Hungray’s OTP Bank came up with it’s first UDRP, claiming exclusive rights to the common acronym OTP, as using various combinations, starting with OTP like OTP Bank, OTP eBiz, OTP Direct, OTP Junior, OTP Startup, etc. OTP Bank mainly has presence in European countries and has rights in Trademark OTP Bank since 1990s but applied for OTP as a Trademark in 2006. The disputed domain name <OTPGROUP.com> was registered in September 2004.
The Respondent is a well-known / serial entrepreneur from Silicon Valley of USA since late 1980s. He has over 40 patents registered in his name. see here, starting 1993. The Respondent firstly founded OnSpec Electronics, Inc. (OEI) in 1989-90 as an IBM PC applications company. It was followed by incorporation of Onspecs Technology Partners Inc. (OTP) in 1993 and OTP Software Inc. in 1996. (source)
Lastly, in India as well, it incorporated a Company by the name of Onspec Technology Partners India Private Limited on 1 September 2004 (active as on date), in the same month of registration of the domain name disputed domain name <OTPGroup.com>, clearly evidencing the purpose of the registration of the domain name.
Respondent submitted that the ‘Onspec’ as initial Company names was adopted from ‘OnSpec-OnTime-OnBudget’ – a project management concept. Otherwise also the Respondent being a computer engineer by profession used to frequently use ‘OTP’ as in ‘One Time Programmable IC Chips’, while working upon IBM Mainframe computers in early 1980s. Reference to technical term OTP is also available in one of the 2006 patent applications by the Respondent, which reads “one-time program memory (OTP). OTP is similar to write once memory, and after this one write, it cannot be modified.” Otherwise OTP being a very common term to refer to One Time Password these days, it initially used to indicate “One Time Program” in software development.
While the Complaint tried hard to press for lack of legitimate interests and Bad Faith, based upon misleading statements as follows, though not upheld by the Panel.
a) The Complainant alleged as to fake whois information, while the WHOIS was just not visible due to GDPR Policy. Highly surprizingly, being a European Bank, represented through a EU Lawyer, they themselves are well aware of the GDPR Policy.
b) Complainant also tried to dig through archive.org and present information as to a template used by the Respondent in the past, which is available here – https://demo.rockettheme.com/joomla-templates/fresco/ and tried to mislead by alleging that misleading information was provided on the website as contact information. And quite amusingly, all the proceedings were marked to the unknown email appearing in the template – noreply@fresco.com, including the decision.
c) Complainant also alleged that contacting the Respondent was impossible, though till 2018, the WHOIS was completely visible in historical whois. But the Complainant made no efforts of digging into the historical WHOIS information.
The arguments were totally denied by the Respondent, represented by Ankur Raheja of Cylaw Solutions, with proper evidence and hence the Complaint denied. Though it was not an RDNH as the website was not in active use. Though it would have been a different story, if WIPO could have appointed a Panelist from USA, that is juridiction of the Respondent, rather than Europe, where the Complainant has huge presence.
Lastly, the legtimate interests were quite visible from the documents produced from the year 1998-99 as indicated in the decision below. Moreover, the words OTP Group also appeared in the archive.org from 1999 at www.OTPSoft.com. Though a business which has been operational since early 1990s, it was not possible to produce very regular evidence from the present date but in terms of UDRP principle, the Respondent was already commonly known by the domain name before registration of the domain name… as previously held in the matter of VertexMedical.com, hence have legitimate interests.
ADMINISTRATIVE PANEL DECISION
OTP Bank Nyrt v. Swamy Venkidu
Case No. D2020-3118
The Parties
The Complainant is OTP Bank Nyrt, Hungary, represented by Danubia Legal, Hungary.
The Respondent is Swamy Venkidu, United States of America (“United States”), represented by Cylaw Solutions, India.
The Domain Name and Registrar
The disputed domain name <otpgroup.com> is registered with GoDaddy.com, LLC (the “Registrar”).
Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 19, 2020. On November 20, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 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 the Complainant on November 23, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on November 25, 2020.
The Center verified that the Complaint together with the amendment to 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 November 26, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 16, 2020. On December 15, 2020, the Center received an informal communication from an individual associated with the Respondent. On December 16, 2020, the Respondent submitted a request for extension of the Response due date. In accordance with paragraph 5(b) and paragraph 5(e) of the Rules, the due date for submission of the Response was extended until December 30, 2020. The Response was filed with the Center on December 30, 2020.
The Center appointed Jane Seager as the sole panelist in this matter on January 14, 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.
Factual Background
Founded in Hungary in 1949, the Complainant is a commercial bank, operating primarily in Central and Eastern Europe. For use in connection with the Complainant’s banking services, the Complainant is the owner of a portfolio of trademark registrations comprising the element “OTP”, including but not limited to the following:
– Hungarian Trademark Registration No. 134843, OTP BANK (figurative trademark), registered on May 17, 1993;
– European Union Trade Mark No. 005719299, OTPBANK, registered on May 2, 2008;
– International Trademark Registration No. 910764, OTP, registered on December 6, 2006; and
– International Trademark Registration No. 910030, OTP BANK, registered on December 4, 2006.
The Complainant is also the registrant of several domain names consisting of or incorporating its trademarks, including <otpbank.hu>, <otp.hu>, and <otpgroup.hu>.
The Respondent is an individual based in the United States engaged in the technology sector. The Respondent is the founder of various companies registered in California, United States, including “OnSpec Electronics, Inc.” in 1990, “OnSpec Technology Partners, Inc.” in 1993, and “OTP Software, Inc.” in 1996. Such companies have been active in the provision of database applications, software marketing, software sales, consulting services, and various other services. On July 7, 1997, the Respondent registered the domain name <otpsoft.com>, which became operational in 1998.
The disputed domain name was registered on September 23, 2004. In 2019 the disputed domain name resolved to a website featuring a website template, lacking substantive content. At the time that the Complaint was submitted to the Center (and at the time of this decision) the disputed domain name did not resolve to an active website.
Parties’ Contentions
Complainant
The Complainant submits that the disputed domain name is confusingly similar to trademarks in which it has rights, as well as its company name. The Complainant submits that “OTP” is the distinctive element of the disputed domain name, and that the addition of the term “group” and the generic Top-Level Domain (“gTLD”) “.com” is insufficient to distinguish the disputed domain name from the Complainant’s trademarks and company name.
The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant states that it has not licensed or otherwise permitted the Respondent to use any of its trademarks. The Complainant notes that there is no content on the website to which the disputed domain name resolves, and submits that the Respondent has no justified intention in using or legitimate interest in keeping the disputed domain name. The Complainant submits that the template website previously appearing at the disputed domain name never had any connection with the term “OTP”. The Complainant submits that the Respondent is not making any legitimate noncommercial or fair use of the disputed domain name. The Complainant claims to be widely known in Central and Eastern Europe, and argues that the Respondent’s registration of the disputed domain name tarnishes the Complainant’s trademarks and reputation. The Complainant further asserts that the disputed domain name creates a misleading impression of association with the Complainant.
The Complainant submits that the disputed domain name was registered and is being used in bad faith. The Complainant asserts that it has not authorized the Respondent to register a domain name containing the Complainant’s trademark. The Complainant notes that there has been no content posted on the website to which the disputed domain name resolves since August 2019, and submits that the disputed domain name is being passively held, in bad faith. In this regard, the Complainant asserts that its trademarks are widely known in Hungary as well as in Central and Eastern Europe, that the Respondent has taken active steps to conceal his identity, that the Respondent previously provided inaccurate contact information on the website to which the disputed domain name resolved, and that any actual or contemplated use of the disputed domain name by the Respondent would be illegitimate.
The Complainant requests transfer of the disputed domain name.
Respondent
The Respondent submits that the disputed domain name is not identical or confusingly similar to a trademark in which the Complainant has rights. The Respondent asserts that at the time that the disputed domain name was registered, the Complainant did not own any trademark registrations in the United States, where the Respondent is located, nor did the Complainant own any trademark rights for “OTP”. The Respondent argues that “OTP” and “OTP Group” are used by other businesses. The Respondent asserts that “OTP” is a generic, technical, or abbreviated term and that it has been registered as a trademark by various businesses as early as 1976.
The Respondent claims to have rights or legitimate interests in the disputed domain name. The Respondent asserts that his companies have been commonly known by the disputed domain name. The Respondent claims to have referred to his group of companies as the “OTP Group” since at least 1998. The Respondent further submits that “OTP” is an acronym, standing for “one time program / programmable”, “one true paring”, or “one time password”. The Respondent notes that there are other domain name registrations not owned by the Complainant that comprise the letters “OTP”, and that the Complainant has no exclusive right to the use of “OTP” and therefore has no standing in the present proceedings. The Respondent submits that the Complainant has not established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
The Respondent submits that the disputed domain name was not registered or used in bad faith. The Respondent asserts that, since 1998, he has been using the terms “OTP Group” in connection with at least three of the Respondent’s companies, and that as a result the Respondent has acquired goodwill in connection with the acronym “OTP”. The Respondent submits that he did not register the disputed domain name with the Complainant in mind, and had no knowledge of the Complainant or its trademark at the time the Respondent registered the disputed domain name in 2004. The Respondent asserts that the disputed domain name has been held by the Respondent to represent the companies owned by the Respondent in good faith. The Respondent submits that he does not require permission from the Complainant to use the disputed domain name, as the disputed domain name is an abbreviated form of the Respondent’s company names. The Respondent submits that he has never provided any false or misleading WhoIs or contact information, that his contact information had been redacted in the WhoIs record as a result of the implementation of the General Data Protection Regulation 2016/679 (“GDPR”), and that it was clear that the contact information displayed on the website appearing at the disputed domain name in 2018 was part of a demo version of a website template. The Respondent submits that he did not develop the website at the disputed domain name due to other priorities. The Respondent claims to continue to operate under the names “OTP Group” and “OTP Venture Group”, providing software application services as well as hardware semiconductor solutions.
The Respondent requests a finding of Reverse Domain Name Hijacking (“RDNH”). The Respondent submits that the Complainant knew or should have known that the Complainant could not succeed in proving at least two of the three elements of the Policy.
Discussion and Findings
In order to prevail, the Complainant must demonstrate, on the balance of probabilities, that it has satisfied the requirements of paragraph 4(a) of the Policy:
(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 the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
Identical or Confusingly Similar
The Panel finds that the Complainant has established rights in the OTP and OTP BANK trademarks, the registration details of which are provided in the factual background section above. As stated in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.1.2, noting in particular the global nature of the Internet and Domain Name System, the jurisdiction(s) where the trademark is valid is not considered relevant to panel assessment under the first element. Moreover, the fact that a domain name may have been registered before a complainant has acquired trademark rights does not by itself preclude a complainant’s standing to file a UDRP case, nor a panel’s finding of identity or confusing similarity under the first element.
The disputed domain name includes the Complainant’s OTP trademark as its leading element together with the term “group” under the gTLD “.com”. The disputed domain name may also be read as comprising the distinctive element of the Complainant’s OTP BANK trademark, i.e., “OTP”, simply substituting the term “bank” with the term “group”. Neither the addition of the term “group” to the Complainant’s OTP trademark, nor the substitution of the term “bank” for the term “group” in the Complainant’s OTP BANK trademark prevents a finding of confusing similarity between the Complainant’s trademarks and the disputed domain name; see WIPO Overview 3.0, section 1.8.
The Panel finds the disputed domain name to be confusingly similar to the Complainant’s OTP and OTP BANK trademarks. The Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
Rights or Legitimate Interests
While the overall burden of proof in UDRP proceedings is on the complainant, previous panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element; see WIPO Overview 3.0, section 2.1.
The Complainant’s case under the second element is founded primarily on the Respondent’s lack of substantive use of the disputed domain name, and the notion that the registration of the disputed domain name itself tarnishes the Complainant’s trademarks and creates a misleading impression of association with the Complainant.
The Respondent, in reply, submits that he is commonly known by the disputed domain name, and that “OTP” is a descriptive term or acronym that has been adopted by many businesses across the world.
While the Respondent has submitted evidence of having founded companies under the names “OnSpec Technology Partners, Inc.”, “OTP Software, Inc”, and others, referred to collectively by the Respondent as the “OTP Group”, the Respondent has not provided clear evidence that he or his group of companies is recognized by any third parties under the name “OTP Group”, such that the Respondent may be said to be “commonly known” by the disputed domain name – particularly as concerns the “group” appendage – pursuant to paragraph 4(c)(ii) of the Policy. Nor has the Respondent produced any evidence of active use of the disputed domain name in connection with any descriptive meaning that could be ascribed to “OTP Group” that would otherwise confer rights or legitimate interests in the disputed domain name on the Respondent.
Notwithstanding the above, in light of the Panel’s findings under the third element, as set out below, the Panel need not make a definitive finding in relation to paragraph 4(a)(ii) of the Policy.
Registered and Used in Bad Faith
Bad faith under the Policy is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s trademark. Complaints alleging the types of conduct that amount to examples of bad faith as contemplated by paragraph 4(b) of the Policy should be supported by arguments and relevant evidence. Wholly unsupported allegations may not be sufficient to support a complainant’s case; see WIPO Overview 3.0, section 3.1.
The Complainant’s arguments in support of bad faith registration of the disputed domain name are founded on the notions that first, the Complainant has not granted the Respondent any authorization to register the disputed domain name containing the Complainant’s trademark; secondly, that the Respondent has not used the disputed domain name, except in 2018 to resolve to a template website lacking substantive content, as described above; and thirdly, that the Respondent has attempted to conceal his identity and provided false contact information on the website to which the disputed domain name resolved in 2018.
The Panel notes that the disputed domain name was registered on September 23, 2004. The Complainant states that it is well established in Central and Eastern Europe. The Complainant has not described the scale of its business operations (if any) in the United States, where the Respondent is located. Nor has the Complainant provided any evidence of trademark rights for “OTP” or any variation thereof in the United States that predate the registration of the disputed domain name. The Complainant has not submitted any evidence of its reputation so as to support an inference of the Respondent’s likely knowledge of the Complainant or its trademark rights. Nor is there any evidence of the Respondent’s use of the disputed domain name targeting the Complainant’s trademark such that the Respondent can be said to have had knowledge of the Complainant at the time that the Respondent registered the disputed domain name. In terms of the nature of the disputed domain name, despite the inclusion of the Complainant’s OTP trademark in the disputed domain name, the inclusion of the term “group” does not by itself support an inference that the Respondent registered the disputed domain name in an attempt to create an association with the Complainant.
The Respondent denies having had any knowledge of the Complainant or its trademarks at the time that the disputed domain name was registered. The Respondent has submitted evidence of having founded companies under the names “OnSpec Technology Partners, Inc.”, “OTP Software, Inc”, and others, referred to collectively by the Respondent as the “OTP Group”. The Respondent has also provided evidence (dating from as early as 1998) referring to his companies as the “OTP Group” in promotional correspondence with third parties. The Respondent has also submitted evidence indicating that he has been the longstanding registrant of the domain name <optsoft.com> (registered on July 7, 1997), which has been used in connection with a website promoting the Respondent’s software and technology consulting services. The Panel finds that the Respondent has presented sufficient evidence to provide a credible and rational explanation for the Respondent’s registration of the disputed domain name.
The Panel further finds the Complainant’s allegations that the Respondent has attempted to conceal his contact information in the WhoIs record, and that he provided false contact information on the website to which the disputed domain name resolved in 2018, to be misguided. As noted by the Respondent, the Respondent’s details in the registrar’s publicly-available WhoIs record appear to have been redacted for reasons relating to the implementation of the GDPR. The Respondent has provided historic WhoIs records showing that prior to May 2018, the Respondent’s name and contact information was disclosed in full in the WhoIs record for the disputed domain name. The Panel finds that it was reasonably apparent that the website to which the disputed domain name resolved in 2018 was a template website lacking substantive content, and that the contact information displayed therein was simply placeholder contact information, not intended to mislead Internet users in any way.
In light of the above, the Panel finds that the Complainant has failed to demonstrate that the Respondent registered the disputed domain name in bad faith. It follows that the Respondent’s longstanding holding of the disputed domain name does not, in the circumstances of the present case, amount to bad faith vis-à-vis the disputed domain name.
The Complainant has not satisfied the requirements of paragraph 4(a)(iii) of the Policy.
Reverse Domain Name Hijacking (RDNH)
The Respondent has requested that the Panel enter a finding of RDNH.
Paragraph 1 of the Rules defines RDNH as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.” Prior UDRP panels have consistently held that the mere lack of success of a complaint is not itself sufficient for a finding of RDNH; see WIPO Overview 3.0, section 4.16.
The Panel observes that the present Complaint was founded on relevant trademark rights, several of which predated the registration of the disputed domain name. The Panel does not accept the Respondent’s submission that the Complainant knew or ought to have known that it could not succeed under any fair interpretation of facts reasonably available prior to the filing of the Complaint. Rather, the Response raised a number of matters that the Complainant could not reasonably have been expected to be aware of at the time that the Complaint was submitted to the Center. Despite the apparent weaknesses of the Complainant’s case, as well as its shortcomings in terms of relevant or probative evidence, there is no indication that the Complainant has unreasonably ignored established UDRP precedent, nor has the Complainant provided false evidence or otherwise attempted to mislead the Panel.
The Panel declines to enter a finding of RDNH.
Decision
For the foregoing reasons, the Complaint is denied.
/Jane Seager/
Jane Seager
Sole Panelist
Date: January 29, 2021
Leave a Reply