WIPO Domain Name Decision: D2006-0792

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Indofil Chemicals Company v. Amar Vakil

Case No. D2006-0792

1. The Parties

The Complainant is Indofil Chemicals Company, Nirlon House, Mumbai, Maharashtra, India, represented by Mehmood M. Abdi, India.

The Respondent is Amar Vakil, Lincolnwood, Illinois, United States of America.

2. The Domain Name and Registrar

The disputed domain name <indofil.com> is registered with CSL Computer Service Langenbach GmbH dba Joker.com.

3. Procedural History

The Complaint was received by the WIPO Arbitration and Mediation Center (the “Center”) on June 26, 2006. On June 27, 2006, the Center transmitted by email to CSL Computer Service Langenbach GmbH dba Joker.com a request for registrar verification in connection with the domain name at issue. On June 29, 2006, CSL Computer Service Langenbach GmbH dba Joker.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of 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”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 30, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was July 19, 2006. The Response was filed with the Center on July 18, 2006.

The Center appointed David J.A. Cairns as the sole panelist in this matter on July 31, 2006. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant, Indofil Chemicals Limited, is a company registered in India and engaged in the chemical industry. The Complainant uses the trademark INDOFIL in the business of manufacturing, buying, selling, importing, exporting and generally dealing with chemical and related products. The Complainant owns the following trademark registrations for INDOFIL in India: (i) Nº 397861 dated November 22, 1982, and renewed in 2003 in class 5 in respect of disinfectants and preparations for killing weeds and destroying vermin; and (ii) Nº 1286569 dated May 27, 2004, in class 10 for surgical, medical, dental and veterinary instruments and apparatus, artificial limbs, eyes and teeth, orthopedic articles, and suture materials.

The Complainant operates a website located at the domain name <indofilcc.com>.

The Respondent is a business promoter based in the State of Illinois in the United States of America. He is the chief promoter of a non-profit organization incorporated in Illinois in October 2004 called ‘INDOFIL-Industries of Illinois’, with a corporate purpose of ‘promoting export development, foreign establishment and global expansion for industries in Illinois’. The Respondent registered the disputed domain name on July 25, 1998. The Respondent is operating no website at the disputed domain name.

The Respondent does not own any registered trademark for the word INDOFIL.

5. Parties’ Contentions

A. Complainant

Complainant states that the disputed domain name is identical to its registered trademarks. Furthermore, the Complainant is referred to and known by the trademark INDOFIL which is also the domain name registered by the Respondent. It claims that it is a potential source of confusion for internet users who are being induced to believe in the existence of some sort of affiliation between the Respondent’s website and the Complainant’s mark.

The Complainant argues that the identity of its trademark INDOFIL and the disputed domain name, and its widespread use of its trademark, mean that the Respondent has no rights or legitimate interests in respect of an identical domain name. It states that there is no evidence of the Respondent’s use or preparation to use the disputed domain name in connection with a bona fide offering of goods and services; and nor is the Respondent commonly known by the disputed domain name. Further the disputed domain name is not currently being used, and so it is evident that the Respondent is not making a legitimate or fair use of the disputed domain name.

The Complainant alleges that the Respondent registered and uses the domain name in bad faith because there is no website associated with the disputed domain name. The fact that the disputed domain name is not being used indicates that it was registered or acquired primarily for the purpose of renting, selling or otherwise transferring the domain name. It contends that Respondent, by its inaction, is attempting to disrupt Complainant’s business by misleading potential customers and giving them the impression that the Complainant is not operating. It thus is creating confusion with the Complainant’s trademark as to source, sponsorship, affiliation or endorsement of the Respondent’s website. Finally the Complainant states that INDOFIL is a famous trademark, and that the Respondent has registered the disputed domain name for an illegal benefit in a manner that constitutes misappropriation.

B. Respondent

The Respondent states that the Complaint based on the Indian trademark registrations is inadmissible, as these trademark rights are limited to India and India is not a member to the Madrid Union. The Respondent stresses that Complainant has no substantial operations outside India and that the Complainant has been using the <indofilcc.com> domain name since October 31, 2000, which means that its customers are already familiar with that domain name in relation to the Complainant. Further, the Respondent contends that the Parties act in different market segments and therefore the risk of confusion between Complainant’s trademark rights and Respondent’s domain name is inexistent.

The Respondent states that he is a recognized expert on global business. He is the chief promoter of the non-profit organization established on October 12, 2004, to promote Illinois based businesses called ‘INDOFIL-Industries of Illinois’. The disputed domain name serves the needs of this organization and is an acronym of the first letters of INDustries OF ILlinois. The Respondent states that although the public access to its website is unavailable, members of ‘INDOFIL-Industries of Illinois’ may access data through a secure portal at “www.secure.indofil.com”, but the public website intended for the disputed domain name is being redesigned and awaiting public funding. For these reasons the Respondent states that it has a legitimate interest in the domain name <indofil.com>.

The Respondent denies that the disputed domain name is not being used, because since its registration it has been hosted on in-house servers, and presently provides secure access to its member community for sensitive trade-related information, that is deliberately not made public. It rejects the Complainant’s suggestion that the disputed domain name was registered for the purposes of selling or renting and states that since 1998 it has made no attempt to sell or rent the disputed domain name and has no intention of doing so.

The Respondent rejects Complainant’s bad faith allegations stating that it was not acquainted with the Complainant’s company and its trademarks until it received the Complaint. It states that the nature of the Respondent’s business is different from the business of the Complainant, and in geographically distinct regions, so any concern for confusion of names is baseless. The Respondent asserts that its registration of the disputed domain name is legitimate, ethical and bona fide, and does not reflect any misappropriation.

6. Discussion and Findings

The Panel is required to decide the 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 appropriate.

The Policy requires the Complainant to prove all three of the following elements to be entitled to the relief sought: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) that the Respondent’s domain name has been registered and is being used in bad faith.

Paragraph 4(b) of the Policy elaborates some circumstances that shall be evidence of the registration and use of the domain name in bad faith. Paragraph 4(c) sets out various circumstances which, if found by the Panel to be proved based on the evaluation of all the evidence presented, shall demonstrate that the Respondent has rights and legitimate interests in the disputed domain name.

A. Whether the Disputed Domain Name is Identical or Confusingly Similar to the Complainant’s Trademarks

The Panel accepts that the Complainant owns two registrations for the INDOFIL trademark.

Once the Complainant establishes its rights in a trademark, the first element of the Policy requires a comparison between the disputed domain name and the trademark. The fact that the Complainant’s trademark registration is in one country and the Respondent has its business in another is not relevant to this comparison (although it may have significance to the issues of the Respondent’s own rights and legitimate interests in the domain name and bad faith, in consideration of the second and third elements of the Policy respectively).

In determining whether a disputed domain name is identical or confusingly similar to the Complainant’s trademark the relevant comparison involves the second-level portion of the domain name only (here, ‘indofil’). Clearly a trademark does not usually include a URL prefix (here, www.), or a top-level domain name suffix (here, ‘.com’) that are functional elements of a domain name, and the comparison required for the first element of the Policy must exclude these elements. These elements are incapable of performing any distinctive function, and it is well-established that they should not be considered in making this determination (see Segway LLC v. Chris Hoffman WIPO Case No. D2005-0023, D. Ronaldo de Assis Moreira v. Eladio García Quintas WIPO Case No. D2006-0524 and LDLC.COM v. LaPorte Holdings WIPO Case No. D2005-0687).

On this basis, the Panel finds that the disputed domain name is identical with the Complainant’s trademark INDOFIL. Accordingly, the first element required by the Policy is satisfied.

B. Whether the Respondent has no Rights or Legitimate Interests in respect of the Domain Name

According to Paragraph 4(c)(i), the Respondent may demonstrate rights or legitimate interests in the domain name if before any notice of the dispute, the Respondent uses or prepares to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods and services.

There is no doubt in the present case that before any notice of the dispute (which the Panel finds took place with the service of the Complaint on June 30, 2006) the Respondent was engaged in the bona fide offering of goods or services. The Respondent has submitted evidence, that the Panel accepts, of his activity and reputation in the investments promotion sector. The issue in this case is whether the Respondent has used, or prepared to use, the disputed domain name in connection with these investment promotion services.

The Respondent has submitted that there is use in that there is access to the disputed domain name through a secure portal. The Respondent has provided no evidence to support its assertions regarding the existence and operation of this secure portal (for example, a copy of the home page) and in any case the website address of the alleged secure portal (that includes the word ‘secure’) is different from the disputed domain name. Accordingly, the Panel does not accept the Respondent’s submissions regarding the significance of this secure portal.

However, the evidence satisfies the Panel that the Respondent is preparing to use the disputed domain name in connection with his investment promotion services. In particular: (i) the Respondent has provided a credible explanation of his choice of the invented word ‘Indofil’ for the disputed domain name as an acronym of Industries of Illinois, thereby linking the domain name and the services; (ii) the Respondent established in 2004 a non-profit organisation called INDOFIL-Industries of Illinois, with the purpose of promoting Illinois industry; (iii) the Respondent has offered an explanation of the delay in developing a website since 2004 in that it is seeking public funding.

An usual element in this case is that the Respondent has held the disputed domain name for eight years without establishing a website at this address. Passive holding has arisen in the context of business development in other cases. In Meredith Corp. v. CityHome, Inc. WIPO Case No. D2000-0223 (May 19, 2000) and Photodex Corp. v. Clickguide.com WIPO Case No. D2001-0952 (October 21, 2001) the Panels accepted business development periods of eight months and two and a half years respectively as consistent in the circumstances with preparation for use of a domain name and legitimate interests.

The significance of passive holding of a domain name is more commonly considered in the context of the third element of the Policy, where the prevailing view is that passive holding is not evidence of either good or bad faith, but must be interpreted in the context of all of the circumstances of the case. Similar reasoning applies with respect to the significance of passive holding to the Respondent’s legitimate interests in the disputed domain name.

In the present case, the circumstances surrounding the passive holding confirm rather than contradict the Respondent’s legitimate interests in this domain name, and in particular: (i) there is no common field of product or geographical activity between the Respondent’s business and the use of the Complainant’s trademarks; (ii) the Panel accepts that the Respondent did not know of the Complainant’s trademarks until the service of the Complaint; (iii) there is evidence of preparation to use the disputed domain name (as explained above), which effectively breaks the period of passive holding in 2004; and (iv) there is an explanation for the passive holding since 2004.

Accordingly, the Panel finds that it has not been demonstrated by the Complainant that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and in particular the Panel accepts that the Respondent has prepared to use the disputed domain name in connection with a bona fide offering of services within the meaning of paragraph 4(c)(i) of the Policy. As the Complainant has failed to prove the second element of the Policy, the Complaint is accordingly denied.

C. Whether the Respondent has Registered and is Using the Disputed Domain Names in Bad Faith

In light of its decision on the second element of the Policy, the Panel is not required to address this element.

7. Decision

For all the foregoing reasons, the Complaint is denied.

David J.A. Cairns
Sole Panelist

Dated: August 14, 2006