The Hindu Business Line : When your address is at stake

When HPCL failed to renew its hindpetro.com, there were other takers for the name... who argued that `hind' and `petro' are generic terms for 'skilled farmer' and `rock'. How did HPCL get its domain address restored? Read on...

THE site www.wipo.int is of the World Intellectual Property Organisation (WIPO). It is "dedicated to promoting the use and protection of works of the human spirit", informs the `about us'. But let's move over to the `WIPO Arbitration and Mediation Center', because that's where the action is, especially for those interested in tracking how IP rights are protected.

The Center was established about a decade ago in Geneva to offer alternative dispute resolution options, "in particular arbitration and mediation, for the resolution of international commercial disputes between private parties". Its procedures have been developed "by leading experts in cross-border dispute settlement" and are "widely recognised as particularly appropriate for technology, entertainment and other disputes involving intellectual property".

A case that came up before the WIPO recently was Hindustan Petroleum Corporation Ltd vs Neel Punatar, the decision on which came on August 15, 2004. HPCL needs no introduction, yet here is a snatch from the order: It "is in the business of refining and marketing petroleum products. It is the second largest company in India with a turnover of $11,000 million in fiscal year 2002-2003. It has 4,800 petrol pumps, 17.3 million consumers and 17 registered domain names in its name." You can know about the company's past too - that it got its present name in 1974 when the Indian entities of Esso and Lube India were nationalised, and that it grew bigger in 1978 after taking in Caltex.

HPCL had registered the domain name hindpetro.com in 1996, because it was something that reflected its common abbreviation and also `ticker tape representation' on the NSE and BSE. A lapse appears to have happened in 2003 when the domain name was not renewed. How naïve, you wonder, but HPCL said it had relied on a software company to do the job. Only subsequently did HPCL `discover' that the name had been registered by Domainsite.com in favour of Neel, the Respondent, of Petaluma, California.

The harsh truth perhaps took time to sink in the head of the oil major and at last on May 12 this year, HPCL sent a complaint to WIPO. However, it was `administratively deficient' and it took two more weeks for the company to satisfy all the formal requirements of the Uniform Domain Name Dispute Resolution Policy, as also the appropriate Rules of WIPO.

In its complaint, HPCL made a strong case that hindpetro belonged to it: that it had coined the word "with `hind' meaning Hindustan for India and `petro' for petroleum products"; that "the mark has been used continuously since 1974"; and that "the domain name is identical to its trademark".

Neel has "no legitimate interests in the domain name," argued HPCL. A case of use in `bad faith', which can lead to use of the mark as `passing off'. HPCL informed WIPO of Neel's voice mail on July 17, 2004, "seeking $24,000-25,000 for transfer of the domain name" - a sum seeming to be "in excess of likely out-of-pocket costs".

What did Neel have to say on the issue? He said he relied on "the non-registration of the mark" in the US and stated that WIPO's Policy "does not arbitrate on claims on trade names". Neel also argued that `hind' and `petro' are "also generic terms for `skilled farmer' and `rock,' respectively," and that he intended to use the domain name hindpetro "for a rock collection and informational site." He claimed, "The fact that the Complainant is a big company in India does not automatically mean he was aware of their rights".

The Arbitration and Mediation Center reasoned that the domain name was `identical or confusingly similar' because it was identical to a trademark in which HPCL has rights. The name "has clearly been used continuously and extensively as an abbreviation" by the company and in the bourses. "As such, the reputation acquired through such use would be capable of protection as a trademark at common law."

Also, the Center found Neel to have no "rights or legitimate interests" in the domain name, based on the evidence made available. "There is no evidence that the Respondent is commonly known by the domain name even though it acquired no trademark or service mark rights," noted the Center.

There was no evidence that Neel was making "a legitimate non-commercial use of the domain name without intent for commercial gain to misleadingly divert consumers or tarnish the trademark or service mark in issue." One interesting observation of the Center was that the explanation proffered by Neel for the choice of the name relied on "a less well known derivation for the roots of the portmanteau word in question".

On the question of `bad faith', what went against Neel was "evidence of registration of the domain name for the purpose of selling it to the Complainant for valuable consideration in excess of the Respondent's apparent out-of-pocket expenses."

The decision, therefore, went in favour of HPCL - "that the domain name hindpetro.com be transferred to the Complainant."

Perhaps, luck never ceases to work in favour of oil companies.

dmurali@thehindu.co.in

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