Global Car Group PTW Limited, Singapore
Cars24 Services Private Limited, Gurugram, India … Complainants
V.
Vienna Solutions Pvt Ltd, Mohali Punjab … Respondent
Disputed Domain: Cars24.in
Complainant in this proceeding is Global Car Group PTW Limited, Singapore and Cars24 Services Private Limited, Gurugram, India.
Respondent in this proceeding is Vienna Solutions Pvt Ltd, Mohali Punjab.
Complaint:
1. The Complainant No 1 is a company incorporated under the laws of Singapore and Complainant no 2 here is a wholly owned subsidiary of the Complainant No 1 Company, and is engaged in the business of operating, Developing and Managing “e-commerce portal”, thereby rendering services for ‘Sale and Purchase of pre-owned/used card’s, in India.
2. The Complainant No 2 since it’s incorporation in August 2015, has been operating and conducting its business activities under the name and style of “Cars24” and has been using and operating the domain “Cars24.com”. The Complainant No 2 has its business operations spread across the Country and at present it has 54 Center’s and expanding.
3. The Complainant has been advertising it’s services and Products, in the Country, since 2015 onward and has already incurred a composite sum of about Rs 45 Crores till date on such marketing and advertising activities which is also growing rapidly.
4. Complainant No 1 is the Registered Proprietor and user of Trade Mark “Cars24” and Domain Name “Cars24.com” in various countries and has been using the said domain name, in connection with its on-going business, since past considerable period of time in a very extensive manner for its business activities. That the Complainant has marked their presence across the Country and are expanding their business territory and volumes, rapidly since the year of its incorporation.
5. Since the date of incorporation of the Complainant No 2, no objection whatsoever, from any Company, Enterprise, Organization, Entity or Individual, has been received with respect to the usage of “Cars24” by the Complainants, much less from the Respondent.
6. The Complainant has conceived and adopted the transfer name “Cars24” and has been openly, continuously and expensively using the mark “Cars24” as it’s trade name, corporate name, business name, trading style, trade mark worldwide since its incorporation. The Complainant’s trade name is well known in the country and specifically at around 54 locations wherever it has its office.
7. Lately during the month of June 2017, it came to the notice of the Complainants, by means of “Public Calls”, that ‘ at large including the ‘prospective customers’ of the Complainant who actually intended to contact / deal with the Complainant no 2, were being misguided by the domain of the Respondent and were consequently calling on the contact numbers of the Respondent Company, instead of calling on the contact numbers of the Complainant No 2.
Respondent Response:
The Respondent has filed its reply wherein it has submitted s under:-
1. The disputed domain i.e. Cars24.in was registered by the Respondent on 3 Jan 2007 by following each and every formality at the time of Registration of Domain Name through a .IN Registrar and the disputed domain name being freely available to register. The Respondent is registered with the registrar of companies since 20.01.2006 and deals in IT solutions since its inception.
2. In the year 2007, the Respondent ventured into the business of second hand cars and spent huge amount on its promotion and ADs on radio, newspapers and pamphlets were given to people since the registration of disputed domain name. The Respondent has also bought many other domain names like FLY24.in, Parties24.in, Mobile24.in, City24.in, Estates24.in, Properties24.im, Naukri24.in and is doing regular work on these domain names since their creation and such domain names are a regular source of income to the Respondent.
3. The Complainant’s domain name “Cars24.com” is owned by a Singapore based person named as Anna Hass. The Complainant is totally a foreign entity which is trying to hijack the domain of Indian business operating much before the entry of the Complainant in India in 2015 and also before the said domain name i.e. Cars24.com was owned by entity in Korea.
4. Since the registration of cars24.com i.e. in 2001, the domain name of the Complainant was put up for sale and the Complainant was not doing any sort of business regarding the sale and purchase of resale cars. The said domain name of the Complainant was for sale in 2003, 2004 and 2005 as well.
5. The said Domain Name of the Complainant started posting ADs in 2007 regarding digital camera and other things and the same was also done in 2008, 2009, 2010, 2011, 2013 and 2014.
6. The Complainant was not dealing in the business of resale or purchase of second had cars from its registration in 2001 till 2014 rather it was domain name purchased only to gain monetary benefits out of the ads posted on the Internet.
7. The respondent is using the disputed domain name since 2007 and was prior in time in registration with the competent authority and at the time of registration, the Complainant’s domain name “Cars24.com” was not in use with any other user and neither any company owned by the Complainant nor the Complainant was using the same.
8. The Respondent is dealing in the sale and purchase of second hand cars since 2007 and is flourishing well in the said business but the Complainant only started their work after 2014 and the Complainant has unnecessarily used the images built by the Respondent in the field of second hand cars market and also have taken undue advantage of the similar domain name “Cars24.com”, as since its creation in 2001 till 2014 they did not do any work on sale or purchase of second hand cars on their domain name was only a site
making monetary gain out of adds on the net.
Further Submission of the Complainant:
1. The Complainant apart from reiterating all the submissions made in the Complaint and denying all the contentions of the Respondent, for the first time alleged that the Respondent had agreed to sell the disputed domain name to the representative of the Complainant.
2. The Complainant has alleged that it approached the Respondent through its representatives in the beginning of July 2017 and discovered that there was no office in relation to “Cars24.in” at the said premises. He there met Mr Yogesh Kumar Sharma who later informed him that the disputed domain name belonged to them and the boss Mr Atul Dua had asked him to inform the said representative that he was willing to sell the Domain Name to the Respondent for $ 1,00,000/-. However, no conclusion could be arrived and therefore the said transaction could not be finalized. The Complainant also filed an affidavit in support of this contention.
Discussions & Findings by Arbitrator / Tribunal:
I. Identical or similar to the Trade Mark
The Tribunal finds from the submissions and the documents filed by the Complainant that as per its own admission, the Complainants have been operating and conducting its business activities under the name and style of “Cars24” and using and operating the domain “Cars24” in India since 12-08-2015. From the annexures filed by the Complainant was in July 2015.
However one of the trade mark “Cars24” of the Complainant was registered on 15.01.2016 as is evident from annexure filed with the rejoinder. Since the date of user of the said trade mark was not given, the Tribunal checked the online records of the trade mark registry and came to know that the complainant claimed the user of the said mark w.e.f. 01.08.2015 only.
It is pertinent to note that from the documents placed on record by the Respondent, copies of archived website extracts of the domain name “cars24.com”, it is clear that even though the domain name “cars24.com” was registered in 2001 by the Complainant, there was no actual use of the trade mark/name “Cars24” till 2001, 2003,2004 and 2005. From 2007 till 2014, the domain name “cars24.com” of the Complainant had merely posted ads for digital cameras etc and not operated any legitimate website on it. Similarly, tribunal verified the Respondent’s claim as to use since 2007, it was verified at www.archive.org and found that the disputed domain name as a continuous operative website w.e.f. 2007.
The Tribunal considered that even though the Complainant is a registered proprietor of the trade mark “Cars24” since 2016 and using the same since 2015, it cannot prevent the Respondent from using the disputed domain name which is n Respondent;s use since 2007. The tribunal for its finding gets strength from the provisions of section 34 of the Trade Marks Act, 1999, which provides that the proprietor of a trade mark does not have the right to prevent the use by another party of an identical or similar mark where that use commenced prior to the user or date of registration of the registered proprietor. IT is a settled law that the “first user” rules is a seminal part of the Trade Marks Act, 1999 and it has always enjoyed pre-eminence.
Keeping in view the above, it was held that though the disputed domain name is identical or similar to the registered trade mark of the Complainant, it does not preclude the respondent from using the same.
II. Legitimate rights and Interests in the Domain Name
The Respondent in its reply has made claims regarding his business and usage of disputed domain name ‘cars24.in’ in regards to its alleged business. The respondent has produced documents on record to establish that the Respondent has bonafide/legitimate interest that the Respondent has bonafide/legitimate interest in using the disputed domain name ‘Cars24.in’ for its business. It is pertinent to mention that the respondent in its reply to the complaint has stated that it has been using and operating a website on the disputed domain name since 2007 and also produced archive website extracts of 2008 evidencing the running and operating of the website for the
disputed domain name. On checking the website archive extracts of the disputed domain name, it is clear that the Respondent ha been continuously operating a website on the disputed domain name since 2007.
Respondent has also placed evidence on record demonstrating that the Complainant has not been using the trade mark/name at least till 2014. Even otherwise, the Complainant with its own admission in the complaint and also as per annexures with the complaint started using the mark/name “Cars24” from 2015.
Furthermore, it is to be seen if the Respondent was using the disputed domain name or carrying on any business under the disputed domain name before the notice was given to the Respondent of the dispute at hand and has no intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. The Tribunal finds that the Respondent has satisfied this condition by establishing prior use of the Domain Name before any notice was given to him.
Thus the above facts and evidence establish that the Respondent has right or legitimate interest in the disputed domain name under INDRP para 4(ii).
III. Bad Faith
The Complainant for the first time in the rejoinder has made out a case of alleged talk with the Respondent in a bid to purchase the Domain Name, the said negotiation and meeting take place in the beginning of July 2017. It is important to mention that the Complainant did not lodge any report to with any authority. The Complainant also did not protest to the Respondent about its conduct by sending an email or notice, etc. The Complaint also did not protest to the Respondent about its conduct by sending any communication but filed the Complaint on 28 July 2017. Though a serious allegation has been labeled in the rejoinder, there is not even a single word in the entire complaint about the said incident. Since the complaint was filed within a few days of the said incident, it cannot be presumed that such an important aspect could have escaped Complainant’s mind. Further the affidavit filed in support does not have some specific information, therefore does not aspire any confidence.
For the reasons, Tribunal finds that the disputed domain name has not been registered and used n Bad Faith by the Respondent under the Policy.
Decision:
In view of the facts and circumstances and findings of the Arbitrator, the Complainant has not succeeded in its complaint and the same is dismissed.
.IN Registry of the NIXI is hereby directed not to transfer the domain name of the Respondent i.e. <cars24.in> to the Complainant.
The parties are left to bear their own cost.
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