Complainant one of the biggest Indian Jewellery Brand – Disputed Domain Registered in 2004 – Complainant came online in 2010 with similar .NET domain – Complainant holds Trademark since 2003 and promoted it’s brand 2012 onward – Passive Holding of Domain Name by Respondent – 16 years of no use, could not prove any Legitimate Interests – Held Registration not in Bad Faith – UDRP policy is of narrow scope for clear case of cybersquatting !
ADMINISTRATIVE PANEL DECISION
Kalyan Jewellers India Limited v. Antony Adam
Case No. D2020-1615
1. The Parties
Complainant is Kalyan Jewellers India Limited, India, represented by Altacit Global, India.
Respondent is Antony Adam, United Arab Emirates, Represented by Cylaw Solutions, India.
2. The Domain Name and Registrar
The disputed domain name <kalyanjewellers.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 19, 2020. On June 19, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 20, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on June 23, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on June 24, 2020.
The Center verified that the Complaint together with the amended 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 Respondent of the Complaint, and the proceedings commenced on June 30, 2020. In accordance with the Rules, paragraph 5, the due date for Response was July 20, 2020. On July 13, 2020, Respondent sent an email requesting the extension of the Response due date. On July 14, 2020, the Center granted the extension of time until July 30, 2020. On July 30, 2020, Respondent submitted the Response. On July 31, 2020, Complainant sent an email requesting to file the supplemental filings. On July 31, 2020, Respondent objected to Complainant’s attempt to request for further submission by the email. However, on August 12, 2020, Complainant filed a supplemental filing with the Center. Accordingly, the Center acknowledged the receipt of supplemental filing and proceed with the panel appointment on the same day. Respondent submitted a supplemental filing on August 17, 2020.
The Center appointed Georges Nahitchevansky as the sole panelist in this matter on August 13, 2020. 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.
4. Factual Background
Complainant, Kalyan Jewellers India Limited, is a company based in India that has been in the business of selling jewelry through retail showrooms and stores since 1993. Complainant owns a number of trademark registrations for logo marks with the words “kalyan jewellers” in India, Singapore, United Arab Emirates, Saudi Arabia, Qatar, Kuwait and Bahrain. While most of these registrations issued to registration after 2019, Complainant owns four trademarks in India that issued to registration between 2003 and 2006, as follows: (i) a logo registration for KALYAN JEWELLERS that was filed on June 23, 1994 and issued to registration on December 8, 2003 (No. 631593); (2) a word mark registration for KALYAN that was filed on April 27, 2004 and issued to registration on December 2, 2005 (No. 1006004); and (3) two additional logo registration for KALYAN JEWELLERS that were filed on April 27, 2001 and which issued to registration on March 4, 2005 and July 19, 2006 (Nos. 1006005 and 1006006).
Complainant also owns and uses the domain name <kalyanjewellers.net> for a website to provide information about Complainant and its jewelry, and to promote the online sales of jewelry. Complainant registered the <kalyanjewellers.net> domain name in or about March 2010.
Respondent operates a business that provides domain name registration, web hosting, and online radio setup. Respondent’s official website is at “www.webvisionindia.com”. Respondent registered the disputed domain name on October 15, 2004 and does not appear to have used the disputed domain name with an active website or page.
In November 2017, Complainant contacted Respondent in an attempt to purchase the disputed domain name. Those communications do not look to have gone beyond some back and forth about contact numbers to use. It does not appear that the parties had any substantive discussions regarding a purchase of the disputed domain name. Currently, the disputed name does not resolve to an active website or web page.
5. Preliminary Consideration Regarding the Parties’ Supplemental Filings
Neither the Policy nor the Rules provide a party with an automatic right to submit additional arguments or evidence. Under paragraph 10 of the Rules, panels enjoy broad powers for conducting administrative proceedings, provided that the parties are treated fairly and the proceedings are conducted expeditiously. Within this framework, a panel can determine within its sole discretion whether to admit or reject supplemental submissions. In exercising this discretion, many panels have made clear that additional evidence or submissions should only be admitted in exceptional circumstances, such as, by way of example, where new pertinent facts arise after the submission of the complaint or where a party could not have reasonably known of the existence, relevance or veracity of further material when it made its primary submission. See, e.g., Office Club, Ltd. v. John Adem, WIPO Case No. D2000-1480; Gordon Sumner, p/k/a Sting v. Michael Urvan, WIPO Case No. D2000-0596; The E.W. Scripps Company v. Sinologic Industries, WIPO Case No. D2003-0447; Cerulean Studios, LLC v. Hexuan Cai, WIPO Case No. D2013-0902. The Panel agrees with this position and adds that further material should only be admitted to the extent necessary in a proceeding and when such is essential in reaching a fair decision on the facts of the matter.
In the instant case, and after reviewing the Complaint, the Response and the Parties’ communications with the Center, the Panel is willing to accept Complainant’s supplemental filing as it concerns an assertion by Respondent that while the disputed domain name is registered in the name of Respondent the actual true and beneficial owner of the disputed domain name is an individual by the name of Subha Bharat who used Respondent’s reseller service in October 2004 to register the disputed domain name. Given that the Panel is willing to accept Complainant’s supplemental filing, the Panel accepts Respondent’s supplemental filing as it concerns Complainant’s assertions regarding the ownership of the disputed domain name by Subha Bharat.
The Panel notes that accepting limited portions of Complainant’s supplemental filing as set forth above is proper here given that Respondent has raised issues and facts that Complainant could not have anticipated based on the public information available concerning the disputed domain name. To not allow Complainant to respond to Respondent’s contentions that another party owns the disputed domain name, as well as the evidence provided in that regard, would be unfair and prejudicial to Complainant. Similarly, for purposes of fairness, Respondent should likewise be allowed to respond to assertions made by Complainant in its supplemental filing regarding the ownership of the disputed domain name.
6. Parties’ Contentions
Complainant contends that it has strong rights in the KALYAN JEWELLERS mark on account of Complainant’s use of the mark since 1993 and Complainant’s numerous trademark registrations for the KALYAN JEWELLERS mark. Complainant maintains that on account of its promotional efforts the KALYAN JEWELLERS mark is well-known in India and in countries within the Gulf Cooperation Council (“GCC”) in the Middle-East.
Complainant asserts that the disputed domain name is identical to Complainant’s KALYAN JEWELLERS mark as it fully and solely consists of the KALYAN JEWELLERS mark.
Complainant argues that Respondent has no rights or legitimate interests in the disputed domain name as Respondent (i) registered the disputed domain name after Complainant had established rights and reputation in the KALYAN JEWELLERS mark; (ii) is not commonly known by the name “Kalyan” or “Kalyan Jewellers”; and (iii) has not acquired any trademark rights in the KALYAN JEWELLERS name and mark.
Lastly, Complainant contends that Respondent has registered and used the disputed domain name in bad faith as Respondent was likely aware of the reputation Complainant enjoys in the KALYAN JEWELLERS mark when Respondent registered the disputed domain name. Complainant further contends that Respondent has been acting in bad faith by passively holding the disputed domain name for 16 years, given that the disputed domain name cannot be used by anyone other than Complainant as the owner of the KALYAN JEWELLERS mark.
Respondent rejects Complainant’s contentions. Respondent maintains that he has been in the domain name reselling business since 2002 and that the disputed domain name was registered through him on October 15, 2004 on behalf of an individual by the name of Subha Bharat who immigrated to Australia from India in mid-2004. Respondent explains that he originally registered the disputed domain name as a reseller through Net4India.com, a domain name registrar based in India, but then moved the disputed domain name and his reselling business to Directi / PDR LTd. when Net4India.com went into insolvency proceedings. The Respondent, Antony Adam, after explaining his involvement in the registration of the disputed domain name, refers to circumstances surrounding Subha Bharat (but refers to this person as the respondent).
According to Respondent, Subha Bharat, registered the disputed domain name through Respondent in 2004 in connection with her interest in jewelry making. Respondent has included a declaration from Subha Bharat in which she explains that she registered the disputed domain name as part of her jewelry making efforts and did so as a combination of two common words “Kalyan” and “jewellers.” According to Ms. Bharat (and Respondent) “kalyan” is a synonym for a meaning of Ms. Bharat’s first name, “Subha,” which in Sanskrit means “beautiful.” Ms. Bharat maintains that at the time she registered the disputed domain name she was not aware of any business in India or Australia by the name of “Kalyan Jewellers”. She also avers that she made some initial attempts to develop a website in 2004, but that nothing was ever developed. Ms. Bharat further avers that by 2006, after the birth of her second child, her jewelry making project was put on hold. Ms. Bharat further maintains that she never did anything with the disputed domain name to take advantage of any claimed trademark rights of anyone.
Respondent argues that Complainant’s Complaint should be barred by the doctrine of laches given Complainant’s 16 year delay in pursuing the disputed domain name. Respondent notes that because Complainant registered the domain name “www.kalyanjewelers.net” in 2010, and used such for its online presence, Complainant likely knew at that time that the disputed domain name was already registered to another party. Based on such delay, Respondent further argues that even if there is no laches, the long delay creates an inference that Complainant did not truly believe that Respondent had engaged in bad faith registration.
Respondent asserts that the disputed domain name is not identical or confusingly similar to a mark owned by Complainant as the disputed domain name is based on a combination of dictionary words that are not exclusive to Complainant.
Respondent contends that it has rights and a legitimate interest in the disputed domain name as Complainant does not have exclusive rights in the common words “kalyan” and “jewelers,” which have been used by numerous businesses in related fields. Respondent argues that the word “kalyan” is (i) the name of a town in India as well as a town in Southern Australia; (ii) a generic word in many Indian languages meaning “beautiful” as well as a common name in India for males and females (“Kalyani”); and (iii) is used as a trademark or business name by many companies in India. Respondent also maintains that a number of businesses use “kalyan jewellers” in their business names or as trademarks associated with their business.
Respondent reiterates that it acquired the disputed domain name in 2004 in good faith for Subha Bharat, that neither Respondent nor Ms. Bharat were aware of Complainant’s claimed mark at that time, and that the disputed domain name has never been used to refer to Complainant or its services.
Lastly, Respondent argues that it has not registered or used the disputed domain name in bad faith. Respondent reiterates that the disputed domain name is based on a combination of two common words and that Respondent registered the disputed domain name based on its common meaning. Respondent maintains that it was unaware of Complainant’s claimed rights in 2004 and that in 2004 Complainant’s claimed KALYAN JEWELLERS mark was largely unknown, particularly in Australia where Respondent and Ms. Bharat are located. In that regard, Respondent maintains that Complainant has not provided any evidence showing that it was well-known in Australia or India in 2004. Finally, Respondent urges that there is no evidence that Respondent registered the disputed domain name to take advantage of any rights Complainant might claim in the name and mark KALYAN JEWELLERS or that Respondent ever attempted to profit from the disputed domain name.
Based on the foregoing, Respondent asks that the Panel make a finding of reverse domain name hijacking against Complainant.
C. Parties’ Supplemental Filings
In its Supplemental filing, Complainant contests that Subha Bharat is the alleged owner of the disputed domain name. Complainant maintains that there is no evidence supporting this contention and that Respondent, who did not reveal that information in 2017 when contacted by email by Complainant, has at all relevant times been the owner of the disputed domain name. Complainant also argues that Subha Bharat, the alleged owner of the disputed domain name, is not commonly known by the name “Kalyan Jewellers” and does not own any trademark rights in “KALYAN JEWELLERS”, and is in fact using the name DANA Fashion Pty Limited for her current jewelry related business. Lastly, Complainant asserts that Respondent registered the disputed domain name primarily for the purpose of selling, renting or otherwise transferring it to Subha Bharat, and individual who not only masked her ownership of the disputed domain name, but who owns no rights in a KALYAN JEWELLERS mark and “might have aspired to be an competitor of the Complainant at the time of the registration of the disputed domain name in bad faith.”
Respondent’s supplemental filing in response to Complainant’s supplemental filing reasserts a number of the arguments already made by Respondent in its Response. Respondent maintains that he is not the owner of the disputed domain name and that such belongs to Subha Bharat for whom Respondent registered the disputed domain name in 2004, that the disputed domain name is a combination of two common words not exclusive to Complainant, that Complainant’s delay in bringing this proceeding for at least 10 years should bar Complainant from pursuing this proceeding and that Complainant has failed to prove its rights in the KALYAN JEWELLERS mark in 2004..
7. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Respondent does not contest that the disputed domain name is identical or confusingly similar to Complainant’s KALYAN JEWELLERS mark. Respondent’s position is that Complainant cannot have any trademark rights in the combination of the two dictionary words “kalyan” and “jewelers,” neither of which is exclusive to Complainant. In that regard, Respondent has produced a number of examples of the use of the term “kalyan” for a variety of goods and services, including a trademark registration in India for KALYAN JEWELLERS by a party unrelated to Complainant.
That being said, Complainant has produced evidence of several trademark registrations that it owns for logo marks that include KALYAN JEWELLERS and a word mark KALYAN, some of which issued to registration before the disputed domain name was registered and others that issued to registration after the disputed domain name was registered. The Panel notes that while Respondent has provided examples of third party uses and registrations of “kalyan”, the Panel is not in a position to assess whether Complainant’s trademark registrations are somehow improper or could possibly be subject to cancellation on the basis that “kalyan” is a generic term. Indeed, if the Panel accepts that “Kaylan” means “beauty,” or an approximation thereof in Sanskrit, then such term would not be considered generic in connection with jewelry or jewelry retailing purposes for trademark registration purposes. The fact remains that Complainant owns trademark registrations in India and elsewhere for the marks KALYAN JEWELLERS and KALYAN. As the threshold for the first element is primarily to establish standing, the Panel concludes that since the disputed domain name is identical to Complainant’s registered KALYAN JEWELLERS mark, Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the complainant must make at least a prima facie showing that the respondent possesses no rights or legitimate interests in a disputed domain name. Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393. Once the complainant makes such a prima facie showing, the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP.
In this proceeding, Respondent asserts that it registered the disputed domain name on behalf of Subha Bharat, an individual residing in Australia. In support of that contention, Respondent has submitted (i) a declaration from Subha Bharat recounting the contentions made by Respondent with respect to the registration of the disputed domain name in 2004; and (ii) a copy of what appears to be an official Australian certificate providing notice that Subha Bharat became an Australian citizen on July 17, 2007. Missing in Respondent’s submissions is any documentary evidence from 2004 showing that Subha Bharat actually used the services of Respondent to register the disputed domain name, placed an order through Respondent to do so, had an account with Respondent’s business for the registration of the disputed domain name or made a payment to Respondent for the registration of the disputed domain name. The only documentary evidence that connects Ms. Bharat to the disputed domain name is an undated invoice from Respondent’s Webvisionindia.com company to Ms. Bharat for the annual domain name registration fee for the disputed domain name from October 15, 2019 through October 15, 2020. Notably missing are any other invoices concerning the disputed domain name since 2004.
Complainant argues that there is no evidence showing that Subha Bharat is in fact the owner of the disputed domain name and that Respondent is an unrelated acquirer of the disputed domain name.
There is no dispute that Respondent has owned the disputed domain name since October 15, 2004 and that the disputed domain name since October 2004 has not been used, per se, with an active website or business. The open question before the Panel is whether Respondent is the actual owner of the disputed domain name or is holding the disputed domain name beneficially for Subha Bharat. The Panel, however, does not have to resolve that question in determining whether Respondent or Subha Bharat have a legitimate interest in the disputed domain name. The existence of a beneficial holder does not permit the registrant (in this case Respondent) to disclaim use by a beneficial holder. (See, merely by way of illustration, ICANN’s Registrar Accreditation Agreement at section 126.96.36.199.)
Respondent maintains that “Kalyan Jewellers” is merely a combination of two dictionary words that is not unique to Complainant. While Respondent has provided much evidence that “kalyan” is a word and name in various Indian dialects, the name of towns in India and Australia, and is used in a number of trademark registrations and business names in India, the fact remains that Complainant has provided much evidence that at least as of the date of the filing of the Complaint, Complainant has trademark rights in KALYAN JEWELLERS and some reputation in connection with Complainant’s jewelry related services. Indeed, Respondent implicitly acknowledges as much by arguing that searching for “Kalyan Jewellers” on Google or otherwise on the Internet at this time would be pointless given Complainant’s extensive marketing efforts and use of well-known brand ambassadors to promote its brand, products and services. Based on what the parties have submitted, it appears to the Panel that while “kalyan” has a common meaning it also has a trademark significance as part of KALYAN JEWELLERS for Complainant’s jewelry services.
The remaining question then is whether Respondent has made a bona fide use of or has a legitimate interest in the disputed domain name. That assessment is typically made in the present with a view to the circumstances prevailing at the time of the filing of the Complaint. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at section 2.11. Here, while Respondent has owned the disputed domain name for 16 years, there is no evidence that Respondent or Subha Bharat have ever used the disputed domain name in connection with jewelry, the sale of jewelry or a bona fide business. Complainant asserts that the disputed domain name has been suspended for many years and Respondent asserts that the name has not been used apart for a six month period in 2008 and 2009 when Respondent put up a web page at the disputed domain name offering to sell the disputed domain name.
Given the Parties’ respective claims, the Panel in its discretion under its general powers pursuant to paragraphs 10 and 12 of the UDRP Rules has for the benefit of the Parties has reviewed archival website pages for the disputed domain name that are available through the Internet Archive at “www.archive.org” and “www.domaintools.com”. WIPO Overview 3.0, section 4.8. The Panel has confirmed that in 2008 Respondent did post a web page offering the disputed domain name for sale. The Panel notes that in 2016 and 2017 there was a page posted at the disputed domain name that had the header “Do I need hosting.” The page generally provides information regarding the usefulness of web hosting and includes statements about becoming a “member” and obtaining a web hosting account. The Panel also notes that on August 28, 2019 there was a mock-up website posted at the disputed domain name with the title “Jewelry Store”.
In totality, it appears that there has been some use of the disputed domain name to promote hosting services and that Respondent (or Subha Bharat) recently contemplated use of such with a website to sell jewelry, or at least put of website content to give that appearance. Given Complainant’s existing trademark rights in KALYAN JEWELLERS for the sale of jewelry, Respondent’s use of the disputed domain name to promote hosting services, presumably through Respondent, and for a possible competing jewelry store appears to be, and would be, opportunistic at this point. Indeed, Respondent asserts that Subha Bharat is now intending to enter the jewelry business and has registered a company in May 2020 by the name of DANA Fashion Pty Limited. Clearly, the fact that Ms. Bharat is using a different name for her jewelry business suggests a recognition that using “Kalyan Jewellers” to sell jewelry could be problematic in light of Complainant’s rights in KALYAN JEWELLERS.
As an aside, it should be noted that Respondent’s assertion that Ms. Bharat “has all the rights to adopt a business name reflecting her own name” is misplaced. Apart from the fact that Ms. Bharat’s name is not “Kalyan” but “Subha” (although they may share an underlying common meaning in Sanskrit), the fact remains that as a matter of trademark law there are limitations on the use of one’s name when such is done to take advantage of the established rights of another party in a particular area. For instance, a person by the name of “Joe Disney” would not be acting legitimately if he suddenly opened up an amusement or entertainment facility by the name of “Disney” in light of the prior rights of The Walt Disney Company. Similarly, given the current rights of Complainant in KALYAN JEWELLERS for Complainant’s jewelry business, it would likely not be legitimate for Respondent to suddenly adopt that name to sell jewelry in competition with Complainant.
Given that Respondent has owned the disputed domain name for 16 years and has recently used the disputed domain name to promote web hosting services, and more recently for an apparent possible jewelry store, belies Respondent’s claims of having a legitimate interest in the disputed domain name at this point. Simply put, Respondent has not done anything with the disputed domain name in 16 years that would suggest that Respondent is using (or intends to use) the disputed domain name for a legitimate business. The more recent uses make it more likely than not that Respondent (or Subha Bharat) is now attempting to profit from the disputed domain name from its association with Complainant and its KALYAN JEWELLERS mark.
Given that Complainant has established with sufficient evidence that it owns rights in the KALYAN JEWELLERS mark, and given Respondent’s above noted actions, the Panel concludes that none of the circumstances of paragraph 4(c) of the Policy are evident in this case and that Complainant has made out its case under this element.
C. Registered and Used in Bad Faith
Under Paragraph 4(a)(iii) of the Policy, a complainant must establish the conjunctive requirement that the respondent registered and used a disputed domain name in bad faith. The assessment of whether a disputed domain name was registered in bad faith has to be assessed at the time of the registration of the disputed domain name, which in this case is October 15, 2004.
Complainant claims that it has developed strong rights in the KALYAN JEWELLERS name and mark and that it has used the mark KALYAN JEWELLERS since 1993. In support of those contentions, Complainant relies on a 1994 application it filed in India for the KALYAN JEWELLERS mark that issued to registration in 2003 and on applications it filed for KALYAN JEWELLERS and KALYAN in 2001 and 2004 respectively. Complainant also relies on evidence it has submitted regarding the extensive promotional efforts undertaken by Complainant in regards to its KALYAN JEWELLERS mark, such as through celebrity brand ambassadors.
The Panel has reviewed the evidence submitted by Complainant and as already noted has concluded that Complainant has likely developed strong rights in the name and mark KALYAN JEWELLERS in at least India and some of the GCC countries. However, the evidence submitted by Complainant shows use and promotional efforts for the KALYAN JEWELLERS mark after 2009. What is clear from the evidence before the Panel, Complainant made a significant push with regard to its KALYAN JEWELLERS mark after 2009 and has made extensive promotional efforts in the last several years. Moreover, it appears that Complainant’s use of the Internet to promote Complainant’s KALYAN JEWELLERS jewelry services only started after 2010. What is lacking in the record is evidence of what Complainant was doing with the KALYAN JEWELLERS mark on or before October 15, 2004, how the mark had been promoted or what its notoriety or public recognition might have been at that time. Thus, on the record before the Panel the question is whether Respondent was acting in bad faith in October 2004 based on the fact that Complainant had obtained a logo trademark registration in India for KALYAN JEWELLERS in 2003 (although filed in 1994).
Respondent, in this case, has provided much evidence that the term “kalyan” is a common term in a number of Indian dialects, is used as a first name, is the name of towns in India and Australia, and is used as part of a number of business names and trademark applications and registrations. Respondent has also provided some evidence that there are other uses of “Kalyan Jewellers” in India by parties unrelated to Complainant and which in one case goes back to at least 1983. Respondent (as well as Ms. Bharat) also asserts that it registered the disputed domain name in October 2004 because it believed it was a common term and that it was not aware of Complainant’s claimed rights in KALYAN JEWELLERS. As Complainant has provided no evidence regarding the use of the KALYAN JEWELLERS mark and/or the extent of such use or notoriety of the KALYAN JEWELLERS name and mark prior to October 2004, it is difficult to assess almost 16 years after the fact whether Respondent was trying to take advantage of rights Complainant might have had in KALYAN JEWELLERS or was merely registering a domain name based on a combination of two common terms, whether for himself or on behalf of another party. Indeed, there is no evidence in the record showing that Respondent or Ms. Bharat’s explanation for registering the disputed domain name might be pretextual given the common meaning of “kalyan”, such as evidence showing, for example, that (i) “Kalyan Jewellers” was more likely than not perceived by consumers to be a brand of Complainant in 2004; (ii) Respondent or Ms. Bharat had an established pattern of registering domain names based on the marks of others; or (iii) made use of the disputed domain name after registering it to take advantage of Complainant’s then exiting rights in KALYAN JEWELLERS or to profit from the disputed domain name.
That Respondent may now want to profit from the disputed domain name in bad faith in light of the reputation that Complainant has now developed in the KALYAN JEWELLERS name and mark, does not in and of itself prove without more that Respondent originally registered the disputed domain name in bad faith in October 2004, particularly if the term “kalyan” was simply perceived as a common term at that time with no particular trademark significance relating to Complainant.
In sum, Complainant has failed to establish that it is more likely than not that Respondent registered the disputed domain name in bad faith in October 2004 in order to take advantage of Complainant’s claimed rights in the KALYAN JEWELLERS mark. Given that (i) the disputed domain name was registered many years ago and before Complainant seems to have had some notion of a strong reputation in its marks; (ii) the term “kalyan” has a common meaning; (iii) Complainant has provided no evidence regarding its use or reputation in the KALYAN JEWELLERS mark on or before 2004; (iv) there is no evidence that Respondent has a history or pattern of cybersquatting or taking advantage of the marks of others in bad faith ; and (v) there is no evidence Respondent sought to profit in some way from the disputed domain name after registering it, Complainant has failed to establish that Respondent more likely than not registered the disputed domain name in bad faith in October 2004 to take advantage of Complainant’s KALYAN JEWELLERS mark. As such Complainant’s complaint fails.
The Panel notes that some of Respondent’s contentions and reliance on the fact that “kalyan” is also used in town names and in other business names appears to “overdo” the claimed justification for Respondent having registered the disputed domain name in the first place (and could be seen as a post hoc justification for Respondent having registered the disputed domain name). To be sure, though, these other uses of “kalyan” when viewed in the totality of the evidence that is before the Panel regarding Complainant’s claimed rights in 2004, takes this case out from the more narrow “clear cut” cybersquatting scenarios contemplated by the Policy. The Complainant is, of course, free to challenge Respondent’s claims in court where a fuller record can be developed.
D. Reverse Domain Name Hijacking
Respondent has requested that the Panel make a finding of Reverse Domain Name Hijacking in this proceeding. Section 15(e) of the Rules give instruction to panels in this regard: 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.
In this case, while the Panel has concluded that Complainant did not establish bad faith registration of the disputed domain name by Respondent, the question is whether it was objectively unreasonable for Complainant to bring this proceeding.
Given that Complainant owned a logo trademark registration in the KALYAN JEWELLERS mark in India that predated the registration of the disputed domain name, it does not at all appear unreasonable that Complainant would seek to take action against the disputed domain name. While Complainant has failed to make out its case for the reasons explained above, that does not in itself establish that Complainant brought the Complaint in bad faith and with no objective basis. As such, the Panel declines to make a finding of reverse domain name hijacking.
For the foregoing reasons, the Complaint is denied.
Date: August 27, 2020
On Similar grounds of narrow scope of policies, earlier this year Bennet & Coleman lost in an attempt to gain ENOW.in Read here