India’s Infrastructure Company Machani Infra Development Corporation came up with UDRP over Machani.com. The Company has official website at www.MachaniGroup.com and was looking to upgrade to one word domain <Machani.com> through legal process of domain name dispute. But the most surprising part was that there have been only one Trademark Application ever made before any Trademark Office globally and that was not by the Complainant but the Respondent. Though Trademark or otherwise common law rights are must for any UDRP Complaint to be accepted and analysed for other UDRP Clauses.
(The above application was made before USPTO, but not pursued as a last name cannot be Trademarked unless it is well known)
But here the Infra Company came with the UDRP Complaint without any registered Trademark rights, instead claimed common law rights since 1950s when their founder Mr Machani Sommappa was awarded by Indian Government for social contribution to the society. Later, in 1970s the businesses were named as Somappa or M.G. but nowhere word Machani was used. They registered the domain name MachaniGroup.com in 2010, followed by formation of various Companies 2013 onward, that is, the evidence as to use of Machani in commercial sense was visible in 2013 only.
On the other hand, the domain registrant’s WHOIS information read name as ‘Anand K.’ and the domain registration date was June 25, 1999. Though the full name of the registrant is Mr Anand K. Machani. The same is evidence from the above USPTO Trademark record as well. But the Company showed ignorance about the full name of the Respondent.
Here, the domain registrant is protected under UDRP, as clause 4(c)(ii) provides that a domain name registrant will be held to have legitimate interests in the domain name, if:
(ii) 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
Further, once you are known by the domain name, NO Bad Faith can be held against a domain registrant to have registered the domain name, back in June 1999, only because it happened to be his last / family name. The domain registrant was able to provide all the evidence as to his identity starting way back from 1997, when he was issued his first driving licence in USA. Moreover, though the domain name was passively held since last few years but it was being used for emails. Even the WHOIS email ID was based upon the disputed domain name.
In an UDRP / Domain Dispute proceedings, the Complainant / Trademark holder is required to prove all the three conditions:
- The domain name is identical or similar to the registered Trademark under which the Complainant Company has rights otherwise has common law rights.
- The domain registrant does not have any rights or legitimate rights in the domain name.
- The Domain Name was registered and is being used in Bad Faith.
But the Complaint miserably failed to prove all the three conditions, and RDNH (Reverse Domain Name Hijacking) was upheld.
Though, normally denial of the Complaint does not mean that the matter would be upheld as RDNH, but he panelist was largely concerned with the fact that the Company on coming to know that domain registrant is known by the domain name, instead of withdrawing the Complaint, it pressed for the additional submissions, which even included strange arguments. Also read story at: https://domainnamewire.com/2021/06/23/indian-firm-tries-reverse-domain-hijacking-a-common-surname/
Complete decision is provided below:
WIPO ADMINISTRATIVE PANEL DECISION
Machani Infra Development Corporation Private Limited v. K, Anand
UDRP Case No. D2021-1352
- The Parties
The Complainant is Machani Infra Development Corporation Private Limited, India, represented by IndusLaw, India.
The Respondent is K, Anand, United States of America (“United States”), represented by Ankur Raheja of Cylaw Solutions, India.
- The Domain Name and Registrar
The disputed domain name <machani.com> is registered with Network Solutions, LLC (the “Registrar”).
- Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 3, 2021. On May 3, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 3, 2021, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 6, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 26, 2021. The Response was filed with the Center on May 19, 2021.
On May 24, 26 and 27, 2021, the Complainant sent further communications to the Center, and on June 9, 2021 it submitted a supplemental filing, and the Respondent submitted further communications to the Center on May 25 and 26, 2021, and on June 11, 2021.
The Center appointed Assen Alexiev as the sole panelist in this matter on May 31, 2021. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
The Panel does not accept the supplemental filing of the Complainant. As duly noted by the Center in response to the Complainant’s unsolicited supplemental filing, the Rules provide for the submission of a Complaint by the Complainant and a Response by the Respondent, and contain no express provision for supplemental filings by either party, while paragraphs 10 and 12 of the Rules grant the Panel sole discretion to determine the admissibility of supplemental filings (including further statements or documents) received from either Party. As summarized in section 4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), unsolicited supplemental filings are generally discouraged, unless specifically requested by the Panel. In all such cases, Panels have repeatedly affirmed that the Party submitting or requesting to submit an unsolicited supplemental filing should clearly show its relevance to the case and why it was unable to provide the information contained therein in its complaint or response (e.g., owing to some “exceptional” circumstance). In the present case, the Complainant has failed to show that its unsolicited supplemental filing contains any new information that it had not been able to submit with the Complaint, especially in view of the fact that the Complainant states in its communication of May 26, 2021 that it had been preparing the Complaint for almost one year. The Panel also notes that the Complainant’s supplemental filing, even if it had been accepted, would not have changed the Panel’s conclusions on the merits of the Complaint. For similar reasons, the Panel will not accept the supplemental filing submitted by the Respondent.
- Factual Background
The Complainant is a member of the Machani Group of India, which includes several businesses in the fields of manufacturing, real estate and infrastructure, agriculture, education, investment, engineering, information technology and others.
The Complainant is the owner of the domain name <machanigroup.com> registered on December 8, 2010, which resolves to the Complainant’s main website that has been active since 2013.
The disputed domain name was registered on June 25, 1999. There is currently no active website at the disputed domain name.
- Parties’ Contentions
The Complainant states that it is the flagship company of the Machani Group, which was founded in 1940 by Mr. Machani Somappa, an Indian industrialist, educationist, and social worker. In 1954, the Government of India honoured Mr. Machani Somappa with the award of Padma Shri, the fourth highest Indian civilian award for his contributions to the society, placing him among the first recipients of the award. In 1960, Mr. Machani Somappa established Stumpp Schuele & Somappa, a joint venture with renowned German spring manufacturers, Stumpp + Schuele. Several other ventures of the Machani Group with the initials “MG” as part of their names were incorporated starting from 1973 and they are operating till now. The Complainant states that the Machani Group is well known and one of the oldest family business conglomerates in India.
The Complainant claims to have unregistered trademark rights in the trademark MACHANI. In support of this claim, it submits that ever since the Machani Group’s inception in the year 1940, the house mark and brand identity MACHANI has been continuously and extensively used and promoted to represent its diverse business offerings. The name “MACHANI” has also been used by nine of the Group’s businesses and ventures, including the Complainant, as their trading name in the past several years. The Complainant notes that it is also the owner of the domain names <machanirobotics.com>, <machanisomappa.com>, <machanigroup.co.in>, <machanigroup.in>, <machanigroup.co>, <machanigroup.org>, <machani.net>, <machanisvasa.com>, <machaniinfra.com>, <machaniananda.com>, <machanirobotics.in>, <machanisomappa.in>, and <machaniuniversity.com>. As stated by the Complainant, these domain names have been acquired for the purpose of future use by and for the benefit of the different businesses of the Machani Group and its member entities.
According to the Complainant, the MACHANI trademark has acquired a distinctive character and has gained enormous popularity, reputation and goodwill in relation to the products and services provided under it, and has come to be exclusively associated and identified with the Machani Group and its Group entities among relevant section of the trade and the public in India.
The Complainant states that it approached the Respondent in an attempt to purchase the disputed domain name in 2019-2020 and offered to pay to the Respondent USD 10,000 for it, but the Respondent refused the offer.
The Complainant submits that the disputed domain name is identical to the MACHANI trademark and confusingly similar to the Complainant’s domain name <machanigroup.com>.
According to the Complainant, the Respondent has no rights or legitimate interests in respect of the disputed domain name, because the Respondent is not known by or associated with the name MACHANI, and must have been aware of the Machani Group/Complainant’s trade name and mark when it registered the disputed domain name in 1999. The Complainant goes on to state that the Respondent has no plausible justification for registering the disputed domain name, and has not been making any legitimate noncommercial or fair use of it at least since 2015 as there is no active website at the disputed domain name.
The Complainant contends that the disputed domain name was registered and is being used in bad faith. According to it, the name of the Respondent shows that he is an Indian or of Indian origin who has no affiliation with the name Machani or with the Machani Group and cannot deny of having knowledge of the Machani Group. Still, the Respondent went on to create the disputed domain for himself, and is not making any legitimate noncommercial or fair use of the disputed domain name at least since 2015.
The Respondent submits that the Complainant does not hold any registered trademark in the sign MACHANI and has not acquired unregistered trademark rights in it, so the Complainant has no standing in this proceeding. The Respondent notes that the Complainant uses the word “Machani” only as the part of its name, and was incorporated in October 2010, while its domain name <machanigroup.com> was registered in December 2010. The other companies of the Complainant’s group that have “Machani” as part of their names have been incorporated in 2010 or later, while the disputed domain name was registered in June 1999. The Respondent points out that the Complainant admits to making use of the sign MACHANI since 2013 only, and that the Complainant does not have any common law rights in a trademark based upon its founder’s name just because its founder had “Machani” as his first name and was conferred an award for contribution to the society under the category – Public Affairs in 1954. The Respondent notes that the Complainant’s founder was a social worker and his name was not used in trade or commerce in the early years, except for his last name “Somappa”. According to the Respondent, there is no evidence that the Complainant has been using the unregistered mark MACHANI continuously and extensively for a long period of time to give rise to any common law rights in the trademark, and the Complainant has failed to produce evidence that it had reputation under this trademark at the time when the Respondent registered the disputed domain name. The Respondent notes that the date of first use alone is not enough to establish common law rights in a trademark, and that in order to have common law rights, a complainant must establish secondary meaning, which the Complainant has not done, as the evidence is only from 2017 onwards, most of it being from 2019 and 2020, and there is no social media presence to show popularity among the Indian public and no proper evidence as to third party recognition.
The Respondent contends that he has rights and legitimate interests in the disputed domain name, which stem from the fact that the Respondent is commonly known by the disputed domain since his birth. The Respondent’s full name is Anand Krishna Machani, where Machani is his last name, and that he is originally from Andhra Pradesh, India, but has resided in the United States since March 1997. The Respondent points out that hundreds of individuals have “Machani” as their first or last name, and that it is quite common to find people with this last name in India and Kenya.
The Respondent states that on June 25, 1999, he registered the disputed domain name to secure his family name, and the “.com” generic Top-Level Domain (“gTLD”) was the only domain name extension that was available to use at the time. The purpose of setting up the website at the disputed domain name was to make available family photos to friends and relatives in India by sharing a website link to the disputed domain name, as most of the Indian residents were not using email services in the early 2000s. The Respondent states that his website has not been regularly maintained due to privacy issues, but he has regularly used his email account at the disputed domain name since 2000, which does not allow him to part with the disputed domain name. The Respondent adds that in any circumstances, it is quite improbable that anyone holding a domain name based on his last name would ever sell it at any cost, as it would be used by the generations to come, and owning such a domain name is a lifetime opportunity.
The Respondent further states that in 2010, he filed a trademark application for MACHANI.COM INCORPORATED in the United States, but after receiving initial objections, he decided not to proceed with this trademark application, as he was advised that last names cannot normally be registered as trademarks unless they have already acquired a secondary meaning.
The Respondent notes that the Complainant has provided no reasons or explanation as to why or how the Respondent located in a different jurisdiction could have known of the Complainant or of its non-existent rights at the time when the disputed domain name was registered in 1999, when at that time the Complainant had no online presence and has not shown to have used the sign MACHANI in trade or commerce.
The Respondent denies having ever received a call from the Complainant with an offer to buy the disputed domain name and notes the vagueness of the Complainant’s allegations in this respect.
The Respondent submits that he has never provided any false WhoIs information or any reference to the Complainant or its competitors on its website.
The Respondent points out that the Complainant waited almost 22 years to initiate this proceeding, which is a substantial and unreasonable delay by any measure. This long delay also raises an inference that the Complainant did not truly believe the Respondent engaged in bad faith registration, even though it is online since 2010.
According to the Respondent, given the circumstances, it is unlikely that the Complainant was not aware of the Respondent’s full name, but nevertheless went forward and filed its Complaint with the bad faith intention to hijack the disputed domain name and harass the Respondent, by making misleading and unsupported by any evidence claims of having exclusive rights in the name “Machani” and not disclosing that it is a common last name. The Respondent requests that Panel to make a finding of Reverse Domain Name Hijacking (“RDNH”) on the basis that the Complainant, represented by counsel, knew or should have known that the Complaint will not succeed in proving at least two of the three elements under the Policy.
- Discussion and Findings
Pursuant to the Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the disputed domain name:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the Respondent has registered and is using the disputed domain name in bad faith.
A. Identical or Confusingly Similar
The Complainant does not claim having registered trademark rights in the sign MACHANI. It claims having unregistered trademark rights in this sign.
As summarized in section 1.3 of the WIPO Overview 3.0, to establish unregistered trademark rights for the purposes of the UDRP, the complainant must show that its mark has become a distinctive identifier which consumers associate with the complainant’s goods and/or services. Relevant evidence demonstrating such acquired distinctiveness includes a range of factors such as the duration and nature of use of the mark, the amount of sales under the mark, the nature and extent of advertising using the mark, the degree of actual public recognition, and consumer surveys.
The evidence submitted by the Respondent shows that this is the first or family name of hundreds of people in various countries, so it is not inherently distinctive. For this reason, there is a greater onus on the Complainant to present evidence of acquired distinctiveness/secondary meaning.
To support its contention for having unregistered trademark rights, the Complainant has submitted copies of invoices issued by it or by its affiliates in the period starting from 2014, registration documents of the Complainant and its affiliates showing registration dates starting from 2010, printouts of archived webpages showing use of the domain name <machanigroup.com> starting from 2013, copies of undated promotional materials of the Complainant’s group, a statement of the annual promotional expenses of the Complainant starting from 2013, copies of several news articles and third party websites with dates starting from 2017. Most of these documents were generated by the Complainant or its affiliates, apart from several articles in the media. Some of the documents feature the sign MACHANI, while others only contain the name of the Complainant, of one of its affiliates or of one of its managers. Most of these documents do not show the use of “Machani” as a trademark but only as a personal name or as part of a business name and they are not sufficient for a finding that the designation MACHANI as a result of its use has acquired a secondary meaning referring to the business of the Complainant. The Complainant has not submitted any evidence from independent sources about the degree of actual public recognition of the designation MACHANI or consumer surveys that would establish that the public recognizes it as a symbol that distinguishes the Complainant’s goods and services from those of others and that it has acquired a secondary meaning exclusively referring to the Complainant.
Therefore, noting also the fact that “Machani” is a personal or family name of hundreds of persons in various countries, the Panel is not satisfied that the Complainant has established for the purposes of the Policy that it has unregistered trademark rights in the sign MACHANI, and finds that the Complainant has failed to establish the first element of the test under the Policy.
B. Rights or Legitimate Interests
The Panel finds that the Respondent has rights and legitimate interests in the disputed domain name, as the term “Machani” reflected in the disputed domain name is the Respondent’s family name. A respondent can be found to be commonly known by a domain name under the Policy, Paragraph 4(c)(ii), where it reflects his personal name, and the respondent has submitted evidence that this is so. See G.A. Modefine S.A. v. Mani, WIPO Case No. D2001-0537. The fact that the WhoIs records for the disputed domain name do not reflect the full name of the Respondent does not change this conclusion, because these records sufficiently and correctly identify the Respondent, and he has shown that it has used an email account with the disputed domain name since 2001.
Therefore, the Panel finds that the Complainant has failed to establish that the Respondent does not have rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
As discussed above, the Respondent has provided evidence and has established that the disputed domain name reflects his family name and has been consistently used for a personal email account st since 2001.
The Complainant has failed to establish that it has unregistered trademark rights in the sign MACHANI, but even if it had succeeded in establishing such rights, the Complainant’s own statements and evidence show use of that sign only starting from 2010 at the earliest, which is 11 years after the registration of the disputed domain name in 1999. There is no evidence of targeting of the Complainant by the Respondent, and no evidence that the Respondent knew or must have known of the Complainant in 1999. As discussed in section 3.1 of the WIPO Overview 3.0, when a domain name is registered before a trademark right is established, the registration of the domain name was not in bad faith because the registrant could not have contemplated the complainant’s non-existent right.
In these circumstances, there are no reasons to find that the Respondent has acted in bad faith with the registration and use of the disputed domain name. Therefore, the Panel finds that the Complainant has failed to establish that the disputed domain name has been registered and used in bad faith.
D. Reverse Domain Name Hijacking
The Respondent requests a finding of RDNH on the basis that the Complainant, represented by counsel, knew or should have known that the Complaint will not succeed in proving at least two of the three elements under the Policy. According to the Respondent, given the circumstances, it is unlikely that the Complainant was not aware of the Respondent’s full name, but nevertheless went forward and filed its Complaint with the bad faith intention to hijack the disputed domain name and harass the Respondent, by making misleading and unsupported by any evidence claims of having exclusive rights in the name “Machani” and not disclosing that it is a common last name.
Paragraph 15(e) of the UDRP Rules provides that, if “after considering the submissions the panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding”. RDNH is furthermore defined under the UDRP Rules as “using the UDRP in bad faith to attempt to deprive a registered domain-name holder of a domain name”.
Reasons articulated by panels for finding RDNH include, inter alia, facts which demonstrate that the complainant knew it could not succeed as to any of the required three elements – such as the complainant’s lack of relevant trademark rights, clear knowledge of respondent rights or legitimate interests, or clear knowledge of a lack of respondent bad faith, such as registration of the disputed domain name well before the complainant acquired trademark rights, or basing a complaint on only the barest of allegations without any supporting evidence. Given the undertakings in paragraphs 3(b)(xiii) and (xiv) of the Rules, some panels have held that a represented complainant should be held to a higher standard.
In the present case, the Complainant has failed on all three elements of the Policy. It has made inflated claims of having unregistered trademark rights in the sign MACHANI, but none of the supporting evidence dates earlier than 2010, which is 11 years after the registration of the disputed domain name. This circumstance, and the lack of any evidence of knowledge and of targeting of the Complainant by the Respondent should have made the Complainant and its counsel aware that, at least on the issue of bad faith, it could not succeed.
As to the issue of rights and legitimate interests, the publicly-available WhoIs records for the disputed domain name available at the time of filing of the Complaint indeed did not show that “Machani” was the family name of the Respondent, and there was no active website at the disputed domain name. However, the fact that the family name of the Respondent was “Machani” was stated in the Response and was substantiated with convincing evidence. Being commonly known by a domain name or by a name corresponding to a domain name is one of the examples of having rights or legitimate interests in a domain name under the Policy, Paragraph 4(c)(ii). The Response also denied the existence of unregistered trademark rights of the Complainant and noted the lack of evidence in this regard.
However, having received the Response, rather than withdrawing the Complaint, the Complainant attempted to submit a supplemental filing which did not dispute the evidence about the family name of the Respondent, but started with the statement that “The Respondent has not disputed or denied any of the submissions and contentions made in the complaint and is, therefore, deemed to have accepted the submissions and contentions made in the complaint”.
This conduct of the Complainant, especially considering that it is represented by counsel, merits a finding of RDNH.
For the foregoing reasons, the Complaint is denied.
The Panel declares that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.
Date: June 18, 2021