WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Funskool (India) Ltd. v. funschool.com Corporation

Case 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 Buchanan

Ingersoll PC, 140 Broadway, 35th 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 and
Mediation Center (WIPO) on July 14, 2000. A hard copy of the Complaint was received by WIPO
on 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. The
Registrar 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. The
administrative, 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 the
contact 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 Administrative

Proceeding 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 sending
the Response to the Complaint. On September 14, 2000, the Response of the Respondent was
received 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 in
its 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 Westgate

Terrace, 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 Administrative
Panel.

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 its
principal 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 made
with 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 operate
a website under its own name "Funskool" to take advantage of the opportunities available through
the Internet. But a search of the Network Solutions Inc. database showed that the Respondent
company had registered not only "funschool.com" but had also registered "funskool.com" as
domain names, thus blocking the Complainant in its desire to register its name as a domain
name. The Complainant has brought the administrative proceeding alleging that the Respondent
has registered and is using as a domain name a name identical to the Complainant’s name and
registered 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 is
using the disputed domain name in bad faith.

5. Parties’ Contentions

A. Complainant

The 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 first
registration of the "FUNSKOOL" trademark was effective from September 10, 1986, [Trade Mark
Registration No. 460061B], with respect to Toys, Playthings, Kiddie Rides, Drive Games, Adult
and 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, parts
and fittings for use therewith] The second registration of the "FUNSKOOL" trademark was
effective from August 20, 1987, [Trade Mark Registration No. 477205], and was obtained in
respect of Paper and Paper articles, Cardboard and Cardboard articles, printed matter,
newspaper and periodicals, books, bookbinding materials, paint brushes, typewriters and office
requisites (other than furniture), instructional and teaching material (other than apparatus),
playing cards, printers type and cliches (stereotype). The third registration of the "FUNSKOOL
trademark was also effective from August 20, 1987, [Trade Mark Registration No. 477208], and
was obtained with respect to Clothing, including boots, shoes and slippers. Certificates of all three
trademark registrations were exhibited by the Complainant.

The Complainant asserts that "Funskool" is its name and also its house mark and most important
trademark. The Complainant also asserts that it is one of the largest and most well known
companies 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 with
Hasbro 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 it
provide any written proof of such collaboration.

The Complainant also states that it was incorporated under its present name in 1986, and started
commercial 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 its
activities; and it claims to have spent substantial amounts in advertising and popularizing the
trademark "funskool" in connection with its products and services, especially with respect to
educational aid games and activities for children. The sales, according to the Complainant have
crossed Rs. 180 million per year. Due to the alleged substantial advertisement and sales it claims
it claims to have made, the trademark or service mark "Funskool" has allegedly acquired
considerable goodwill and reputation and is associated by the trade and public exclusively with
the 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 to
the 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 confusion
and passing off likely to take place from use of such a similar name the Complainant brought a
civil 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 the
Complainant, in the course of the legal proceedings in India, Funschool (India) claimed that the
Respondent in this proceeding was its parent company and that the Respondent was the owner
of the domain name "funschool.com". No documentary proof of the Indian proceedings was
attached to the Complaint.

The Complainant asserts that it intended to register "funskool.com" as a domain name and
operate a website under the "Funskool" name to take advantage of the opportunities available
through the Internet. However a search of the Network Solutions Inc. database showed that the
Respondent company had not only registered "funschool.com" as a domain name but that it had
also registered and blocked the Complainant’s name by registering the domain name
"funskool.com". The Complainant charges that this had clearly been done to prevent the
Complainant from obtaining registration of its own name as a domain name and also to take
advantage of the Complainant’s worldwide reputation and goodwill.

The Complainant asserts that the domain name "funskool.com" held by the Respondent is
identical to the trademark "Funskool", which has been registered as a trademark by the
Complainant. The Complainant further asserts that the Respondent has no right or legitimate
interest in respect of the domain name in question, which is the Complainant’s name and
registered trademark, and that the Respondent has registered and is using the domain name
"funskool.com" in bad faith. Finally, the Complainant asserts that the Respondent has adopted
the domain name "funskool.com" to attract, for commercial gain, Internet users to the domain
name in question, by creating a likelihood of confusion with the Complainant’s and registered
trademark, "Funskool". Internet users may be led to believe that the Respondent’s website is
affiliated to, sponsored or endorsed by, the Complainant. This is all the more significant in this
case, says the Complainant, as the users are mainly children and are easily deceived, confused
and misled.

For the reasons given, the Complainant requests the Administrative Panel appointed to issue a
decision that the contested domain name, that is, "funskool.com", to be transferred to the
Complainant.

B. Respondent

The Respondent makes the clarification that its name is "funschool.com" Corporation", not
"funskool.com Corporation". The Respondent contends that in January 1997, it decided to begin
an Internet content business under the name "funschool.com". It considered the choice of name
particularly appropriate because the website was devoted to school age children. The
Respondent obtained clearance to use the name "funschool.com" from the office of the Secretary
of State in California, where the Respondent Company is incorporated. Thereafter, Respondent
filed for and obtained a registration from the United States Patent and Trademark Office for the
name "funschool.com". The Respondent exhibited the details of the United States Patent and
Trademark Office registration of the trademark.

With regard to the allegation by the Complainant that the Respondent had registered and is using
a domain name which is identical or confusingly similar to the Complainant’s trademark, the
Respondent’s short answer is that "… while the Complainant may possess rights in India, it
cannot use the mark "FUNSKOOL" in the United States. To do so would infringe the
Respondent’s rights."

In answer to the Complainant’s case that the Respondent had no rights or legitimate interests in
the domain name, the Respondent states that its adoption of the domain name "funskool.com"
was legitimate and not tied to any effort to capitalize on the Complainant’s goodwill, which, the
Respondent states is non-existent in the United States and most countries. Given that the primary
audience for the Respondent’s content consists of school-age children, the Respondent
"determined that many of them might misspell ‘funschool’ by using the alternate form ‘funskool’".
According to the Respondent, it was not uncommon in the English language to use the word
"skool" in place of school. And that registration of the "funskool.com" domain name would cause
users who misspell "school" to be sent automatically to Respondent’s website. After considering
similar case situations, the Respondent determined that for defensive purposes – to protect
"funschool.com" from its near equivalent, namely, "funskool.com" – Respondent would and did
register the domain name now disputed.

The Respondent objects that the burden of proving the Respondent’s lack of legitimate interest in
adopting the "funskool.com" domain name lies on the Complainant, and that the Complainant has
failed to satisfy that burden of proof. The Respondent further asserts that self-serving allegations
by a Complainant, made without supporting proof, are insufficient for this purpose. GA Modefine
S.A. v. Sparco P/L (Case No. D.2000-0419) is cited as authority for this proposition.

With regard to the Complainant’s submission that the registration by the Respondent of
"funskool.com" was in bad faith, Respondent states that at the time it sought to register
"funschool.com" and thereafter, it was not aware of Complainant. That while the Complainant
attempts to imply a global business, in fact its primary operational base is in India. "A review of
Westlaw (a computerized database containing news stories from virtually all major papers)
confirms scant overseas activities." [see date of review: 9/12/00]. Further, the Complainant has
not exported products bearing the "FUNSKOOL" mark to the United States. That the Complainant
itself does not even mention the United States as a market. The Respondent further contends
that while the Complainant alleges spending substantial amounts in advertising and promotion of
its "FUNSKOOL" trademark, it has not alleged any spending relative to the United States, nor has
the Complainant presented evidence of advertising and promotion in that country. The
Respondent further asserts that no evidence has been submitted at all, which directly or indirectly
supports a "world wide reputation". On the other hand the Complainant itself has alleged that it
has sold goods in a few countries. "Moreover, while Complainant may seek to use the
"funskool.com" domain name, such use in the United States would be enjoined as a violation of
Respondent’s trademark rights."

The Respondent finally contends that the Complainant’s evidence of bad faith fails to meet the
legal criteria established in the Policy. In support of that contention the Respondent refers to
paragraph 4(a)(iii) of the Policy, and the case of World Wrestling Federation Entertainment, Inc.
v. Michael Bosman (Case no. D99-0001), and concludes that it is clear from the evidence
presented that the Respondent’s motivation in registering "funskool.com" was not to cause
confusion with the Complainant, who has no presence in the United States, but rather to ensure
that individuals who want to go to Respondent’s website, "but inadvertently type "SKOOL" instead
of "SCHOOL" get to the Respondent’s Web Site".

6. Discussion and Findings

As provided in paragraph 2 of the Internet Corporation for Assigned Names and Numbers
(ICANN) Uniform Domain Name Dispute Policy (hereafter referred to as "the Policy"), by applying
to register a domain name, the applicant represents, among other things that to its knowledge,
the registration of the domain name will not infringe upon or otherwise violate the rights of any
third party and that the registrant will not knowingly use the domain name in violation of any
applicable laws or regulations. The provision also places the responsibility for determining
whether its domain name registration infringes or violates someone else’s rights on the applicant
for registration.

As also provided in paragraph 4 of the Policy, the applicant for a domain name registration is
required to submit certain types of dispute to a mandatory administrative proceeding. The
applicable disputes are listed in sub-paragraph (a) of paragraph 4. It reads as follows:
Applicable Disputes

You are required to submit to mandatory administrative proceeding in the event that a third party
(a "complainant") asserts to the applicable Provider, in compliance with the Rules of Procedure,
that

(i) your domain name is identical or confusingly similar to a trademark or service mark in which
the complainant has rights; and

(ii) you have no rights or legitimate interests in respect of the domain name; and

(iii) your domain name has been registered and is being used in bad faith.

In the administrative proceeding, the complainant must prove that each of these three elements is
present.

It is clear from the provisions of paragraph 4 of the Policy that where a Complainant challenges
the registration or use of a domain name, to succeed, the Complainant has to establish all three
elements specified in paragraph 4(a) above. Thus, if the Complainant fails to establish any one of
the three elements upon which the Complainant has the burden of proof, its Complaint should be
denied.

The Respondent’s registration of the "Funskool" name as a domain name has been challenged
by the Complainant in terms of paragraph 4(a) of the Policy. The Respondent is accordingly
obliged to submit to a mandatory administrative proceeding.

The Complainant’s case in the proceeding has been fully set out under section 5 of this Decision
under the heading "Parties Contentions".

For the purposes of evaluation of the Complainant’s case it is only necessary to draw attention to
the following highlights. The Complainant has alleged and has adduced supporting evidence in
the case file that it presented that it is a company incorporated under the laws of India.
FUNSKOOL is its business name. The Complainant had registered and traded under the mark
FUNSKOOL from September 1986. Its business includes trading in toys, playthings and games of
all sorts for children and adults, educational-aid games and games of skill etc. The Complainant
has registered other trademarks for other products, none of which seems to be in the same line of
business as the Respondents. The trademark registrations were made in India. According to the
Complainant, its products bearing the trademark "Funskool" have been sold all over India and
have also been exported to various countries abroad, including Russia and Sri Lanka. There is no
proof attached to the Complaint, which would support these assertions. The Complainant claims
to have a foreign collaboration with the American Corporation, Hasbro Inc., which is one of the
largest toy manufacturing companies in the world. The Complainant, however, does not specify
the nature of the collaboration. The Complainant also states that it had spent substantial amounts
in advertising and popularizing the trademark "Funskool" in connection with its products and
services especially with respect to the educational aid games and activities for children. Further,
the Complainant states that the sales for these products have exceeded Rs.180 million per year.
At the exchange rate of Rs.47 to the US dollar, this works out at about US$ 3.8 million. Due to its
advertisement and sales, the trademark or service mark "Funskool", says the Complainant, has
acquired considerable goodwill and reputation and is associated by the trade and public
exclusively with the Complainant and its products and activities in India and many countries in the
world. No documentary proof of these assertions has been submitted. When in 1998, a company
was incorporated in India under the name "funschool.com (India) Pvt. Ltd.", due to the confusion
and passing off likely to take place from use of such a similar name, the Complainant brought an
action against that Indian registered company and obtained an interim injunction against it,
whereupon, that company changed its name to Red Fort Technologies Pvt. Ltd. In the course of
the legal proceedings the Indian Company claimed that the Respondent is the owner and user of
the domain name "funshool.com" Complainant has not submitted documentary proof of these
assertions either.

The Respondent’s answer to the case made out by the Complainant is simply that the
Complainant’s trademark "Funskool" is an Indian trademark the rights in which do not extend to
the United States. The Complainant, therefore, has no rights whatever, which could be infringed
or damaged by a Unites States corporation. It is correct that the name of the Respondent is
"funschool.com", and that this was registered as a domain name. The Respondent, however,
decided also to register as a domain name "funskool.com" because of the tendency of children
often to spell "school" as "skool". So that those who erroneously spelt "school" as "skool" should
be automatically directed to its website. The Respondent also states that in the English language,
the spelling of "school" as "skool" is not uncommon. The Respondent, therefore, states that the
adoption and registration of the name "funskool.com" is an outgrowth of the adoption, registration
and use of "funschool.com." Relying on the first come first served basis for registration of domain
names, the Respondent puts forward the defense that:

"… while the Complainant may possess rights in India, it cannot use the mark FUNSKOOL in the
United States. To do so would infringe Respondent’s rights."

It is against this background that the present case has to be considered. But before reaching that
point, it is necessary to consider briefly the issue of the burden and weight of proof, which lies on
the Complainant. As pointed out earlier, the burden of proving the three ingredients required by
the Policy is placed on the Complainant. To what degree must it discharge this burden in order
that an Administrative Panel may properly decide that the applicable standard has been
discharged? That is the question as to the weight. Anglo-American law, which on this matter
would apply to both India and the United States, the countries where both Complainant and
Respondent respectively, were incorporated, has two standards of proof: proof beyond
reasonable doubt, which is the standard which generally applies to criminal trials, and proof on a
balance of probabilities, which is a lower test, which applies in civil cases. Unlike in a criminal
case where the tribunal of fact has to be satisfied of the case of the prosecution beyond such
doubt as could be described as reasonable (not merely fanciful), the standard in the civil case is
to consider whether on balance the plaintiff’s or defendant’s case is more probable. This
proceeding being in the nature of a civil proceeding, the civil standard of proof should apply.

Whether or not the Complainant has a trademark or service mark, which is identical or
confusingly similar to the disputed domain name

Thus we come to the first element which the Complainant must prove, namely, whether the
domain name, which is the subject of dispute, identical or confusingly similar to a trademark or
service mark in which the Complainant has rights. It is important to keep in mind that the disputed
domain name is "funskool.com". It is not "funschool.com". In support of its assertion on this issue,
the Complainant puts forward its trademark registrations of the name "FUNSKOOL" is India made
in 1986 and 1987. The Complainant has said that it has traded under this name since its
incorporation. The Respondent does not dispute this, what it does is to dispute the extension of
the rights, which the Complainant says it has to the United States. To decide this point, the simple
question which has to be determined is whether the trademark in question must necessarily be
effective in the country of incorporation of the Respondent, in this case, the United States. The
question is relevant because the acquisition of a domain name of the ".com" type, which is the
type in issue in this case, confers a right, which is global in effect. As explained in the English
case of British Telecommunications plc. and Another v. One in a Million Ltd. and Others [1998] 4
All ER 476 at page 480, the name ".com" (distinguished from names like ".edu", ".gov" and ".org")
means that the organization is question is an international commercial organization. In the
Sanlam Case [Case No. D2000-0895] referred to earlier, the Presiding Panelist had occasion to
make the following remarks, which bear repetition here:

"The registration of the domain name prevents the person who has the trademark even in one
country from registering that mark as a domain name to promote its business as long as the
existing registration of the other continues. It may be that the person who first registered the
domain name had no knowledge of the existence of the mark, or has some right derived from
some other source, in which case different considerations would arise. But if the person has that
knowledge, and nevertheless chooses to register and use for commercial gain the trademark or
service mark which is well known internationally of another country, even though not officially
registered in his country, he must justify the registration and use of the domain name, if
challenged, or he runs the risk of offending against the Policy.

It is well to bear in mind that domain names being of an international nature, they should be
considered from an international perspective. The very use in a name with the ".com" designation
indicates that the domain name is an international commercial organization."

The Policy places no limitation on the operative extent of a trademark, which the Complainant
must show the disputed domain name to be identical or confusingly similar to. If the intention had
been that the Complainant’s right to complain about registration and use of a domain name which
is identical or confusingly similar to its trademark had to be limited to a trademark recognized by
the law of the Respondent’s country of incorporation or residence, the Policy would have said so
expressly. Were it otherwise, two possible results would follow: a person in a powerful country
like the United States could register and use domain names identical or confusingly similar to any
or all trademarks or service marks, however successful overseas, and claim that whatever be
their trade or service mark rights outside the United States, they do not apply to the United States
and therefore he is entitled to register that name for his own purposes, including its sale to the
owner of the trademark or service mark or diversion of international customers of the owner of the
mark to the registrant’s website in the United States. Yet the use of the domain name in a website
has consequences which are global in effect. Whether a respondent to a complaint protests its
intention to target only customers within its own national market or not the availability of its
material is by the very nature of the Internet is global and not national in effect. The alternative
possibility if the argument that a trademark for the purposes of these Administrative Proceedings
must be limited to trademarks recognized in the country of incorporation or residence of the
residence is that, a person in a country, however insignificant or obscure, can follow the same
procedure by registering the trademark or service mark of well-known international companies
and get away with a plea that the trademark or service mark does not apply to his country. That
would mean that trademarks and service marks, the validity of which is, in principle, regulated by
national laws, must be placed at the mercy of such domain name registrants who may choose to
use the name on a global basis to the detriment of the owner of the trademark or service mark,
would be intolerable. The Panel is conscious of the fact that it is not a national administrative
tribunal but an international one.

Whether a disputed domain name is identical or confusingly similar to a trademark or service

mark is a question of fact which ought to be answered without reference to whether the trademark
or service mark is operative in the country of residence or incorporation of the registrant of the
domain name. That such interpretation must be adopted is consistent with and supported by the
fact that two other stringent hurdles, apart from the identical or confusingly similar nature of the
trademark have been placed in the way of the Complainant succeeding even if the Complainant
surmounts this first one. A Complainant in an Administrative Proceeding calling for the transfer or
cancellation of the domain name may fail to obtain a decision in his/its favor on other grounds
which the Policy obliges him/it to prove, but not on the issue that the domain name is identical or
confusingly similar to an existing trademark or service mark. Looked at in that light, the disputed
domain name in this case, "funskool.com" is confusingly similar to the trademark, in which
Complainant appears to have rights. However, the Complainant has not submitted proof of the
breadth or extent of its trademark rights outside of the Country of India.

Whether or not the Respondent has any right or legitimate interest in the domain name

The next element which the Complainant must satisfy the Panel on in terms of paragraph 4(a) of
the Policy is proof by it that the Respondent has no right or legitimate interest in respect of the
domain name. With respect to this test, as the "Funskool" name is confusingly similar to the
domain name in dispute, once the Complainant alleges that the Respondent has no right or
legitimate interest in respect of that name and gives some prima facie proof that the name is not
generic, or that the Respondent has no obvious right or legitimate interest in the use of the name,
the onus shifts on to the Respondent to lead evidence in support of the claim that it has a right or
legitimate interest in respect of that name. Indeed, the examples given in the Policy of
circumstances which could show that a Respondent has a right or a legitimate interest in the use
of the domain, which will presently be stated, have been framed to indicate how a Respondent
could demonstrate to the Panel his right or interest, rather than in a manner for guidance of a
Complainant obliged to disprove the circumstances. It is this sense of a shift in the onus of
adducing evidence that the Presiding Panelist in the case of Sanlam Limited v. Selat Sunda
Incorporated [Case No. D2000-0895] used the summary expression that the onus of proving this
ingredient lies on the Respondent.

Paragraph 4(c) of the Policy gives the examples, obviously intended not to be exhaustive, of the
facts which a Respondent could advance in resisting an allegation that it had no rights or
legitimate interests in respect of a domain name. They illustrate the type of defenses that a
Respondent could raise. They are as follows:

"(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the
domain name or a name corresponding to the domain name in connection with a bona fide
offering of goods or services; or

(ii) if you (as an individual, business, or other organization) have been commonly known by the
domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making legitimate noncommercial or fair use of the domain name, without intent for
commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at
issue.

Can the Respondent avail itself of any of these defenses in the circumstances of this case?

Taking Example (ii) first, the defense, which should be established, is whether the Respondent
(as an individual, business, or other organization) has been commonly known by the domain
name, even if it has acquired no trademark or service mark rights. The Respondent does not
show this. What the Respondent appears to show is that as it is known by the name
"funschool.com Inc."; and as in the English language, "school" is commonly spelt, especially by
children making a mistake, as "skool"; it is therefore entitled to register the "funskool.com" domain
name. The Respondent also says that it adopted the name because as it traded in children’s
games, incidentally, as also does the Complainant, the children often make a mistake in spelling
"school" as "skool" and therefore the Respondent wanted such enquiries with the wrong spelling
to be automatically diverted to its website. One is left to wonder how the Respondent got to know
that children in search of its website had been spelling "Funschool" as "Funskool". The best that
can be said for the Respondent is that both words are pronounced in an identical manner.

Example (i) posits a situation where the Respondent, before notice to it of the dispute between
the Parties, had used, or made demonstrable preparations to use, the domain name, or a name
corresponding to the domain name, in connection with a bona fide offering of goods or services.
A problem, which the Complainant faces in connection with this second test, arises from the
obvious similarity in the pronunciation of its name and trademark "Funskool" to the Respondent’s
name of "funschool.com". The similarity is so obvious that when a company in India was
registered not with a name identical to the Complainant’s own, but with the name "funshool.com
(India) Pvt. Ltd.", the Complainant says that it took action to secure an injunction against that
company, as it says in its Complaint, "Due to the confusion and passing off likely to take place
from use of such a similar name". The respondent company in that case was obliged to change
its name. Just as the Complainant could complain in the action in India that a company with the
word "Funschool" in its name is likely to confuse the public on account of the similarity of that
name to the Complainant’s own name of "Funskool", and get an order restraining the continuation
of the company under that name, so also can a person who can claim that its name under which
it has been doing business is "funschool.com" say that the Complainant’s name is so similar to
that company’s own name and registered domain name as to cause confusion to its customers.
And it is in this respect that the principle of first come first served becomes of crucial importance
in domain name registrations.

Now, paragraph 4(c)(i) of the Policy excuses not only users of, or persons who had made
demonstrable preparations to use, the identical domain name before the Respondent had notice
of the current dispute but also those who had been using or had made demonstrable preparations
to use a domain name which corresponds to that domain name. It is here that the Respondent
can claim, as it does, that it had been using a name, that is "funschool.com" which corresponded
to the domain name "funskool.com" in association with the bona fide offering of goods and
services before knowing of the present dispute. Indeed, the Respondent can, on the basis of the
facts adduced, go further and say that it was using even the identical domain name
"funskool.com" in such context before it became aware of the present dispute. On that claim, the
questions, which arise for consideration are:

(a) When did the Respondent become aware of the present dispute?

(b) Whether the Respondent was using the "funskool" name in association with a bona fide offer
of services and goods before it became aware of this dispute.

With respect to when this dispute started, the Complainant states in its Complaint that it is when it
intended to register the domain name "funskool.com" and operate a website under its own name
"Funskool" to take advantage of the opportunities available through the Internet that it discovered
that, "… a search of the Network Solutions Inc. database showed that the Respondent company
had not only registered its own name "funschool.com" as a domain name but that it had also
registered and blocked the Complainant’s name by registering the domain name "funskool.com"’."
It would appear that the database search was conducted in July 2000. There is no evidence of
the Complainant attempting to contact the Respondent before this UDRP proceeding was
brought. The Respondent opens its Response with the words that, "On August 28, 2000,
Respondent received Notification of Complaint and Commencement of Administrative Proceeding
from WIPO Arbitration And Mediation Center (‘Center’) by e-mail informing the Respondent that
an administrative proceeding has been commenced by the Complainant..." That is consistent with
WIPO’s own record in the Case File.

The crucial question, therefore, is whether the Respondent was using, or had made demonstrable
preparations to use, the "funskool" name in association with a bona fide offer of services and
goods before it became aware of this dispute. It is correct that except for the statement in the
Response that the Respondent had in January 1997, decided to begin an internet content
business under the name "funschool.com", the Respondent does not indicate in the body of its
Response that this decision was ever translated into fact. But one exhibit (Exhibit C) submitted by
the Respondent to show that the website was devoted to school children comes to the
Respondent’s rescue. Exhibit C, is an article purporting to have been written on August 9, 1999,
in praise of "funschool.com" as a popular games station to children and women. Presuming that
this date is correct, then clearly the Respondent was offering some bona fide service under a
name similar to "Funskool" some considerable time before the dispute in this case was started.
On this issue, the Complainant’s case must fail.

That being the case, it is not necessary to consider Example (iii), which is merely another
possible defense which the Respondent could raise on the question of its right or legitimate
interest in the disputed domain name.

Whether or not the Respondent has Registered and is Using the Domain Name in Bad Faith

In view of this decision that the Respondent has shown that it was using a name corresponding
name to the disputed domain name before it received notice of the present dispute, it is not
necessary to further consider the third element on which the Complainant must satisfy the Panel.
For the purposes of any future consideration of the ICANN Policy by paragraph 4(a)(iii) of the
Policy the appearance of usage by a Respondent in the bona offering of goods and services
under the same or a corresponding name to the disputed trademark on the one hand and
registration and use that the domain name in bad faith should be touched upon. In this regard
paragraph 4(b) of the Policy gives a number of circumstances, but without limitation, which if
found by the Panel would amount to registration and use of a domain name in bad faith. They are
as follows:

(i) circumstances indicating that you have registered or you have acquired the domain name
primarily for the purpose of selling, renting or otherwise transferring the domain name registration
to the complainant who is the owner of the trademark or service mark or to a competitor of that
complainant, for valuable consideration in excess of your documented out-of-pocket costs directly
related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or
service mark from reflecting the mark in a corresponding domain name, provided that you have
engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a
competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain,
Internet users to your web site or other on-line location, by creating a likelihood of confusion with
the complainant’s mark as the source, sponsorship, affiliation, or endorsement of your web site or
location or of a product or service on your web site or location.

Respondent admits that it was aware of the name and trademark of the Complainant at the time
that it registered the domain name in dispute. There is the case, which the Claimant brought
against the company, which was registered, in India under the name of "funschool.com" (India)
Ptv. Ltd". The mere fact that the defendant to the action which arose therefrom is alleged by the
Complainant to have stated that its principle was a company in the US with the Respondent’s
name exactly, may not by itself be a reason for attributing to the Respondent responsibility for the
events in India. But there is also the fact alleged by the Complainant, but not supported by
documentary evidence, that when the interim injunction was granted, the affected Indian
company changed its name to Red Fort Technologies Pvt. Ltd. Now, from the extract from the
"WHOIS" record of the registration of "funskool.com" domain name which is exhibited in the
Respondent’s own Response, the "Administrative Contact, Technical Contact, Zone Contact,
Billing Contact" is given as "Boinapalli Sashi (SB3319) "funschoo@funschool.com", Red Fort
Technologies Inc. …". [emphasis supplied] The record in the "WHOIS" databank was created on
October 2, 1998, the very year of the action in India. The name of the company originally
incorporated in India is the same as the Respondent’s, the name to which the company
registration is changed is the same as the corporation in California, US of Boinapalli Sashi, the
administrative contact for the Respondent. It cannot be a coincidence that the company against
which the interim injunction was given and the Respondent share these similarities. Moreover, in
the field of games, whether for children or adults, the Complainant and Respondent are
competitors. There is, therefore, prima facie evidence which would support a claim that, having
lost the registration of the name it originally intended for the Indian company to the Complainant,
the Respondent had, in its belief that the Complainant’s trademarks did not extend to the United
States, in turn taken the subsequent step to register the disputed domain name for the purpose of
disrupting the business of a competitor. Whether this is the primary purpose or an equal or
subsidiary purpose is a matter for argument. The question is whether the sense in which the
expression bona fides is used in connection with the offer of goods and services in paragraph
4(c)(i) is used in the same as when used in paragraph 4(b) of the Policy. It would, nevertheless,
seem as if the possible inferences that could be drawn from the history and competitive character
of the Parties, if correct, give some grounds for concern about the Respondent’s bona fides with
respect to paragraph 4(b) in this case. These observations are made to illustrate a problem area
in the examples given in the Policy.

With respect to this decision, however, the Respondent had been offering a bona fide service
under a name corresponding to the domain name "funskool.com" before it had notice of the
current dispute. Additionally, the Complainant has not come forward with sufficient evidence of
the Respondent’s bad faith registration and use of the contested domain name. This case must
end, therefore, in the refusal of the Complainant’s request for a transfer of the domain name to it.

7. Decision

For the above reasons, the Complainant’s request for the transfer to it of the disputed domain
name is refused.

A. N. E. Amissah
Presiding Panelist

Jonathan Hudis
Panelist

Dated:

Dissenting Decision of Maninder Singh

6. Discussion and Findings

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(1) That the domain name registered by the Respondent is identical or confusingly similar to a
service mark or trade mark in which the Complainant has rights; and

(2) That the Respondent has no legitimate interests in respect of the domain name; and

(3) That the domain name has been registered and used in bad faith.

Identical and confusing similarity

The record clearly shows that the contention of the complainant that the domain name
"funschool.com" registered by the respondent is identical and/or confusingly similar to its
trademark 'funskool' in which the complainant has rights, is correct.

Legitimate interest

The following facts which have been stated by the complainant in the complaint have not been
denied by the respondent:

(a) The complainant has in its favor two registrations under the Trademarks Act in India, the first
being September 10, 1986, in class 28 and the second being dated August 20, 1997, in class 25
for the mark "funskool".

(b) The respondent had, in the year 1998, incorporated a company in India with the corporate
name "funschool.com" (India) Pvt.Ltd.". The complainant had initiated legal proceedings against
the respondent for using the name "funschool". The respondent gave up its corporate name
"funschool.com" (India) Pvt.Ltd." and changed the name of its company to "Red Fort
Technologies Pvt. Ltd."

(c) The respondent has registered two domain names, i.e., (i) "funschool.com" and (ii)
"funskool.com". The respondent has created a link between these two domain names. Whenever
anyone types "funskool.com" on the net, he automatically gets connected to "funschool.com".

The above-mentioned facts are not denied by the respondent. The existence of the hyperlink
between the above-mentioned two domain names registered by the complainant is also correct,
as it is the actual position on the net.

The respondent in its reply has contended that it has obtained a trade mark registration for
"funschool.com" from the United States Patents and Trademarks Office and further stated that
Attachment D to the response is a print-out from the United States Patent and Trade Marks Office
detailing the registration. Since the Attachment D was only a website print-out and not a copy of
the certificate of registration, I had endeavored to open the website of USPTO when, to my
surprise, I found that the USPTO had declined the application of the complainant for trade mark
registration for "funschool" on November 3, 2000. It would be relevant to notice here that this
material fact has not been disclosed by the respondent in its response.

The respondent in its response has relied upon the provisions of Section 1115 of the Lanham Act
(the Federal Trademark Act) for claiming exclusivity of rights for the user of the mark for which
registration has been obtained. I am afraid that this provision, in view of the admitted facts of the
present case, does not help the respondent. It is well settled that mere registration of a trademark
is no defense in an action for passing off. Similarly, for registration of a domain name, it is not
necessary for an applicant to establish that the products/services of the applicant are
sold/provided all over the world. The concept of different territories which is well accepted in the
law governing trade mark registrations is completely unknown and incompatible in the case of
registration of domain names. It is sufficient for any applicant to continue to have entitlement for
the registration of the domain name if it establishes that the applicant has some rights and/or
legitimate interest in the domain name. In other words, for establishing rights and legitimate
interests in a particular domain name, an applicant is not required to establish worldwide
reputation of its products/services. Thus, the contention of the respondent that the complainant
has not provided any evidence of sale of its products in America and, as such, it has no right or
legitimate interests in the domain name "funskool.com", simply deserves to be rejected. I am
further of the view that the respondent is also not entitled for the benefit of the well accepted
concept of 'honest concurrent user' inasmuch as the registration of domain name "funskool.com"
by the respondent for the mere use as a hyperlink (after the respondent was fully aware of the
business activities of the complainant and had given up the corporate name of "funschool.com"
(India) Pvt.Ltd.") is obviously for attracting internet users to its website by creating a confusion.

Under these circumstances, I am clearly of the opinion that the respondent has no legitimate
interest in the domain name "funskool.com", which is admittedly the registered trademark of the
complainant since 1986, and is being used by the respondent only as a hyperlink. It is, thus, clear
that it is the complainant who has the rights and legitimate interest in the domain name
"funskool.com".

Bad faith

I am inclined to accept the reasons given by the complainant for establishing that the registration
by the respondent is in Bad Faith. The respondent does not deny the statement of the
complainant that on being objected to through legal proceedings in India, the respondent had
given up its corporate name "funschool.com" (India) Pvt.Ltd." in the year 1998, by changing its
corporate name to "Red Fort Technologies Pvt.Ltd.". It is also a matter of record that the
respondent was aware of the existence of the trademark of the complainant viz., "funskool"
before it registered the above-mentioned two domain names. It is also true that the second
domain name, i.e., "funskool.com" is actually being used as a hyperlink for taking Internet users
to the website of the respondent, viz., "funschool.com". It is also available on the website of
USPTO from where the respondent has taken a print-out for claiming the benefit of registration,
that its application for registration for the trade mark "funskool" stands rejected by USPTO. This
material fact has not been disclosed by the respondent. Thus, in my view, the registration of the
respondent is in Bad Faith.

7. Decision.

I respectfully disagree with the views of the other members of the Panel. I, as a member of the
Panel appointed in this case, am of the view that the Respondent's domain name "funskool.com"
should be transferred to the Complainant.

Maninder Singh
Panelist

Dated: November 30, 2000