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WIPO Arbitration and Mediation Center

D 2000-0014: Bennett Coleman & Co. Ltd, 7 Bahadur Shah Zafar Marg, New Delhi, Delhi 110002, India, Complainant

Steven S Lalwani, 16 Victoria Terrace, Upper Montclair, NJ 07043, USA, Respondent

D 2000-0015: Bennett Coleman & Co Ltd, address as above, Complainant

Long Distance Telephone Company, 16 Victoria Terrace, Upper Montclair, NJ 07043, USA, Respondent

The Respondent holds the following domain names:

In Case D 2000 0014: theeconomictimes.com, registered in 1998 with Network Solutions.

In Case D 2000 0015: thetimesofindia.com, registered in 1998 with Network Solutions.

(1) The Complaints in Cases D 2000 0014 and D 2000 0015 were filed on January 27, 2000. There is a proper case for consolidating the complaints in accordance with the Uniform Domain Name Dispute Resolution Policy of ICANN, paragraph 4(f).

(2) The WIPO Arbitration and Mediation Center has found that:

The Panelist accepts these findings.

1. The Panelist submitted a Statement of Acceptance and Declaration of Impartiality and Independence.

2. There have been no further submissions in either Case.

3. The date scheduled for issuance of a decision is in each case: March 16 2000.

4. No extensions have been granted or orders issued in advance of this decision.

5. The language of the proceedings is English.

(1) The Complainant publishes "The Economic Times", which has an average daily circulation of 350,100, and "The Times of India", which has a daily circulation of 2,522,488. Both include Indian news in their content. The Complainant is engaging in certain supplemental activities in the entertainment industry, using the brand "Times". Since 1996 the Complainant has held the domain names, economictimes.com and timesofindia.com., using them for the electronic publication of their respective newspapers.

(2) The Complainant registered in India the mark, "The Economic Times" for newspapers, journals, magazines, books and other literary works on March 28 1973, and the mark, "The Times of India" for the same goods on July 30 1943. The Respondent does not accept that these registrations have been maintained since 1980.

(3) The Respondent’s web sites using the domain names in contention redirect Internet users to the site indiaheadlines.com which provides India-related news and articles.

A. Complainant

On the basis of the identity of the Respondents’ domain names with the Complainant’s trade marks and of the widespread use of the Complainant’s marks and their registration in India, the Complainant asserts

(i) that the Respondents have no right or legitimate interest in respect of the domain names in contention;

(ii) that the Respondents have registered these domain names in bad faith; and

(iii) that the Respondents have adopted the domain names in order to attract, for commercial gain, Internet users to them by creating a likelihood of confusion between each of the Complainant’s registered marks and the equivalent domain name held by each Respondent.

B. Respondents

(1) The Respondents first contend that the WIPO Arbitration and Mediation Center has no jurisdiction under the ICANN Policy and Rules to consider the Cases, because the domain names in contention were allotted before the Dispute Settlement Procedure was brought into effect.

(2) On the substance of the Complainant’s allegations, the Respondents assert:

(i) that the Complainant has no relevant trade marks registered in the United States of America, in which country the domain names were issued;

(ii) that any relevant trade mark which was registered in India by the Complainants have been allowed to lapse since 1980;

(iii) that there is no likelihood of confusion between the parties’ respective web sites;

(iv) that the Complainant’s trade marks are merely descriptive and would not merit trade mark protection in the United States;

(v) that the Respondents have built up brand name recognition, awareness and goodwill under the domain names in contention; and

(vi) that the Complainant has produced no evidence that the Respondents’ domain names were registered or are being used in bad faith.

A. Jurisdiction

In respect of the Respondent’s first contention, the Registration Agreement of a domain name holder, which applies not only to the initial registration but to the maintenance and renewal of domain names, provides for the incorporation of terms and conditions from time to time. It therefore admits the introduction of the Uniform Domain Name Dispute Resolution Policy as approved by ICANN on October 24 1999 and the associated Rules and Supplementary Rules into existing agreements. The present Panel is constituted in accordance with that Policy and may according hear the Complaints in Cases D 2000 0014 and 0015.

B. Substantive Complaint

(1) The Complainant’s essential complaint is based upon the large circulations of its general newspaper, "The Times of India" and its financial newspaper, "The Economic Times". That these papers are very well-established and have a circulation both within and outside India is not contested by the Respondent. The circulation of copies is now supplemented by the Complainant’s web sites for each paper, which must add to their overall reputation, since the sites can be accessed by Internet users around the world. It is clear that the titles are used to identify the producer of the newspapers and sites and are not merely descriptive of content.

(2) The Respondents’ domain names in contention differ from the Complainant’s domain names only by the incorporation of the definite article at the beginning. The Complainant’s hard-copy newspapers used the definite article in accordance with common practice for press publishing. The Respondents’ names are thus exactly the same as the Complainant’s hard-copy titles. The Respondents must have been aware of this identity at the time when it applied for registration of their domain names. They do not allege that they then had existing businesses in supplying Indian news which went under the names or titles in issue. While they may have since built their own reputation with some of those persons who visit their sites, it is highly unlikely that all visitors act on that reputation. It is inevitable that many will go to the site by virtue of their knowledge of the Complainant’s reputation and their belief that the service on the sites is provided by or in association with the Complainant. It is no sufficient answer to suggest that any misleading first impression will be dispelled by the different design of the web site. This will happen only where the visitor already knows the form and appearance of the Complainant’s own sites and it is not reasonable to suppose that this will be so in all or even the majority of cases. This impression is fortified by the fact that the Respondent’s sites appear to act as "postal addresses" to other sites. The necessary implication is that they were named in order to take advantage of the Complainant’s very considerable reputation in the two titles of its publications by misleading Internet users into believing that the Respondent’s sites came from or were associated with the Complainant.

(3) The Respondents have challenged the relevance of the Complainant’s trade mark registrations elsewhere than in the United States (where there are none). Since the essence of the Internet is its world-wide access, consideration of the propriety of domain name registrations cannot be confined to comparisons with trade mark registrations or other rights in the country where the site is hosted. It is therefore relevant to consider the effects of a domain name registration and use in relation to the registration and use of identical and confusingly similar trade marks in other countries. Equally, it is not conclusive against a complaint that the Complainant’s mark could not have been registered in a particular country.

(4) The Respondents have also asserted that the Complainant’s Indian trade marks are no longer registered. Whether or not that is so, it is clear that the Complainants have a very substantial reputation in their newspaper titles arising from their daily use in hard-copy and electronic publication. In India itself wrongfully adopting the titles so as to mislead the public as to the source of publications or information services would in all likelihood amount to the tort of passing off. As already stated, it is this reputation from actual use which is the nub of the complaint, not the fact of registration as trade marks.

(5) In accordance, therefore, with the provisions of the Dispute Resolution Policy, Paragraph 4, it is found:

(i) that the Respondents adopted in their domain names the identical marks in which the Complainant has rights,

(ii) that the Respondents have no rights or legitimate interests in respect of the domain names; and

(iii) that their registration and use of the domain names is in bad faith in the sense that their use amounted to an attempt intentionally to attract, for commercial gain, Internet users to their web sites by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation or endorsement of those web sites and the services on them.

In accordance with Paragraph 4(i) of the Dispute Resolution Policy, the Panel decides:

W.R. Cornish
Panelist

Dated: March 11, 2000