The WIPO forum is proving to be an effective means for trademark owners to assert and claim their rights over infringing domain names. In an era where e-trading and e-commerce are gaining prominence day in and day out, the link between the two is getting closer than ever. It seems that soon enough trademarks and domain names will become so inextricably linked that the two shall mirror each other in terms of rights and liabilities.
The Uniform Domain Name Dispute Resolution Policy created by ICANN, lends trademark owners an opportunity to assert their rights against existing deceptive domain names. The elements to be proved in order to assert their rights include:
- The trademark owner owns the trademark
- The domain name has been registered by a party having no
legitimate rights or interest in the domain name
- The domain name was registered in bad faith.
Trademark owners are increasingly approaching the WIPO Arbitration and Mediation Center in order to assert their rights. One of the earlier cases involved Tata Tea Co. whereby the dispute revolved around the use of "TATA" by a Scottish enterprise Gem Lifts Ltd. (Tata Tea ltd. V. Gem Lifts Ltd Case No D2000-1823). The domain name was transferred in favour of Tata. An identical dispute arose in Sukhsagar Enterprises v. Sanskruti International [2008 (36)PTC 653 (WIPO)]
Sukhsagar Enterprises is a partnership firm running a vegetarian restaurant chain under the trademark SUKHSAGAR, having multiple branches in Bangalore and Mumbai. They asserted that their marks had been renewed from time to time, being valid and subsisting and that they would be in continuous use. Sukhsagar maintains that the disputed domain name, held by Sanskruti International is identical or confusingly similar to their trademark. They also maintained that the same was never used in connection with bona fide offering of goods and services. Sukhsagar also stated that Sanskruti had not responded to their notice. Sukhsagar also averred that Sanskruti was not a commonly recognized by its domain name. Sanskruti enterprise on the other hand conveyed through a presumed representative that he had held the domain name for several years. The WIPO Arbitration and Mediation Center opined such an informal communication as being insufficient for certification.
Paragraph 4 of the Uniform Domain Name Dispute Resolution Policy (UDNDRP) was examined. The Administrative panel Decision scrutinized and rendered the matter on the count of the disputed mark and domain name being identical or confusingly similar, rights or legitimate interests of the parties and registration and use in bad faith. Reviewing the late filed response of Sanskruti, the Panel noted that Sukhsagar referred to the term 'Happy Ocean', and that several enterprises existed in the name around the world.
They further concluded that although the term was common and that did not vest a legitimate interest in Sanskruti to use the domain name. The Panel also took note of the fact that "SUKH SAGAR" was a mark used by a global chain. The Panel observed that the Sukh Sagar chain, also owners of www.sukhsagarworld.com was established in 1962, while that of Sukhsagar Enterprises was established in 1976.
Sanskruti averred that they were running hsagar.com for the last seven years and that as an Internet business. The Panel in an attempt to decide the matter attempted to access the domain name repeatedly, but without success. The Panel opined that the submissions made by the parties were patchy. The Panel also stated that omitting the meaning of the word "Sukhsagar" had not only made their job difficult but also raised a suspicion that such an omission may have been made selectively by Sukhsagar Enterprises to favor their case. However, the panel on balance of the record forth it affirmed its previous order to transfer the domain name to Sukhsagar enterprises, while noting that nothing would prevent third parties from asserting their Trade Mark rights with respect to "SUKH SAGAR".
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
