G.D. Pharmaceuticals v. Vikas Jandial Case No. D2001-1277
1.The Parties 1.1. The Complainant in this administrative proceeding is G.D. Pharmaceuticals Limited, an Indian Company having its registered address at Asha Mahal, 94, Nalini Ranjan Avenue, Calcutta, India.
1.2. The Respondent is Mr. Vikas Jandial, Vasant Kunj, New Delhi, India.
2. The Domain Name and Registrar The Domain Name in dispute is registered with Network Solutions, Inc., Virginia, United States of America.
3. Procedural History 3.1. The Complaint was submitted to the WIPO Arbitration and Mediation Center by e-mail on October 20, 2001, and in hard copy on October 26, 2001.
3.2. An acknowledgement of the receipt of the Complaint was sent to the Complainant on October 24, 2001.
3.3. A request for Registrar Verification was sent to the Registrar, Network Solutions, Inc., on October 29, 2001, requesting it to (1) confirm that a copy of the Complaint had been received by them; (2) confirm that the domain name in issue is registered with them; (3) confirm that the Respondent is the current registrant of the domain name; (4) provide the full contact details [i.e., postal address(es), telephone number(s), facsimile number(s), e-mail address(es)] available in the Registrar’s WHOIS database for the registrant of the disputed domain name, technical contact, administrative contact and billing contact; (5) confirm that the Uniform Domain Name Dispute Resolution Policy applies to the domain name, and (6) indicate the current status of the domain name.
3.4. On October 31, 2001, Network Solutions, Inc. confirmed that the domain name in question was registered with it and the Respondent was the current Registrant of the domain name registration. The Registrar also forwarded the requested Whois details and confirmed that the Policy is in effect.
3.5. On October 31, 2001, the WIPO Center was satisfied with the formal requirements of the Policy, the Rules for the Uniform Domain Name Dispute Resolution Policy (the “ Uniform Rules”) and the Supplemental Rules for Uniform Domain Name Dispute Resolution (the “Supplemental Rules”). The Panel independently agrees with the assessment of the WIPO Center in this regard. The Complainant also paid on time and in the required amount the fees for a sole panelist.
3.6. No formal deficiencies having being recorded, on October 31, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”) was transmitted to the Respondent (with copies to the Complainant, Network Solutions, Inc., and ICANN), setting a deadline of November 20, 2001, by which time the Respondent could file a Response to the Complaint.
3.7. Having reviewed the communications records in the case file, the Administrative Panel finds that the WIPO Center has discharged its responsibility under Paragraph 2(a) of the Uniform Rules “to employ reasonably available means calculated to achieve actual notice to Respondent.”
3.8. On November 26, 2001, not having received any Response, the WIPO Center sent the parties a formal notification of Respondent default.
3.9. In view of the Complainants designation of a single member Panel, on December 5, 2001, the WIPO Center has appointed the undersigned to serve as the sole Panelist. The Panel was required to forward its decision to the WIPO by December 19, 2001.
4. Factual Background 4.1. The Complainant, G.D. Pharmaceuticals Limited has been carrying on the business of manufacture of antiseptic cream and health products since the year 1934. The Complainant’s principal product is an antiseptic cosmetic cream, sold under the trademark BOROLINE since 1934.
4.2. The Complainant’s product BOROLINE is marketed and distributed in India as well as abroad by a wide network comprising approximately 800 distributors/agents.
4.3. The Complainant has registered the mark BOROLINE in various classes as listed below:
Label containing the word 5 14610
BOROLINE and the device
of an elephant
Carton containing the word 5 14611
BOROLINE and the device
of an elephant
BOROLINE (word) 5 371269
4.4. The Complainant expended considerable amounts in promoting its products under the brand BOROLINE, such as by advertising in newspapers, magazines, television, satellite channels, radio etc.
4.5. The Respondent is Mr. Vikas Jandial, who has registered the impugned domain name with Network Solutions, Inc. The administrative contact has been stated as Mr. A.S. Minocha of DLF Universal Ltd., who upon notice of the Complaint informed the case manger that he has no connection, either with the Respondent or the impugned domain name.
4.6. The Complainant has not licensed or otherwise permitted the Respondent to use its trademark BOROLINE, nor has it permitted the Respondent to apply for or use any domain name incorporating the mark.
4.7. The Respondent has not made any use of the impugned Domain Name from the time it registered the domain name i.e., from March 9, 2000.
5. Parties Contentions A. The Complainants has delineated its contentions under three broad heads as below: Identical or Confusing Similarity 5.1. The impugned domain name is identical or confusingly similar to the Complainant’s registered trademark BOROLINE.
Rights and Legitimate interest 5.2. The Name BOROLINE refers to and is distinctive of the Complainant and of none other. Neither does the Respondent use the impugned domain name to offer bona fide goods or services nor is he known by the said name.
Bad Faith 5.3. The domain name incorporates a well-known mark, belonging to the Complainant. Its very use by someone with no connection with the product suggests opportunistic bad faith. The Complainant relies upon Parfums Christian Dior v. Javier Garcia and Christiandior.net (WIPO Case No. D2000-0226) in this regard.
5.4. The acts and conduct of the Respondent are calculated to deceive or mislead the trade and public into believing that the impugned domain name is that of the Complainant or is otherwise associate or connected with the Complainant.
5.5. The acts of the Respondent have deprived the Complainant of the right and the opportunity of having a domain name comprising its own trademark.
5.6. In Himalaya Drug Company v. Vikas Jandial(WIPO Case No. D2000-1822), the Panel found that the Respondent had registered another medicinal trademark, LIV52, as a domain name in bad faith.
5.7. The Respondent’s inaction in activating a website under the impugned domain name indicates prima facie evidence of registration and use in bad faith. The Complainant relies upon Oberoi Hotels v. Arun Jose (WIPO Case No.D2000-0263) andTelstra Corporation Limited v. Nuclear Marshmallows (WIPO Case No.D2000-0003) in this regard.
B. The Respondent has not filed any Response in these proceedings.
6. Discussions and Findings Paragraph 4(a) of the Policy requires the Complainant to prove the following:
that the domain name registered by the Respondent is identical and confusingly similar to a trademark or service mark in which the Complainant has rights; and that the Respondent has no legitimate interests in respect of the domain name; and that the domain name has been registered and is being used in bad faith. Each of these requirements will be dealt with separately.
A. Complainant’s trademark rights; identical/confusing similarity 6.1. The Complainant has trademark registrations for the mark “BOROLINE” in India (both word mark and device mark). In addition to this, the Complainant has also furnished extensive evidence highlighting the use of this name and the reputation associated with this name. The Panel therefore finds that the trademark “BOROLINE” is well known in India and that the Complainant has exclusive rights to the same.
B Rights/Legitimate Interests 6.2. Paragraph 4(c) of the Policy enumerates circumstances which, if found by the Panel to be proved will demonstrate the Respondent’s rights or legitimate interests to the domain name.
6.3. Neither does the Respondent use the impugned domain name to offer bona fide goods or services nor is he known by the said name.
6.4. The Respondent has not filed a Response and the contentions of the Complaint have not been met. In the absence of a Response, the Panel is inclined to believe that the Respondent has no rights or legitimate interest in the domain name.
C Bad Faith 6.5 Paragraph 4(b) of the Policy enumerates certain illustrative circumstances which, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.
6.6 As stated in several earlier Panel decisions, this paragraph is merely illustrative and the Panel may rely on other factors in arriving at a determination that the domain name has been registered and is being used in bad faith. The Panel finds that the following circumstances amply reveal that the domain name has been registered and is being used in bad faith:
i) Despite having been registered on March 9, 2000, the Respondent has not activated any website till date. See Telstra Corporation Limited v. Nuclear Marshmallows (WIPO Case No.D2000-0003).
ii) Although the Complainant has not pleaded this, the Panel finds that the submission of false contact details by the Respondent amounts to bad faith. See Telstra Corporation Limited v. Nuclear Marshmallows (WIPO Case No.D2000-0003). In a letter dated November 5, 2001, to WIPO, the alleged administrative contact listed in the whois (Mr. A.S. Minocha of DLF Universal Ltd.) stated that he has no connection with the domain name or the Respondent. It is therefore clear that the Respondent had given fake details to the Registrar.
Therefore, the Panel finds that the elements of para 4(b)(i) of the Policy have been met.
6.7 Apart from the above, the Panel finds that the Respondent has registered the domain name in order to prevent the Complainant from reflecting its trademark in a corresponding domain name (as required by para. 4(b)(ii) of the policy). In fact, in an earlier Panel decision, Himalaya Drug Company v. Vikas Jandial(WIPO Case No. D2000-1822), the Respondent was found to have registered another famous Indian pharmaceutical mark in bad faith. This suggests a “pattern of conduct” warranted by para. 4(b)(ii).
6.8. The Respondent has not contested any of the Complainant’s allegations above mentioned. For all the reasons mentioned above, the Panel finds that the impugned domain name has been registered and is being used in bad faith by the Respondent.
7. Decision For all of the foregoing reasons, the Panel decides that the domain name registered by the Respondent is identical and confusingly similar to the trademark in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the domain name at issue, and that the Respondent’s domain name has been registered and is being used in bad faith. Accordingly, pursuant to Paragraph 4(i) of the Policy, the Panel requires that the impugned domain name be transferred to the Complainant.
The Complainant has requested that the Respondent be directed to pay the cost of the present proceedings. However, apart from a transfer or cancellation of a domain name, the UDRP does not provide for any other remedy.