Complainant: Raffles Internationl Limited, having its office at Raffles City Tower, Singapore
Respondent: Mahaveer Kushwaha, Kota, Rajasthan
Complaint:
A. The Complainant is Raffles International Limited, having its office at 250, North Bridge Road, Raffles City Tower, Singapore 179101 and they claim to be one of the largest luxury management companies in the world, with over 104 hotels worldwide in operation under the RAFFLES, Fairmont and Swissotel trademarks. It is claimed that the Complainant’s RAFFLES mark/name spans across the globe from the exotic destinations to vibrant cities with 11 hotels and resort properties in existence and 5 properties under development all over the world. It is also claimed that the Complainant also offers luxury residence for private ownership under the Raffles Residence trademark and is rated as among the best in the world. Reliance is placed on Exhibit-B.
B. It is claimed that the Complainant’s flagship property, the Raffles Hotel Singapore, was established in the year 1887 in Singapore and that the Complainant owns and/or manages hotels, resorts, properties and spas operating under the RAFFLES HOTELS & RESORTS, RAFFLES and RAFFLES SPA brands.
C. It is further claimed that the Complainant’s Raffles Hotels, Singapore, since its inception in 1887 has become well known, not only in Singapore, but also worldwide and it has played host to noted and distinguished persons Eike Joseph Conrad, and Rudyard Kipling, playwright, novelist and actor Noel Coward, actress Ava Gardner and Elizabeth Taylor, Queen Elizabeth II and Prince Phillip, as well as the Duke of Edinburg besides The Duke and Duchess of Cambridge, Prince William and Princess Kate. It is further claimed that the Complainant’s Raffles Hotel, Singapore, was designated as a National Monument by the Singapore Government in 1987.
D. It is claimed that the Complainant’s affiliate, Raffles Hotels & Resorts, was also at one period involved in the education sector and it from March 2008 to April 2012, established the Raffles School of Hospitality at Republic Polytechnic.
E. It is claimed that the Complainant’s brand RAFFLES is a premier hospitality brand and is synonymous with excellence in the hospitality business and that the Complainant and its affiliates have invested much time, effort and monies in the promotion and marketing of the RAFFLES trade mark and the RAFFLES family of trade marks in Singapore and worldwide which includes the Complainant’s corporate website at www.raffles.com which is available and accessible to the public all over the world. Further the Complainant also frequently advertises its services under the RAFFLES trade mark and the RAFFLES family of trade marks in various newspapers, magazines and printed publications. The mark/name RAFFLES is inextricably associated with the Complainant and the same connotes and denotes only the Complainant.
F. The complainants claim that they and their affiliates own and manage properties under the RAFFLES trade mark all over the world and they include:
a. Raffles Hotels in Singapore;
b. Raffles Grand Hotel d’Angkor, in Siem Reap, Cambodia;
c. Raffles Hotel Le Royal, in Phnom Penh, Cambodia;
d. Raffles Beijing Hotel in China;
e. Raffles Hainan, China;
f. Raffles Dubai in the United Arab Emirates;
g. Raffles Praslin, Seychelles;
h. Raffles Makkah Palace; Saudi Arabia;
i. Raffles Makati, Philippines;
j. Raffles Le Royal Monceau, Paris; and
k. Raffles Istanbul, Turkey.
G. Further, the Complainant claims that they have Raffles hotels and resorts in the pipeline in the following cities:
a. Jakarta, Indonesia;
b. Warsaw, Poland;
c. Jeddah, Saudi Arabia;
d. Sharm El Sheikh, Egypt; and
e. Shenzhen, China.
H. It is further claimed that the Complainant’s RAFFLES mark is also registered in many countries of the world. The Complainant, in order to secure protection for its reputed RAFFLES mark in India, has filed applications for registration of its mark/name RAFFLES which is pending before the Trademark Registry. It is claimed that the Complainant’s reputation and goodwill has not been limited to the shores of any one country and has flowed into India as there is a large expatriate population of Indians in Singapore through whom the RAFFLES mark/name is well known to the people in India besides a large number of Indians travel to Singapore every year as tourists and the Raffles hotel and the entire area that is recognized by them.
I. It is alleged that the Respondent has registered an identical domain name www.theraffles.co.in with the .IN Registry on November 19, 2012. It is alleged that the aforesaid domain name incorporates the Complainant’s well-known, prior used mark RAFFLES and prior registered Domain www.raffles.com. Further the Complainant has not licensed or otherwise authorized or given consent to the Respondent to use/utilize or commercially exploit the Complainant’s registered and well known trademark in any manner. The Respondent’s intention is clearly to take advantage of the goodwill and reputation enjoyed by the Complainant in its trade mark and domain name RAFFLES.
J. It is alleged that the Respondent has started operating a hotel under an identical name “The Raffles” in Kota, Rajasthan. It is also alleged that the Respondent’s adoption of an identical name in relation to an identical industry, i.e., the hotel business, is clearly in bad faith. Besides, the Complainant on coming to know of the Respondent’s clandestine activities has issued a warning letter putting them on notice of the Complainant’s rights in the RAFFLES mark.
K. The Complainants alleged that the intention of the Respondent was to leverage the strength of Complainant’s brand/domain name to divert traffic to their business and make illegal gains as they operate in an identical industry, i.e., the hotel business. It is also alleged that Respondents was aware of the Complainant’s mark/name RAFFLES. It is further alleged that the Respondent in order to cause confusion and deception among the trade and public to make unlawful gains have secured the disputed domain name. The complainants allege that the Respondent’s act in operating the website www.theraffles.co. in is misleading the general public who may get confused into thinking that their business is in some manner associated with the Complainant in India or approved, owned or licensed by the Complainant.
Response:
A. The Respondent submits that he was one of the website developers involved in setting up the business website of hotel “The Raffles”.
B. It is claimed that the domain name www.theraffles.co.in is controlled and operated by the partnership firm Madnani Developers of which Mr. Rahul Madnani is a partner and CEO, and is authorized to take all decisions on behalf of Madnani Developers. It is stated that the said partnership firm was formed in the year 2007 for the purpose of construction of the hotel “The Raffles”. Mr. Kushwaha is submitting that further it is stated ‘Respondent’ should include the ‘partnership firm’ Madnani Developers.
C. It is claimed that the respondent is a partnership firm with three partners, being Mr. Rahul Madnani, Mrs. Dolly Madnani and Mr. Ram Madnani, having office at Madnani Developers, c/o Hotel The Raffles, Station Road, Kota, Rajasthan.
D. It is claimed that the respondent has been actively involved in the business of management and running of hotel services in India by the name of “The Raffles” since the year 2012 in Kota, Rajasthan which is now well established and has earned immense goodwill and reputation in the trade circles and among the general public and that the respondent is a prior user of the mark/name. Further the hotel business of the respondent under the name The Raffles” is registered with all the relevant Government Authorities and has obtained all necessary approvals/ licenses required to operate the said business.
E. It is claimed that the adoption of the name “The Raffles” by the respondent is bonafide and in complete good faith and that the word “Raffle” has a dictionary meaning which means a gambling competition in which people obtain numbered tickets, each ticket having the chance of winning a prize.
F. It is claimed that the inauguration of the hotel was done on 23rd December 2012 by the UDH (Urban Development and Housing Department) Minister of Rajasthan Shri Shanti Dhariwal.
G. It is claimed that over a short span of time, the hotel of the respondent has grown tremendously and now includes a swimming pool, banquet halls and the famous Romy’s Dine Restaurant. Further, the hotel of the respondent, “The Raffles” has Corporate tie ups with numerous companies like ICICI bank, Vodafone, standard chartered, Ruchi Soya, Honda, etc, as well as tenders of companies like GAIL India as a result of the immense goodwill and reputation of the said hotel. Reliance is placed on ANNEXURE-G. It is also emphasized that the respondent has spent considerable amount of money on the advertisement and promotion of its hotel under the name “The Raffles”. It is claimed that subsequently, the respondent adopted and registered the domain name www.theraffles.co. in for its hotel business and the same was registered on 19th November, 2012. Further, its adoption of a ‘.in’ domain clearly shows that the same is localized in India and is operating only in India where the complainant has no presence.
H. It is alleged that the complainant has no presence in India and that the Respondent on the contrary is the prior user of the mark in India for its services and has acquired immense goodwill in the same by virtue of long and continuous use. That in a small place like Kota, where the respondent is based and is running their hotel, no one even knows about the complainant. It is alleged that the complainant does not even have a trademark registration in India leave aside the goodwill as has been alleged by it. It is emphasized that there can be no goodwill without use of the name or mark qua goods and/or services.
I. It is alleged that the complainant claims for registration of its mark in India is under opposition from third parties in India.
J. It is claimed that the respondent is the prior adopter/ user of the mark in India and has been using the same continuously and uninterruptedly since 2012, whereas the complainant has no presence whatsoever in India, is not known to the public in India and neither does it have any goodwill or reputation qua the mark ‘Raffles’ in India.
K. It is stated that there is no chance of confusion as the clientele of the complainant and the respondent are totally different inasmuch as the respondent is localized in India and is extremely well known in the trade circle due to its immense goodwill and reputation.
L. It is claimed that the respondent uses its name ‘The Raffles’ along with the unique tag line ‘A PLACE YOU FEEL LIKE HOME” which makes it totally different from the mark of the complainant.
FINDINGS:
I. The domain name www.theraffles.co.in was registered by the Respondent Mr. Mahaveer Kushwaha on November 19, 2012 whereas prior to 2012 the Complainant since 1991 had been using the mark RAFFLES ref Exhibit H. Further it can be seen that complainant have been operating a property with a name as RAFFLES Hotel in Singapore since 1887 hence the prior use of the name is established by the complainants.
II. Further the Complainant had registered the domain name www.raffles.com on December 06, 1995 i.e. 17 years prior to the Respondent’s registration for the domain www.theraffles.co.in. In the circumstances, it is obvious that the Complainant is prior in adoption and use of the name/ mark RAFFLES in relation to hotel and hospitality services.
III. Besides the complainant has filed sufficient evidence attached to the Complaint especially Exhibits C to E to show its prior adoption and use of the name RAFFLE.
IV. The Respondents have sought to rebut the claims of the complainants by citing some of their statutory registrations with various Govt./ Civic / Tax Bodies. I am afraid that this does not help the case of the respondents as none of the bodies referred to in Annexure E of SOD have any powers qua registry of a Trade name & Mark. The Authorities such as VAT, Labour Department, Central Excise, Tax Authorities, etc, are concerned with functions given to them by Legislature which does not include registering of Trade Mark. Moreover, the entire activity of the Respondents has been started only in the years 2012/2013. The Annexure-E filed by the Respondent is a Form ST-2 from Central Board of Excise and Custom where they are registered as “THE REFFELS”, and they have not taken any steps to get the same corrected.
V. The Hon’ble Tribunal by perusing Exhibits H, I, J, K notices that the complainant has filed its prior registrations globally and its application in India is prior to domain registration by the Respondent.
VI. This Tribunal also notices after perusing the Annexure J and Annexure N of the Respondent’s SOD and Evidence that the application of the Complainant to get a Trade Mark by the name RAFFLES registered in India is under opposition by various parties but those parties do not include the Respondent. Hence the Respondents cannot take a Piggy back ride on the opposition of others to the Trade name of the complainants.
VII. It can be seen, after perusal of Exhibit M, that not only the Hon’ble Delhi High Court but also Courts in Australia and Singapore have upheld the complainant’s rights in the Raffles mark.
ORDER
In view of the facts and circumstances stated supra this Tribunal holds that the respondent Mr. Mahaveer Kushwaha and Firm Madnani Developers do not have a plausible claim on the domain name www.theraffles.co.in hence this Tribunal directs the Registry to transfer the domain name www.theraffles.co.in to the complainants.
The Complainants too are free to approach the Registry and get the same transferred in their name.
There is no order as to the cost as no details of the cost / damages have been specified in the claim statement.
The original copy of the Award is being sent along with the records of this proceedings to National Internet Exchange of India (NIXI) for their record and a copy of the Award is being sent to both the parties for their records.
NEW DELHI
22/04/2015
V.SHRIVASTAV
(ARBITRATOR)
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