MIRC Electronics Ltd. v. Srini R.T.

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

MIRC Electronics Limited v. Onida.com

Case No. D2001-1061

1. The Parties

The Complainant is M/s MIRC Electronics Limited, of Onida House, G-1, MIDC,

Mahakali Caves Road, Andheri East, Mumbai (Bombay) – 400 093, India, represented

by Ms. Jennifer Fernandez of Krishna & Saurastri of Mumbai, India

The Respondent is Onida.com of 3640 Patridge Path # 8, Ann Arbor, Michigan,

48108, United States of America, represented by Ari Goldberger Esq., of

ESQwire.com Law Firm of Cherry Hill, New Jersey, United States of America.

2. The Domain Name and Registrar

The disputed domain name is <onida.com>.

The Registrar is Bulk Register.com, Inc., of Baltimore, 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 August 24, 2001, and in

hard copy on August 29, 2001. It named "Srinit R.T." as Respondent.

The Complaint was acknowledged on August 29, 2001. On August 30, 2001,

registration details were sought from the Registrar. On September 6, 2001, the

Registrar replied that the disputed domain name is registered with it; that

the registrant is Onida.com, at the address mentioned above; that the Administrative

and Technical Contacts are "Host Master srinirt@yahoo.com Onida.com"

at the same address, and that the Policy applies to the disputed domain name.

On September 7, 2001, the Center requested the Complainant to amend the Complaint

so as to name Onida.com as Respondent. An amended Complaint was filed by email

on September 9, 2001, and in hard copy on September 17, 2001.

On September 20, 2001, the Center formally dispatched copies of the Complaint

and the amendment by post/courier (with enclosures) to the Respondent at the

address as recorded with the Registrar and by email (without attachments). The

Center included with the material dispatched to the Respondent a letter dated

September 20, 2001, containing notification of the commencement of this administrative

proceeding, with copies (of the Complaint as amended without attachments) to

the Complainant, the Registrar and ICANN.

The last day specified by the Center for a Response was October 10, 2001. On

October 3, 2001, Respondent’s counsel sought an extension of 10 days and

next day the Center granted an extension until October 26, 2001. A Response

was filed on October 26, 2001, by email and on October 30, 2001, in

hard copy.

Respondent elected to have the case decided by a three-member Administrative

Panel and on November 22, 2001, the Center notified the parties of the appointment

of the undersigned as Panelists, each Panelist having submitted a Statement

of Acceptance and Declaration of Impartiality and Independence. On November

22, 2001, the Center transmitted the case file to the Panel and notified the

parties of the projected decision date of December 4, 2001.

On November 23, 2001, Complainant sought leave to file a Reply. On November 29, 2001,

by Procedural Order No. 1, the Panel ordered Complainant to file a Reply within

3 working days of notice of the Order, and requested Respondent to provide certain

evidence, within 5 working days of notice of the Order. The Panel extended the

time for a decision until the information sought had been received and, subsequently,

to December 20, 2001. The parties complied with the Procedural Order.

The Panel is satisfied that the Complaint, as amended, was filed in accordance

with the requirements of the Rules and Supplemental Rules; payment was properly

made; the Center discharged its responsibility under paragraph 2(a) of the Rules

to employ reasonably available means calculated to achieve actual notice to

the Respondent of the Complaint; the Response was filed within the time specified

in the Rules, as extended by the Center, and the Panel was properly constituted.

The language of the proceedings was English, being the language of the Registration

Agreement.

4. Factual Background

Under the registered trademark ONIDA, Complainant makes a wide range of electronic

goods including television sets and music systems, which it sells principally

in India, Sri Lanka, Nepal, Bangladesh, the Middle East, South Africa and African

countries. The mark ONIDA was adopted in 1986 by Complainant’s predecessor,

Monica Electronics Limited, and was assigned to Complainant on February 12, 1998 [Complaint,

Annex F].

In December, 1999 ONIDA brand advertising was ranked by the Hindu Business

Line as second most endearing in India, behind PEPSI. ONIDA was the only consumer

durable brand in the top ten [Complaint, Annex M]. A report by Pricewaterhouse

Coopers in August, 2000, valued the ONIDA brand at between 550 –600 crores [Complaint,

Annex P].

Respondent, Accuway Services, Inc., doing business as Onida.com, is a developer

of websites. (Tella affidavit, para. 3). It registered the disputed domain name

on January 11, 2000.

As of July 10, 2001, Internauts entering <www.onida.com> were directed

to an unconnected site, <www.goto.com>, offering a money-earning facility

and Internet gambling (Complaint, Annex R).

As of October 24, 2001, (after the commencement of this administrative proceeding)

the site <www.onida.com> provided information about a city called Onida

in South Dakota, United States of America; community chat and discussion forums

[sic] and web search and shopping facilities, which offered for purchase over

the Internet a wide range of products and services including electronic goods,

in particular televisions and music systems (Response, Exhibit 2).

Complainant faxed Respondent on September 5, 2000, October 18, 2000, and December

18, 2000, asserting its rights in the trademark ONIDA and seeking transfer to

it of the domain name "in the interests of healthy and cooperative business

practices"(Complaint, Annex D). In reply to an email from Complainant

dated December 19, 2000, Respondent said:

"Onida.com has been up and running for a long time. It was started as

a community website for people living in Onida city, South Dakota. We are going

to improve a lot in the next couple of years.

We were not aware of your trademark or your company while registering the

domain name." (Response, Exhibit 3).

5. Parties’ Contentions

A. Complainant

The Complainant requests the Panel to direct that <onida.com> be transferred

to Complainant and it invokes the following legal grounds as the basis of the

relief sought:

Identity or confusing similarity

The disputed domain name is identical to Complainant’s trademark ONIDA.

Legitimacy

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

word ONIDA is an invented word, which no individual would legitimately choose

unless seeking to create an impression of an association with Complainant. Respondent

is not identified or associated with the word ONIDA.

The administrative contact of the disputed domain name, Mr. Srini R.T., is

of Indian origin and must be aware of Complainant’s trademark ONIDA and of the

products being marketed under that mark in several countries including India.

The fact that Respondent has not taken any initiative to construct a website

but has redirected users to another site demonstrates lack of legitimate interest

in the disputed domain name.

Bad faith

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

Respondent is using the disputed domain name misleadingly to divert users to

the <www.goto.com> site. This is within paragraph 4(a)(iii) of the Policy.

Further, the "passive" use of the disputed domain name amounts to

bad faith.

The administrative contact details were changed with malafide intention after

Complainant made contact with Respondent, in order to avoid proceedings under

the Policy.

B. The Respondent

Identity or confusing similarity

Respondent acknowledges that the disputed domain name and Complainant’s alleged

trademark are identical.

Legitimacy

Mr. Srinivasa Rao Tella, President of Respondent, registered the disputed domain

name to use in connection with a community website offering information about

the city of Onida in South Dakota, which he had visited several years ago on

a fishing trip (Tella affidavit, para. 3). This establishes legitimacy (and

negates bad faith), as do Respondent’s past and present uses of the disputed

domain name in connection with advertising links and general information.

When he registered the disputed domain name, Mr. Tella had no knowledge of

Complainant or its ONIDA trademark (Tella affidavit, para. 5).

Good Faith

Complainant can show neither bad faith registration nor bad faith use. Registration

of a domain name incorporating a geographic trademark, to which no party can

establish exclusive rights, cannot establish bad faith registration under the

Policy: Sorel Corporation v. Domaine Sales Ltd., (NAF Case No. 96674).

There is no evidence of circumstances within paragraph 4(b) of the Policy and

no evidence of prior knowledge of the trademark. The evidence does not support

"passive use" since the disputed domain name has been used, first

in connection with the "goto" links and now in connection with a website

related to the City of Onida, South Dakota.

The administrative contact details were changed purely as a result of Mr. Tella

changing his preferred email address for the disputed domain name.

Complainant’s reply

The Panel acceded to a request by Complainant for leave to file a Reply because

Respondent’s assertions concerning the place called Onida in South Dakota could

not reasonably have been anticipated in the Complaint: see Goldline International,

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

and the cases there cited. The Panel required the Reply to be limited to that

issue.

The defence that the disputed domain name was registered to be used in connection

with a community website offering information about the place ONIDA is baseless

as the place is neither well known nor prominent for any merchandise or services

nor has the Respondent produced any evidence to show his connection with this

place. It is primarily an agricultural community of 800 people with a land area

of 1.641 sq. kilometers. The Respondent himself is not associated in any manner

with the said city as he himself is located in Michigan, more than 500 miles

away, and has therefore failed to identify any factual nexus or rational connection

in the matter.

The general information, products, electronic goods, home appliances, services

and links available on the website reached by means of the disputed domain name

as stated in the Response bear little or no relationship with Onida - the place

in question. Respondent is actually hosting an e-commerce website offering entertainment,

electronics and white goods and hence Respondent does not have any genuine intention

or legitimate interest in adopting the domain name <onida.com>. The real

intention behind registration of the disputed domain name is to encash upon

the trademark reputation enjoyed by Complainant and to pass off Respondent’s

merchandise as that of Complainant.

Further evidence from Respondent

The Panel requested the Respondent to provide (without argument) evidence of

Mr. Tella having visited Onida, South Dakota prior to notice of this dispute,

examples of such evidence being faxed copies of hotel bills, tickets, credit

card records etc.

Respondent stated it was unable to locate any such records, saying they are

not the kind of personal records Respondent saves in the normal course. Respondent

submitted two sworn affidavits, from Mr. Tella and a Mr. Srinivasa Munnangi,

both stating that Mr. Tella visited Onida, South Dakota in company with

Mr. Munnangi, in 1993 and 1998.

6. Discussion and Findings

Under paragraph 15(a) of the Rules, the Panel must decide this Complaint on

the basis of the statements and documents submitted and in accordance with the

Policy, the Rules and any rules and principles of law that it deems applicable.

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.

Trademark rights in geographical names

While geographical names are not protected as such under the Policy, they may

nevertheless qualify for protection under the Policy as trademarks if shown

by evidence of their use to have become distinctive of the goods or services

of a particular trader. In this respect they may be protected as trademarks

in the same way as descriptive (generic) words shown to have become distinctive.

It is therefore a matter of evidence in each case as to whether a complainant

has proved that the geographical name functions as a trademark: see Mt. Eliza

Graduate School of Business and Government Ltd. v. Rom Graphics (eResolution

Case No. AF-00831) and the cases there cited. See also Daydream Island Resort

Investments Pty Ltd. v. Alessandro Sorbello (eResolution Case No. AF-0586)

and the cases there cited.

The fact that a trademark may also be a geographical indication means that

the trademark owner cannot claim exclusive use of the mark: see Sorel Corporation

v. Domaine Sales Ltd. (NAF Case No. FA0102000096674). It is therefore a

matter for evidence in each case as to whether the elements of illegitimacy

and bad faith are established: see Maui Land and Pineapple Co., Inc. v. Kapalua

Land Co. (NAF Case No. FA0008000095544); Bondy Way Development Corporation

and Ashburn Village Development Corporation v. Re/Max Premier (WIPO

Case No. D2000-0322); Oshawa Centre Holdings Inc. v. M. Bharwani (eResolution

Case No. AF-0820); MAHA Maschinenbau Haldenweg GmbH & Co. KG v. Deepak

Rajani (WIPO Case No. D2000-1816)

and Sorel (supra). In this regard also, the Policy applies to geographical

indications that function as trademarks in like manner as it applies to generic

words that function as trademarks.

Here Complainant has shown that, in India and elsewhere, the word ONIDA is

a coined word that is distinctive of Complainant’s goods. It is registered as

a trademark and Complainant undoubtedly has rights in it.

Identity or confusing similarity

Respondent admits and the Panel finds that the disputed domain name is identical

to the Complainant’s trademark ONIDA.

The Complainant has established this element.

Illegitimacy

In India and other countries in the region, the word ONIDA is a very well known

coined word (one of the top ten brands in India) strongly denoting the goods

of Complainant. Complainant has not authorized Respondent to use its trademark

nor to register the disputed domain name. Respondent is not known by the disputed

domain name.

These circumstances are sufficient to constitute a prima facie showing

by Complainant of absence of rights or legitimate interest in the disputed domain

name on the part of Respondent. The evidentiary burden therefore shifts to Respondent

to show by concrete evidence that it does have rights or legitimate interests

in that name: Do The Hustle, LLC v. Tropic Web (WIPO

Case No. D2000-0624) and the cases there cited.

Respondent points to the small town (population 800) of Onida in South Dakota

and has produced sworn evidence that its President, Mr. Tella, visited that

place in 1993 and 1998. Because no use of the disputed domain name in connection

with the town of Onida was made

until after the commencement of these proceedings, the Panel views with great

suspicion Respondent’s attempts to explain the registration of the disputed

domain name by reference to that small town.

The Panel had asked Respondent to provide "without argument" evidence of Mr.

Tella having visited Onida, South Dakota, prior to notice of this dispute, examples

of this evidence being faxed copies of hotel bills, tickets, credit card records

etc. The Administrative Panel Procedural Order No.1 dated November 29, 2001,

made it crystal clear what specifically the Panel was looking for.

Respondent has failed to produce the specific concrete evidence as desired

by the Panel and has failed to discharge the onus of proof on the Respondent.

In the absence of contemporaneous, objective, corroborative evidence, such

as hotel bills, credit card records or travel tickets, the Panel is not prepared

to make a definitive finding that Mr. Tella visited the town called Onida. In

any event, even if Respondent knew of the use of the word Onida as a place name

before registering the disputed domain name, this would not end the enquiry,

because knowledge of the place would not negate knowledge of the mark.

Mr. Tella has also sworn that he was unaware of Complainant and its ONIDA trademark

before registering the disputed domain name. The outcome of this case turns

on whether this last assertion is accepted, since it goes to the heart of the

entwined issues of legitimacy and bad faith.

Complainant asserts that Mr. Tella, the President of Respondent and its administrative

contact in relation to the disputed domain name, is of Indian origin and therefore

must have known of the ONIDA trademark. Respondent has not disputed that Mr.

Tella is of Indian origin but says there is no evidence he knew of the trademark,

that he did not know of it and that the ONIDA mark is not known in the United

States. The Panel accepts that there is no evidence the ONIDA mark is known

in the United States but, despite Mr. Tella’s assertion, infers from the renown

of the ONIDA mark in India and elsewhere, where it is a coined word, and from

Respondent’s failure to use the disputed domain name in connection with the

town of Onida until after the commencement of this proceeding that it is more

likely than not that Mr. Tella did know of the ONIDA trademark and had it in

mind when he registered the disputed domain name on behalf of Respondent. The

Panel reaches this conclusion without any regard to Complainant’s assertion

concerning Mr. Tella’s Indian origin.

The initial use of the disputed domain name was to redirect users to the "goto"

site, which has no connection with or information about the town of Onida (Complaint,

Annex R). This use was inconsistent with Respondent’s claimed purpose in registering

the disputed domain name, namely to use it for a community website about the

town of Onida. The Panel does not accept that was Respondent’s purpose.

The Panel does not agree that Respondent’s use of the disputed domain name

to redirect Internauts entering <www.onida.com> to the "goto"

site (Complaint, Annex R) demonstrates a legitimate interest in the disputed

domain name. That redirection did not involve the establishment of a website

at <www.onida.com> and was the equivalent of "parking".

The Panel does not accept Respondent’s proposition that because <onida.com>

incorporates a term not solely associated with Complainant, Respondent has rights

and a legitimate interest in the disputed domain name, regardless of how it

is using it. Respondent cited two cases for this proposition. In the first,

Energy Source Inc. v. Your Energy Source (NAF Case No. FA 96364), there

was evidence of preparations and bona fide use by the respondent before notice

of the dispute. In the second, Neusiedler Aktiengesellschaft v. Vinayak Kulkarni

(WIPO Case No. D2000-1769) the Panel considered

the evidence but was not satisfied that it established illegitimacy and bad

faith.

As mentioned, this Panel takes the view that where a domain name incorporates

a term not solely associated with a complainant, such as a geographical indication

that also functions as a trademark, it is a matter of evidence in each case

as to whether the respondent has a legitimate interest in the domain name.

On the evidence before the Panel, there was no website at <www.onida.com>

and no information about the town of Onida on that site until after the commencement

of this proceeding and shortly before the Response was filed, nearly 2 years

after registration of the disputed domain name (Response, Exhibit 2). In Corinthians

Licenciamentos Ltda. v. David Sallen, Sallen Enterprises and J.D.Sallen Enterprises

(WIPO Case No. D2000-0461) [1],

the posting of scripture on a website after notice of dispute was found not

to demonstrate a legitimate interest under either paragraphs 4(c)(i) or 4(c)(iii)

of the Policy. Here the Panel does not accept the posting of information about

the town of Onida after the commencement of these proceedings as demonstrating

a legitimate interest on the part of Respondent.

The Panel finds the Complainant has established this element. The Respondent

has no rights or legitimate interest in the disputed domain name.

Bad faith registration and use

Paragraph 4 (b) of the Policy is expressly not limited to its specified circumstances.

A finding of bad faith may be made where the Respondent knew of the registration

and use of the trademark prior to registering the domain name: 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 (eResolution Case No. AF-0211)

and Centeon L.L.C./Aventis Behring L.L.C. v. Ebiotech.com (NAF Case No.

FA0095037).

The Panel has found that it is more likely than not that Respondent did know

of Complainant’s mark ONIDA prior to registration of the disputed domain name.

In determining whether that registration was in bad faith, in the sense of being

an act directed towards Complainant, the Panel notes that Respondent did nothing

to associate the disputed domain name with the town of Onida until almost 2

years after registration, after this proceeding had commenced. In about December

2000, having received 4 communications from Complainant, Respondent incorrectly

stated (Response, Exhibit 3)"Onida.com has been up and running for a

long time". Respondent also incorrectly stated: "It was started

as a community website for people living in Onida City, South Dakota".

Under these circumstances the Panel finds that it was Respondent’s knowledge

of the ONIDA trademark that was uppermost in Mr. Tella’s mind when he registered

the disputed domain name and that any knowledge of the town of Onida which Mr.

Tella might have had did not have a material bearing on the decision to register

the disputed domain name. The Panel finds the disputed domain name was registered

in bad faith.

On the evidence, including the evidence of Respondent as to its activities

after commencement of this proceeding (Response, Exhibit 2), the Panel finds

that, by establishing a website at <www.onida.com> which offers, among

other things, electronic goods including televisions and music systems, Respondent

has used the domain name intentionally to attract, for commercial gain, Internet

users to its website, by creating a likelihood of confusion with Complainant’s

mark as to the source, sponsorship, affiliation or endorsement of the site and

of products on the site. Under paragraph 4(b)(iv) of the Policy, such a finding

is evidence of both registration and use in bad faith.

The Complainant has established this element.

7. Decision

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

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

Alan L. Limbury

Presiding Panelist

David E. Sorkin

Panelist

Pavan Duggal

Panelist

Dated: December 20, 2001

Footnotes:

1. The order made by the Panel in that case

is presently under challenge in court proceedings in the U.S. Federal Court,

see: http://www.ca1.uscourts.gov/cgi-bin/getopn.pl?OPINION=01-1197.01.A.