MindTree Consulting Pvt. Ltd. v. Mr. Rajesh Shrestha

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

MindTree Consulting Pvt. Ltd. v. Rajesh Shrestha

Case No. D2002-0438

1. The Parties

The Complainant is MindTree Consulting Pvt. Ltd., a company incorporated In

India, with its principal place of business in Bangalore, India.

The Respondent is Mr. Rajesh Shrestha, an individual residing in Nepal. The

address of the Respondent as contained in the domain name registration is Hattisar,

Kathmandu, Kathmandu G.P.O. 8975, Nepal.

2. The Domain Name and Registrar

The domain name that is the subject of this Complaint is <mind-tree.com>.

The Registrar of this domain name is eNom Inc., 16771, NE 80th Street,

Suite #100, Redmond, WA 98052, 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 via email on May 6, 2002,

and in hard copy on May 14, 2002. The Center acknowledged receipt

of the Complaint on May 10, 2002. On May 10, 2002, a Request

for Registrar Verification of registration details was made by the Center and

on May 14, 2002, the Registrar confirmed that the disputed domain

name is registered in the name of the Respondent, who is also the Administrator,

Technical and Billing Contact; that the Policy applies to the disputed domain

name; that the domain name is active and that the language of the registration

agreements of the disputed domain name is English.

On May 16, 2002, the Center satisfied itself that the Complainant had complied

with all formal requirements (including payment of the prescribed fee).

On May 16, 2002, the Notification of Complaint and Commencement of Administrative

Proceeding together with the Complaint with Transmittal Coversheet in English

were electronically transmitted to the parties.

On June 14, 2002, the Notification of Respondent Default was electronically

dispatched to the parties.

On June 28, 2002, having received a completed and signed Statement of Acceptance

and Declaration of Impartiality and Independence from Susanna H.S. Leong (the

"Panelist"), the Center notified the parties of the appointment of

a single-member panel (‘the Panel") consisting of the Panelist. That day,

the Center transmitted the case file to the Panel and notified the parties of

the Projected Decision Date of July 12, 2002.

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 Complainant’s compliance

with the formal requirements and the administrative Panel was properly constituted.

4. Factual Background

The Complaint asserted, and provided evidence in support of, and the Administrative

Panel finds established, the following facts:

The Complainant’s Business and Commercial Activities

The Complainant is an integrated e-business and networking Technology Company

founded in the year 1999. The Complainant was set up with an aim to effectively

tackle issues which conventional software consulting companies had failed to

address in the age of e-business. The Complainant enjoys the distinction of

having created a new synergetic model of consultancy that combines the traditional

US-based consulting practices with the benefits of off-shore development. The

Complainant’s main activities are the provision of web-enabled services in the

twin spheres of e-commerce and telecommunications and over the years, the Complainant

has in its list of clients some of the world’s leading technology players including

Alcatel, Ariba, Cisco Systems, Epson, Fujitsu, Hitachi, Lucent Technologies,

Sun Microsystems etc. The client list also includes business players such as

Avis, Business Standard, Fabmart, Franklin Templeton, Inc., Global Trust Bank

Ltd., Hindustan Lever Ltd., Prudential ICICI etc. The Complainant having established

credible presence in the US and Europe has strengthened its Indian operations

to provide world-class consulting and implementation services to Indian customers

who account for 20% of its revenues and is now in the process of starting its

third line of operations aimed at the enterprise space. The Complainant has

posted an annual revenue in excess of US$ 15 million in the very first year

of its operations, hiring over 400 employees and has established fully functional

development centers in Bangalore and New Jersey as well as a business development

office in the Silicon Valley, California.

The Complainant’s Trade Name and Trademarks

The Complainant is the proprietor of the trademark MindTree, which has been

adopted and used by the Complainant in relation to its goods and services, since

August 5, 1999. The name MindTree not being a commonplace dictionary

word of the English language or for that matter, of any other language is a

coined word which connotes no other meaning than as a trademark in relation

to the goods and services of the Complainant. In order to protect its inherently

distinctive trademark MindTree, the Complainant has filed numerous trademark

applications in several countries of the world. The applications have been filed

in inter alia India, United States of America, United Kingdom, Australia,

Singapore, Japan and European Community. The trademark applications for MindTree

in United Kingdom, Australia, European Community and Singapore have materialised

into registrations. The other applications are pending at the moment. Besides

having filed applications for the trademark "MindTree", the Complainant

has also filed applications for the marks "MindTree Consulting & Design"

and "MindTree Technologies" in India.

The Complainant’s Domain Names and Web Sites

The Complainant has a website <www.mindtree.com>, which contains information

with regard to the Complainant’s business, contact details, clients and latest

news.

The Complainant is also the registrant of the following domain names containing

the word <mindtree>:

<mindtree.com>

<mindtreecompany.com>

<mindtreeinc.com>

<mymindtree.com>

<mindtreelabs.com>

<mindtreelabs.net>

<mindtreelabs.org>

<mindtreeuniversity.com>

<mindtreeresearch.com>

<mindtreemusic.com> <mindtreemind.com>

<mindtreehouse.com>

The Respondent’s Identity and Activities

The Respondent is the registrant of the domain name <mind-tree.com>,

the Registrar of which is eNom Inc. According to the eNom’s Whois database,

the date of registration of the disputed domain name January 11, 2002.

This domain name resolves to a web site entitled "MindTree" which

is under construction.

The address of the Respondent as contained in the domain name registration

is Hattisar, Kathmandu, Kathmandu G.P.O. 8975, Nepal. From the e-mail correspondences

between the Complainant and the Respondent, which are adduced before the Panel

as supporting evidence, the Respondent claims to have a company registered by

the name of Mind-Tree Solutions in the cottage and small industries department

under the Ministry of Industry, commerce and supplies in Nepal. A copy of the

registration certificate has been submitted by the Respondent but as the certificate

is in the Nepalese language and no translation for the certificate has been

undertaken, it is not possible for the Panel to verify the claims of the Respondent

on this matter.

5. Parties’ Contentions

A. Complainant

The Complainant contends that each of the three elements specified in the paragraph

4(a) of the Policy are applicable to this dispute.

In relation to element (i) that the domain name in dispute is identical or

confusingly similar to a trademark or service mark in which the complainant

has rights, the Complainant contends that the disputed domain name <mind-tree.com>

contains the word Mindtree in its entirety and is therefore identical with or

confusingly similar to the Complainant’s trademark/trade name MindTree.

In relation to element (ii), that the Respondent has no rights or legitimate

interests in respect of the domain name, the Complainant contends that the word

MINDTREE is a coined word, and as such is not one that traders would legitimately

choose except for the sole purpose of misappropriating the reputation associated

with the Complainant’s famous trade mark MindTree. The Complainant also contends

that it has not authorized the Respondent to use its trade marks and trade name.

Furthermore, it is the Complainant’s contention that the Respondent is neither

known commonly by the MindTree name nor has he made any demonstrable preparations

to use the disputed domain name in connection with a bona fide offering of goods

and/or services. As of the date of filing of the Complaint, the Respondent’s

website has remained inactive and as such, the Respondent cannot be said to

have any rights or legitimate interests in the domain name.

In relation to element (iii), that the disputed domain name has been registered

and is being used in bad faith by the Respondent, the Complainant contends that

evidence of bad faith registration and use is established by the following circumstances:

(a) That the trade mark MindTree is distinctive and famous and the respondent

knew or ought to have known of the Complainant and its exclusive rights in the

trade mark. Accordingly, the Respondent can have no legitimate interest in the

disputed domain name which is identical with or similar to the Complainant’s

famous trade mark and the sole purpose of the registration is to misappropriate

the reputation associated with the Complainant’s famous trademark. In this way,

the Respondent’s appropriation of the trade mark or trade name as a domain name

is clearly in bad faith.

(b) The malafides of the Respondent can be inferred from the website of the

Respondent wherein the trade mark or trade name MindTree is represented in exactly

the same way as the Complainant’s mode of representation. 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 its

trademark MindTree or authorized the Respondent to register the disputed domain

name and/or believe that the Respondent has some connection with the Complainant

in terms of a direct nexus or affiliation with the Complainant.

(c) That the unlawful adoption of the disputed domain names by the Respondent

would result in the dilution of the Complainant’s trademark MindTree. The illegal

adoption of the disputed domain name will cause irreparable damage and injury

to the Complainant’s reputation and goodwill which cannot be ascertained and/or

quantified due to the intangible nature of goodwill.

B.Respondent

The Respondent did not file a Response to the Complaint. In accordance to the

Rules for Uniform Domain Name Dispute Resolution Policy, paragraph 14, the Administrative

Panel thus draws such inferences as she considers appropriate.

6. Discussion and Findings

Identical or Confusingly Similar Domain Name

The domain name in issue is <mind-tree.com>. The relevant parts of this

domain name are the two words "mind" and "tree", separated

by a hyphen. The Panel finds that the relevant parts of the domain name are

identical to the Complainant’s trade mark, MindTree. In addition, the Panel

finds that the whole of the domain name is confusingly similar to the Complainant’s

trade mark.

Respondent’s Rights or Legitimate Interests in the Domain Name

The Respondent has not provided evidence of circumstances of the type specified

in paragraph 4(c) of the Policy, or of any other circumstances giving rise to

a right to or legitimate interest in the domain name. Based on the following

reasons the Panel finds that the Respondent has no rights or legitimate interests

in the disputed domain name:

(i) That the Respondent has not provided evidence of honest concurrent user

in the trade mark or trade name MindTree or reasons to justify the choice of

the word MindTree in its business operations;

(ii) That the Complainant has not licensed or otherwise permitted the Respondent

to use its trade mark or to apply for or use any domain name incorporating the

trade mark; and

(iii) that the word MindTree appears to be a coined word and as such is not

one that traders would legitimately choose unless the sole purpose is to create

an impression of an association with the Complainant.

Domain Name Registered and Used in Bad Faith

It is important to note on the outset that the requirement in paragraph 4(a)(iii)

that the domain name "has been registered and is being used in bad faith"

will be satisfied only if the Complainant proves that the registration was undertaken

in bad faith and that the circumstances of the case are such that the Respondent

is continuing to act in bad faith.[1]

Has the Complainant proven that the domain name "has been registered in

bad faith" by the Respondent?

In the light (i) that the trade mark or trade name MindTree is a coined word

that is distinctive and has acquired a strong reputation and goodwill over the

years; (ii) that the Complainant has also acquired strong business reputation

and goodwill since its incorporation in 1999 and has enjoyed substantial press

coverage and publicity, often in association with its trade mark or trade name

MindTree; (iii) that the Respondent has not provided evidence of honest concurrent

user in the trade mark or trade name MindTree or reasons to justify the choice

of the word MindTree in its business operations; (iv) that it is not possible

to conceive of a plausible circumstance in which the Respondent could legitimately

use the domain name <mind-tree.com> unless the sole purpose is to create

an impression of an association with the Complainant; (v) that it also not possible

to conceive of a plausible situation in which the Respondent would have been

unaware of the distinctiveness and strong reputation of the Complainant’s trade

mark or trade name MindTree; and (vi) that given that the Panel has found that

the Respondent has no rights or interests in the domain name, the Panel concludes

that the domain name <mind-tree.com> has been registered by the Respondent

in bad faith.

Has the Complainant proven the additional requirement that the domain name

"is being used in bad faith" by the Respondent?

The disputed domain name <mind-tree.com> resolves to a web site that

is under construction and on that web site the trade mark or trade name MindTree

is represented in exactly the same way as the Complainant’s mode of representation.

The Panel finds that 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 its trademark MindTree or authorized

the Respondent to register the disputed domain name and/or believe that the

Respondent has some connection with the Complainant in terms of a direct nexus

or affiliation with the Complainant. Under Paragraph 4(a)(iv), this shall be

evidence of use of a domain name in bad faith.

Accordingly, the Panel finds that the Complainant has proven that the domain

name is being used in bad faith by the Respondent.

7. Decision

In accordance to paragraphs 4(i) of the Policy and 15 of the Rules, the Panel

orders that the domain name in dispute, <mind-tree.com>, be transferred

to the Complainant.

Susanna H.S. Leong

Sole Panelist

Dated: July 11, 2002

1. Telstra Corporation Limited v. Nuclear

Marshmallows, WIPO Case No. D2000-0003

More cases by this complainant

• Mindtree Consulting Pvt. Ltd. — D2002-0198 · Terminated