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INDIAN CASES WIPO (4)

INDIAN CASES WIPO (4)

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Published by: LEX-57 the lex engine on Dec 29, 2010
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WIPO Arbitration and Mediation Center 
 ADMINISTRATIVE PANEL DECISIONFunskool (India) Ltd. v. funschool.com CorporationCase No. D2000-0796
 
1. The Parties
The Complainant is Funskool (India) Limited.Its address is Tarapore Towers, VI Floor, 826, Anna Salai, Chennai-600 002, India.The Complainant is represented in this Administrative Proceeding by Jacob Kurian, Advocate, 18,Harrington Road, Chetpet, Chennai-600 031, India.The Respondent is Funschool.com Corporation of 980 Industrial Ave, Palo Alto, CA 94303,United States of America. A further address given is 1942, Zanker Road, San Jose, CA 95112,United States of America.The Respondent is represented in this Administrative Proceeding by Jay H. Begler, of BuchananIngersoll PC, 140 Broadway, 35
th
Floor, New York, NY 10005, United States of America. 
2. The Domain Name and Registrar 
The domain name in dispute is "funskool.com".The registrar is Network Solutions Inc. 505 Huntmar Park Drive, Herndon, Virginia 20170-5139,U.S.A. 
3. Procedural History
 
The Complainant lodged its Complaint by e-mail communication to the WIPO Arbitration andMediation Center (WIPO) on July 14, 2000. A hard copy of the Complaint was received by WIPOon July 20, 2000. WIPO acknowledged receipt of the Complaint on July 14, 2000. On July 20,2000, WIPO requested verification from the Registrar of the domain names in dispute. TheRegistrar of the domain name is Network Solutions Inc. The Registrar reported on August, 31,2000, that the registrant of "funskool.com" was "funschool.com Corporation", US. Theadministrative, contact, technical contact, zone contact, billing contact details of the Respondent,are: Boinapalli, Sashi of Red Fort Technologies Inc., 970 Industrial Avenue, Palo Alto, CA 94303,U.S.A., with the e-mail address of "funschoo@funschool.com". [The telephone number of thecontact was given as (877) 892 8558 and the fax number as (212) 656 1307].At the time of the Registrar’s report, "funskool.com" was in "Active" status.On August 28, 2000, a Notification of Complaint and Commencement of the AdministrativeProceeding was sent by WIPO. The notification informed the recipient of the formal date of commencement of the administrative proceeding, that being August 23; the last day for sendingthe Response to the Complaint. On September 14, 2000, the Response of the Respondent wasreceived by WIPO, which acknowledged receipt of the Response on September 19, 2000.In its Complaint, the Complainant asked for an administrative decision by a Sole Panelist. But inits Response, the Respondent asked for a panel of three. WIPO accordingly appointed a Panel of three Panelists.The Administrative Panel, consisting of Austin NeeAbeohe Evans Amissah of 1 WestgateTerrace, London SW10 9BT, United Kingdom as Presiding Panelist; Jonathan Hudis of Oblon,Spivak, McClelland, Maier & Neustadt, PC, 1755 Jefferson Davis Highway – Fourth Floor,Arlington, Virginia 22202, USA as Panelist; and Maninder Singh of Singh & Singh, Advocates, F-12, Jangpura Extension, New Delhi – 110014, India as Panelist, was appointed on November 16,2000, and the case file to date was duly transmitted by courier to members of the AdministrativePanel.In the opinion of the Administrative Panel this Panel is properly constituted.The language of the proceeding is English.The scheduled date for the submission of a decision by the Panel is November 30, 2000. 
4. Factual Background
The Complainant is a company incorporated under the Indian Companies Act 1956. It has itsprincipal place of business at Tarapore Towers, VI Floor, 826 Anna Salai, Chennai – 600 002,India. The Complainant has registered the trademark "funskool" with respect to 3 different sets of goods in India under the Indian Trade Marks Act, 1958. The first of the 3 registrations were madewith effect from September 1, 1986. The other 2 were both made with effect from August 20,1987. The Complainant had intended to register the domain name "funskool.com" and to operatea website under its own name "Funskool" to take advantage of the opportunities available throughthe Internet. But a search of the Network Solutions Inc. database showed that the Respondentcompany had registered not only "funschool.com" but had also registered "funskool.com" asdomain names, thus blocking the Complainant in its desire to register its name as a domainname. The Complainant has brought the administrative proceeding alleging that the Respondenthas registered and is using as a domain name a name identical to the Complainant’s name andregistered trademark; that the Respondent has no right or legitimate interest in respect of the
 
domain name in question, namely: "funskool.com"; and that the Respondent registered and isusing the disputed domain name in bad faith. 
5. Parties’ Contentions
A. ComplainantThe Complainant’s contention is that it is a company registered under the name Funskool (India)Ltd. under the Company laws of, and based in, India. It has registered the trademark"FUNSKOOL" in India under the Trade and Merchandise Marks Act 1958, of India. The firstregistration of the "FUNSKOOL" trademark was effective from September 10, 1986, [Trade MarkRegistration No. 460061B], with respect to Toys, Playthings, Kiddie Rides, Drive Games, Adultand Children’s Games, Educational-Aid Games and Games of Skill and all other games for amusement including Board Games (other than ordinary playing cards) and accessories, partsand fittings for use therewith] The second registration of the "FUNSKOOL" trademark waseffective from August 20, 1987, [Trade Mark Registration No. 477205], and was obtained inrespect of Paper and Paper articles, Cardboard and Cardboard articles, printed matter,newspaper and periodicals, books, bookbinding materials, paint brushes, typewriters and officerequisites (other than furniture), instructional and teaching material (other than apparatus),playing cards, printers type and cliches (stereotype). The third registration of the "FUNSKOOLtrademark was also effective from August 20, 1987, [Trade Mark Registration No. 477208], andwas obtained with respect to Clothing, including boots, shoes and slippers. Certificates of all threetrademark registrations were exhibited by the Complainant.The Complainant asserts that "Funskool" is its name and also its house mark and most importanttrademark. The Complainant also asserts that it is one of the largest and most well knowncompanies in India in connection with educational aid games, board games and all types of children’s games and toys, etc. The Complainant claims to have a foreign collaboration withHasbro Inc. USA, which it says is one of the largest toy manufacturing companies in the world.The Complainant does not elaborate on the nature of this foreign collaboration, nor does itprovide any written proof of such collaboration.The Complainant also states that it was incorporated under its present name in 1986, and startedcommercial production and sale of its products under the "FUNSKOOL" mark in 1988. Thus for 14 years Complainant claims it has been using that mark continuously in connection with itsactivities; and it claims to have spent substantial amounts in advertising and popularizing thetrademark "funskool" in connection with its products and services, especially with respect toeducational aid games and activities for children. The sales, according to the Complainant havecrossed Rs. 180 million per year. Due to the alleged substantial advertisement and sales it claimsit claims to have made, the trademark or service mark "Funskool" has allegedly acquiredconsiderable goodwill and reputation and is associated by the trade and public exclusively withthe Complainant and its products and activities in India and many countries around the world.According to the Complainant, it first learned of the existence of a possibly related company tothe Respondent in 1998, when a company was incorporated in India under the name"funschool.com" (India) Pvt. Ltd. (hereafter described as "Funschool (India)). Due to the confusionand passing off likely to take place from use of such a similar name the Complainant brought acivil action in a Court in India and obtained an interim injunction against Funschool (India).Funschool (India) then changed its name to Red Fort Technologies Pvt. Ltd. According to theComplainant, in the course of the legal proceedings in India, Funschool (India) claimed that theRespondent in this proceeding was its parent company and that the Respondent was the owner 

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