WIPO panel in reverse gear in race for 'maruti.com'

In Maruti Udyog Ltd v Maruti.com, a World Intellectual Property Organization (WIPO) panel has reversed an earlier decision and ordered the transfer of 'maruti.com' to Maruti Udyog. The panel held that the registrant's actions following the initial decision and other evidence demonstrated that he had registered the domain name in bad faith.

In 2000 Maruti Udyog, an automobile manufacturer based in India and owner of the registered trademark MARUTI, filed a complaint with WIPO against US resident Tella Rao based on his registration of 'maruti.com'. The WIPO panellist rejected the complaint holding that Rao's evidence that he had registered the domain name for his nephew, called Tella Maruti Srinivas, gave Rao rights or legitimate interests in the domain name. In addition, the panellist found that (i) Rao had not used the domain name for commercial purposes since the website simply featured a photograph purportedly of Rao's nephew, and (ii) he did not have any intention of tarnishing the MARUTI mark.

In early 2003 Maruti Udyog filed the same complaint with WIPO arguing that new evidence had come to light. A three-member panel examined the complaint and its first task was to determine whether it should refuse the complaint under the general principle that a case should not be re-litigated unless there are exceptional circumstances. The panel cited Grove Broadcasting Co Ltd v Telesystems Communications Ltd and identified "the discovery of credible and material evidence that could not have been reasonably foreseen or known at the time" as grounds for allowing re-litigation.

The panel also set out the following key points for determining admissibility of evidence in re-litigated cases:

• It must be shown that the evidence could not have been obtained with reasonable diligence for use at trial.
  
  
• The new evidence must be such that, if given, it would probably have an important influence on the result of the case, although it need not be decisive.
  
  
• The evidence must be apparently credible, although it need not be incontrovertible.

Maruti Udyog's new complaint alleged the following additional evidence:

• The name of the registrant of the disputed domain name had been changed from Rao's name to Maruti.com.
  
  
• Prior to the earlier decision, Rao's website depicted his nephew's photograph but following the decision, the photograph was removed and the website was changed to provide a portal to services offered by getfound.com. This, argued Maruti Udyog, constituted a use for commercial gain and could confuse internet users into thinking that the website was sponsored by, or affiliated with, Maruti Udyog.
  
  
• A number of Uniform Domain Name Dispute Resolution Policy cases had been brought against Rao since the earlier 'maruti.com' decision, which allegedly demonstrated a pattern of abusive registrations.
  
  
• The birth certificate produced as evidence to prove that Rao's nephew's name is Tella Maruti Srinivas was a forgery.

The panel allowed Maruti Udyog's new evidence, reversed the earlier decision and ordered the transfer of the domain name to Maruti Udyog. It held that the birth certificate failed to fulfil the requirements of the laws of India and consequently was of no evidential value. The panel also found that Rao's change of the domain name's use to a revenue producing website was not a legitimate or fair use. It rejected Rao's submission that his use was fair because his intention was to derive revenue for the benefit of his nephew, until he was able to run the website himself. Rao's conduct since the first decision, said the panel, suggested that he had registered and used the domain name in bad faith.

Ms V Neeraja, Anand & Anand, New Delhi