(picture source: http://news.bbc.co.uk/2/hi/technology/6449363.stm)
Among the recent cases that have been decided in relation to .IN Domain Name Dispute Resolution Policy (INDRP), the following one has seen Bloomberg Finance L.P., (BF) a United States-based company, winning the domain name Bloomberg.net.in (full judgment available here). BF had filed a complaint with the .In Registry, National Exchange of India (NIXI), against Mr. Kanhan Vijay, a resident of
Mr. Kanhan Vijay (Respondent), on the other hand, was in charge of a Nagpur-based registered partnership firm ‘Bloomberg Computers’, dealing in computer hardware and networking equipment. He submitted that his firm was not engaged in business on the internet and had never used its website (having the aforesaid domain name) for marketing purposes, but only the domain name had been used for mail as well as for helpdesk services. He also proclaimed that nowhere in the website did the firm claim to be a part of BF.
Following the lodging of the complaint, NIXI verified that the formal requirements of INDRP and the Rules of Procedure (Rules) had been satisfied and as per Paragraphs 2(a) and 4(a) of the Rules, the Respondent was formally notified and Mr. Amarjit Singh was appointed as a Sole Arbitrator for adjudicating upon the dispute in accordance with The Arbitration and Conciliation Act, 1996 and the rules framed there under. After both the parties had submitted to the arbitration proceedings prescribed in the Rules, the arbitrator decided that the matter was not one wherein the determination could not be made on the basis of material on record and without in-person hearing, as per Paragraph 12 of the Rules and Section 19(3) of the 1996 Act.
In order to get the remedies (prescribed in Paragraph 10 of INDRP) of cancellation or transfer of the domain name registration to itself, BF was required to prove the following, as per Paragraph 4 of INDRP:
(a) That the domain names were identical or confusingly similar to a name, trademark or service mark in which BF had rights; and
(b) That the Respondent had no rights or legitimate interests in respect of the domain names; and
(c) That the domain names had been registered and were being used in bad faith.
With regard to the identical/confusingly similar aspect, BF was able to prove its claim. It was submitted that the domain name “Bloomberg.net.in” was identical to BF’s registered trade mark “BLOOMBERG” and was entirely comprised of the same. The decision given in ITC Limited Vs. Travel
The Respondent countered saying that the said complaint had been initiated with misunderstanding, with the Respondent having been unnecessarily dragged into the proceedings. He argued that BF’s contention regarding the similarity in the name and apprehension regarding the diversion of clients did not have any substance whatsoever and that not even a single incident had been quoted by BF to substantiate said contention. Hence the relief cannot be granted merely on the basis of vague accusations.
BF asserted of it holding registration for “Bloomberg.com” since 1993 and other GTLDS such as Bloomberg.net, Bloomberg.br , Bloomberg.org and Bloomberg.info
Having compared the registered trademarks of BF and the disputed domain name, the Arbitration Panel held that the latter was indeed identical to the earlier registered trade mark and domain names of BF.
Next comes the turn of the requirement of proving that the Respondent did not have any right/legitimate interest regarding the domain name. To do the same, BF argued that it had neither licensed nor otherwise permitted the Respondent to use BF’s mark or any of the family of marks or any domain name incorporating those marks. In fact, the Respondent had failed to reply to the demand letter sent by BF. It was also contended that to the best of BF’s knowledge, the Respondent did not carry on any commercial or non-commercial venture/enterprises under the name and style of “Bloomberg” and hence could not have any legitimate reasons for adopting the “Bloomberg” as part of disputed domain name. Nor had the Respondent made any use of the domain name in connection with the bona fide offering of goods or services or for any legitimate non-commercial or fair use, but merely to support an essentially dormant website.
The Respondent, of course, denied most of these allegations. He argued that his highly reputed firm had been running the said business since 2002 and had business relationship with reputed names, INTEL, MAX, HPCL etc. as well as reputed clients like the Nagpur University, Western Coalfields Limited, Priyadarshini College of Engineering, Lokmanya Tilak College of Engineering and the like. He further submitted that he never intended to deceive the user to divert the traffic and had been using the domain in a bona fide manner and not in bad faith and nor had any instance of such diversion been cited by BF to prove to the contrary. It was also argued that the Respondent would suffer great loss and injury if BF is given the rights to the domain, since the help desk and mails were being administered by his firm from the domain. The long standing use without any interference of the domain name, according to him, resulted into accruing of rights in favour of himself and also legitimate exceptions. He went on to say that the mere fact of BF’s domain name being registered with various countries did not give BF a monopolistic right or the exclusive ownership for the name that the Respondent had been allowed to use so far at relevant time without any objection.
However, the Panel held that the Respondent’s registration of the disputed domain name took place much later to the date of domain name registration by BF under .in CCTLD, thereby allowing BF priority in adoption, use and registration of domain name. BF was also the registered proprietor of the trademark BLOOMBERG from the dates prior to the registration of disputed domain name by the Respondent. The Respondent had failed to offer any valid explanation regarding how he came across the term Bloomberg and accepted it as part of his trade name, which emphasized that such adoption might have been in bad faith. Nor did the Respondent appear to have any legitimate interest in the disputed domain name (since Respondent’s firm did not perform any business on the internet) –hence aforesaid registration by him might have been in bad faith to squat on the Register.
Regarding the third and final requirement of proving bad faith in registration and use, BF submitted that “Bloomberg” having a strong reputation and high profile presence in the financial sector and being the subject of substantial consumer recognition and goodwill, public invariably associated the use and application of the word “Bloomberg” with BF’s corporate identity, business and various financial services. It further argued that the registration of a domain name with actual knowledge of trademark holder’s right in a mark consisted of a strong evidence of such registration having taken place in bad faith. Non-use and passive holding of the website by the respondent were additional evidence of bad faith registration. In this context, the decision of HSBC Holding plc. Vs. Ooman Esmail Zadeh, Case No.L-2/5/RZ (March 24, 2007) was relied upon by BF. Also, in the light of the international fame and wide use of BF’s mark “BLOOMBERG”, BF believed that the Respondent knew of and knowingly exploited said mark and its substantial accompanying goodwill. The Respondent, however, did express his readiness to add in his website the following words in bold manner as “Bloomberg Computers,
The Panel opined that while the Respondent had not registered the domain name primarily for the purposes of selling, recruiting or transferring the domain name registration to BF or its competitors for valuable consideration (especially since Respondent had incurred out of pocket costs related to the domain name), nonetheless, the owner of the trademark/service mark had been prevented as a result from reflecting the mark in a corresponding domain name. Also, by using the domain name the Respondent had intentionally created a likelihood of confusion with BF’s mark as to the source, sponsorship, affiliation or endorsement of the website. The bad faith element was also established from the fact that the Respondent had registered the disputed domain name much later to BF’s registration of the domain names even under .in CCTLD such as Bloomberg.co.in, Bloomberg.in, Bloomberg.gen.in, Bloombergnews.co.in e
Therefore, in the light of the aforementioned contentions and the Panel’s response thereto, the Panel finally directed transfer of the disputed domain name to BF, but did not award any cost.
The Panel, while reaching this decision, had no doubt kept in mind the special status accorded to well-known trade marks as per Section 2(1)(zg) of the Trade Marks Act, 1999, irrespective of whether the allegedly infringing mark is used in relation to different goods or services than the original mark. The said provision is as follows:
“well-known trade mark”, in relation to any goods or services, means a mark which has become so to the substantial segment of the public which uses such goods or receives such services that the use of such mark in relation to other goods or services would be likely to be taken as indicating a connection in the course of trade or rendering of services between those goods or services and a person using the mark in relation to the first-mentioned goods or services.
While this aforementioned decision in relation to the arbitration process prescribed by the INDRP appears to be at least prima facie reasonable, without attracting many a controversy, nonetheless all decisions resulting from said arbitration in the past cannot be allocated to the said uncontroversial category. Several of them have in fact involved certain features that are fascinating to say the least and worthy of further examination. These include granting trademark rights to terms such as “hotels”, “jobs”, “mines” etc., holding that merits and scope of .IN CCTLD’s INDRP (.IN Dispute Resolution Policy) differ considerably from the UDRP (Uniform Dispute Resolution Policy) on which WIPO decisions are based and hence cases in relation to the former are of scant relevance while deciding a dispute pertaining to the latter (despite similarity of the disputes concerned) as well as confiscation of domain names by the registry. Such decisions will be soon highlighted in future posts by the Spicy IP team.
