ADMINISTRATIVE PANEL DECISION
Under the ICANN Uniform Domain Name Dispute Resolution
1. Parties and Contested Domain Name
The Complainant is Sampatti.com ltd, 4/7c DDA Shopping Center, New Friends Colony, New Delhi (India), represented by Mr. Khemka Shamit. The Respondent is Chetan Rana, an individual resident in Danbury CT, USA.
The Domain Name at issue is "sampati.com", registered by the Respondent with Register.com, Inc.
The remedy sought is the transfer of Domain Name sampati.com from the Respondent to the Complainant.
2. Procedural History
The complaint was brought pursuant to the Uniform Domain Name Dispute Resolution Policy ("ICANN Policy") adopted by the Internet Corporation for Assigned Names and Numbers on October 24, 1999.
The electronic version of the Complaint form was filed on-line through eResolution's Website on June 7, 2000. The hardcopy of the Complaint Form was received on June 12, 2000. Payment was received on June 19, 2000.
Upon receiving all the required information, eResolution's Clerk proceeded to:
- Confirm the identity of the Registrar for the contested Domain Name;
- Verify the Registrar's Whois Database and confirm all the required contact information for Respondent;
- Verify if the contested Domain Name resolved to an active Web page;
- Verify if the Complaint was administratively compliant.
The inquiry leads the Clerk's Office of eResolution to the following conclusions: the Registrar is Register.com, the Whois database contains all the required contact information, the contested Domain Name resolves to an active Web page and the Complaint is administratively compliant.
An email was sent to the Registrar by eResolution Clerk's Office to confirm the name of the billing contact and to obtain a copy of the Registration Agreement on June 7, 2000. The requested information was received on June 12, 2000.
The Clerk's Office then proceeded to send a copy of the Complaint Form and the required Cover Sheet in accordance with paragraph 2 (a) of the ICANN's Rules for Uniform Domain Name Dispute Resolution Policy.
The Clerk's Office fulfilled all its responsibilities under Paragraph 2(a) in connection with forwarding the Complaint to the Respondent on June 19, 2000. That date is the commencement date of the administrative proceeding.
On June 19, 2000, the Clerk's Office notified the Complainant, the Respondent, the concerned Registrar, and ICANN of the date of commencement of the administrative proceeding.
On July 7, 2000, the Respondent submitted, via eResolution internet site, his response. The signed version of the response was received on the same date.
On July 11, 2000, the Clerk's Office contacted Mr. Enzo Fogliani, and requested that he acts as panelist in this case.
On July 12, 2000, Mr. Enzo Fogliani, accepted to act as panelist in this case and filed the necessary Declaration of Independence and Impartiality.
On July 12, 2000, the Clerk's Office forwarded a user name and a password to Mr. Enzo Fogliani, allowing him to access the Complaint Form, the Response Form, and the evidence through eResolution's Automated Docket Management System.
On July 12, 2000, the parties were notified that Mr. Enzo Fogliani had been appointed and that a decision was to be, save exceptional circumstances, handed down on July 25, 2000.
On the same day, after the parties were notified of the appointment of Mr. Fogliani, the Respondent sent a formal request to the Clerk's Office for leave to submit additional information on the case.
On July 13, 2000, the Panel allowed 5 days for the Respondent's additional information and documents, and 5 further days for the Complainant's reply, pursuant to paragraph 12 of Icann Rules. This decision was forwarded to the parties by the Clerk's Office on the same day.
On the same date, July 13, 2000, after the Clerk's Office communication, the Complainant also requested leave to submit additional information on this case.
On July 14, 2000 the Respondent sent a communication to the Clerk's Office, claiming that the Panel should have granted a different order for the submission of the additional information.
On July 17, 2000 the panel confirmed its decision regarding the order of submission of additional information. On the same day the parties were notified by the Clerk's office of the Panel decision and that the final award was to be, save exceptional circumstances, handed down on August 7, 2000.
On July 18, 2000 the Respondent sent his additional information. The Complainant replied on July 23, 2000, submitting other documents.
3. Preliminary issue.
The Respondent complained about the decision of this Panel, who granted him 5 days for submission of additional information and 5 days to the Complainant to reply. The Respondent objected that "any intelligent man and woman in this world, any college student in the world, any think tank in this world, will say that this is injustice to the respondent", because the Respondent should always make representations after the Claimant.
This Panel reconfirms herein its decision taken on July 13, 2000. Article 12 of Icann Rules permits the Panel to allow, at its sole discretion, presentation of further documents and arguments. The Respondent is the party who first asked for leave to present further arguments, and the Panel has decided on this first request in his favor.
There was no need to obtain additional information first from the Complainant, who at that moment had not asked for the occasion to do so. On the other hand, the Panel was obliged to grant the Complainant the same opportunities of further argument allowed to the Respondent, giving him a 5 days extension to reply.
4. Factual Background
The Complainant affirms:
1) to be Sampatti.com ltd, a Public Limited and registered company in the Union of India;
2) to be the rightful owner of the domain Sampatti.com (with a double T).
3) that the domain and business name "sampatti.com" is being used and was registered by him on and from October 13, 1999
4) The domain name "sampati.com" is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
5) To have applied for the trademark on May 22, 2000.
The above facts have been proved by the Complainant.
The Respondent affirms, inter alia, that "sampati" is a common word in the Indian language and proved that the domain name "sampati.com" was registered on December 25, 1999.
5. Complainant's Contentions
The Complaint is based on the following grounds:
a) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
b) the Respondent has no rights or legitimate interests in respect of the domain name
c) the domain name was registered and is being used in bad faith, because
1) the Respondent has registered the domain sampati.com (with a single t) to confuse Complainant's viewers who accidentally visit the Respondent's site;
2) there is no evidence of the registrant's use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services.
6. Respondent's contentions
The Respondent opposes that the complainant
- did not prove to be the rightful owner of any trademark or service mark;
- did not prove the date of commencement of his business.
The Respondent objects that
- when the domain name at issue was registered, he was unaware of the existance of "sampatti.com";
- "Sampati" is a common Indian word having several different meanings;
- his registration of "sampati.com" is part of a large project, involving about 250 sites, which is being developed under the name of Indianaction;
- in this project, the domain name "sampati.com" will be used "to create an identity on the net in order to help millions of people who are in search of information on "Spirituality and God", and the philosophical information and articles on this subject by well-known Indian philosophers".
7. Discussion and Findings
Under Paragraph 4 (a) of the ICANN Rules, the Complainant is required to prove, with respect to the Domain Name at issue, that the Domain Name is identical or confusingly similar to the Complainant's trademark; that the Respondent has no rights or legitimate interests in the Domain Name; and that the Domain Name has been registered and is being used in bad faith.
These are the three matters at issue in this case.
(a) Identity or Confusing Similarity
The Complainant proved he has applied for the trademark "Sampatti.com", which is also the name of the Complainant company. Even if it is not proved that his trademark application has been accepted, the latter circumstance is sufficient to affirm that the Complainant is the legitimate owner of "Sampatti.com" trademark.
As to the matter of similarity, it has been clarified in many previous decisions that the suffix ".com", being the top level domain name, is irrelevant when examining whether or not a domain name is similar to a trademark. In this case, the two names to compare should be then "sampati" and "sampatti.com". Which, obviously, are neither identical nor confusingly similar.
On the other hand, both parties agree that "sampati" is a common word in the Indian language. The Respondent indicates that it has about a hundred different meanings, while the Complainant states that the principal meaning would be "assets", in both the Hindi and Sanscrit languages. The different spelling of the word (single or double t) would not affect the pronunciation, which would remain the same.
This Panel thinks that the mere fact of creating and operating a company having as a name a common word plus a dot and a TLD suffix does not give to the company itself the sole right to the word. Furthermore, "sampati" (or "sampatti"), being a common Indian word, if we should compare "sampati" and "sampatti" (instead of "sampati" and "sampatti.com") we would come to the conclusion that the Complainant (Sampatti.com Ltd.) has no right to the common word "sampati"
This Panel believes therefore that the domain name "sampati.com" is not identical or confusingly similar to the name of the Complainant.
(b) Bad Faith Registration and Use
Paragraph 4, b of ICANN Policy states that the Complainant must prove that the domain name at issue has been registered and is being used in bad faith, and indicates four circustamces each of which, if found to be present, is to be considered evidence of the registration and use of a domain name in bad faith.
(I) As per Paragraph 4, b, I, there is no circumstance indicating that the Respondent registered "sampati.com" primarily for the purpose of selling, renting, or otherwise transferring it to the Complainant;
(II) As per Paragraph 4, b, II, there is no evidence that the Respondent registered the domain name at issue in order to prevent the Complainant from mirroring his name mark in a corresponding domain name, nor that the Respondent engaged in a pattern of such conduct. There is evidence that the Respondent registered many other domain names, but (a) he affirmed he did it within a well defined project, and there is no reason to believe otherwise, and (b) last but not least, there is no evidence that those domain names were registered with illegitimate scope.
(III) As per Paragraph 4, b, III, the Complainant has affirmed that the Respondent has the "intent for commercial gain misleadingly diverting consumers or to tarnish the trademark or service mark of sampatti.com"; but there is no evidence or indication of such intent on the part of the Respondent. Indeed, the Complainant has not proved that the Respondent acts in his same business sector; moreover, from the same documents offered by the Complainant it appears that selling real estate is not the business of the Respondent, whose activities seem to be the creation of a website containing information about many aspects of Indian life. But even if the Respondent and the Complainant were conducting the same kind of business the fact that they operate on two different continents excludes the illegitimate intent affirmed by the Complainant. He has not proved that the Sampatti.com ltd. conducts his business in the U.S.A., nor proved that the Respondent deals with real estate in India. Thus, this panel believes that not only has the Complainant not proved these complaints, but is also unlikely that the Respondent had registered sampati.com (which is a common word) with the intent of diverting the Complainant's clients.
(IV) Similar considerations may be adopted in relation to Paragraph 4, b, IV. The above mentioned circumstances indicate that the Respondent did not intentionally attempt to attract, for commercial gain, Internet users to his web site by creating a likelihood of confusion with the Complainant's mark.
These circumstances make this panel believe that "sampati.com" was registered in good faith.
(c) Rights or legitimate interests, Registration and Use in Bad Faith
The registration and use of the domain name in bad faith is one of the essential elements to be proved by the Complainant. The Complainant having failed to prove the Respondent's mala fides, there is no need to evaluate whether the Respondent had rights or legitimate interests in sampati.com.
8. Respondent's conduct
The Complainant raised the point that the Respondent had not followed the spirit of this arbitration process and proceedings. As a matter of fact, the language of the Respondent had been not only improper, but even offensive. In his communications to the Clerk's Office, the Respondent expressed his considerations of this Panel which in any country would have resulted in penal proceedings for Contempt of Court.
In any case, even if the Respondent's conduct is to be criticized, this does not relieve this panel from the obligation to render its judgment only on the basis of that which has been proved in these proceedings.
The primary scope of these proceedings is not to determine who has legitimate rights in respect of a domain name, but rather whether the domain name at issue has been (or has not been) registered and used in bad faith. Any other question (even if could equally have lead to the transfer of the domain name) is not within the jurisdiction of this panel, and should be brought before the competent Court. Then, even if the Complainant were to have rights to sampati.com and, on these grounds, a Court might recognize his right to have this domain name transfered to him, in the event the Respondent's bad faith is not proved this Panel can not grant the award requested by the Complainant.
The Complainant submitted no evidence of the Respondent's bad faith; and thus this Panel can do nothing else but conclude that the domain name "sampati.com" registered by Mr. Chetan Rana is not being used in bad faith nor was it registered for this purpose.
Accordingly, the Complainant's request is rejected and the request for a transfer is denied.
Rome, July 31, 2000
(s) Enzo Fogliani