Disputed Domain: IEEE.in
INDRP Case No. No. 1135
The Institute of Electrical and Electronics Engineers, Incorporated
445 Hoes Lane,
Piscataway, New Jersey 08855
… COMPLAINANT
VERSUS
Mingjing Yi
Optics Valley Financial Harbour No.77 Optics Valley Ave. Wuhan, Hubei, 430000, CHINA
… RESPONDENT
ARBITRATION AWARD
1. The Complainant is aggrieved by the Respondent’s registration of the domain name www.ieee.in registered to the sponsoring Registrar dynadot LLC (IANA ID: 472) and has accordingly made this Complaint seeking the relief that this impugned domain be transferred to the Complainant with costs.
2. The Complainant have preferred this complaint on the following allegations in gist:-
2.1. The Complainant claims itself to be world’s largest technical society with more than 400000 members in 160 countries recognized as a leading authority in technical areas ranging from computer engineering, biomedical technology, telecommunications, electric power, aerospace and consumer electronics besides other areas and is a leading name in the engineering and technology related industries worldwide.
2.2. The Complainant claims the word/mark IEEE to be its principal trademark as well as a dominant and essential feature of its corporate name/trading name which forms an integral part of its services and dealings and which trademark/trade name the Complainant claims to be using atleast since the year 1963 in relation to its afore-referenced engineering and technologically related industries. The Complainant claims to be using various domains bearing the word/mark IEEE as its essential features and being so used by it in relation to its said engineering and technological related industries.
2.3. The Complainant claims to have established in the year 1976 an organization under the name The IEEE India Council to be its umbrella organization coordinating its activities in India.
2.4. The Complainant claims to maintain a global website such as www.ieee.org and webpage http:/sites.ieee.org/indiacouncil which specifically caters to the relevant public in India and which website and web-link are readily accessible from anywhere in the world and whereon relevant information of the Complainant and its operations is provided.
2.5. The Complainant claims its said trademark/trade name and domains bearing the word/mark IEEE to be well known, and of many technological devices to embody the standards developed by it like IEEE 802.11 series of wireless networking standards.
2.6. The Complainant claims to hold trademark registrations for its trademarks bearing the word/mark IEEE in India and in various overseas countries and to have achieved an impeccable goodwill and reputation amongst the consuming public and the trade. The Complainant claims its activities under its IEEE trademark/trade name and domain to have received wide spread media coverage and it to have a very strong presence over social media websites such as facebook and twitter wherein its IEEE trademark has been extensively showcased.
2.7. The Complainant claims the market and trade worldwide and in India to be well aware of the Complainant’s said activities, products and services and its said trademark/trade name IEEE and which trademark/trade name duly identifies its said activities, products and services from its source and origin and which similes its goodwill.
2.8. The Complainant claims proprietary rights in its trademark/trade name and domains bearing the word/mark IEEE including in its goodwill and reputation both under the statutory and common law.
2.9. In support of its rights and claims the Complainant has placed on record numerous documents which would be noticed and dealt with in so far as they are relevant in the course of this Award.
3. The Complainant is aggrieved by the Respondent’s adoption, use and registration with the sponsoring Registrar of the domain www.ieee.in effected on 03.10.2018 which according to the Complainant is in violation of its (Complainant’s) rights in its trademark, trade name and domain bearing the word/mark IEEE being identical with and deceptively similar thereto. According to the Complainant, the Respondent has no claim, right or legitimate interest in the disputed domain and which disputed domain has been registered without any express or implied authorization and that too in bad faith to illegally and wrongfully trade upon the goodwill and reputation of the Complainant and whereby an unjust association is being caused with the Complainant resulting in consumer deception and confusion.
4. Accordingly the Complainant has filed the present Complaint claiming the relief that the disputed domain be transferred to the Complainant along with heavy costs.
5. The .IN Registry appointed me as an Arbitrator to adjudicate this Complaint in accordance with the Arbitration and Conciliation Act, 1996; .IN Domain Name Dispute Resolution Policy; Rules of Procedure and/or bye-laws; rules and guidelines made therein and notified the factum thereof to the Complainant through its attorneys and authorized representatives as well as to the Respondent. Vide its E-mail dated 07.08.2019 the .IN Registry served upon me the physical set of the Complaint paper book vide courier and received by me on 07.08.2019.
6. Whereafter I (Arbitral Tribunal) served notice upon the Respondent vide e-mail dated 08.08.2019 with a copy of the Compliant and the documents and wherein the Respondent was notified about by appointment as an Arbitrator and was given an opportunity to submit its written response to the complaint. In the course of the proceedings various other notices dated 20.08.2019; 26.08.2019; 12.09.2019; 19.09.2019; 20.09.2019 and 23.09.2019 were issued respectively upon the parties seeking procedural compliances. The Complainant through its counsel filed a response vide E-mail dated 05.09.2019 to the notice issued upon it dated 26.08.2019. The replies, documents etc respectively filed by the parties were served upon the other party while the notices issued by me (Arbitral Tribunal) were served upon both the respective parties.
7. The Respondent filed its defense vide its E-mails dated 18.08.2019 and 21.09.2019 wherein in gist it has raised the following defenses:-
a) That the word/mark ieee is the nick name of her son who is only 16 years of age and writes biogs for (earning programme and records of his life.
The son’s dream must not be broken who has a right to write blogs and which right should not be deprived to him. The Complainant is a very large group compared to the Respondent and her son who is just an individual.
b) That Respondent does not use the disputed domain name for commercial use and has not gained any revenue or profit or money therefrom.
c) That the Respondent would use the disputed name only for its individual use and would never sell it to anyone and would not generate any revenue, profit or money therefrom.
d) That the Respondent is willing to put a disclaimer in its website triggered by the disputed domain to the effect that it has no relationship with the IEEE group. In fact such a disclaimer has already been put by the Respondent as per its web-link https://ieee.in/?p=19.
e) That the Respondent can consider donating the domain to any non-commercial organization if really necessary.
f) That the Respondent and her son has not put any IEEE on the blog in the past or in the future.
g) That the Respondent’s son nick name is lower -case letters “ieee” and also domain name “ieee.in” which are different from IEEE trademarks of the Complainant which are ail in big letters and consequently there is a difference in the competing trademarks and domains.
h) That no trademark of the Complainant is incorporated on its (Respondent’s) website www.ieee.in and no one will see any information or trademark of the Complainant therein and would not be able to connect the Respondent with the Complainant. The Respondent as such denies causing any infringement or violation of the Complainant’s rights.
i) That in the Respondent’s website there is nothing related therein to the Complainant except the domain name which is a little bit similar to www.ieee.com but despite the same it will not lead to any misunderstanding or malicious use and this is more so as it has not gained any benefit or money from the impugned domain and nor has it carried on any activity that would harm the legitimate interest of the Complainant.
j) That not all IEEE related activities in the world belong to the Complainant.
k) That there is no evidence from the statements from the Complainant that the Respondent has violated the rights of the Complainant and there is no such evidence on record or to the effect that the Complainant’s reputation or interests have been damaged or that the Respondent has benefits from such a domain.
l) That very few people in China have heard of the Complainant and more so as there are Seven (7) Billion people in the world while the members of the Complainant are only 400000. The Respondent disputes the Complainant’s trademarks IEEE to be well known around the world or of it to stand for the Complainant.
m) That it has a right in the disputed domain being its private property which the Complaint seeks to deprive it of.
n) That in a previous case even the Alibaba Group had failed to protect its domain under a rival use for want of sufficient evidence to prove its interests.
o) The Respondent has not acted maliciously in registering its impugned disputed domain name or in its use.
p) That the Complaint is in bad faith to cause embarrassment to the Respondent.
q) That the Respondent has registered the impugned domain name in accordance with the laws of India and has a legal right to use it and edit positive content on its website.
r) That the disputed domain name is not liable to be transferred to the Complainant as sought for in the Complaint.
8. In light of the pleadings and documents placed on record I now proceed to adjudicate this Complaint.
9. The trademark IEEE and its variants are duly registered in India under the Trade Marks Act, 1999
9.1. The earliest such registration is under No.796333 in class 16 as of 25.03.1998. The copies and particulars of the afore-noticed Indian Registrations have been duly filed on record as Annexure-G fcolltv).
10. The Complainant also owns trademark registrations for the word/mark IEEE and its variants across various countries of the world like United States of America, European Union, Mexico, Switzerland, Australia, Canada and Singapore and particulars whereof have been furnished in para-n of the Complaint and the copies and particulars of such registrations in overseas countries have been filed as Annexure-F. jurisdictions and as per the Extracts of the Whols database filed as Annexure-H to the Complaint.
12. The Complainant’s activities including under its trademark/trade name IEEE have received wide spread media coverage… and as such have been well written and reported upon. Documents to that effect have been filed as Annexure-B & C to the Complaint.
13. The Complainant has a huge presence in various social network sites such facebook and twitter whereon its various activities and its trademark IEEE has been showcased. Extracts from the web-links from such social media websites have been filed as Annexure-D to the Complaint.
14. In addition to the Complainant’s trademark registrations in India as noticed above the Complainant said activities and trademark/trade name/domains bearing the word/mark IEEE have a presence in India. The Complainant have established an organization under the name IEEE India Council in the year 1976 to coordinate its various activities in India. The factum and the working of this Council including of its various programmes and activities in India there under are apparent from the webpage http://sites.ieee.org/indiacouncii and screen shots whereof has been filed as Annexure-A to the Complaint. The media coverage and the websites where they have been covered, the websites of the Complainant under its various IEEE domains and the social network sites noticed above are easily and freely accessible in India to ail and sundry.
15. In light of the aforesaid it can safely be held that the Complainant’s activities and services under the IEEE trademark/trade name and various formative domains enjoy commercial visibility, noticeable goodwill, popularity and presence in the market, trade, public, consumers and users in India as weli as in overseas countries and who are well aware thereof.
16. The word/mark IEEE, in my considered opinion, is an arbitrary and fancy trademark not forming part of the ordinary Indian languages and nor being a dictionary word. The word/mark IEEE has no descriptive or generic connotation to the activities and services being carried on by the Complainant. The letters IEEE is an arbitrary arrangement of letters and could be construed to the derived from the respective first tetters of the Complainant’s corporate name being an acronym thereof. As such the word/mark IEEE enjoys inherent distinctiveness in addition to their acquired and factua! distinctiveness duly identifying the Complainant said activities and services from the Complainant’s source and origin and so distinguishing them and as such they are strong trademarks/trade name and domains.
17. Accordingly, in my considered view, the Complainant has been able to establish its rights, entitlements, legitimate claims and interests in its IEEE trademark/trade name and domains and can base a just cause thereon against rival unauthorized usage.
18. The rival domain bearing the words ieee even if in lower-case as compared to the Complainant’s trademark/domain IEEE (even if in bold, high or block letters) is completely identical with and/or deceptively similar thereto in each and every manner including phonetically and structurally. The rival domain bears the Complainant’s IEEE trademark/trade name in its entirety. Average consumers (which include internet users, market, trade and the public at large) exercising ordinary caution and in ordinary everyday circumstances in life and business would not be guided by lower-case of the words and would remember the competing domains as ieee or IEEE without making any difference between them and which can be remembered or so used interchangeably. There is not even a one letter difference between the two. Even in its response dated 21.09.2019 the Respondent has admitted the disputed domain to be “a little bit similar to www.ieee.com”.
19. The rival impugned domain as per the Extract from the Whols search have been registered with the sponsoring Registrar with creation date of 03.10.2018 and as per Annexure-J filed on record. This is much subsequent to the Complainant’s adoption and use and registration of the trademark jEEE and its variants. For example, the Indian trademark Registration of the Complainant’s trademark IEEE in India under No.796333 in class 16 itself is dated 25.03.1998 while the trademark registration for the word/mark IEEE in the USA under No.74258581 in class 41 is dated 11.05.1993 while the Complainant’s registration of the domain IEEE.com with the sponsoring Registrar had been registered with the creation date of 26.01.1998 as per Annexure-H to the Complaint. Clearly the Complainant’s said IEEE trademark, trade name and domains are clearly prior and senior to the impugned domain of the Respondent.
20.1. No plausible explanation leave aside any credit worthy explanation has been given by the Respondent as to how and why it indeed came to adopt the word/mark ieee as the nick name of her son as against thousands and thousands of names available for such an adoption. This is more so as the word/mark ieee is a unique and arbitrary arrangement of letters which could otherwise be taken from the first letters of the Complainant’s trade name.
20.2. From the tenor of the defenses raised it is clearly apparent that the Respondent was well aware of the Complainant and the Complainant’s activities at the time it decided to adopt the disputed domain and /or use the word/mark ieee as a nick name of her son. The Complainant has a huge •presence over the internet and other social network sites. The Respondent must be well aware of the domains, websites and internet systems as it itself claims to be writing blogs for learning programmes and to remember Chinese
traditional culture. As such it cannot feign any ignorance of the Complainant’s said IEEE trademark, trade name and domains prior to its adoption of the impugned domain.
20.3. The Respondent has no where indicated in its defense that it came to adopt the impugned domain innocently and without any knowledge of the Complainant or of the Complainant’s trademarks and domains bearing the word/mark IEEE.
21. Even otherwise the law on the subject is well settled and to the effect that innocence or lack of bad faith or fraud in adoption of the disputed domain is not the test and it is the probable effect on the rights of the Complainant and on the consumers which is of relevance. (Uaxmikant V. Patel v. Chetanbhai Shah (2002) 3 SCC 65: Century Traders Vs. Roshan Lai Duqqar AIR 1978 DELHI 250).
22. The law is also well settled to the effect that the rival Respondent has no right to use even its own personal name as a trademark, trade name or domain or the name of its close relatives how so ever bonafide or innocent such a adoption or use it may be should thereby any deception or likelihood thereof would result with the competing trademark/domain name. (See East End Hosiery Mills Pvt. Ltd Vs. Agqarwal Textile Mills AIR 1971 Gal 3; H&M Hennes & Mauritz AB vs HM Megatrends Pvt. Ltd – 2018 (74) PTC 229 Del; Veekesv Rubber Industries Pvt. Ltd vs. Deepak Gupta 2018 (73) PTC 503 Del.
23. In my considered opinion the very adoption of the disputed domain is tainted at inception and which cannot be purified by any amount of subsequent use and dealings. The Respondent has skillfully and with full conscious adopted the impugned domain name and only as a cover up has sought to take the shelter of the nick name of her son. That being so the Respondent is deemed to be aware of the consequences that ensue from such impugned adoption and/or usage. (See Hindustan Pencils Pvt. Ltd vs. India Stationary Products Company & Anr. 1989 PTC 61
24.1. The Complainant would always suffer by the impugned domain and the website triggered thereby even if it was to be taken that the Respondent use thereof has only been for learning and for non-commercial or non-business activities and without any money or profit.
24.2. The average consumers and users of the websites at the very inception would be deceived into believing the impugned domains and the impugned website triggered thereby to be related, sponsored or affiliated or associated or in some way connected with each other having regard to the complete identity of the disputed domain. Thus consumer deception would be caused or likely to be caused (actual deception is not the test and it is enough there is a likelihood thereof) at the very first instance itself when the consumers/users access or seeks to use the domains to access the websites. This itself is an actionable wrong even though the contents of the website may be different. 24.3. Even otherwise the Complainant would have no hold on the Respondent’s disputed domain or its usage in the present or in the future and would always suffer by the transfer of its users to the Respondent who would be deceived into reaching the Respondent while intending to reach the Complainant. Even the consumers would suffer as they would have reached where they did not intend to reach and would not have got what they did intended to get. This itself is a facet of deception. The Complainant’s goodwill and reputation would be left in the hands of the Respondent or any other third party over whom the Complainant would have no control. (See Baker Hughes Limited Vs. Hiroo Khushalani 1998 (18) PTC 580 fDell : Montari Overseas Ltd. Vs. Montari Industries Ltd.. 1996 (16) PTC 142 Del (DB); Ravenhead Brick Company Ltd. Vs. Ruaborn Brick & Tera Gotta Co., Ltd.. (1937) 54 RFC 341 fCh.D); Semigress TM (1979) RFC 330).
25. The Respondent cannot justify the use of the impugned domain on the premise that it has not made profit or revenue by its impugned domain or of its impugned usage to be non-commercial and only for individual use as even thereby the violation of the Complainant’s trademark, trade name and domain name rights in the word/mark IEEE can be effected, (see International Association of Lions Clubs Vs. Association of Lions India reported in 2009 (40) PTC 346 (Bom); Purceli V. Summers (1994) 145 f f2d) 979). The Complainant has a right to protect its rights against unauthorized use thereof, as in the present case, notwithstanding such an alleged violative usage to be non-commercial or only for individual use as alleged.
26. Even otherwise the Respondent’s defense of it using the impugned domain oniy for personai/non-commercial use and that to without profit or revenue is a deliberate and false statement made to derive unjust benefit apparent from a screen shot filed on record by the Complainant as Annexure-M obtained from the Respondent’s impugned website under the impugned domain wherein the Respondent has clearly indicated its domain ‘ieee.in is for sale’. The copy of the said screen shot has been filed on record by the Complainant as Annexure-M. The Respondent has not adverted to this in its Response/defense and has not contested the said statement or annexure.
26.1. A perusal of this Annexure-M clearly reveals the Respondent to be a cyber-squatter/cyber pirate and to be trafficking in the disputed domain name and whose only interest in the disputed domain name is to derive illegal money from its sale. “Cyber-piracy” has been defined as ‘the act of registering a well-known name or mark” (or one that is confusingly similar) as a website’s domain name, usually for the purposes of deriving revenue” [See The BLACKS LAW DICTIONARY 444 (9th Ed. 2009)] while trafficking has been recognized by the Hon’ble Supreme Court of India in its decision of American Home Products Corporation vs. Mac Laboratories Pvt Ltd reported in AIR 1986 SC 136 as a “cardinal sin: of Trade Mark law. In the very same judgment the Hon’ble Supreme Court has held trafficking to involve obtaining registration of Trade Marks without any intention to use it in relation to any goods but merely to make money out of it by selling it to others the right to use it.
26.2. This dictum applies equally to domain names as the fundamental principles of Trade Mark Law apply to,domain name dispute. Such an intention of “selling” the impugned domain is reinforced from the Respondent’s own reply dated 18.08.2019 where it pleaded considering “donating” the domain name to any non-commercial organization if “really necessary” and as such of the Respondent having no real interest in the impugned domain.
26.3. Such a statement of “sale” of the impugned domain would invariably harm the Complainant in the eyes of the users who on viewing the same may come under an impression that the Complainant is no more in business and is selling its assets.
27.1. No credence can be put on the Respondent’s claim to have incorporated a disclaimer on its website accessible under the impugned domain to the effect ‘this website is not an affiliate site of IEEE Group” or representing its name to be ieee or of its impugned domain is not for sale or its blogs to be non-commercial and as per the web-link http://ieee.in/?p=19 furnished in its
response dated 21.09.2019.
27.2. The said conferment by the Respondent is a sham and an afterthought and has been incorporated only to raise a false defense to disguise its initial offerings of selling the impugned domain as per Annexure-M and to derive an unjust benefit in these proceedings. Such a conferment does not in any negate the intention of selling the impugned domain name.
27.3. Such an incorporations of disclaimer is an act in bad faith and brings out the Respondent’s maiafide and fraudulent intent to convey an association albeit illegal/unauthorized between it and the Complainant. The obvious motive of the Respondent is to derive unjust gains on the Complainant’s business and goodwill or else why wouid the respondent so use it. “The thing speaks for
itself” (Res Ipsa Loquitur).
27.4. Such a disclaimer or an offer to put a disclaimer of no association or connection with the Complainant wouid be of no effect and nor wouid it remedy any/the wrong as the consumers or internet users stand deceived at the threshold of logging/entering into the website by using the impugned domain name itself. In this regard the observations made in the judgment of Bosewell-Wilkie Circus (Ptv) Ltd., Versus Brian Boswell Circus (Ptv.) Ltd.. reported in 1985 Fleet Street Report 434 can be safely relied upon. In this case the respondent sought to allay all likelihood of confusion by maintaining that its ring master in its circus prior to the commencement of each performance announces that it has “nothing to do with any other circus which is currently touring South Africa”. The court rejected such a disclaimer by holding that the spectators at a particular session have already bought their tickets and are seated after all by the time they hear the announcement and consequently the confusion would therefore already have taken place.
27.5. The grant, use or conferment of disclaimers, whether voluntary or by court/judicial orders, can never be as a matter of right and nor in the usual course. To do so would amount to negation of the scheme and intent of the trade mark laws which in gist are to protect Trade Mark/Domain name, the public and promote fair dealings and not a cyber squatter or a rank pirate. To permit disclaimers as a matter of right or as a matter of course would give a license to any violator to freely use an infringing mark by simply incorporating a disciaimer. This would be against the very mandate of law. Under the guise of disclaimer an infringer cannot be protected.
27.6. In the present facts and circumstances, permitting a disclaimer to be incorporated or giving credence to an already incorporated disclaimer would in gist amount to perpetuating an illegality and putting a premium on dishonesty. The Respondent under the guise of such disclaimers cannot be permitted to carry on its impugned vioiative use and especially as its own conduct is tainted and smacks of malafide. There are no equities with the Respondent to be balanced with the Complainant’s rights. Permitting such a disclaimer or any other disclaimer would amount to giving the respondent the benefit of its own wrong.
28. All these vioiative acts of Respondent through the disputed domain would perpetually and irreparably not oniy tarnish the business, activities and services of the Complainant but also dilute, diminish, erode and eclipse the goodwill, reputation and distinctiveness attached to the Complainant’s registered and prior and senior IEEE trademark, trade name and domains.
Not only that even the consumers would suffer as they would not get what they expected and instead would be deceived. Consumer deception and loss and injury being caused to the Complainant as well as the consuming public is inevitable.
29. Rights conferred on a trademark, by virtue of its registrations, prior use, goodwill and reputation distinctiveness etc are to be protected even against the rival use thereof in rival violative domains as inter alia there is a close relationship between trademarks and domains and the basic and fundamental principles of violation of trademark and domains by way of infringement and passing off are the same. Trade mark registrations have a presumptive validity attached to them and are a presumptive evidence of title in favour of the Registrant/Complainant. Trade mark registrations or common Saw rights therein or its goodwill or reputation and distinctiveness attached thereto can be violated even against the rival unauthorized use thereof as part of a rival domain name. [See American Home Products Corporation Vs. Mac Laboratories Pvt. Ltd.. & Anr. Reported in AIR 1986 SC 137 : Satyam Infowav Ltd.. Vs. Slfvnet Solutions Pvt. Ltd., 2004 (28) PTC 566 (SO : Bharti Airtel Limited Vs. Rajiv Kumar-2013 (53) PTC 568 (Del); B.K. Engineering Co. Vs. U.B.H.I. Enterprises reported in AIR 1985 Delhi 210 ; LT Foods Limited Vs. Sulson Overseas Pvt. Ltd., 2012 (51) PTC 283 (Del)].
30. In view of the aforesaid I am of the considered view that the Respondent has no. legitimate rights or interest in the impugned domain; the impugned domain is in bad faith and whereby the rights of the Complainant are being violated and consumer deception is resulting or likely to so result, in my opinion none of the defenses raised by the Respondent are maintainable in law and nor on facts and are worthy of rejection. These defenses raised do not inspire any confidence.
31. As such i have no reservation in holding that the Complaint must be allowed.
Accordingly it is decided that the impugned domain www.ieee.in be transferred to the Complainant.
Sudarshan Kumar Bansal
Sole Arbitrator
Signed on this 5th day of October, 2019 at New Delhi, India.
