent

The Respondent says that

he has checked with the trademark system of U.S.A before registering the said

Domain Name and found nothing about the said Domain Name. He does not know anything

about the said Domain Name or its registration since he lives in U.S.A. He has

a legitimate interest in the said Domain Name because he had registered it as

part of his family domain names. He has not tried to make commercial gain or

mislead users to his website. After registering the website, he received an

e-mail from ramesh@frontpoint.com. The sender of the e-mail wanted to

buy the said Domain Name for a price. He was just asking how much the sender

of the e-mail was willing to pay for the said Domain Name but did not demand

a price or a lot of money to transfer the website. He was merely responding

to Ramesh’s request. He was planning to build his website soon. It had been

just a year since the registration of the website and he needed time to build

it.

6. Discussion and

Findings

6.1 Elements to

be proven

Paragraph 4(a) of the

Policy envisages that to succeed, the Complainant must establish that:

i) the said

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 said Domain

Name; and

iii) the said

Domain Name has been registered and is being used in bad faith.

The Complainant must

prove that all the aforesaid three elements are present.

6.2 Identical or

confusingly similar

The Complainant claims

rights in "Dinamani". It owns the Tamil language newspaper by

that name, published in four Indian cities for over 60 years. Rights in

the word "Dinamani" may accrue to the Complainant if it is registered

as a trademark. In its complaint, the Complainant claims to have a statutory

right by virtue of "Dinamani" being registered as a trademark.

He has not produced any document to show that the trademark is a registered

trademark in any part of the world. It is not possible for the Panel to

conclude that the Complainant has such a statutory right merely from his

bare statement in the complaint. The Complainant also claims rights in "Dinamani"

by virtue of long and substantial use. The Complainant has furnished particulars

of the average net paid circulation of this newspaper for the years 1981

to 1999 and the figures indicate that the newspaper is read widely in India.

Until February 1997, the news items were carried on the site <dinamani.com>,

which had been earlier registered as a domain name for and on behalf of

the Complainant with Network Solutions Inc. It attracted visits from a sizeable

number of Internet users looking for news. The registration of the said

Domain Name lapsed on the failure of the Complainant to pay the renewal

fee. However, on account of the continuous and long use of "Dinamani"

for the newspaper, this word has acquired the status of a common law trademark

in which the Complainant has rights.

The Panel has compared

the said Domain Name with the Complainant’s common law trade mark "dinamani"

and finds that the second level domain "dinamani" is identical

letter-by-letter to the Complainant’s common law trade mark.

6.3 Respondent’s

rights or legitimate interests in the said Domain Name

Under paragraph 4(c)

of the Policy, the Respondent may demonstrate his rights and legitimate

interests in the said Domain Name by showing inter-alia:

(i) his use,

of or demonstrable preparation to use, the said Domain Name or a name

corresponding to the said Domain Name in connection with a bona

fide offering of goods or services;

(ii) he has

been commonly known by the said Domain Name, even if he has acquired

no trademark or service mark rights or

(iii) he was

making a legitimate non-commercial or fair use of the said Domain

Name, without intent for commercial gain to misleadingly divert consumers

or to tarnish the trademark or service mark at issue.

In his response, the

Respondent does not say that he is using or preparing to use the said Domain

Name for goods or services. He is not known by the said Domain Name. However,

he says he has registered the said Domain Name as part of his family domain

names which include <muraliramakrishnan.com>, <sabitha.net>

and <earchana.com>. If in fact he is making a legitimate non-commercial

or fair use of the said Domain Name, he should produce the evidence to the

said effect. A bare statement is of no help to the Panel. He has in no way

explained in what sense the said Domain Name will constitute a part of his

family domain names. The Panel is left to wonder whether the said Domain

Name or a part of it is the name of a family member of the Respondent. It

is not the role of the Panel to indulge in such an exercise.

6.4 Registration

and Use in Bad Faith

Paragraph 4(b) of the

Policy sets out non-exhaustive circumstances which serve as evidence of

the registration and use of a domain name in bad faith. Such circumstances

include a situation where a Respondent has registered a domain name primarily

for the purpose of selling the domain name registration to the Complainant,

the owner of a trade mark or to a competitor for a consideration in excess

of the disbursements incurred in registering the said Domain Name. There

are allegations and counter-allegations by the Complainant and the Respondent

as to who initiated the offer for sale/purchase of the said Domain Name.

There is no indication of what the intended price is to enable the Panel

to ascertain whether the consideration expected by the Respondent is in

excess of his out-of-pocket costs. The Panel is unable to make a finding

of bad faith from the exchange of correspondence between the well wisher

of the Complainant and the Respondent. However, the Panel notes that the

Respondent is an Indian by name, although the contact address is in the

United States. The said Domain Name incorporates the name of a well-known

newspaper circulated in India and made available to the public at large

including those in the United States, through the Internet and he ought

to have known that the said Domain Name belongs to the owner of the said

newspaper. His acquisition of the said Domain Name should be inferred as

having been done in bad faith since he has not substantiated his allegation

of the said Domain Name being a part of his family domain names with any

evidence.

7. Decision

The Panel finds that

the Complainant has proved each of the three elements of paragraph 4(a)

of the Policy. It requires that the said Domain Name be transferred to the

Complainant.

Hariram

Jayaram

Sole Panelist

Dated:

May 21, 2001

More cases by this complainant

• Express Publications (Madurai) Ltd. — D2000-1700 · Terminated