castrolindia.com

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Castrol Limited v. Shriniwas Ganediwal

Case No: D2002-0881

Complainant is Castrol Limited, a company incorporated pursuant to the laws of the United Kingdom of Great Britain and Northern Ireland and located in Swindon, Wiltshire.

Respondent is Shriniwas Ganediwal, Fort Lauderdale, Florida, United States of America.

The domain name at issue is <castrolindia.com> (hereinafter referred to as the Domain Name).

The Registrar for the Domain Name is Network Solutions Inc. (hereinafter referred to as the Registrar).

The Complaint, drafted in the English language, was received by the WIPO Arbitration and Mediation Center (hereinafter referred to as the Center) via e-mail on September 23, 2002, and in hardcopy form on September 24, 2002.

On September 23, 2002, the Acknowledgement of Receipt was sent by the Center to the Complainant. On the same date, the Center sent the Request for Registrar Verification. The Registrar Verification Response was received on September 25, 2002.

The Center proceeded to verify that the Complaint satisfied the formal requirements of the Rules for Uniform Domain Name Dispute Resolution Policy (hereinafter referred to as the ICANN Rules) and the World Intellectual Property Organization Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (hereinafter referred to as the WIPO Supplemental Rules), including the payment of the requisite fees. The verification of compliance with the formal requirements was completed in the affirmative on September 30, 2002. The Panel has reviewed the documentary evidence provided by the parties and agrees with the Center’s assessment that the Complaint complies with the formal requirements of the ICANN Rules and the WIPO Supplemental Rules.

By Notification of Complaint and Commencement of Administrative Proceeding dated September 30, 2002, the Center informed the Respondent of the commencement of the proceedings and of the necessity of responding to the Complaint within 20 calendar days, the last day for sending a Response to the Center being October 20, 2002.

On October 23, 2002, the Center issued a Notification of Respondent Default.

The Center then informed the Parties on October 28, 2002, that an administrative panel had been appointed. The transmission of the case file was also executed on this date.

The Panel is satisfied that it was constituted in compliance with the ICANN Rules and the WIPO Supplemental Rules and has also issued a Statement of Acceptance and Declaration of Impartiality and Independence.

The Panel has received no further submissions from either party since its formation.

The Panel is obliged to issue a decision on or prior to November 11, 2002, in the English language.

The following uncontradicted and unchallenged facts appear from the Complaint and the documents submitted in support thereof:

The Complainant is the parent of the company Castrol India Limited, incorporated pursuant to the Indian Companies Act of 1956, (Annex E). The Complainant and its subsidiary have been operating in India for more than 80 years (Annex F).

The Complainant holds rights in the registered trade-mark CASTROL in India and is the owner of hundreds of other CASTROL trade-mark registrations around the world, as put forth in Annexes C and D.

The Complainant operates the web site <www.castrol.com>. Castrol India Limited operates the web site <www.castrol.co.in>.

The main activities carried on by Castrol India Limited include the development, processing, production, manufacture, sale and distribution of a wide range of automotive lubricants, lubricants and other oils and greases, and ancillary materials used in connection therewith.

Since 1983, the turnover of goods sold under the CASTROL trade-mark by Castrol India Limited has always increased and was of $245,150,518 USD in 1999.

Castrol India Limited has spent millions of dollars on advertising and publicity for its CASTROL products and CASTROL trade-mark in India between 1984 and 1999.

No information has been supplied regarding the attributes and businesses of the Respondent although it appears that the Respondent resides in United States of America. According to the WHOIS database, the Respondent registered the Domain Name on January 10, 2000 (Annex A).

By letter dated January 3, 2002, fearing confusion between the Domain Name and its trade-mark CASTROL, BP p.l.c., the parent of the Complainant, offered to reimburse the Respondent’s registration costs in return for the transfer of the Domain Name. Rather than replying in writing, the Respondent would only discuss the matter by telephone, and therefore, on February 26, 2002, a conversation took place between a Trade-Mark Officer with BP p.l.c. and the Respondent, during which the Respondent stated that he would be prepared to transfer the Domain Name for $10,000 USD (Annex M). A final attempt was made to settle the matter on March 8, 2002, when an offer of $1,000 was made to the Respondent, who made no response (Annex N).

The Complainant alleges that it is the owner of numerous trade-mark registrations worldwide for the mark CASTROL, including in India and, furthermore, that it has acquired common law rights as a result of the extensive use made of the trade-mark. The registration of the Domain Name <castrolindia.com>, which includes the term "castrol" is therefore confusingly similar to the CASTROL trade-mark.

The Complainant contends that the Respondent has no right or licence to use the CASTROL trade-mark.

The Complainant alleges that the Respondent has not been commonly known by the Domain Name and is not making a legitimate or fair use of the Domain Name.

The Complainant submits that by registering the Domain Name, the Respondent is disrupting the business of the Complainant who wished to use the Domain Name for their subsidiary company Castrol India Limited.

The Complainant states that a number of unsuccessful attempts have been made to settle the matter with the Respondent on an amicable basis.

The Complainant alleges that the Domain Name was registered by the Respondent primarily for the purpose of selling the domain to the Complainant for consideration in excess of the Respondent’s out of pocket costs directly related to the Domain Name.

The Complainant contends that in the event that the Domain Name is used by the Respondent in relation to a web site, there would be a very high likelihood of confusion with the Complainant’s trade-marks as to the source, sponsorship, affiliation or endorsement of the Respondent’s web site or of products or services on the Respondent’s web site.

B. Respondents

The Respondent failed to submit a Response to the Complainant’s Complaint before the due date. No reasons were given to explain why no Response was provided within the stated period.

Pursuant to the ICANN Policy, the Complainant must convince the Panel of three elements if it wishes to have the Domain Name transferred. It is incumbent upon the Complainant to cumulatively show:

(i) that the Domain Name is identical or confusingly similar to a trademark in which it holds rights; and

(ii) that the Respondent has no rights or legitimate interests in the Domain Name; and

(iii) that the Domain Name is registered and used in bad faith.

These three elements are considered below.

The Complainant provided evidence, in Annexes C and D, to the effect that it was the registered owner of the trade-mark CASTROL in numerous jurisdictions, including India, prior to the registration of the Domain Name by the Respondent. Furthermore, the Complainant showed in the Complaint, which has not been contested by the Respondent, that for many years now, the annual expenditure incurred by Castrol India Limited on advertising and publicity and the approximate annual turnover of goods sold under the trade-mark CASTROL by Castrol India Limited has been significant. Consequently, the Panel finds that the Complainant has satisfactorily demonstrated that it owns rights in the trade-mark CASTROL.

The Panel also relies on the findings in La Chemise Lacoste v. M. Lee Ji Hong, WIPO Case No. D2001-0956, where the Domain Name in issue was <lacostechina.com> :

"The second-level part of the Domain Name is phonetically and visually similar to the Complainant’s trade-mark LACOSTE. Thus, an average Internet user who has knowledge or recollection of the name LACOSTE might easily mistake the Domain Name, as being somehow affiliated to or owned by the Complainant. The fact that the domain name includes the term "china" does not, in any way, distinguish it from the Complainant’s trade-mark. This term simply refers to a geographical location and does not add any distinctiveness to the Domain Name."

The Panel is therefore of the opinion that the Complainant has satisfactorily met its burden of proof as required by paragraph 4(a)(i) of the ICANN Policy and concludes that the Domain Name is confusingly similar to Complainant’s CASTROL trade-mark.

By exerting its trade-mark rights and demonstrating that Respondent is not licensed by the Complainant to use the trade-mark, the Complainant has established prima facie that the Respondent has no rights or legitimate interests in the Domain Name.

Furthermore, the Panel finds that the Respondent has neither rights or legitimate interests to the Domain Name since there is no evidence pointing in the other direction. The Respondent, by ignoring the Complaint, has failed to show its rights or legitimate interests. Nothing indicates that it has ever used the trade-mark or trade-name "castrol" or been commonly known has either "castrol" or <castrolindia.com>.

In this case, as was the case in LLS International v. Mark Freeman, WIPO Case No. D2000-1080 and Altavista Company v. Grandtotal Finances Ltd., WIPO Case No. D2000-0848, the Panel finds it appropriate in this regard to draw an adverse inference from the Respondent’s failure to reply to the Complaint and detail any legitimate rights or interests he might have had in the Domain Name of the type defined in paragraph 4(c) of the ICANN Policy.

In absence of any evidence to the contrary from the Respondent, the Panel concludes that the Respondent has no rights or legitimate interests in the Domain Name.

The Respondent has made no effort to explain or justify the reasons behind its registration of the Domain Name.

The Panel is of the opinion that Complainant has satisfied its burden to establish, on the ground that the Respondent offered for sale to the Complainant the Domain Name with the asking price of $10,000 USD, that the Respondent was intending to demand more than his out-of-pocket costs directly related to the registration of the Domain Name.

The Complainant’s contentions and evidence having not been challenged by the Respondent, the Panel concludes there has been bad faith on the Respondent’s part when it registered the Domain Name and that it is using it in bad faith in the sense of Paragraph 4 (a) (iii) of the Policy.

For the foregoing reasons, the Panel finds that:

- The Domain Name registered by the Respondent is confusingly similar to the trademark in which the Complainant holds rights; and

- The Respondent has no rights or legitimate interests in respect of the Domain Name; and

- The Domain Name has been registered and is being used by the Respondent in bad faith.

Accordingly, pursuant to Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the registration of the Domain Name <castrolindia.com>be transferred to the Complainant and directs the Registrar to do so forthwith.