National Arbitration Forum

 

ADMINISTRATIVE PANEL DECISION

 

Gnanam Telecom Centers Limited v. Mr. Kanagasabapathy Kumanan

 

File No. FA0202000104213

 

1.      The Parties

 

The Complainant in this administrative proceeding is Gnanam Telecom Centers Limited, located and doing business at 58 Marsh Wall, London E14 9TP, England.

 

The Respondent is Mr. Kanagasabapathy Kumanan, whose address is 208 Vaughan Road, Harrow, Middlesex HA1 4EB, England.

 

2.      The Domain Name and Registrar

 

The domain name in dispute is as follows: <gnanamtelecom.com>. The domain name was registered with Easyspace Ltd. on March 30, 2000.

 

3.      Procedural Background

 

On February 8, 2002, the National Arbitration Forum received from Complainant a Complaint for decision in accordance with the Uniform Policy for Domain Name Dispute Resolution, adopted by the Internet Corporation of Assigned Names and Numbers (ICANN) on August 26, 1999 (“Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999 ("Rules"), and the National Arbitration Forum Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (Supplemental Rules).

 

The Complaint was filed in compliance with the requirements of the Rules and the Supplemental Rules, payment was properly made, and the administrative Panel was properly constituted.

 

The instant Administrative Proceeding was commenced on February 8, 2002.

 

Respondent filed a Response on February 28, 2002.[1]

 

The decision of the Panel was due on or before March 22, 2002.

 

4.      Factual Background

 

Complainant Gnanam Telecom Centers Limited is a subsidiary of Vectone Distribution Holding Limited and part of the Vectone Group, which is an international telecommunications company headquartered in London. Complainant produces and sells prepaid local and international telephone calling cards in the United Kingdom and about 15 other European countries. The prepaid telephone card communications business of Complainant yielded annual turnover exceeding $13 million last year.

 

According to the Complaint, Complainant was issued European Community trademark registrations for the marks GNANAM and GNANAM TELECOM CENTERS and DESIGN on January 12, 2000. Complainant has used these marks since January 28, 1998. Complainant also owns registrations for the domain names <gnananamtelecomcenters.com>, <gnanam.net>, and <gnanam.ch>.

 

The Complaint further alleges that Respondent proposes to use the domain name <gnanamtelecom.com> to offer prepaid telephone calling cards to the public. Upon learning of the Respondent's registration of the disputed domain name, Complainant, on or around November 15, 2001, sent an e-mail to Respondent inquiring as to how much he wanted for transfer of the domain name. Respondent replied that he had not yet set a specific price for the name but invited Complainant to make a "reasonable" offer.  Complainant then offered to purchase the name for £500.00 (British pounds) but Respondent indicated that he could not transfer the name for anything less than £5,000 (pounds).

 

5.      Parties' Contentions

 

Complainant contends that the disputed domain name is confusingly similar to Complainant's domain name <gnanamtelecomcenters.com> and its marks GNANAM TELECOM CENTERS and GNANAM.  Complainant further maintains that Respondent has no rights or legitimate interests in respect of the domain name because: (1) he is not commonly known by the domain name in issue; and (2) Respondent has not used the domain name in connection with a bona fide offering of goods or services or engaged in legitimate noncommercial or fair use of the domain name.

 

Complainant finally maintains that Respondent's registration and use of the disputed domain name is in "bad faith" because: (1) Respondent is clearly using the name to attract, for commercial gain, Internet users to its web site by creating a likelihood of confusion regarding whether the Complainant is the source, sponsor, affiliate or endorser of the site; (2) there are circumstances indicating that Respondent registered the domain name primarily for the purpose of selling it to Complainant for valuable consideration in excess of out-of-pocket costs directly related to the domain name; (3) Respondent registered the domain name primarily for the purpose of disrupting Complainant's business; and (4) Respondent must have had knowledge of Complainant's business and marks when it registered the disputed domain name.

 

The Response contends there is no confusing similarity in this case because Respondent registered the disputed domain name prior to Complainant's registrations of its domain names and marks and that the term "gnanam" is not an unique word or a word created by Complainant, but, rather, is commonly understood among those who speak Tamil to mean knowledge, vision, and wisdom.

 

According to the Response, "[t]here are lots of Tamils living/scattered around in big cities around the world: from Europe, US, Canada, Australia, Middle East and of course South East Asia, initially the Respondent’s plan was to create a commercial-community website where all Tamils can get together and chat & talk (voice) via the Internet, eventually when broadband, wireless becomes available to more users moving into videoconferencing, mobile user groups, etc.  The Respondent tried to search/register domain names that suited this services but found almost all of them were taken, finally settled for the domain name <gnanamtelecom.com>, the word “Gnanam” was chosen because it is a Tamil word and in Tamil it is associated with meanings of Vision, Knowledge, Wisdom, Future Vision and also most importantly it is commonly used as a name by Tamils. The “telecom” was chosen because the main purpose of the site was to promote communications/to communicate by using future wireless telecommunications & computer technologies.  Respondent was genuinely trying to develop his business plan, but after the so called .com crash, Respondent found it impossible to generate enough funds to start his plans, so everything was put on hold until enough funds could be raised. *** At the time of registering the disputed domain, the Respondent was not aware of the Complainant’s existence as <gnanamtelecomcenters..com> or Gnaman Telecom Centers Limited."

 

The Response further argues that since Respondent does not sell prepaid phone cards through the disputed web site, it has not created any likelihood of confusion regarding whether Complainant is the source, sponsor, affiliate or endorser of the site.

 

 

6. Discussion and Findings

 

The Panel has carefully reviewed the evidence presented and determines that Complainant has met all the requirements set forth in para. 4(a) of the Policy. 

 

The Panel concludes that the disputed domain name <gnanamtelecom.com> is confusingly similar to the marks GNANAM and GNANAM TELECOM CENTERS and DESIGN. The domain name and marks look and sound alike and create the same commercial impression. They each feature either the term "Gnanam" or "Gnanam Telecom."

 

To the extent Respondent contends that Complainant does not have rights in the term "Gnanam" because it is a common word in the Tamil language, such argument must be rejected.  Even if "Gnanam" has a common meaning in Tamil, that does not mean that Complainant does not have rights in the term, as used in connection with particular services. There is no evidence that "Gnanam," as used in connection with a prepaid telephone communications business, is generic or otherwise not protectable.

 

Further, the fact that Respondent registered its domain name before Complainant registered its domain names is immaterial under the Policy, which focuses on whether Complainant has rights in a mark.  Finally, the evidence does not support Respondent's assertion that its domain name was registered prior to the registration of Complainant's marks.  Based on the documents reviewed, the EU registrations were issued on January 12, 2000, several months prior to Respondent's registration of the disputed domain name.  Moreover, even if Respondent's domain name was registered prior to registration of the EU marks, such fact would not defeat Complainant of rights in its marks, at least vis-à-vis Respondent, since there is no evidence that Respondent ever used the term "Gnanam Telecom" as a mark.

 

The Panel further concludes that there is no evidence that Respondent has rights to or legitimate interests in the domain name. The fact, as alleged by Respondent, that Complainant is not using its domain names is irrelevant. What the Policy requires in order to support a determination that Respondent has rights to or legitimate interests in the name is that Respondent is using the domain name in connection with a bona fide offering of goods or services. The evidence clearly establishes that Respondent is not using the domain name in connection with a bona fide offering of goods or services or that any of the other circumstances set forth in para. 4 © of the Policy is applicable.

 

With respect to the issue of "bad faith" registration and use, the Panel determines that the evidence does not support a finding that the domain name was registered primarily for the purposes of selling it to Complainant or for the purpose of disrupting the business of a competitor. Rather, the evidence indicates that it was Complainant who initiated discussions regarding the sale of the domain name and that Respondent is not yet a competitor of Complainant.

 

Respondent's web site, however, does advertise that it will soon be offering Gnanam telephone cards.  See Complaint, p. 11.  Under such circumstances, the Panel believes that Respondent may be found to be using the domain name in an intentional attempt to attract, for commercial gain, Internet users to its site by creating a likelihood of confusion with Complainant's mark as to the source of the telephone cards advertised on such site, within the meaning of para. 4(b)(iv) of the Policy. Further evidence of "bad faith" registration and use may be found in the fact that Complainant has been doing business in England since 1998 under the GNANAM and GNANAM TELECOM CENTERS marks, has enjoyed some degree of commercial success, and that Respondent is also located in England.  It is, thus, reasonable to conclude, despite argument to the contrary, that Respondent knew of Complainant and its marks at the time it registered the disputed domain name and sought to take advantage of the goodwill enjoyed by Complainant in its marks.

 

7.      Decision

 

In view of the above, the Panel grants Complainant's request for transfer to it of the domain name <gnanamtelecom.com>.

 

 

 

Jeffrey M. Samuels

Sole Panelist

 

Date: March 19, 2002