Gajra Gears Ltd. v. Sandeep Tandon

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Gajra Gears Limited v. Sandeep Tandon

Case No. D2001-0606

1. The Parties

The Complainant is Gajra Gears Limited, a company incorporated under the Companies

Act 1956 and having its registered office at Elve Chambers, Green Street, Fort,

Mumbai-400 023, India.

The Respondent is Sandeep Tandon of 4477, Wilshire Blvd. Los Angeles, CA 90010,

U.S.A.

2. The Domain Name and Registrar

The dispute concerns the domain name <gajra.com> (the said Domain Name)

registered with Network Solutions Inc. (the Registrar) of 505, Huntmar Park

Drive, Herndon, Virginia 20170-5139, U.S.A.

3. Procedural History

On April 27, 2001, the Complainant submitted a complaint in hardcopy 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). On May 2, 2001, the Complainant

submitted the same electronically to the Center. On the same day, the Center

acknowledged receipt of the said complaint.

On May 2, 2001, the Center sent a Request for Registrar Verification to the

Registrar. On May 3, 2001, the Registrar confirmed by e-mail with the Center

that it was the Registrar of the said Domain Name and that the registrant of

the said Domain Name was the Respondent.

On May 10, 2001, having found that the Complainant had satisfied the formal

requirements of the Policy, the Rules and the Supplemental Rules, the Center

sent the Notification of Complaint and Commencement of Administrative Proceeding

(the Notification) by post/courier (with the complaint), facsimile (with the

complaint but without attachments) and e-mail (with the complaint but without

attachments) to the Respondent and transmitted electronically a copy of the

Notification to the Complainant. It also extended a copy of the Notification

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

The Notification set the formal date of the commencement of this administrative

proceeding as May 10, 2001 and required the Respondent to submit a response

to the Complainant within 20 calendar days from the date of receipt of the Notification,

i.e. by May 29, 2001, failing which the Respondent would be considered to be

in default.

The Respondent failed to file the response with the Center by May 29, 2001.

On May 30, 2001, the Center sent the Notification of Respondent Default to the

Respondent by e-mail and copied it to the Complainant via e-mail. On the same

day, the Respondent sent an e-mail to the Center to say that he was not sure

how he should respond and to let him know what he was supposed to do. On May

31, 2001, the Center sent an e-mail to the Respondent stating that it had fulfilled

its obligation under paragraph 2 of the Rules; the Respondent should refer to

the Notification sent earlier for further information on how to submit the response

and should the Respondent wish to file a response it would be at the discretion

of the Panel to accept the late filing of his response.

After receiving a Statement of Acceptance and Declaration of Impartiality and

Independence from Mr. Hariram Jayaram on June 18, 2001, the Center appointed

him to be the sole panelist (the Panel) on June 25, 2001 pursuant to the complaint

in which the Complainant had elected to have the dispute decided by a single-member

panel. It sent the Notification of Appointment of Administrative Panel and Projected

Decision Date together with the Transmission of Case File to the Complainant's

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

The Panel finds that the Center has discharged its obligations and responsibilities

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

Policy, the Rules and the Supplemental Rules and principles of law, which the

Panel deems to be applicable, without the benefit of having received a response

from the Respondent.

4. Factual Background

In its complaint, the Complainant states that the Complainant and its group

companies are well-known manufacturers and exporters of automotive transmission

and differential gears and are one of the largest exporters of auto gears. It

is the proprietor and owner of the mark "GAJRA". The word "GAJRA"

is also the family name of the shareholders and owners of the Complainant. The

name "GAJRA" was adopted in relation to the business of the family

in the year 1962 when it was a partnership firm carrying on business in the

name of Gajra Gears. The Complainant was organised and incorporated in the year

1974 to takeover and continue to run the business of Gajra Gears. The mark "GAJRA"

is being used in relation to the Complainant’s business activities since 1969.

The Complainant is the registered proprietor of the mark "GAJRA" in India, registered

under the Trade and Merchandise Marks Act, 1958 bearing Nos. 257483 in class

12 in respect of "gears included in class 12 for motor vehicles, tractors"

and it registered a mark bearing No. 257484 in class 7 in respect of "gears

(not for land vehicles) included in class 7" (of Schedule IV of the Trade and

Merchandise Marks Rules, 1959). These registrations are valid and subsisting.

It has also applied for registration of the said mark in classes 7 and 12 under

Application No.75-65 3496 at the United States Patent and Trademark Office.

The Complainant is also the originator and proprietor of the label mark entitled

"Gajra Gears" used in relation to goods falling in classes 7 and 12

for which there are pending applications under the Trade and Merchandise Marks

Act, 1958 in India. The Complainant has used this label mark since 1991. It

is also the originator, owner and registered proprietor of the trademark "GG"

consisting of a wheel device with the alphabets "GG" written therein.

The mark "GG" is registered in various countries such as Thailand,

Indonesia, Malaysia, Singapore and Brunei. All the above registrations are valid

and subsisting. The Complainant has also applied for registration for the mark

"GG" in classes 7 and 12 under Application No.75-653495 at the United

States Patent and Trademark Office and the said application is pending. The

mark "GAJRA" forms the essential, integral and predominant part of

the corporate name and trading style of the Complainant which has diversified

and expanded its business through its associate companies, Gajra Differential

Gears Private Limited and Gajra Forge Limited which have the word "GAJRA"

as a dominant part of their corporate names. The Complainant has also registered

the domain names <gajragroup.com> and <gajra.net> to provide information

relating to its group of companies to the members of the public.

As the Respondent has not filed his response, the available facts about him

are that he has registered the said Domain Name with the Registrar and he is

based in Los Angeles, U.S.A.

5. Parties’ Contentions

A. Complainant

The Complainant contends that its mark "GAJRA" is by reason of its

adoption and extensive use associated exclusively with it and no other person.

It manufactures its products which are of reputed quality and sells them all

over the world under the mark "GAJRA". Owing to the good quality of the Complainant’s

product backed by large publicity, the products have achieved extensive sales

under this mark. The mark "GAJRA" has acquired tremendous reputation and goodwill.

The use of the word "GAJRA" by any person other than the Complainant

will infringe the Complainant’s rights in "GAJRA", its registered

trademark.

The word "GAJRA" in the said Domain Name is identical to and/or deceptively

similar to the Complainant’s mark "GAJRA". The registration of the

said Domain Name is not authorised by the Complainant. The Respondent is neither

a part of the GAJRA group nor is he carrying on any business in that name. He

also does not have any rights in the mark "GAJRA". Thus, he cannot be considered

to have any right, title or interest or any legitimate reason for adopting the

word "GAJRA" as a part of his domain name.

The Respondent has registered the said Domain Name in bad faith. The mala

fide intention and the ulterior motive on the part of the Respondent for

financial gain is evident especially when there is no business or other reason

for adopting the said Domain Name. By adopting the word "GAJRA" and

using it as part of a domain name, he is trading upon and/or is likely to trade

upon the tremendous worldwide reputation and goodwill of the Complainant. By

fraudulently and dishonestly adopting a confusingly similar domain name, he

has intentionally attempted to attract, for commercial gain, Internet users

to his web site with the said Domain Name. It is likely that Internet users

would believe that his web site is the Complainant’s. They are likely to associate

the Respondent’s web site to the Complainant when in fact this is not the case.

The use of the said Domain Name is bound to cause confusion and/or deception

among the members of the public and trade.

The Complainant had through its advocate’s letter dated July 31, 2000, sent

a notice to the Respondent calling upon him to cease and desist forthwith from

using the mark "GAJRA" as part of the said Domain Name and to relinquish

his rights, if any, acquired by him in the said Domain Name. The Respondent,

through his attorneys, Perry Roshan-Zamir, replied by facsimile on August 29,

2000. He contended that the mark "GAJRA" had a common meaning and

could not be afforded trademark protection; the Complainant did not own the

mark "GAJRA" but merely had the corporate name "Gajra Gears"

and there existed various companies with the name GAJRA as part of their names;

the Respondent had merely reserved <gajra.com> without any reference to

the Complainant's service or goods. The Respondent only intended to use this

web address with goods and services not associated with those of the Complainant's.

Even if the mark was a valid trademark, it would only preclude the Respondent

from using the same in association with the goods or services provided by the

Complainant's entity, not any and all goods and services; the Respondent was

not aware that the Complainant existed prior to the Complainant's letter and

the Complainant’s trademark application in the United States for the mark "GAJRA"

has been refused and denied. The Complainant has no registered trademark in

the United States.

Through its advocate, the Complainant sent its letter dated September 5, 2000,

to the Respondent’s attorney denying and rejecting the contentions and claims

set out in the facsimile dated August 29, 2000. The Complainant stated that

the United States Patent and Trademark Office by its communication dated July

28, 2000, had raised objections to the specification of goods in Application

Nos.75-653495 and 96. These objections were removed by the Complainant’s Trademark

Attorney; the application has been accepted for advertisement; notwithstanding

the pending application before the United States Patent and Trademark Office

the Respondent was not entitled to use the mark "GAJRA" as part of

the said Domain Name. The Respondent’s attorneys by its email/letter dated September

14, 2000, once again reiterated that the Complainant’s trademark "GAJRA"

was refused registration in U.S.A. The letter of the Respondent's attorneys

appears to be a defence of denials and it has failed to establish a plausible

reason why the Respondent is entitled to use the word "GAJRA" as part

of his domain name.

It is the Complainant's contention that from the defences put forward by the

Respondent in its letters to the Complainant, he has not been able to demonstrate

a bona fide right to adopt and use the word "GAJRA" as a part

of the said Domain Name. The Respondent is in no way connected with the word

"GAJRA" or the Gajra family and the Respondent’s failure to establish

any lawful nexus with the word "GAJRA" speaks for itself on the use

or preparation to use the said Domain Name for a bona fide offering of

goods or services. Until April 16, 2001, the web site has not been constructed

and it does not appear that it will be constructed by the Respondent. The Respondent

has not been commonly known by the name "GAJRA" which forms part of

the said Domain Name. He does not have any legitimate reasons for adopting and

using the mark "GAJRA" as a part of the said Domain Name. He has registered

the said Domain Name to trade upon the worldwide reputation and goodwill of

the Complainant and has not been making a legitimate noncommercial or fair use

of the said Domain Name without intent for commercial gain. The adoption of

the said Domain Name is mala fide and made with bad faith and with an

intention to attract Internet users to visit the Respondent’s web site to unlawfully

and illegally acquire commercial gain.

B. Respondent

The Respondent has not filed a response.

6. Discussion and Findings

6.1 Effect of Respondents’ default

Paragraph 5 (a) of the Rules requires the Respondent to submit his response

to the Center within twenty (20) days of the commencement of the administrative

proceeding.

By the Notification, the Center informed the Respondent that the last date

for sending his response was May 29, 2001. The Respondent has failed to submit

his response. In view of the default it is open to the Panel, under paragraph

(14)(b) of the Rules to:

"draw such inferences…as it considers appropriate."

Before arriving at a decision, due heed must be paid to what was said in Charles

Jourdan Holding AG v. AAIM WIPO Case No.

D2000-0403. In that administrative proceeding, it was the Panel’s view that

"in the absence of a response to the Complainant’s allegations by the

Respondent, the Panel must evaluate those claims in the light of the unchallenged

evidence submitted by the Complainant."

It is obligatory on the part of the Panel, despite the absence of the response,

to ascertain whether the Complainant has successfully made out a case against

the Respondent for the cancellation of the said Domain Name or its transfer

to the Complainant.

6.2 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.

6.3 Identical or confusingly similar

The Complainant claims rights in three marks, "GAJRA", "GG" and "Gajra

Gears". It has produced certificates of registration and notifications

of renewal for the mark "GAJRA" in classes 7 and 12 essentially for

gears issued by the Trade Marks Registry, Bombay, India. The Complainant has

also filed an application for the registration of the mark "GAJRA"

in classes 7 and 12 for a number of goods including gears at the United States

Patent and Trademark Office. The Complainant and its predecessors in title have

been using the mark "GAJRA" for all their business activities since 1969. To

show use, the Complainant has produced sales figures which stretch from 1991

to 2000. The word "GAJRA" forms a part of the corporate name of the Complainant

as well as its associate companies, Gajra Differential Gears Private Limited

and Gajra Forge Limited.

The Complainant claims to have registrations for the mark "GG" in

countries such as Thailand, Indonesia, Malaysia, Singapore and Brunei but it

has not produced any documentary evidence to support this claim. The Complainant

has filed an application for the registration of the mark "GG" in

classes 7 and 12 for a number of goods including gears at the United States

Patent and Trademark Office.

It has also filed applications for the registration of the mark "Gajra

Gears" in classes 7 and 12 at the Trade Marks Registry, Bombay. These applications

are pending. As to the mark "Gajra Gears", the Complainant claims to have used

this mark since 1991 but it has produced no supporting evidence to enable the

Panel to give weight to its statement regarding use.

The Panel is unable to give significance to the Complainant’s applications

for the registration of the marks "GG" and "Gajra Gears" or for that

matter the application for the mark "GAJRA" because the pending applications

confer no statutory rights on the Complainant. However, on account of the registration

of the trademark "GAJRA" in India and its long and substantial use

for goods, the Complainant does have a rightful claim to the mark "GAJRA".

When comparing the said Domain Name with the mark "GAJRA" the Panel finds that

the second level domain (SLD) "gajra" is identical to the mark "GAJRA".

6.4 Respondent’s rights or legitimate interests in the said Domain Name

The Complainant alleges that the Respondent does not have rights or legitimate

interests in the said Domain Name. It says that the Respondent has registered

the said Domain Name to trade on the worldwide reputation and goodwill of the

Complainant. The Complainant has produced no evidence in support. The Panel

is unable to give much credence to this statement of the Complainant. In fact

the Complainant says that as at April 16, 2001, the Respondent has not constructed

the web site with the said Domain Name and it is the opinion of the Complainant

that the web site with the said Domain Name would not be constructed at all

by the Respondent.

The Complainant points out that the Respondent has adopted the word "GAJRA"

as part of the said Domain Name but he has no lawful nexus with the word "GAJRA".

He is not commonly known by the name "GAJRA" and he has made no legitimate

noncommercial or fair use of the said Domain Name. When the Complainant advances

such arguments which are plausible to discharge the burden of proof placed on

it, it becomes obligatory for the Respondent to refute these arguments.

The Respondent has not filed his response. The Panel is prepared to take note

of the facsimile dated August 29, 2000, from the Respondent's attorneys to the

Complainant's authorised representative, in which the Respondent contended that

he only intended to use the said Domain Name in relation to goods and services

not associated with those of the Complainant's. Exactly what these goods are,

no details have been furnished by the Respondent. This leaves the Panel with

no alternative but to conclude that the Respondent has no rights or legitimate

interests in the said Domain Name.

6.5 Registration and Use in Bad Faith

In support of its contention that the registration and use of the said Domain

Name is in bad faith, the Complainant has repeated its allegation that the Respondent's

reason for adopting the said Domain Name is to trade upon the reputation and

goodwill of the Complainant. The Respondent also alleges that the Complainant

intentionally attempted to attract the Internet users to his web site with the

said Domain Name for commercial gain. The Complainant has produced no evidence

to support any kind of trade by the Respondent. Mere allegations are not acceptable.

However, the Complainant has argued that the Respondent, having no connection

with the name "GAJRA" or the business activities of the Complainant, has adopted

the said Domain Name which closely resembles the mark of the Complainant and

this is bound to create confusion with Internet users mistakenly believing that

the said Domain Name is that of the Complainant or connected with it in some

form or other. The Panel accepts this contention of the Complainant as reasonable

and concludes that the adoption of the said Domain Name is in bad faith.

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: July 9, 2001