In This Issue

Kimberly Clark Worldwide Inc V/S Lin Yanxiao

The Complainant, Kimberly Clark Worldwide, Inc., is a registered proprietor of the trademark HUGGIES since 1976 in the US and since 1985 in India. It is a leading company in the tissues, diapers, personal and health care industry. The Complainant filed a complaint with the National Internet Exchange of India (NIXI) for recovery of the disputed domain name registered by the Respondent, Lin Yanxiao as it incorporates the well-known and registered mark HUGGIES of the Complainant.

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Identifying Bad Faith in Registered Domain Names: ESPN Inc. Domain Admin

It was held in the case of ESPN Inc. v. Domain Admin that the use of a domain name that is a well-known mark to promote competing or infringing products cannot be considered bonafide offering of goods and services. Even where a party passively holds a domain name conflicting with that of a well-known mark, it constitutes bad faith.

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Kimberly Clark Worldwide Inc V/S Lin Yanxiao

 

Brief Facts

 

The Complainant, Kimberly Clark Worldwide, Inc., is a registered proprietor of the trademark HUGGIES since 1976 in the US and since 1985 in India. It is a leading company in the tissues, diapers, personal and health care industry. The Complainant filed a complaint with the National Internet Exchange of India (NIXI) for recovery of the disputed domain name <www.huggies.in> registered by the Respondent, Lin Yanxiao as it incorporates the well-known and registered mark HUGGIES of the Complainant.

 

Contensions Raised By The Complainant 

  • Its various HUGGIES and HUGGIES trademarks are registered under the Trade Marks Act in India as well as in the US.

  • They have acquired valuable goodwill and reputation under the trademark HUGGIES in relation to the goods and business of diapers, tissues and health care segments and the said trademark distinguishes the complainant’s products and business from its source and origin. The said trademark is therefore distinctive.

  • The said trademark is well known, well established, well used and advertised in India since 1985 in the market.

  • The term “HUGGIES” forms an integral part of the Complainant’s domain name- <www.huggies.com>  that was registered on March 4, 1996 and <www.huggies.co.in> that was registered on October 7, 2007 and the complainant is the registrant of both the domain names.

  • Consumers associate the term HUGGIES with that of the Complainant.

  • The disputed domain name <www.huggies.in> is identical and similar to that of the registered trademark HUGGIES of the complainant, their registered domain names <www.huggies.com> and <www.huggies.co.in> and thus violates their rights.

  • Adoption of disputed domain name shows the malafide intention of the Respondent to obtain illegal gains and trade upon the goodwill and reputation of the Complainant’s registered trademark HUGGIES and related domain name.

  • Respondent has illegally adopted the disputed trademark to mislead the online visitors and public into believing that the domain name belongs to the Complainant or is associated with them.

  • Respondent is also advertising the goods of the direct competitors of Complainant on the disputed domain name with malafide intention of disrupting the goodwill and reputation of Complainant’s mark. Therefore, Respondent is using the disputed domain name in bad faith and they have no legitimate rights and interests therein.

Discussion And Findings

 

The Arbitrator, while deciding the matter, made the following observations:

  • The disputed domain name <www.huggies.in> bears the complainant’s registered trade mark HUGGIES as an essential and memorable feature that would be remembered by the general internet users. An average consumer would believe that there is a nexus between the Complainant and the Respondent or of the disputed name.

  • The consumers would also believe that the disputed domain name is sponsored, licensed or affiliated to that of the trademark of the Complainant or is an extension of the Complainant’s business. Therefore, there is complete similarity/ identity between the complainant’s trademark HUGGIES and the disputed domain name.

  • The disputed domain name of the Respondent bearing the identical registered trademark HUGGIES of the complainant is a violation of Complainant’s rights of the Trade Marks Act, 1999. The Respondent’s acts are without leave and license. Therefore, such acts are considered to be a legal wrong. The Complainant would have no control over the quality of goods and services provided by the Respondent.

  • Respondent is commercially carrying out unauthorized advertisements and sale of HUGGIES products. The acts of the Respondent would tarnish the business and diminish, erode and eclipse the distinctiveness of the registered trademark HUGGIES of the Complainant’s. Therefore, adoption of the disputed domain name is actuated in bad faith, malafide and fraud.

  • The Respondent are also guilty of cyber piracy and cybersquatting.

  • Wrongs of Respondent are apparent from the fact that it has not traversed nor challenged the Complainant’s facts. The motive of Respondent was to derive unjust benefit from the registered trademark HUGGIES of complainant.

Decisions Of The Nixi Arbitrator

 

In light of all of the above facts and circumstances in the matter, the Arbitrator allowed the complaint directing that the Respondent’s domain name <www.huggies.in> be transferred to the Complainant.

 

Cases cited by Arbitrator 

  1. Montari Overseas Ltd. vs Montari Industries Ltd.

    Similarity in addition to being qualified as deception it also acts as evidence of bad faith and malafide intention on part of Respondent to gain illegal monetary benefits.

  2. Lt. Food Limited vs Sulson Overseas Pvt. Ltd

    Disputed domain name bearing identical registered trade mark of Complainant would be in complete violation of the said registered trade mark of Complainant (Section 29 of Trade Mark Act, 1999).

  3. GramaxPlasticulture Limited vs Don and Low Nonwovens Limited

    Bad faith has been defined to include dishonesty and dealings which fall short of the standards of acceptable commercial behaviors observed by reasonable and experienced men in particular area being examined.


Identifying Bad Faith in Registered Domain Names: ESPN Inc. Domain Admin

 

It was held in the case of ESPN Inc. v. Domain Admin that the use of a domain name that is a well-known mark to promote competing or infringing products cannot be considered bonafide offering of goods and services. Even where a party passively holds a domain name conflicting with that of a well-known mark, it constitutes bad faith.

 

Brief facts and background of the case

 

It is known that the complainant ESPN Inc. is a well-known company incorporated under prevalent Corporate Laws of the United States of America. The complainant provides sports entertainment services, including media coverage and broadcasting of sports world over through all media sources.

 

A complaint was filed with the National Internet Exchange of India on August 18, 2016 by ESPN against the Respondent “Domain Admin” who registered the domain name www.espn.co.in GoDaddy.com . The Exchange had verified the complaint and discerned that it satisfied all the formal requirements of the Indian Domain Name Dispute Resolution Policy and the Rules framed thereunder.

 

A copy of the complaint was sent by the Sole Arbitrator Mr. Vinod K Agarwal to the respondent at their address registered in the WHOIS data records. However, no response was received from the end of the respondents pursuant to which the proceedings were initiated ex-parte. Also, the respondent’s activities remain unknown.

 

Complainant’s Submission

 

The complainant contended that all elements specified in the policy were applicable to the dispute at hand. The complainant stated that they have been using their trademark ESPN in India as trade name, corporate name, business name, trading style etc. since 1994 without any interruption. The complainant further contended that their trademark registration in respect of ESPN is valid and still subsisting.  

Pursuant to this contention they are the sole and absolute owners of copyright vesting in all artistic works around their trademark. Moreover, they own some other domain names incorporating the word ESP such as www.espn.com, www.espn.net, www.espn.in, www.espntv.com, www.espn.go.com, www.espncricinfo.com indicating that they are well known users of the word ESPN as their owners and that their domain name has become a business identifier for them and the conflicting domain name is likely to cause confusion and mislead netizens as it is similar/ identical to their name.

 

Respondent’s Submission

 

The respondent’s contentions were not known as they did not submit any response. Furthermore, their identity could not be determined owing to the unavailability of their complete address.

 

National Internet Exchange of India observed

 

The Sole Arbitrator observed that the complainant owns the trademark ESPN along with several domain names incorporating the word ESPN created much before the creation of the disputed domain name by the Respondent which is confusingly similar or identical to ESPN’s marks.

 

As no response was received from the respondents and lack of evidence that the disputed domain name is known anywhere in the world. Further, it could be inferred from the conduct of the Respondents that they had no legitimate interest, license, or authority to use the Complainant’s trademark in a domain name.

 

The sole Arbitrator deduced that the Respondent had intentionally attempted to attract netizens to their disputed domain name for commercial gain by creating a likelihood of confusion with the complainant’s trademark.

 

Therefore, the disputed domain name was declared confusingly similar to that of the Complainant’s. The arbitrator inferred that the disputed domain name was registered in bad faith under the Guiding Policies and the Rules thereunder and passed an order transferring the disputed domain name www.espn.co.in to the Complainant.

 


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