May not reply if US citizen files motion for summary judgment

Mayur N. Shah

Mumbai, Sept. 15

On August 15, Maruti Udyog lost its case to Mr Rao Tella, a US citizen and the present owner of the domain name, for transfer of the domain name to the auto major. As of date, Mr Tella can file a motion for summary judgment on his claim on or before September 18, and if he proceeds, Maruti has the option to file a reply. However, sources said Maruti Udyog is unlikely to do so.

In the US, there are several cases leading to right of domain name, especially to those URLs (Uniform Resource Locator) that are associated with big corporates.

In January 2003, Maruti Udyog had filed an arbitral complaint with the World Intellectual Property Organisation (WIPO) alleging that Mr Tella's domain name infringed Maruti's trademark, `MARUTI' and, hence, had the right to the domain name.

The plaintiff, Mr Tella said that his use of the domain name was lawful as the domain was at one point primarily used to post photos of a nephew named Maruti though later he converted the Web site to an engine portal. Mr Tella earned revenues from the site through an affiliated Web site that paid him every time someone clicked on to reach the affiliated Web site. However, Mr Tella is known to be a cyber squatter with a history of registering Web sites having the names of trade marked companies.

Other domain disputes

The US citizen had earlier lost domain name disputes to Indian companies such as Onida (electronic appliance manufacturer) and Hero Honda (two-wheeler manufacturer). Moreover, Maruti contended that Mr Tella registered the domain name in bad faith intent to profit from the use of its trademark.

`In commerce' usage

Countering, Mr Tella raised the argument that Maruti is not entitled to the anti-cyber squatting protections of the Anti Cyber Squatting Consumer Protection Act (ACPA) as Maruti does not use its mark `in commerce' in the US. The Lanham Act, of which the ACPA is a part, requires a trademark registrant to verify that its mark `is in use in commerce'; `commerce' means all trade (domestic and foreign), which may lawfully be regulated by the US Congress.

Maruti cannot be seen as having a trademark that is `used in commerce' in the US or in foreign trade with the US. Further, Maruti's Web site is not a point of sale (US customer to order a car online); the company has no evidence that anyone living in the US has bought a Maruti car.

The US district court of Maryland stated that the strictures of the Lanham Act created an arbitrary border demarcation. Maruti does not have a standing to bring its claim under the Lanham Act. Hence, the plaintiff's motion for partial summary judgment was granted.

At present, Maruti Udyog has its domain name registered under the URL site,

(This article was published in the Business Line print edition dated September 16, 2006)
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