The Complainant is Kirloskar Proprietary Limited of Pune, India, represented by DePenning & DePenning, India.
The Respondent is Kirloskar Pompen B.V. of Velsen-Noord, Netherlands, represented by Vondst Advocaten, Netherlands.
The disputed domain name <kirloskar.nl> is registered by the Respondent on February 12, 2015 with SIDN through Tiscom Hosting B.V., hereinafter referred to as “Domain Name”.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 20, 2018. On the same day, the Center transmitted by email to SIDN a request for registrar verification in connection with the disputed domain name. On April 23, 2018, SIDN transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Dispute Resolution Regulations for .nl Domain Names (the “Regulations”).
In accordance with the Regulations, articles 5.1 and 16.4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 25, 2018. In accordance with the Regulations, article 7.1, the due date for Response was May 15, 2018. Upon the Respondent’s request, the due date was extended until May 17, 2018. The Response was filed with the Center on May 16, 2018.
On May 18, 2018 SIDN commenced the mediation process. On June 14, 2018, SIDN informed parties that the dispute had not been solved in the mediation process.
The Center appointed Richard C.K. van Oerle as the panelist in this matter on June 27, 2018. The Panel finds that it was properly constituted. The panelist has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required to ensure compliance with the Regulations, article 9.2.
According to the evidence submitted, in addition to trademarks registered elsewhere earlier, the Complainant has rights in the Benelux trademark KIRLOSKAR ENRICHING LIVES, registration number 0988382, filed on January 7, 2016, and registered on March 21, 2016. It concerns a figurative mark in which the words “Kirloskar Enriching Lives” are written in a special script:
The Complainant filed the mark for goods in International Class 7. The trademark will be referred to hereunder as “the “Trademark”.
The Domain Name was registered on December 2, 2015, and does not resolve to an active website.
The Complainant is part of the Kirloskar Group, a group of companies manufacturing a variety of goods, inter alia, centrifugal pumps and electric motors. Within the group the Complainant manages the group’s brand protection and promotion.
The Respondent is a subsidiary of M/s Kirloskar Brothers Ltd., which also forms part of the Kirloskar Group. The Respondent’s main responsibilities include setting up distribution networks across Europe, providing market support for distributors, and providing technical support.
The Complainant has entered into several agreements with M/s Kirloskar Brothers Ltd. with respect to the permitted use of (variations of) the Trademark since 1977, and in 2008 has concluded a copyright license agreement with the Respondent with respect to the use of the Complainant’s figurative trademark.
According to the Complainant, the Domain Name is confusingly similar to the Trademark.
The Complainant states that it is evident that M/s Kirloskar Brothers Limited is only permitted to use the Trademark but does not have any independent rights thereto. According to the Complainant, the Domain Name has therefore been illegally and wrongfully registered by the Respondent.
According to the Complainant, the Domain Name contravenes the substance of the agreements between the Complainant and Kirloskar Brothers Ltd (the Respondent’s parent company) as well as clause 3 of the copyright license agreement between the Complainant and the Respondent.
It has come to the Complainant’s attention that several members of the Kirloskar Group have registered domain names comprised of KIRLOSKAR. The Complainant has approached said members and requested the transfer of such domain names to the Complainant. The Respondent refused to transfer the Domain Name while being fully aware that the Complainant is the legal and legitimate owner of the Trademark. The Complainant has also made further efforts to have the Domain Name transferred to itself. M/s Kirloskar Brother Limited, the Respondent’s parent company, failed to comply with the demands and thereby breached the abovementioned agreements.
The Respondent submits that the Center has no jurisdiction to adjudicate this Complaint since there are ongoing disputes (including mediation proceedings) between the shareholders of the Complainant regarding its functioning and operations.
Further, the issue of whether the Complainant has the right to restrict the use of the Trademark by a Kirloskar Group company is sub judice. In fact, the Company Law Tribunal in India has held that the right of a group company to use “Kirloskar” is nothing but a perpetual licence. Therefore, any finding under the Regulations would impact the other proceedings, which would not be appropriate since the Complainant has suppressed material facts and documents in the present proceedings.
The Respondent further submits that the Complainant “has not approached the Center with clean hands” and attempts to mislead the Panel through false assertions. The Respondent submits that the Complaint is in abuse of the Regulations and has been filed for collateral purposes in order to surreptitiously obtain an adverse finding against the Respondent so as to impact the proceedings in India. The Respondent submits that the Complaint is liable to be dismissed on this basis.
The Regulations were adopted to deal with the problem of cybersquatting – that is, the registration of domain names consisting of, including, or confusingly similar to marks belonging to another for the purpose of profiting from the goodwill associated with the mark. The questions that the Panel addresses under the Regulations are relatively simple and straightforward (cf. Family Watchdog LLC v. Lester Schweiss, WIPO Case No. D2008-0183 and Avenza Systems Inc. v. Exqte, WIPO Case No. DNL2012-0011). The Regulations are not intended to resolve complex commercial or contractual disputes between longstanding parties.
On the basis of the statements and exhibits submitted, the Panel concludes that this case involves ongoing differences between the Parties regarding rights in and use of trademarks within the Kirloskar Group of which the Parties form part. It is evident from the record that the present case involves a range of factual and legal issues in respect of corporate trademark rights and practices (such as interpretations of licence agreements) that exceed the more narrowly framed scope of the Regulations. The record before the Panel abounds with assertions and documents that bear out the complexity of the Parties’ relationship as it has evolved and the resolution of which would require a far more extensive dispute resolution framework than that offered by the Regulations.
With reference to the decision in NV TKS, Be Watch Ltd v. Tiflo BV, WIPO Case No. DNL2010-0062, the Panel notes that certain disputes are more fit for decision in court proceedings, such as certain disputes arising from legal agreements concluded between the parties. Indeed, it appears that the Parties have already been and may still be engaged in such litigation, which should allow for the full range of issues between them to be addressed on a more extensive exchange and examination of pleadings and evidence.
In these circumstances, the Panel has no basis to grant the Complaint.
For the foregoing reasons, the Complaint is denied.
In rendering this decision, the Panel expresses no view on the merits of the Parties’ respective cases, as presented under the Regulations. In any event, the present decision is without prejudice to any judicial proceedings between the Parties or their outcome.
Richard van Oerle
Panelist
Date: July 18, 2018