Hindustan Lever Ltd. v. Vikram Chachra

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Hindustan Lever Ltd v. Mr. Vikram Chachra

Case No. D2001-0765

1. The Parties

The Complainant is Hindustan Lever Ltd of Hindustan Lever House, 165/166 Backbay

Reclamation, Mumbai 400 020, India, represented by Mr. Pravin Anand of Anand

& Anand of New Delhi.

The Respondent is Mr. Vikram Chachra of 13, Cathedral Mansions, Vauxhall Bridge

r, London, SW1V 1BP, United Kingdom.

2. The Domain Name and Registrar

This dispute concerns the domain name <hindustanlever.com>.

The Registrar is Network Solutions Inc., of Herndon, Virginia, United States

of America.

3. Procedural History

This is an administrative proceeding pursuant to the Uniform Domain Name Dispute

Resolution Policy ("the Policy") adopted by the Internet Corporation

for Assigned Names and Numbers ("ICANN") on August 26, 1999, the Rules

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

24, 1999, ("the Rules") and the Supplemental Rules for Uniform Domain

Name Dispute Resolution Policy ("the Supplemental Rules") of the WIPO

Arbitration and Mediation Center ("the Center").

The Complaint was received by the Center by email on June 8, 2001, and in hardcopy

on June 12, 2001. The Complaint was acknowledged on June 11, 2001, and that

day registration details were sought from the Registrar. On June 13, 2001, the

Registrar confirmed that the disputed domain name is registered in the name

of the Respondent, (whose address is recorded as above); that the Respondent

is also the Administrative and Billing Contact (at the address 26 Broadway,

Suite 963, New York, NY 10004) and that its 5 Service Agreement (which incorporates

the Policy) is in effect.

On June 14, 2001, the Center satisfied itself that the Complainant had complied

with all formal requirements, including payment of the prescribed fee. That

day the Center formally dispatched a copy of the Complaint to the Respondent

by post/courier and email (the latter without attachments) with a letter notifying

the Respondent of the commencement of this administrative proceeding. The Center

sent copies to the Complainant, the Registrar and ICANN.

The last day specified by the Center for a Response was July 3, 2001. On July

4, 2001, a Response was filed by email. On July 20, 2001, the Complainant’s

representative filed an unsolicited reply.

On July 31, 2001, the Center notified the parties of the appointment of Alan L. Limbury

to serve as panelist, Mr. Limbury having submitted a Statement of Acceptance

and Declaration of Impartiality and Independence. On that day, the Center transmitted

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

date of August 14, 2001.

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; the Response was filed within

the time specified by the Rules and the panel was properly constituted.

4. Factual Background (uncontested facts)

The Complainant’s parent company is Unilever, whose history began in 1885 when

its founder, William Hesketh Lever, launched Lever Brothers in England. The

Complainant was incorporated in India in 1933 under the name Lever Brothers

(India) Limited and changed its name in 1956 to Hindustan Lever Limited.

The Complainant is India’s largest fast-moving consumer goods company. It markets

within India over 110 brands of consumer goods including home and personal care

products, foods and beverages and specialty chemicals. It is also one of India’s

five biggest exporters, its export markets including Russia, Philippines, Middle

East, Egypt, South East Asia and North America. It is one of only eight companies

in India recognized as a Super Star Trading House and was this year rated by

Forbes Global as top of its A-list of household products companies worldwide.

For the last four years Far Eastern Economic Review has rated the Complainant

India’s most respected company. In 1999 the Complainant’s gross turnover was

Rs.109.1.

The Complainant has used the trademarks HINDISTAN LEVER and LEVER continuously

since 1956 in connection with a diverse range of products and services. Its

earliest registration of the mark LEVER was on October 9, 1943 (No. 87126 in

class 3). In April 2001, it applied to register the mark HINDUSTAN LEVER as

a trademark in several classes.

The Respondent registered the disputed domain name on March 8, 1999. That

domain name does not resolve to an active website. A "cease and desist"

letter from the Complainant’s attorney, addressed to the Respondent at his London

address as recorded by the Registrar, was returned by the postal authorities

as "Not called for". No reply was forthcoming to a similar letter

addressed to the Respondent in his capacity as Administrative and Billing Contact

at his address in New York.

5. Parties’ Contentions

A. Complainant

The disputed domain name is identical to the Complainant’s trademark/tradename

HINDUSTAN LEVER as also its trademark LEVER.

The Respondent has no legitimate interest in the domain name. The Complainant

has not authorized the Respondent to use its trademarks and trade name. Further,

neither is the Respondent known commonly by the names HINDUSTAN LEVER and LEVER

nor has he made any demonstrable preparations to use the impugned domain name

in connection with a bona fide offering of goods/ services. As on the date of

filing the Complaint, the Respondent’s website was inactive. Hence the Respondent

cannot be said to have any rights/ legitimate interests in the disputed domain

name.

Since the disputed domain name incorporates the famous trademark/tradename

HINDUSTAN LEVER as also the trademark LEVER, the sole purpose of the registration

is to misappropriate the reputation associated with the Complainants famous

trademarks.

The Complainant submits that although the Respondent had registered the impugned

domain name in March 8, 1999, he has not activated a website under the said

name. In Telstra Corporation Ltd. v. Nuclear Marshmallows (WIPO

Case D2000-0003), it was held that even "inaction" or "passive

holding" of a domain name would amount to "bad faith". Thus,

the fact that the website has been inactive for a considerable period of time

is sufficient to indicate "bad faith".

The Respondent has stated two different addresses in the whois details. Even

apart from the fact that the stating of two different addresses is by itself

peculiar and suggestive of mala fides, the fact that the legal notice sent to

the Respondent’s address at London was returned with the message "not called

for", shows that the said address does not even exist. The Respondent has

provided false contact details to the Registrar and this suggests bad faith

on his part. The Complainant again relies upon Telstra for the proposition

that "the providing of false contact details" would amount to "bad

faith".

The Respondent, being an Indian, is obviously well aware of the Complainant’s

trademark; this by itself suggests that his registration was in bad faith. Further,

there is a great likelihood that actual or potential visitors to the Respondent’s

website, using the disputed domain name, will be induced to believe that:

- the Complainant has licensed it’s trademarks to the Respondent or authorized

the Respondent to register the disputed domain name;

- the Respondent has some connection with the Complainant or its parent Company,

Unilever.

It is therefore submitted that the impugned domain name has been registered

and is being used in bad faith.

B. Respondent

I have not registered the disputed domain name in bad faith or for the purpose

of selling the domain name to the Complainant. Prior to receiving this notification,

I had never heard of the existence of the Complainant.

My purpose in registering the disputed domain name was to start a metal tools

business in the United States.

‘Hindustan’ is the ancient term for India. Being of Indian ethnicity, I chose

the name ‘Hindustan’ as a reference to my ethnicity. The term ‘Lever’ by itself

is a generic noun in reference to the mechanical nature of my proposed line

of business, which is Metal Tools. Clearly, I do not intend to compete with

the Complainant’s line of business, which is consumer goods. Also, I do not

intend to market my business in India, where the Complainant claims to market

its goods under a similar trademark. I have never contacted the Complainant

for any consideration to sell or transfer the disputed domain name. It is my

genuine intention to sell metal tools to customers in the United States through

<hindustanlever.com>.

I deny the allegation that I have misappropriated the trademarks ‘Hindustan

Lever’ and ‘Lever’ by purchasing the disputed domain name. I could not have

acted in bad faith by not responding to the Complainant because I never received

any communication from the Complainant before the Center sent me the notification

of this proceeding on June 18, 2001.

I also deny that my ethnicity as an Indian could lead to a ready awareness

of the Complainant’s trademark. This allegation clearly indicates that the Complainant

lacks real evidence of mala fides or misappropriation and is resorting to vague

affinities by using my ethnicity as a way of proving that I am aware of the

Hindustan Lever trademark. Prior to this communication, I have never heard of

the trademark or brand name of Hindustan Lever. This is as ridiculous as assuming

that every person with an English name should be aware of all English trademarks

in the world.

For these reasons, I request the administrative panel to allow me to keep the

disputed domain name for the purpose of running my metal tools business in the

United States.

C. Reply

[The panel admits the following part of the Reply because it responds to matter

in the informal Response which the Complainant could not reasonably have anticipated

[1]].

The Respondent claims "intended use" of the domain name, (to start

a metal tool business in the United States) without submitting any evidence

to support this claim. WIPO panelists have consistently held that a mere "intention"

to use a domain name is not enough to demonstrate a legitimate interest in that

name; rather there has to be something "more" [2].

Even assuming that the Respondent intended to commence his business in metal

tools, his obvious choice should have been one of the following:

- hindustanmetal.com

- hindustanmetals.com

- hindustantool.com

- hindustantools.com

- indianlever.com

- indialever.com

On July 12, 2001, all the above domain names were available for registration.

It is thus evident that the Respondent’s adoption of the disputed domain name

was not a coincidence but done in clear "bad faith". The very act

of adoption of the Complainant’s trademark by the Respondent, despite his knowledge

of the Complainant’s prior rights in the trademark HINDUSTAN LEVER, reeks of

"bad faith" registration and use [3].

The Respondent has a website www.snaz.com, from which it is clear that he has

a technology development centre in Hyderabad, India. News items on the Internet

about the Respondent reveal his connections with India. Being an entrepreneur

who has been written about frequently, the Respondent must have known of the

Complainant, which is perhaps one of the largest consumer products company in

the world.

6. Discussion and Findings

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

Essential or virtual identity is sufficient for the purposes of the Policy

[4]. The panel finds the disputed domain name is identical

to the Complainant’s trademark HINDUSTAN LEVER.

The Complainant has established this element.

Illegitimacy

The Complainant has not authorized the Respondent to use its trademark nor

to register the disputed domain name. The name of the Respondent is not and

does not include any part of any of the disputed domain name. The disputed domain

name is not being used in connection with a bona fide offering of goods or services.

Although ‘HINDUSTAN’ may connote India and ‘LEVER’ could be said to be suggestive

of a "metal tools" business, the combination HINDUSTAN LEVER is distinctive

and not obvious. In the absence of any evidence that the Respondent intended

to establish a metal tools business nor of demonstrable preparations to use

the disputed domain name in connection with a metal tools business, the Respondent’s

explanation that this was his intention in registering the disputed domain name

is not credible.

The Panel concludes that the Respondent must have known of the Complainant’s

trademark before he registered the disputed domain name [5]

in light of

- the prominence of the Complainant and its widespread use of the trademarks

HINDUSTAN LEVER and LEVER both within India and elsewhere;

- the Respondent’s longstanding connections (including business connections)

with India; and

- the offering of an incredible explanation for his registration of the disputed

domain name.

Under all the circumstances the panel is satisfied that the Respondent has

no right to or interest in the disputed domain name. The Complainant has established

this element.

Bad faith registration and use

A finding of bad faith may be made where the Respondent "knew or should

have known" of the registration and use of the trademark prior to registering

the domain name [6], the circumstances set

out in paragraph 4(b) of the Policy not being exhaustive. The Panel has already

found that the Respondent must have been aware of the Complainant’s trademark

HINDUSTAN LEVER when he registered the disputed domain name, which incorporates

both of those words.

The Respondent registered the disputed domain name with incorrect contact details,

thus preventing the Complainant from communicating with him. This supports the

conclusion that the disputed domain name was registered in bad faith.

The ‘use’ requirement has been found not to require positive action, inaction

being within the concept [7]. In the leading

case on passive use [8], passive holding was

held to amount to acting in bad faith where:

(i) the Complainant’s trademark had a strong reputation and was widely known;

(ii) the Respondent provided no evidence of any actual or contemplated good

faith use by it of the domain name;

(iii) the Respondent had taken active steps to conceal its true identity, by

operating under a name that is not a registered business name;

(iv) the Respondent had actively provided, and failed to correct, false contact

details, in breach of its registration agreement, and

(v) taking into account all of the above, it was not possible to conceive of

any plausible actual or contemplated active use of the domain name by the Respondent

that would not be illegitimate, such as by being a passing off, an infringement

of consumer protection legislation, or an infringement of the Complainant’s

rights under trademark law.

Here the Complainant’s trademark is widely known in India and elsewhere. The

Respondent

- having chosen to assert a purpose for which he registered the disputed domain

name, provided no evidence of that purpose nor of even the slightest preparations

to use the disputed domain name for that purpose;

- offered an incredible explanation as to why he registered the disputed domain

name;

- must have known of the Complainant’s trademarks when he registered the disputed

domain name; and

- in breach of his registration agreement provided contact details in London

that were inadequate to enable communications to be delivered to him.

Although non-infringing uses of the trademark HINDUSTAN LEVER are available

(given the descriptive nature of the individual words which, in combination,

distinguish the Complainant’s goods, such as in fields not covered by the Complainant’s

registrations), the factors just mentioned indicate that the Respondent is acting

in bad faith in holding the disputed domain name and is thus using the disputed

domain name in bad faith.

Accordingly the Panel finds that the Complainant has established that the disputed

domain name was registered and is being used in bad faith.

7. Decision

Pursuant to Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel directs

that the domain name <hindustanlever.com> be transferred to the Complainant.

Alan L. Limbury

Sole Panelist

Dated: August 11, 2001

Footnotes:

1. See Goldline International, Inc. v.

Gold Line (WIPO Case No. D2000-1151).

2. See Herohonda Motors Ltd v. Rao Tella

(D2000-0365); Neuberger Berman v. Alfred

Jacobsen (D2000-0323); Nabisco

Brands Co. v. The Patron Group, Inc., (D2000-0032)

and Stella D’oro Biscuit Co. Inc v. The Patron Group, Inc. (D2000-0012).

3. See NIIT Ltd. v. Parthasarathy Venkatram

(D2000-0497).

4. See The Stanley Works and Stanley Logistics,

Inc v. Camp Creek. Co., Inc. (WIPO Case

No. D2000-0113), Toyota Jidosha Kabushiki Kaisha d/b/a Toyota Motor Corporation

v. S&S Enterprises Ltd. (WIPO Case

No. D2000-0802) and Nokia Corporation v. Nokiagirls.com a.k.a IBCC

(WIPO Case No. D2000-0102). For a typical

US case see Sporty’s Farm L.L.C. v. Sportsman’s Market, Inc., 202 F.3d

489, 497-98 (2d Cir. 2000) (the differences between the trademark "sporty’s"

and the domain name <sportys.com> – specifically, an apostrophe in the

trademark and the addition of .com in the domain name – are "inconsequential,"

such that the domain name is "indistinguishable" from and "certainly

‘confusingly similar’ to the protected mark").

5. See State Farm Mutual Automobile Insurance

Company v. Rocky E. Faw (NAF case FA0094971) and Leland Stanford Junior

University v. Zedlar Transcription & Translation (NAF case FA0094970).

6. See SportSoft Golf, Inc. v. Hale Irwin’s

Golfers’ Passport (NAF Case No. FA0094956). Likewise Marriott International,

Inc. v. John Marriot (NAF Case No. FA0094737); 163972 Canada Inc. v.

Sandro Ursino (DeC Case No. AF-0211) and Centeon L.L.C./Aventis Behring

L.L.C. v. Ebiotech.com (NAF Case No. FA0095037).

7. See Telstra Corporation Limited v.

Nuclear Marshmallows, (WIPO Case No. D2000-0003);

Barney’s, Inc. v. BNY Bulletin Board (WIPO

Case No. D2000-0059); CBS Broadcasting, Inc. v. Dennis Toeppen (WIPO

Case No. D2000-0400); Video Networks Limited v. Larry Joe King (WIPO

Case No. D2000-0487); Recordati S.P.A. v. Domain Name Clearing Company

(WIPO Case No. D2000-0194) and Revlon

Consumer Products Corporation v. Yoram Yosef aka Joe Goldman (WIPO

Case No. D2000-0468).

8. See Telstra Corporation Limited v.

Nuclear Marshmallows (WIPO Case No. D2000-0003).