GA Modefine S.A. v. Mani.com

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

GA Modafine S.A. v. Mani.Com

Case No. D2001-0388

1. The Parties

The Complainant in this administrative proceeding is GA Modafine S.A., a Swiss

corporation with a principal place of business in Lausanne, Switzerland. The Complainant

is represented by Avvocato Mariachristina Rapisardi of Studio Raposardi S.A.

of Lugano, Switzerland.

The Respondent is Mani.Com care of Saresh Mani of Quincy, MA, U.S.A.

The Respondent is represented by Mr. Stephen J Jeffries of Holland

& Knight LLP, Attorneys of Washington DC, USA.

2. The Domain Name and Registrar

The domain name in dispute is <mani.com>.

The domain name is registered with Network Solutions Inc., of Herndon, Virginia,

U.S.A. ("NSI")

3. Procedural History

A Complaint was submitted electronically on March 19, 2001 and by hard

copy on March 22, 2001 by the Complainant of the World Intellectual Property

Organization Arbitration and Mediation Center ("WIPO Center").

On March 21, 2001 a request for Registrar verification was transmitted

by WIPO Center to NSI requesting it to:

- Confirm that a copy of the Complaint had been sent to it by the Complainant

as required by WIPO Supplemental Rules for Uniform Dispute Resolution Policy,

paragraph 4(a).

- Confirm that the domain name at issue is registered with the Registrar.

- Confirm that the Respondent is the current registrant of the domain name.

- Provide full contact details, i.e., postal address(es), telephone number(s),

facsimile number(s), email address(es), available in the Registrar’s WHOIS database

for the registrant of the disputed domain name, the technical contact, the administrative

contact and the building contact for the domain name.

- Confirm that the Uniform Domain Dispute Resolution Policy is applicable to

the domain name at issue.

- Indicate the current status of the domain name.

By email dated March 23, 2001, NSI advised the WIPO Center as follows:

- NSI had received a copy of the Complaint from the Complainant.

- NSI is the Registrar of the disputed domain name registration.

- The Respondent is the current registrant with NSI of the said domain name.

Saresh Mani is the administrative, technical and billing contact for the

domain name.

- NSI’s 5.0 Service Agreement is in effect.

- The disputed domain name registration is in "Active" status.

With effect from January 1, 2000, NSI adopted the policy for Uniform Domain

Name Dispute Resolution adopted by the Internet Corporation for Assigned Names

and Numbers ("ICANN"). As can be deduced from the advice of NSI that

the domain name in question is still "active", the Respondent has

not requested that the domain name at issue be deleted from the domain name

database, nor sought to terminate the agreement with NSI. Accordingly, the Respondent

is bound by the provisions of the Domain Name Dispute Resolution Policy, i.e.,

the ICANN policy.

Having verified that the Complaint satisfied the formal requirements of the

Uniform Policy and the Uniform Rules, the WIPO Center on March 27, 2001

transmitted by courier, email and facsimile a notification of Complaint and

Commencement of Administrative Proceedings to the Respondent. A copy of the

Notification of Complaint and Commencement of Administrative Proceedings was

also emailed to NSI and ICANN.

The Respondent was advised that a Response to the Complaint was required within

20 calendar days. It was also advised that any Response should be communicated,

in accordance with the Rules, by four sets of hard copy and by email. The Respondent

filed a Response by email on April 13, 2001 and by hard copy on April 18,

2001.

The Respondent elected to have the Complaint resolved by a three-member Panel.

The parties have duly paid the amounts required to WIPO Center.

WIPO Center invited the Honorable Sir Ian Barker QC of Auckland,

New Zealand to chair the Panel in this case. It had earlier invited Mr. David

Perkins of Clifford Chance, London, U.K. and Mr. Reinhard Schanda of Sattler

& Schanda, Wien, Austria, to be Panelists. It transmitted to all panelists

a statement of acceptance and requested a declaration of impartiality and independence.

All Panelists duly advised their acceptance and forwarded to the WIPO Center

their statements of impartiality and independence. On May 22, 2001, the

Complainant and the Respondent were notified of the appointment of the Panel.

The Panel finds that the Administrative Panel was properly constituted in accordance

with the Rules and the Supplemental Rules.

Without seeking leave from the Panel so to do, as required by the Rules, the

Complainant sought on May 19, 2001 to file a Reply to the Response. By

a document received by WIPO Center on May 21, 2001, the Respondent objected

to the Reply being accepted. Although not wishing to encourage the filing of

extra submissions, especially when leave so to do has not been sought, the Panel

has decided to consider these additional documents. In the Panel’s view, the

Reply adds little to the Complainant’s case.

On May 22, 2001, WIPO Center forwarded to the Panel by courier the relevant

submissions and the record. These were duly received by them. The Panel is to

forward its decision by June 4, 2001.

The Panel has independently determined and agrees with the assessment of the

WIPO Center that the Complaint meets the formal requirements of the Rules for

Uniform Domain Name Dispute Resolution Policy as approved by ICANN on October 24,

1999 ("the Rules") and the Supplemental Rules for Uniform Domain

Name Dispute Resolution Policy ("the Supplemental Rules").

The language of the administrative proceeding is English, being the language

of the registration agreement.

4. Factual Background

The Complainant owns a trademark constituted by the word "MANI" registered

in Europe, United States of America, Canada and elsewhere. It is used for different

kinds of goods, such as clothes, ties, dresses and shorts in various materials.

"Mani" trademarks feature in advertising throughout the world in fashion

magazines and catalogues.

The Complainant has not given the Respondent any rights in respect of the contested

domain name.

From the website correspondent to the domain name disputed it is possible to

get to the e-mail address of Mr. Suresh Mani and to the website of eGulf

Technologies, to which some pages are dedicated; eGulf Technologies, Inc. and

eGulf Computers, Inc. are companies of which Mr. Suresh Mani is President.

In the above mentioned website there is an offer to the persons with the name

Mani for a free e-mail address by writing to the e-mail address suresh@mani.com.

5. Parties’ Submissions

Complainant

Mr. Suresh Mani, who at the time of registration of the domain name was certainly

aware of the fame and worldwide relevance of trademark Mani of Modafine. He

intended to exploit the notoriety of that trademark in order to advertise worldwide

and to increase the activity of his firms. If he really wanted to offer to the

Mani family members the possibility of registering in order to obtain for free

an e-mail address, he would have utilized another available domain name either

constituted by his full name Suresh Mani, or in any case containing

a clear reference to the Mani Family as Mani family.

The domain name is identical with the Complainant’s mark. The Respondent has

no rights or legitimate interests in the domain name. The Respondent registered

and is using the domain name in bad faith.

Respondent

The term "mani" has non-trademark significance because it is a surname

shared by many persons of Hindu ethnicity who originate from a particular region

of the northern Indian subcontinent which is now Pakistan. At least 544 persons

bearing the surname "mani" reside in the United States alone.

At least 433 parties other than Complainant have obtained registrations for

the term "mani" as a trademark for products other than clothing and

clothing accessories in a number of countries. A synopsis of the most relevant

listings derived from the search report is attached to the Response. The term

"mani" is not solely a trademark of significance. Neither is the use

of the term "mani" as a trademark solely associated with Complainant

or the products of Complainant. The Complainant’s trademark rights in the term

"mani", if established at all, can only be utilized in relation to

clothing and clothing accessories.

Respondent’s rights and legitimate interest in the domain name are established

by:

(1) The fact that "mani" is the surname of Respondent Suresh Mani;

(2) Respondent’s legitimate non-commercial or fair use of the domain name in

connection with a website through which he locates and communicates with other

members of the internationally dispersed "mani" family, without intent

for commercial gain misleadingly to divert Complainant’s customers or to tarnish

Complainant’s trademark; and

(3) Respondent’s use of the domain name in connection with the bona fide offering

of e-mail services to members of the "mani" family through the website

associated with the domain name for a period of almost two years prior to the

date upon which Complainant notified Respondent of this dispute.

During 1998, Respondent developed the concept of creating a website to locate

and foster communications with and among the dispersed members and descendants

of the "mani" family from northern India (now Pakistan) by offering

them free e-mail services. To this end, Respondent purchased the domain name

<mani.com> (which had been registered by another party) for the sum of

$1,000 (US) on December 28, 1998. On January 4, 1999, Respondent directed

a web programmer to create a website located at the <mani.com>

URL through which Respondent would offer free e-mail services to all members

and descendants of the "Mani" family.

Since January 7, 1999, Respondent has fulfilled a number of requests for

free e-mail services made by members of the "Mani" family through

the <mani.com>website. He enjoys receiving and responding to e-mail

communications from other "mani" family members and as well as to

more general genealogical inquiries directed to the site. Samples of some of

the e-mail communications that Respondent has received through the <mani.com>

website are attached to the Response. Printouts of e-mail communications that

Respondent has sent from the <mani.com> website are attached. These

activities of Respondent constitute both fair use of the domain name and the

bona fide offering of services through the website associated with the domain

name.

Complainant first notified Respondent of this dispute via letter dated December 11, 2000

– one year and eleven months after the date upon which Respondent commenced

fair use of the domain name and the bona fide offering of services through the

website associated with the domain name. Respondent replied on December 21,

2000, asserting his legitimate use of the domain name and referring to the desire

to communicate with persons called "mani".

Complainant has not alleged that Respondent acquired the domain name in order

to prevent Complainant from reflecting Complainant’s mark in a corresponding

domain name, or that Respondent has engaged in a pattern of such conduct.

Complainant has not alleged that Respondent acquired the domain name for the

purpose of disrupting the business of Complainant as a competitor. Complainant

is engaged in the marketing of clothing and clothing accessories. Respondent

is engaged in locating and communicating with members of his family group by

providing free e-mail services to them. Complainant and Respondent are not competitors

at all.

Complainant has suggested that Respondent acquired the domain name with the

intent to attract internet users to the on-line location of the computer services

company of which Respondent is President (eGulf Technologies) by creating a

likelihood of confusion with the Complainant’s mark as to the source, sponsorship,

affiliation, or endorsement of the Respondent’s website. This suggestion is

based upon the presence within the content of the <mani.com> website

of a link to the website of eGulf Technologies. The <mani.com>

website does not, however, feature any indicia of Complainant or other material

that might create a likelihood of confusion with the Complainant’s mark as to

the source, sponsorship, affiliation, or endorsement of that website or any

associated website. While a link to the Gulf Technologies website does appear

within the sentence "This web site belongs to Suresh Mani, of eGulf Technologies,

Inc., the eGulf Technologies website is likewise free of potentially confusing

indicia or material. No intent to infringe could possibly be deducted from the

mere and entirely incidental presence of this link.

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 ICANN 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;

- That the Respondent has no legitimate interests in respect of the domain

name; and

- The domain name has been registered and used in bad faith.

In the opinion of the Panel, the domain name registered by the Respondent is

identical to the Complainant’s marks.

The Complainant must show that the Respondent has no rights or legitimate interests

in respect of the dispute domain name. The Respondent does not assume the burden

of proof, but may establish a right or legitimate interest in a disputed domain

name by demonstrating in accordance with paragraph 4(c) of the Policy:

(a) He has made 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 prior to the dispute;

(b) He is commonly known by the domain name, even if he has not acquired any

trademark rights; or

(c) He intends to make 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.

In the Panel’s view, it is immaterial that the Respondent was not the initial

registrant. Although the original registrant may have registered it with intend

to sell it, the same cannot be said of the Respondent.

The evidence is that the Respondent registered the name long before the Complainant

objected. His claim is that he used it prior to the dispute as a means of communication

with persons of the same name who all can place their origins to a certain part

of the Indian subcontinent. The documents attached to the Response support this

claim.

The Complainant claims that the domain name should have included Mr. Mani’s

forename or should have been something like <manifamily.com>. The Panel

does not agree. The Respondent’s surname is Mani and he is commonly known as

such. He is entitled to use it on the internet.

Accordingly, the Panel considers that the Complainant has not discharged the

onus of proof in respect of the second criterion.

The Complainant may be able to prove a breach of its trademark rights in a

Court. But in the limited environment, such as ICANN procedure allows, it is

not possible for the Panel to so hold.

Accordingly, it is not necessary to consider the third criterion. However,

the Panel considers that it is not proved that the Respondent purchased the

name in bad faith. In other words, it is not proved that Mr. Mani

knew of the Complainant’s marks at that date.

7. Decision

The Complaint is dismissed. No order for transfer or cancellation of the domain

name <mani.com> is made.

Hon. Sir Ian Barker QC

Presiding Panelist

Reinhard Schanda

Panelist

David Perkins

Panelist

Dated: May 30, 2001

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