Decision

ARBITRATION AND MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION
Advance Magazine Publishers Inc. v. Domain Admin, Privacy Protect, LLC (Privacy Protect.org) / Tarun Suri
Case No. D2021-2923

1. The Parties

The Complainant is Advance Magazine Publishers Inc., United States of America (“United States”), represented by Rahul Chaudhry & Partners, India.

The Respondent is Domain Admin,Privacy Protect, LLC (Privacy Protect.org), United States / Tarun Suri, India, represented by Cylaw Solutions, India.

2. The Domain Name and Registrar

The disputed domain name <voguetravels.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 September 6, 2021. On September 6, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 7, 2021, 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 September 21, 2021 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 amended Complaint on September 22, 2021.

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 the Respondent of the Complaint, and the proceedings commenced on October 1, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 21, 2021. The Respondent requested additional days to file its Response. The Center granted an extension of the due date to submit the response until October 31, 2021. The Response was filed with the Center on October 31, 2021.

The Center appointed Edoardo Fano as the sole panelist in this matter on November 22, 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 has not received any requests from the Complainant or the Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the Parties.

The language of the proceeding is English, being the language of the Registration Agreement, as per paragraph 11(a) of the Rules.

4. Factual Background

The Complainant is Advance Magazine Publishers Inc., a United States company operating in the field of publications and owning several trademark registrations for VOGUE, some of them in the name of its unincorporated division The Condé Nast Publications Inc., among which:

– United States Trademark Registration No. 71112351 for VOGUE, registered on May 20, 1919;

– International Trademark Registration No. 158005 for VOGUE, registered on December 3, 1951;

– Indian Trademark Registration No. 1302833 for VOGUE, registered on August 16, 2004.

The Complainant operates on the Internet at the main website “www.vogue.com”, as well as with many other generic Top-Level Domains (“gTLDs”) and country code Top-Level Domains (“ccTLDs”) for the trademark VOGUE, including <vogue.in>, some of them in the name of its unincorporated division The Condé Nast Publications Inc.

The Complainant provided evidence in support of the above.

According to the WhoIs records, the disputed domain name was registered on December 19, 2005 and it is currently resolving to an error page. However, the disputed domain name has been previously used for a website offering travel agency services.

On June 19, 2019, the Complainant’s legal representatives sent a cease-and-desist letter to the Respondent, followed by a reminder on July 4, 2019, without receiving any reply.

5. Parties’ Contentions

A. Complainant

The Complainant states that the disputed domain name <voguetravels.com> is confusingly similar to its trademark VOGUE, as the disputed domain name wholly contains the Complainant’s trademark with the addition of the generic term “travels”.

Moreover, the Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name, since it has not been authorized by the Complainant to register the disputed domain name or to use its trademark within the disputed domain name and it is not making either a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name.

The Complainant submits that the Respondent has registered and is using the disputed domain name in bad faith, since it was registered with the only purpose of disrupting the business of the Complainant and attracting Internet users for commercial gain by creating confusion with the Complainant’s trademark.

B. Respondent

The Respondent submits that “Vogue Travel” is its Indian Partnership firm formed on September 10, 2005 and formally registered with the Delhi Registrar of Firms on November 10, 2014 (Annex II(a) of the Response), providing travel agency services since 2005, also through Internet by means of the website at the disputed domain name.

The Respondent acknowledges that the disputed domain name is confusingly similar to the Complainant’s trademark VOGUE, but it states that the dictionary term “vogue” was chosen for its meaning of “fashion” and “style”, as the Complainant and many other companies have done in different fields.

The Respondent asserts to have rights and legitimate interests in the disputed domain name, since the Partnership firm “Vogue Travel” was commonly known in India since September 2005 and the website at the disputed domain name was active from mid-2006 till 2020.

Finally, the Respondent states that the disputed domain name was not registered in bad faith, but instead for its common generic meaning, while the Complainant’s trademark VOGUE entered the Indian market in 2007 and the Complainant’s websites “www.vogue.in” and “www.vogue.com” were not active until respectively 2007 and 2009, and therefore the Respondent could not be aware of the Complainant and its trademark at the time of the registration of the disputed domain name. As regards the use in bad faith of the disputed domain name, the Respondent asserts that its 14 years’ use of the website at the disputed domain name as a travel agency cannot be considered bad faith use, while the actual non use of the disputed domain name is due to the difficult situation of the tourism sector because of Covid 19.

Furthermore, the Respondent adds that the Complaint should be barred by the doctrine of laches, since the Complainant waited 15 years to initiate these proceedings, and considers the Complaint to be filed in bad faith on the part of the Complainant, as Reverse Domain Name Hijacking.

6. Discussion and Findings

Paragraph 4(a) of the Policy lists three elements, which the Complainant must satisfy in order to succeed:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the 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

The Panel finds that the Complainant is the owner of the trademark VOGUE both by registration and acquired reputation and that the disputed domain name <voguetravels.com> is confusingly similar to the trademark VOGUE.

Regarding the addition of the term “travels”, the Panel notes that it is now well established that the addition of descriptive terms or letters to a domain name does not prevent a finding of confusing similarity between the disputed domain name and the trademark (see, e.g., Aventis Pharma SA., Aventis Pharma Deutschland GmbH v. Jonathan Valicenti, WIPO Case No. D2005-0037; Red Bull GmbH v. Chai Larbthanasub, WIPO Case No. D2003-0709; and America Online, Inc. v. Dolphin@Heart, WIPO Case No. D2000-0713). The addition of the term “travels” does not therefore prevent the disputed domain name from being confusingly similar to the Complainant’s trademark. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8.

It is also well accepted that a generic Top-Level Domain (“gTLD”), in this case “.com”, may be ignored when assessing the similarity between a trademark and a domain name. See WIPO Overview 3.0, section 1.11.

The Panel finds that the Complainant has, therefore, met its burden of proving that the disputed domain name is confusingly similar to the Complainant’s trademark, pursuant to the Policy, paragraph 4(a)(i).

B. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy requires the Complainant to prove that the Respondent has no rights or legitimate interests in the disputed domain name.

The Respondent may establish a right or legitimate interest in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following circumstances, in particular but without limitation:

“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(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

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

According to paragraph 4(a) of the Policy, the Complainant has the burden of proving the three elements of the Policy. However, satisfying the burden of proving a lack of the Respondent’s rights or legitimate interests in respect of the disputed domain name according to paragraph 4(a)(ii) of the Policy is potentially quite difficult, since proving a negative circumstance is always more complicate than establishing a positive one.

As such, it is well accepted that it is sufficient for the Complainant to make a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name in order to shift the burden of production on the Respondent. If the Respondent fails to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy or on any other basis, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.

The Complainant in its Complaint, and as set out above, has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. It asserts that the Respondent, who is not currently associated with the Complainant in any way, is not using the disputed domain name for a legitimate noncommercial or fair use or in connection with a bona fide offering of goods or services. The disputed domain name is currently redirecting to an error page and was previously used in connection to a website offering travel agency services.

The prima facie case presented by the Complainant is enough to shift the burden of production to the Respondent to demonstrate that it has rights or legitimate interests in the disputed domain name.

As mentioned above, the Respondent claimed to have registered the disputed domain name for its inherent value as a common word domain name with different possible references – including “fashion” and “style” – and pointed it to a webpage offering travel agency services.

As stated in section 2.10.1 of the WIPO Overview 3.0, “merely registering a domain name comprised of a dictionary word or phrase does not by itself automatically confer rights or legitimate interests on the respondent; panels have held that mere arguments that a domain name corresponds to a dictionary term/phrase will not necessarily suffice. In order to find rights or legitimate interests in a domain name based on its dictionary meaning, the domain name should be genuinely used, or at least demonstrably intended for such use, in connection with the relied-upon dictionary meaning and not to trade off third-party trademark rights. (…) Panels have assessed cases involving common phrases (whether spelled out or numerical) corresponding in whole or in part to numbers (e.g., 24/7 or 365) in a similar manner as dictionary terms. Panels also tend to look at factors such as the status and fame of the relevant mark and whether the respondent has registered and legitimately used other domain names containing dictionary words or phrases in connection with the respective dictionary meaning”.

The Panel notes that, according to the Delhi Registrar of Firms, the Respondent’s Indian Partnership firm “Vogue Travel” was formed on September 10, 2005 and formally registered on November 10, 2014 (Annex II(a) of the Response), and that the Respondent has been using a name corresponding to the disputed domain name, as further proved by several Facebook and Twitter posts (Annex IX(a)(b) of the Response).

As regards the past use of the disputed domain name, currently redirecting to an error page, the Panel finds that, according to the Wayback Machine pages (“www.archive.org”) provided by the Respondent (Annex III of the Response), some of them also reproduced in the Complainant’s cease-and-desist letter sent to the Respondent (Annex P of the Complaint), the disputed domain name has been used in connection with what appears to be a bona fide offering of travel agency services before any notice of the current dispute, promoting the Respondent’s own business without intending to trade off or exploit the Complainant’s trademark, which appears to be well known in a different field.

In light of the above, the Panel finds that the Complainant has failed to prove that the Respondent has no rights or legitimate interests in respect of the disputed domain name, in accordance with paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

In order to succeed, the Complainant must establish that all three elements of the Policy are present cumulatively, and the Panel has already found that the Respondent does have rights or legitimate interests in respect of the disputed domain name.

Even though it is not therefore necessary to proceed to determine bad faith registration and use of the disputed domain name, the Panel deems that the Complainant’s unsupported assertion that “the Respondent registered the Disputed Domain Name to make unauthorized use of the Complainant’s goodwill and reputation for his own personal and commercial purposes and to disrupt the business of the Complainant under its mark VOGUE” would not meet its burden of proof on this third element either.

The Panel finds that there is no evidence suggesting that the Respondent registered and used the disputed domain name in bad faith within the meaning of the Policy: this Panel is not a court to decide upon civil disputes or trademark infringement, as the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”.

The Respondent was using the disputed domain name in the field of tourism, and the logo and layout used by the Respondent in respect of its Partnership firm name “Vogue Travels” in the website at the disputed domain name were completely different to those of the Complainant’s trademark VOGUE. While the Panel is aware of the extended use of the Complainant’s trademark VOGUE, the Panel finds that the evidence submitted by the Complainant is not sufficient to conclude that the Respondent registered the disputed domain name in bad faith.

The Panel therefore finds that that the Complainant has failed to prove that the disputed domain name has been registered and is being used in bad faith, according with paragraph 4(a)(iii) of the Policy.

D. Reverse Domain Name Hijacking 

The Respondent states that the Complainant in engaging in Reverse Domain Name Hijacking.

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”.

The Rules define Reverse Domain Name Hijacking as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name”.

The Panel also bears in mind that the Complainant in this case is represented by counsel and, therefore, it should be held to a higher standard (see section 4.16 of the WIPO Overview 3.0).

The Panel is not persuaded that the circumstances of the present case justify a finding of Reverse Domain Name Hijacking. On balance, the Panel does not deem it appropriate to issue such a finding since due weight must be given to the Complainant’s trademark rights as well as to the nature of the disputed domain name and the inferences that can be drawn from those aspects. Moreover, on the one hand the supposed notoriety of the Complainant’s trademark VOGUE in India at the time of the disputed domain name registration was not adequately proved and the present Complaint was filed only when the Respondent’s bona fide offering of travel agency services had stopped; on the other hand, the evidence as a whole is open to the interpretation that the Complainant was motivated by a desire to protect its trademark rather than to harass the Respondent, trying to settle the question before filing the present Complaint by sending a cease-and-desist letter that remained unanswered by the Respondent.

The Panel therefore declines to find that the Complainant has acted in bad faith and does not issue a finding of Reverse Domain Name Hijacking.

7. Decision 

For the foregoing reasons, the Complaint is denied.

Edoardo Fano
Sole Panelist
Date: November 26, 2021

ASIAN DOMAIN NAME DISPUTE RESOLUTION CENTRE (Hong Kong Office)

ADMINISTRATIVE PANEL DECISION
Case No. HK-2101540
Complainant: Hangzhou Huihong Technology Co., Ltd. (杭州恢弘科 技有限公司 )
Respondent: Cai Ruizhen
Disputed Domain Name(s): <sloli.com>

1. The Parties and Disputed Domain Name

The Complainant is Hangzhou Huihong Technology Co., Ltd. (杭州恢弘科技有限公司 ) of Room 1901-1912, Building 2, No. 555 Xincheng Road, Puyan Street, Binjiang District, Hangzhou City, Zhejiang Province.
The Respondent is Cai Ruizhen, of Fujian Xiamen Wanxiang Guoji Shang Wu Zhongxin.

The disputed domain name is <sloli.com>, registered by the Respondent with DropCatch.com 1420 LLC, of 2635 Walnut Street Denver, CO 80205.

2. Procedural History

On 15 September 2021, the Complainant submitted a Complaint to the Hong Kong Office of Asian Domain Name Dispute Resolution Centre (ADNDRC) by email and elected this case to be dealt with by a single-member Panel, in accordance with the Uniform Domain Name Dispute Resolution Policy (the Policy) and the Rules for Uniform Domain Name Dispute Resolution Policy (the Rules) approved by the Internet Corporation for Assigned Names and Numbers (ICANN), and the ADNDRC Supplemental Rules to the ICANN Uniform Domain Name Dispute Resolution Policy (the ADNDRC Supplemental Rules) approved by the ADNDRC. On the same day, the ADNDRC Hong Kong Office sent to the Complainant by email an acknowledgement of the receipt of the Complaint.

On 15 September 2021, the ADNDRC Hong Kong Office sent to the Registrar by email a request for registrar verification in connection with the disputed domain name. The Registrar responded to the ADNDRC Hong Kong Office on the same day its verification response, confirming that the Respondent is listed as the registrant; and further provided the Respondent’s contact details on 16 September 2021.

On 17 September 2021, the ADNDRC Hong Kong Office notified the Complainant to revise its Complaint based on the information provided by the Registrar. On 22 September 2021, the Complainant submitted a revised Complaint to the ADNDRC Hong Kong Office.

On 23 September 2021, the ADNDRC Hong Kong Office notified the Complainant that the Complaint has been confirmed and the case officially commenced. On the same day, the ADNDRC Hong Kong Office transmitted by email to the Respondent the Written Notice of the Complaint, which informed that the Complainant had filed a Complaint against the disputed domain name, together with the Complaint and its attachments according to the Rules and the Supplemental Rules. On the same day, the ADNDRC Hong Kong Office notified ICANN and the Registrar of the commencement of the proceedings.

On 27 September 2021, the Respondent submitted by email a request for extending the deadline to file the response. On 28 September 2021, the ADNDRC Hong Kong Office notified the Complainant of the Respondent’s request and received the Complainant’s comments on the same day. In view of both the Respondent’s requests and the Complainant’s comments, the ADNDRC Hong Kong Office made a decision to grant a new deadline for the Response and notified the two parties by email on the same day.

On 28 October 2021, the Respondent submitted a Response within the required time and elected this case to be dealt with by a single-member Panel. On the same day, the ADNDRC Hong Kong Office transmitted the Response to the Complainant. Also on the same day, the ADNDRC Hong Kong Office informed the Complainant and the Respondent that the ADNDRC Hong Kong Office would appoint a single-member Panel to proceed to render the decision.

Having received a Declaration of Impartiality and Independence and a Statement of Acceptance from Ms. Julia Hongbo ZHONG, the ADNDRC Hong Kong Office notified the parties on 29 October 2021 that the Panel in this case had been selected, with Ms. Julia Hongbo ZHONG acting as the sole panelist.

On 29 October 2021, the Panel received the file from the ADNDRC Hong Kong Office and was to render a Decision within 14 days, i.e., on or before 12 November 2021.

Pursuant to Paragraph 11 (a) of the Rules, unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding. The language of the current disputed domain name Registration Agreement is English; thus, the Panel determined English as the language of the proceedings.

3. Factual background

A. The Complainant

The Complainant in this case is Hangzhou Huihong Technology Co., Ltd. (杭州恢弘科技有限 公司 ). The registered address is Room 1901-1912, Building 2, No. 555 Xincheng Road, Puyan Street, Binjiang District, Hangzhou City, Zhejiang Province. The authorized representative in this case is Hangzhou Chofn Intellectual Property Agency Co., Ltd.

B. The Respondent 

The Respondent in this case is Cai Ruizhen. The registered address is Fujian Xiamen Wanxiang Guoji Shang Wu Zhongxin. The Respondent has no authorized representative in this case (Services provided in the background by Cylaw Solutions, India). 

The Respondent is the current registrant of the disputed domain name <sloli.com>, which was registered on 25 September 2019 according to WHOIS information. The Registrar of the disputed domain name is DropCatch.com 1420 LLC.

4. Parties’ Contentions

A. Complainant

The Complainant’s contentions are summarized as follows:

i. The disputed domain name is the same or extremely similar to the trademark or service mark owned by the Complainant, which is likely to cause confusion.

As early as 2016, the Complainant filed an application in China and other countries and regions to protect the trademark “sloli”, see the Annex 5: Complainant’s Trademark Registration Certificate. The Complainant has the exclusive right to use the “sloli” trademark in many countries and regions.

The Complainant is a fitness apparel & accessories manufacturer and online retailer based in China. The trademarks “sloli” owned by the Complainant have had high popularity and influence through years of use.

The founder of the brand “sloli” is Weibo internet celebrity Chen Jing (the Weibo name is Chen Nuanyang), see Annex 6: Chen Nuanyang’s Weibo homepage. From 2015 to 2017, “sloli” has sold more than 6 million products, served more than 2 million customers, and accumulated more than 6 million loyal fans.

 The complainant has channels on e-commerce platforms such as Tmall, JD.com, Vipshop, Xiaohongshu, and Mogujie, starting from the beginning of 2017, with the sales increasing from 70 million to 150 million. In 2021 the Complainant’s pre-sale totals on the Tmall platform increased by 1104% year-on-year.

 On April 25, 2018, the Complainant opened a special pop-up store in Hangzhou Hubin Yintai in77 shopping mall. In the same year, the complaint became the apparel sponsor of Hangzhou International Women’s Marathon. The number of the Complainants’ online fans has exceeded 12 million. See Annex 7: Some media reports

 Entering “sloli” on search sites, and the search results refer to the Complainant and its brand, see Annex 8: Search engine results.
The disputed domain name <sloli.com> is confusingly similar to Complainant’s trademarks. Without the suffix “.com”, the remaining part of the disputed domain name is “sloli”, which is the same as the complainant’s trademark “sloli”. The Complainant’s trademark “sloli” is a combination of the first letter “S” in the English word “sylphlike” and the English word “loli”. Through extensive use by the complainant, the trademark “soli” has gained strong distinctiveness and high reputations. The disputed domain name is the same or extremely similar to the trademark or service mark owned by the complainant, which is likely to cause confusion.

ii. The Respondent has no rights or legitimate interests in respect to the domain name:

The complainant investigated on the official website of China Trademark Office in the name of the respondent “Cai Ruizhen”, but no trademark application was found under the name of the respondent. Moreover, the Complainant has never directly or indirectly authorized respondent to use the “sloli” trademark and domain name in any form. The name of the Respondent is “Cai Ruizhen”, it is obviously impossible for the Respondent to enjoy the relevant name rights for “sloli”. The disputed domain name has not been used since its registration, see Annex 9: History page. Therefore, the Respondent has no rights or legitimate interests in respect of the disputed domain name.

iii. The disputed domain name has been registered in bad faith.

The Complainant holds the prior rights of trademark “sloli” with high visibility and reputation. The registration of the disputed domain name <sloli.com> is later than the time when the complainant used the trademark and operated business in China. The Complainant believes that the Respondent was aware of the existence of the Complainant and its trademark at the time of registering the disputed domain name.

The Respondent stocks a number of domain names, see Annex 10. Some of the domain names correspond to some well-known brands. For example, the main identifying part of the domain name <exlive.com> corresponds to the trademark “exlive” of the gps monitoring management software; the main identifying part of the domain name <bionike.com> corresponds to the trademark “bionike” of the cosmeceutical brand from Italy. The complainant believes that the respondent’s motive for registering the disputed domain name cannot be in good faith and the respondent is a professional cybersquatter.

In addition, the Complainant believes that the Respondent’s act of “registering domain name without using” is for preventing complainants from registering the same domain name using the same letter combination. Therefore, the Respondent’s conduct was consistent with the description in Policy 4B (ii).

In accordance with the relevant provisions and for the above reasons, the complainant requests that the disputed domain name <sloli.com> should be transferred to the Complainant.

* The above-mentioned Annexes refer to the annexes to the Complaint which are not attached to this Decision.

B. Respondent 

To be updated

 

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Decision:

C) Bad Faith
Under the third element of the Policy, the Complainant must establish that the disputed domain name has been registered and is being used in bad faith by the Respondent.
Under Paragraph 4(b) of the Policy, the following circumstances in particular, but without limitation, are evidence of registration and use of a disputed domain name in bad faith:
i. Circumstances indicating that the Respondent has registered or has acquired a domain name primarily for the purpose of selling, renting, or otherwise transferring said domain name registration to a Complainant who is the owner of the trademark or service mark or to a competitor of said Complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or
ii. The Respondent has registered a domain name in order to prevent an owner of a trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
iii. The Respondent has registered a domain name primarily for the purpose of disrupting the business of a competitor; or
iv. By using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to their web site or other on-line location, by creating a likelihood of confusion over the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location.
The Complainant alleges that the Respondent has in bad faith in registered the disputed domain name under Paragraph 4B(ii) of the Policy, because: 1) The Respondent was aware of the existence of the Complainant and its trademark at the time of registering the disputed domain name because of its high reputation and extensive use of the Complainant’s trademark “sloli”, 2) The Respondent is a cybersquatter stocking a number of domain names, and 3) That the Respondent registered the disputed domain name without use indicates the Respondent’s attempt to prevent the Complainant from registering the same domain name or using the same letter combination.
 Regarding the Respondent’s knowledge of the Complainant and its trademark “sloli”
The Panel discovered that both the Complainant and the Respondent are from China. The evidence shows that, in China, the date that the Complainant actually holding the right of trademarks “sloli” by assignment in 2020 is later than the registration date of the disputed domain name. Thus, the Panel shall look into other evidence to evaluate the Respondent’s knowledge on the Complainant and its trademark “sloli”.

The Complainant’s Annex 6 is the Weibo homepage of a fitness celebrity named CHEN Nuanyang, stated as a founder of the brand “暴走的萝莉”. There is no mention of the trademark “sloli” on her homepage. In the Complainant’s Annex 7, there are five online media reports. However, from the picture and the entire report the Panel was unable to find it had any connection to the Complainant. It was obviously about “暴走的萝莉”.

As to the other claims about extensive use and the high reputation of the Complainant and its brands “sloli”, such as 1) he operated online businesses on different e-commerce platforms, such as Tmall, JD.com, Vipshop, Xiaohongshu, and Mogujie since the beginning of 2017, with sales increasing from RMB 70 million to RMB 150 million, 2) he opened a store in the Hangzhou Hubin Yintai in77 shopping mall in 2018, and 3) he was an apparel sponsor of the Hangzhou International Women’s Marathon in 2018, the Panel finds that such matters in Annex 7 of the Complaint are also related to “暴走的萝莉”.

Moreover, the publication dates of the latter three (3) reports are in 2021, much later than the registration date of the disputed domain name (2019).

The Complainant failed to demonstrate that the trademark “sloli” has established a reputation either in China or in other jurisdictions. There is no evidence to prove that the Respondent had heard or should have heard of the Complainant and/or its trademark “sloli” before registering the disputed domain name. Without evidence of the Respondent’s actual knowledge and targeting the Complainant and its trademark “sloli”, it cannot be presumed to be bad faith merely from the Complainant’s prior rights of the trademark “sloli” registered in the U.S.A., the E.U. and Japan.

 Regarding the Complainant’s allegations of cybersquatter
Annex 9 of the Complaint shows there are thirty (30) domain names connected with the contact email address of the disputed domain name. The Complainant alleged that some of the domain names are well-known brands owned by others. The Complainant gave two examples of the domain names <exlive.com> and <bionike.com>, stating that the main identifying part of the domain name <exlive.com> corresponds to the trademark “exlive” of the gps monitoring management software while the main identifying part of the domain name <bionike.com> corresponds to the trademark “bionike” of the cosmeceutical brand from Italy. However, the Complainant did not submit any evidence about such relevant brands or the well-known status of said brands.
Both parties in this case admit that the word “sloli” is a combination of the English letter “S” and the English word “loli”. The Respondent contends that he has good faith in registered the disputed domain name consisting of a common acronym and a dictionary term. The Respondent submitted evidence about the definition of the word “loli” from <Wikipedia> and <learningenglishfunway.com>, see Annex III of Response, to prove that “loli” is a dictonary word, and also submitted evidence to prove that the word “sloli” has been used widely on the internet by various internet users before the registration of the disputed domain name; see Annex-V of the Response. In view of the fact that the letter “S” is a common acronym in English and “loli” is a dictionary word or a common word on the internet, the Panel accepts the Respondent’s arguments that the way of combining the letter “S” with the dictionary word “loli” is very common; no one is able to claim a monopoly on such kind of combination.

Furthermore, the Panel discovers that, besides the domain names of <sloli.com>, <exlive.com> and <bionike.com>, most of the domain names owned by the Respondent comprise combinations of common dictionary words, descriptive terms or initials, such as <sunmark.com>, <boxbar.com>, <ecoplant.com> and <fcart.com>, which are common ways to coin a word. In the Panel’s view, these domain names held by the Respondent lend more support to the Respondent’s explanation for choosing the disputed domain name for future use than it does to the Complainant’s claim that he targeted the Complainant’s and others’ trademarks. In addition, there is no provision in any law or regulation restricting the number of domain names that anyone can register or own in their own name.

 Regarding the allegations that the Respondent has held the disputed domain name without actual use in an attempt to prevent the Complainant from use.

The Panel notes from Annex 9 of the Complaint, the webpage of the disputed domain name is presented as (“sloli.com is coming soon”). It is obvious that “coming soon” is a common business term to express a store/shop will open shortly. The Panel would rather believe that it indicates the Respondent’s intention of using the disputed domain name than the Complainant’s allegations of an attempt of preventing the Complainant from registering the same domain name. In addition, the Complainant has produced evidence to prove that the website <www.sloli.store> belongs to him, see Annex 8 of the Complaint. The Respondent submitted a screenshot of the website <www.sloli.store> showing that this website is Complainant’s online shop setting up in 2020, see Annex-II of the Response. It is evident that the Complainant is normally running business through the website <www.sloli.store>. The Panel cannot find any facts that the disputed domain name prevents the Complainant from reflecting its trademark or disrupting the Complainant’s business.

Based on the claims and evidence of two parties, the complainant’s claims under the Paragraph 4B(ii) of the Policy is untenable.

 Additional Findings regarding bad faith

i. The Respondent submitted communications on 31 August 2021 with brokers, see Annex-VI of the Response, showing that the Respondent had no intention to sell or transfer the disputed domain name. The Complainant admitted such in the last paragraph of Page No. 7 of its Complaint. On the evidence available here, the Panel was unable to find the Respondent’s attempt to sell, rent or transfer the domain name.

ii. The Panel cannot find Respondent’s attempt to confuse internet users by using the disputed domain name because the disputed domain name has not yet been used, which has been admitted by both parties involved in the present case.

As a result, the Complainant is not able to prove its contentions that the disputed domain name was registered and used in bad faith as provided under Paragraph 4(b) of the Policy. Accordingly, the Panel holds that Complainant failed to sustain its burden under the third element as provided under Paragraph 4(a) of the Policy.

6. Decision

For all the forgoing reasons, in accordance with Paragraph 4(a) of the Policy and Article 15 of the Rules, the Panel concludes that the Complaint shall be DENIED.

Ms. Julia Hongbo ZHONG
Panelist
Dated: 11 November 2021

ADMINISTRATIVE PANEL DECISION

Valeo, Valeo Service v. Anshuman Vyas

Case No. D2021-2125

 The Parties

The Complainants are Valeo and Valeo Service, France, represented by Tmark Conseils, France.

The Respondent is Anshuman Vyas, United States of America (“United States”), represented by Cylaw Solutions, India.

 The Domain Name and Registrar

The disputed domain name <valoservice.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 July 2, 2021.  On July 5, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name.  On July 6, 2021, 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 July 7, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amended Complaint.  In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on July 8, 2021.

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 the Respondent of the Complaint, and the proceedings commenced on July 9, 2021.  In accordance with the Rules, paragraph 5, the due date for Response was August 8, 2021.  The Respondent submitted various informal communications to the Center and the formal Response was filed with the Center on August 8, 2021.

The Center appointed Warwick A. Rothnie as the sole panelist in this matter on August 11, 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

According to the Complaint, the Complainants are, respectively, the parent or holding company of the Valeo group and one of its subsidiaries involved in the design, production and distribution of automotive parts for automobile manufacturers and, in the case of the second Complainant, the aftermarket.  The first Complainant, Valeo, appears to have been incorporated in 1955;  the second, Valeo Service, in May 1987. From the former’s website at “www.valeo.com/en/our-story” (a link to which is included in the Complaint), however, it appears its corporate name “Valeo” was adopted in 1980.

Together, they have some 59 research centres and some 191 production sites employing some 19,000 engineers and over 111,000 employees in total.  Group sales in 2007 were EUR 9,555 million rising to EUR 19,200 million in 2019 and EUR 16,400 in 2020.

A number of the Complainants’ products or innovations have been honoured with technical or business awards.  Prior to the registration of the disputed domain name, these awards included Premier Automotive Suppliers’ Contributions to Excellence (PACE) awards awarded by Automotive News magazine in:

 

– 2018:  SCALA® laser scanner and the Valeo R-744 air-conditioning system;
– 2016:  electric supercharger and water-cooled condenser;
– 2015:  EG high efficiency alternator;
– 2014:  back-over protection system;
– 2013:  water-charged air cooled air intake module;
– 2012:  AquaBlade®/VisioBlade® wiper system;
– 2008:  Park4U® park assist system;
– 2007:  multi-beam radar (MBR) blind spot detection system;
– 2006:  StARS micro-hybrid system;  and
– 2005:  LaneVue lane departure warning system.

It has also been awarded the CLEPA Innovation Award in 2016 for its Remoted Clean4U Defrosting Function and a BFM Business BFM “Award du stratège digital” in November 2017.

The Complaint includes evidence that the Complainants have numerous registered trademarks around the world including:

(a) France Registered Trademark No. 707918, VALEO, which was registered in August 1966 for a range of goods in International Classes 6, 7, 9, 11 and 12;

(b) France Registered Trademark No. 1336045, VALEO, which was registered in December 1985 for a wide range of goods and services in International Classes 1, 2, 3, 4, 6, 7, 9, 11, 12, 14, 16, 17, 25, 28, 35, 37, 38, 39 and 41;

(c) European Union Trademark (EUTM) No. 000187542, VALEO, which was registered in October 1999 in respect of a wide range of goods and services in International Classes 6, 7, 9, 11, 12, 16, 17, 18, 25, 35 and 38;

(d) European Union Trademark (EUTM) No. 005758412, VALEO and device, which was registered in July 2007 in respect of a wide range of goods and services in International Classes 3, 4, 6, 7, 9, 11, 12, 17 and 37;

(e) China Registered Trademark No. G588286, VALEO, which was registered in January 1992 in respect of goods in International Class 7;

(f) United States Registered Trademark No. 3,550,318, VALEO and device, which was registered in June 2009 in respect of a range of goods in International Class 10.

The Complainants also have a number of registrations for device marks:

such as French Registered Trademark No. 3075355, which was registered in January 2001 in respect of a wide range of goods and services in International Classes 1, 2, 3, 4, 6, 7, 9, 11, 12, 16, 17, 21, 35, 37, 38, 39 and 41. The second Complainant also has registrations for Valeo and Valeo Service, including:

(a) European Union Trademark EUTM No. 016127292 which was registered in June 2017 in respect of goods and services in International Classes 6, 7, 9, 11, 12, 35, 37, 38, 39, 41 and 42;  and

(b) United States Registered Trademark No. 5,853,731 which was filed on June 2, 2017 and registered on September 10, 2019 in respect of a range of goods in International Classes 7, 9, 11 and 12.

In addition to websites at the domain names <valeo.com> and <valeoservice.com>, the Complainants also have social media accounts including a Facebook account with over 157,000 followers, Twitter with over 34,000 followers, and Instagram with over 13,000 followers.

The disputed domain name was registered on September 4, 2018. The Respondent has provided evidence that he became the registrant in October 2020 through a transaction in the “Dynadot Aftermarket”.

According to the Response, the Respondent is a software engineer employed by Microsoft Corporation in the United States.  Amongst other things, he holds a portfolio of many generic, inherently valuable domain names.

It does not appear to be in dispute that, since he became the registrant, the Respondent offers the disputed domain name for sale through Dan.com for an asking price of EUR 2,288.

Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:

(i)         the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights;  and
(ii)        the 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.

Paragraph 15(a) of the Rules directs the Panel to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.

Identical or Confusingly Similar

The first element that the Complainants must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainants’ trademark rights.

There are two parts to this inquiry:  the Complainants must demonstrate that they (or one of them) have rights in a trademark at the date the Complaint was filed and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.

The Complainants have proven ownership of the registered trademarks for VALEO, VALEO SERVICE, and VALEO SERVICE WE CARE 4 YOU referred to in section 4 above.

The second stage of this inquiry simply requires a visual and aural comparison of the disputed domain name to the proven trademarks.  This test is narrower than and thus different to the question of “likelihood of confusion” under trademark law.  Therefore, questions such as the scope of the trademark rights, the geographical location of the respective parties and other considerations that may be relevant to an assessment of infringement under trademark law are not relevant at this stage.  Such matters, if relevant, may fall for consideration under the other elements of the Policy.  See e.g. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Overview 3.0), section 1.7.

In undertaking that comparison, it is permissible in the present circumstances to disregard the generic Top Level Domain (“gTLD”) component as a functional aspect of the domain name system.  WIPO Overview 3.0, section 1.11.  It is also usual to disregard the design elements of a trademark under the first element as such elements are generally incapable of representation in a domain name.  Where the textual elements have been disclaimed in the registration or cannot fairly be described as an essential or important element of the trademark, however, different considerations may arise.  See for example, WIPO Overview 3.0, section 1.10.

Disregarding the “.com” gTLD, the disputed domain name can be seen as “valo” and the ordinary English word “service.  The “valo” element is similar to the Complainants’ VALEO trademark / element but has simply dropped the letter “e”.

The Respondent contends that this means that the disputed domain name is not confusingly similar to the Complainants’ trademarks.  He says it consists of two descriptive words “valo”, which in Finnish means light or lamp, and “service”.  The Respondent further points out that neither trademark searches nor Google searches for “valo” yield any result which is or includes “Valeo”.

The claimed descriptive nature of the disputed domain name as a whole is better considered under the other elements of the Policy.  At this stage of the inquiry, the question is whether the disputed domain name is identical with or confusingly similar to the Complainants’ proven trademarks.  As already noted that merely requires a simple visual and aural comparison.

In that comparison, the omission of the letter “e” can be seen as a misspelling of the Complainants’ trademark and, given the non-distinctive nature of the ordinary English word “service” is confusingly similar to at least the Complainants’ VALEO and VALEO SERVICES trademarks.  WIPO Overview 3.0, section 1.9 and 1.8.  As the words “Valeo Service” are a prominent and important part of the Complainants’ VALEO SERVICE WE CARE 4 YOU trademark, a finding of confusing similarity would also follow.

The Respondent contends that the “typosquatting” cases should not apply as “valo” is, according to the Respondent a descriptive term.  The Respondent cites Tata Sons Pvt. Ltd. v. Victor TSB WIPO Case No. D2021-1084 (involving <taatas.com> in support of this contention.  In that decision, however, the learned panelist found that the domain name was confusingly similar to the trademark TATA.  It does not provide any support for the Respondent’s contention.

The Respondent also points out that the United States registration for VALEO SERVICE WE CARE 4 YOU includes a disclaimer “No claim is made to the exclusive right to use “service” apart from the mark as shown”.  This disclaimer does not assist the Respondent at least in this context.  First, the disputed domain name is not “service.com”.  The question is whether the disputed domain name as a whole is confusingly similar to the Complainants’ trademarks.

Secondly, the Respondent’s argument does not address the Complainants’ registrations for VALEO alone.  The Respondent does point out that United States trademark registrations include notations that the term can be translated such as “be strong, be well, be powerful, prevail.”  Such notations are not disclaimers.  Whether or not they can operate that way or whether the term in question is distinctive of the goods or services in question depends in part on the context and in part on whether a significant part of the public would recognise the foreign meaning.  Having regard to those matters, the Panel does not consider “Valeo” is directly descriptive of the range of goods or services for which the Complainants’ have registered the term.  See WIPO Overview 3.0, section 1.8.

Accordingly, the Panel finds that the Complainants have established that the disputed domain name is confusingly similar to their trademarks and the requirement under the first limb of the Policy is satisfied.

Registered and Used in Bad Faith

In the circumstances of this case, it is appropriate to consider the third requirement under the Policy next.

Under the third requirement of the Policy, the Complainants must establish that the disputed domain name has been both registered and used in bad faith by the Respondent.  These are conjunctive requirements;  both must be satisfied for a successful complaint:  see e.g. Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd, WIPO Case No. D2010-0470.

Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant.

The Complainants contend their “Valeo” trademark is very well known.  The sales of the group have been referred to in section 4 above and are very substantial.  The Opposition Division of (then) OHIM found that, for the purposes of article 8(5) of the Community Trad Mark Regulation (CTMR), the first Complainant had a reputation in “Valeo” on the grounds of exposure to a substantial part of the public throughout the European Union:  Valeo v Alfred Stöckl Decision No. 977/2005.  According to the Complainant, the Intellectual Property Office in China also found that the first Complainant had a reputation in “Valeo” in 2010.  A number of previous panels have also found the Complainants’ trademark to be well-known.  These include Valeo v fa lei ao run hua you(bei jing) you xian gong si (Valeo Lubricants (Beijing) Co., Ltd.) / zhang ou (Zhang Ou), WIPO Case No. D2012-2311, Valeo v. Privacy Protect, LLC (PrivacyProtect.org) / Li Mq, WIPO Case No. D2018-2615;  Valeo v. Domain Administrator, Domain Administrator, Conrad Design Ltd, WIPO Case No. D2019-0236 and Valeo v. Pouya Habibi, To see Tejarat Pooya, WIPO Case No. D2019-2546.

The Respondent, however, has submitted a declaration in which he categorically denies any knowledge of the Complainants and their trademarks.

Further, he says he is in the business (at least on the side) of registering domain names, which he considers are likely to have intrinsic value because of their descriptive nature.  The Response includes evidence that he holds a significant number of such registrations.

The Respondent also says he has an interest in foreign languages and as a result he has registered a number of domain names for descriptive words in foreign languages.  Some of the domain names included in his evidence include <Elmedica.com> (which the Respondent claims is Spanish for “The Doctor”), <Emandar.com> (the Respondent claims Mandar is Portugese for “To Send”, combined with prefix “E” to indicate “electronically”), <Interioriza.com> (which the Respondent claims is Romanian for ‘internalize’), <Atlantas.com> (which the Respondent claims is Lithuanian for “Atlas”), <SpazioUrbano.com> (which the Respondent claims is Italian for “Urban Space”), <Tramitesyservicios.com> (which the Respondent claims is Spanish for “Procedures and Services”) and <FormaMarketing.com> (which the Respondent claims is Forma is Spanish for “Shape”, combined with English word “Marketing” to indicate ‘Marketing Form’).

The Respondent also provides evidence that he has registered at least four other domain names which end in “sevices”:  <driverlesstruckservices.com>, <trueclearingservices.com>, <whitecollarservices.com> and <reikiservices.com>.^[1]

According to the Respondent one of the languages which he has some familiarity with is Finnish.  The Respondent provides evidence demonstrating that “valo” in Finnish translates to “light” or “lamp” in English.  Thus, he considered “valo service” conveyed the idea of a service relating to lights.

The Panel must express more than some skepticism that the combination of two words from different languages can really be used in this way to claim the disputed domain name is merely descriptive.^[2] However, the issue under this limb of the Policy is the Respondent’s motivations in registering and using the disputed domain name and whether they can be described as in bad faith.  The plausibility of a claim that the disputed domain name is descriptive would be a consideration in that assessment, but is not necessarily determinative.

In the present case, there is more.  According to the Response, the Respondent undertook research before proceeding with the registration.  It is not entirely clear what the research consisted of.  However, the Response includes evidence that there are a very large number of businesses or entities in many countries around the world whose name is or starts with “valo”.  Also in the United States, there are a number of registered trademarks for or including “valo” in the names of a number of different parties and for a range of goods and services.

Importantly for present purposes, the Respondent points out, and has provided evidence demonstrating, that trademark searches for “valo” do not result in disclosure of any of the trademarks for VALEO or its derivatives VALEO SERVICE and VALEO SERVICE WE CARE $ YOU.  Similarly, Google searches of “valo” do not produce any links to the Complainants or their products.

In these circumstances, the Panel does not consider the Respondent’s denial of awareness of the Complainants and their trademarks can be disregarded.  These administrative proceedings are proceedings on the papers, without the benefit of procedures like discovery or oral evidence including cross-examination.  The Respondent’s explanation of how he came to register the disputed domain name is arguably unusual, but it is supported to an extent by his own past practices as evidenced by other domain names he has registered (albeit not many other ones, if any, based on Finnish words) and also the trademark and Google searches.

Accordingly, the Complainants have not established that the Respondent registered the disputed domain name in bad faith and the Complaint must fail.

In view of that outcome, no good purpose would be served by considering whether or not the Respondent has used the disputed domain name in bad faith or has been shown not to have rights or legitimate interests in the disputed domain name.

Reverse Domain Name Hijacking

The Respondent contends that the Complaint has been brought in bad faith and, accordingly, the Complainant should be sanctioned by a finding of reverse domain name hijacking.

Paragraph 15(e) of the Rules provides, in part:

“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.”

Paragraph 1 of the Rules defines “Reverse Domain Name Hijacking” to be “using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name”.

The fact that a Complaint has failed is not in itself sufficient to warrant a finding of reverse domain name hijacking.

In the present case, the Respondent has succeeded on the narrow ground that he did not register the disputed domain name in bad faith.  Contrary to the Respondent’s contentions, the Panel has found that the disputed domain name is confusingly similar to the Complainants’ trademarks.  In addition, the Panel considers the Complainants had a legitimate basis for considering the Respondent was likely to have been aware of their trademarks given how long they have been using the trademarks and the scale of that use albeit in the fairly discrete field of automotive parts and related products and services.

The Respondent was and is also offering the disputed domain name for sale for a price almost 200 times the USD 12.99 which the Respondent paid for it.

The Respondent has been able to rebut that inference on the basis of information essentially solely within his control.

Accordingly, the Panel declines to make the requested order.

 

6. Decision

For the foregoing reasons, the Complaint is denied.

 

/Warwick A. Rothnie/

Warwick A. Rothnie
Sole Panelist
Date:  August 25, 2021

[1] The Panel notes that <reikiservices.com> combines “reiki” and “services”.  While “reiki” is apparently of Japanese origin, its practice has apparently extended (amongst other places) into a number of English speaking countries including, apparently, the United States as the name of a particular branch of alternative medicine.

[2] The Respondent cites NovAtel Inc. v. Registration Private, Domains By Proxy, LLC / Domain Admin, FindYourDomain.com, WIPO Case No. D2019-1939 (<novatela.com>) in support of this proposition.  In that case, however, the respondent contended and the panel accepted that “nova tela” in Portuguese could be translated as “new screen” in English.

GoSecure Inc. is a Canadian based organization, established in 2003, providing security related solutions including predictive endpoint detection & response, next gen antivirus and so on. Whereas Mr. Billa Bhandari has a strong recognition in the International Bio-metrics community and a vast experience building business oriented, secure, scale-able and mission-critical trading systems in the banking industry, since last over 30 years. 

GoSecure Inc. filed a domain name disputed over generic domain name GoSecure.com claiming infringement of it’s registered Trademark rights and also went on to allege – Phishing attempts by Respondent, Passive Holding of Domain Name since Trademark registration in 2016. Also alleged that Respondent Repeatedly Renewed the Registration and Used the Domain in Bad Faith and based the same on further five grounds:

a) Respondent’s use of the at-issue trademark identical domain name to host email in furtherance of a phishing scheme aimed at defrauding third parties.
b) A request for a 5-figure payment in exchange for transferring the disputed domain name back to its rightful trademark owner is.
c) Respondent’s continued renewal of the domain in the absence of any content on the website for the past 10 years since 2011 constitutes bad faith use and registration.
d) Last five renewals of the registration from 2016-2020 were done after the GOSECURE Mark registered on June 28, 2016.
e) Respondent provided incomplete information when registering his domain name.

GoSecure.com domain had a registration date of September 14, 1999 and was legitimately used from 2002 till 2011 by the Respondent and even a Trademark registration was attempted. The Complainant Trademark got registered with USPTO in 2016 in USA and was having previous Canadian Trademarks but never disclosed in the Complaint. Further, the Complainant alleged phishing attempts being made by the Respondent, which they later backtracked under Additional Submissions.

There have been negotiation between the parties for $75k, while Complainant offered maximum of $10k and later came into UDRP.  Respondent even provided evidence as to future plans as to his another project VitalProbe Inc. in Dubai and using the term GoSecure in his new project as well.

The Panel upheld the legitimate interests the Respondent had as the emails were still in use and demonstrable preparations to use were evident as well. Further held this to be a matter of Reverse Domain Name hijacking and referred these proceedings as Complainant’s plan B, with an attempt to reverse domain hijacking, after a failed negotiation !

DECISION

GoSecure Inc. v. Billa Bhandari
Claim Number: FA2107001954083

PARTIES

Complainant is GoSecure Inc. (“Complainant”), represented by Andrew Skale of Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C., California, USA.

Respondent is Billa Bhandari (“Respondent”), represented by Ankur Raheja of Cylaw Solutions, India.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is &lt;gosecure.com&gt;, registered with GoDaddy.com, LLC.

PANEL

The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.

Ho-Hyun Nahm, Esq. (Chair), Gerald M. Levine, Ph.D., Esq., and Fernando Triana, Esq., as Panelists.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the FORUM electronically on July 7, 2021; the FORUM received payment on July 7, 2021.

On July 7, 2021, GoDaddy.com, LLC confirmed by e-mail to the FORUM that the &lt;gosecure.com&gt; domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On July 8, 2021, the FORUM served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 2, 2021 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@gosecure.com. Also on July 8, 2021, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post
and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.

A timely Response was received and determined to be complete on August 2, 2021.

On August 9, 2021, Respondent submitted to the Forum its objection to Complainant’s request for further submission. On August 10, 2021, Complainant filed an Additional Submission without permission from the Panel. On August 11, 2021, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the FORUM appointed Ho-Hyun Nahm, Esq. (Chair), Gerald M. Levine, Ph.D., Esq., and Fernando Triana, Esq. as Panelists.

On August 16, 2021, Respondent filed an Additional Submission without permission from the Panel.

Having reviewed the communications records, the Administrative Panel (the &quot;Panel&quot;) finds that the FORUM has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the &quot;Rules&quot;) &quot;to employ reasonably available means calculated to achieve actual notice to Respondent&quot; through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

i) Complainant, GoSecure Inc., provides computer and data security goods and services. Complainant has rights in the GOSECURE mark based on registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,986,200, registered June 28, 2016). The disputed domain name is identical to Complainant’s GOSECURE mark because it simply adds the “.com” generic top-level domain (“gTLD”).

ii) Respondent does not have rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name. Additionally, Respondent does not use the disputed domain for any bona fide offering of goods or services or legitimate noncommercial or fair use. Respondent uses the disputed domain to send phishing emails and also fails to
make active use of the disputed domain as it does not have a resolving website.

iii) Respondent registered and uses the disputed domain name in bad faith. Respondent offers to sell the domain at a price that exceeds registration costs. Additionally, Respondent uses the disputed domain name to send phishing emails. Furthermore, the disputed domain name has been inactive for the past 10 years. Respondent also failed to provide complete WHOIS information.
Respondent continued to renew the disputed domain name after Complainant’s GOSECURE mark was registered.

B. Respondent

i) Respondent is a well-known entrepreneur with experience in information security and privacy. Complainant has not established rights in the GOSECURE mark. Additionally, the disputed domain name consists of generic terms.

ii) Respondent has rights and legitimate interests in the disputed domain name since Respondent uses it for professional purposes and is commonly known by the domain name. Additionally, Respondent has never used the domain name for phishing and has plans to make active use of the domain. Furthermore, Respondent’s registration of the disputed domain name predates Complainant’s claimed rights in the GOSECURE mark by 16 years.

(iii) Respondent does not deny that Complainant reached out to the GoDaddy domain broker service to attempt to purchase the disputed domain name or that Respondent refused to sell the disputed domain name “for anything less than a strong 6-figure(s).”

iv) Respondent registered and uses the disputed domain name in good faith. Respondent did not solicit the sale of the disputed domain name and has the right to sell the domain at whatever price it deems appropriate. Additionally, Complainant’s allegations of phishing are false. Furthermore, Respondent made active use of the disputed domain name for over a decade and has plans to make active use of the domain name again in the near future. Also, Respondent’s WHOIS information is not completely visible due to the requirements of the GDRP Policy. Respondent’s registration of the disputed domain name predates Complainant’s rights in the GOSECURE mark and the renewal of the domain name is irrelevant.

(v) Complainant engages in reverse domain name hijacking.

C. Additional Submissions

Complainant’s Additional Submission

i) Respondent challenges Complainant’s rights in the GOSECURE mark by arguing that Complainant has a different address on the certificate of Registration than in this proceeding. USPTO’s record clearly shows that Complainant’s new address is the same as the address claimed here.

ii) The USPTO determined that the GOSECURE mark was not generic in determining that the mark should register on the principal register. As such, it is clear that Complainant has rights in the GOSECURE mark.

iii) Respondent did not have rights or legitimate interests in the disputed domain because: (i) he was utilizing the &lt;gosecure.com&gt; domain to send phishing emails to Complainant’s customers, who then complained directly to Complainant; (ii) he has been passively holding the unused domain for over ten years; (iii) he is not known by the GOSECURE name and has not been using it in any other context.

iv) Respondent’s renewal and use of the disputed domain name have been in bad faith. The Complaint identified five separate bases for this finding, including:

(i) Respondent was engaging in a phishing scheme through use of the disputed domain;
(ii) Respondent demanded a five figure payment in exchange for transferring the domain;
(iii) Respondent continued to renew the domain in the absence of any content (passive holding);
(iv) five of these renewals occurred after Complainant’s GOSECURE mark was registered on the principal register; and
(v) Respondent provided incomplete information in the Whois registry.

v) There is no basis for a finding of reverse domain name hijacking.

Respondent’s Objection to Complainant’s Additional Submission Respondent objects to Complainant’s attempt to request for further submission, because it is not in compliance with established UDRP procedure respecting any additional filings, and also because it lamentably seeks to prejudice Respondent.

It has already been a week since the Response was filed. Moreover, under the Policy, parties have no right to submit additional arguments or evidence (Lloyds TSB Bank PLC v. Daniel Carmel-Brown, WIPO Case No. D2008-1889). Rule 12 of the UDRP Rules specifically states, that the UDRP process involves only a “Complaint” and a “Response”, with only the possibility of the Panel itself requesting further statements or documents from either of the parties:

The controlling provision is Paragraph 12 of ICANN’s Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), under which discretion to request such supplementation rests with the Panel”. A central purpose of the Policy and Rules is providing an expeditious and relatively inexpensive procedure for determining a certain type of domain name dispute, in which each party is entitled to make just one submission.

On August 16, 2021 Respondent filed an Additional Submission responding to specific contentions Complainant restates or repeats from the Complaint. The Panel has carefully reviewed both Additional Submissions. To the extent either responds to facts that it would not have been in a position to assert in the Complaint and Response the Panel has considered them in its determination.

FINDINGS

1. The disputed domain name was registered on September 14, 1999.

2. Complainant has established rights in the GOSECURE mark based on registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,986,200) registered June 28, 2016.

3. Respondent has established that it has rights or legitimate interests in the disputed domain name.

4. As Respondent has rights or legitimate interests in the disputed domain name, the Panel has concluded that it is unnecessary to consider whether Respondent registered or is using the disputed domain name in bad faith.

5. Complainant has engaged in Reverse Domain Name Hijacking.

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to &quot;decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.&quot;

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2) Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith. Identical and/or Confusingly Similar Complainant asserts rights in the GOSECURE mark based on registration with
the USPTO (e.g., Reg. No. 4,986,200, registered June 28, 2016). Registration of a mark with the USPTO is a valid showing of rights in a mark per Policy ¶ 4(a)(i). See Target Brands, Inc. v. jennifer beyer, FA 1738027 (FORUM July 31, 2017) (&quot;Complainant has rights in its TARGET service mark for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the United States Patent and Trademark Office (“USPTO”).”). Since Complainant provides evidence of registration of the GOSECURE mark with the USPTO, the
Panel finds that Complainant has rights in the mark under Policy ¶ 4(a)(i). Complainant argues that the disputed domain name is identical to Complainant’s GOSECURE mark because it simply adds the “.com” gTLD. When a domain name differs from a mark only by the addition of a gTLD it may be found to be identical to the mark. See F.R. Burger &amp; Associates, Inc. v. shanshan lin, FA 1623319 (FORUM July 9, 2015) (holding, “Respondent’s &lt;frburger.com&gt; domain name is identical to Complainant’s FRBURGER mark because it differs only by
the domain name’s addition of the top-level domain name “.com.”). Therefore, the Panel finds that the disputed domain name is confusingly similar to the GOSECURE mark under Policy ¶ 4(a)(i).

While Respondent contends that the disputed domain name is comprised of common and generic terms and as such cannot be found to be identical to Complainant’s mark, the Panel finds that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See Precious Puppies of Florida, Inc. v. kc, FA 1028247 (FORUM Aug. 10, 2007) (examining Respondent’s generic terms arguments only under Policy ¶ 4(a)(ii) and Policy ¶ 4(a)(iii) and not under Policy ¶ 4(a)(i)); see also Vitello v. Castello, FA 159460 (FORUM July 1, 2003) (finding that the respondent’s disputed domain name was identical to complainant’s mark under Policy ¶ 4(a)(i), but later determining the issue of whether the disputed domain name was comprised of generic terms under Policy
¶¶ 4(a)(ii) and 4(a)(iii)).

Rights or Legitimate Interests

A complainant has the further burden of demonstrating for the second limb that respondent lacks rights or legitimate interests in the subject domain name. It can do this by offering prima facie proof of its contention on this issue. If it succeeds on a prima facie showing that a respondent lacks rights or legitimate interests the burden then shifts to respondent to rebut the contention that it lacks rights or legitimate interests in the disputed domain name.

Here Complainant contends that Respondent lacks rights or legitimate interests in &lt;gosecurity.com&gt; because it does not now and has not for many years resolved to a website and Respondent is not presently making a bona fide offer of any goods or services through a resolving website. Additionally, it contends that Respondent is not commonly known by the disputed domain name, nor is it using the disputed domain name for noncommercial or fair use purposes.

Complainant contends that it has not authorized Respondent to hold the disputed domain name.

Although Complainant concedes that its trademark postdates the registration of the disputed domain name, it contends that Respondent’s nonuse of &lt;gosecurity.com&gt; as a website and for the other reasons it advances Respondent lacks rights or legitimate interests in the disputed domain name. Facts rebutting these contentions are, of course, within Respondent’s knowledge,
and not necessarily that of Complainant.

It is for this reason that a respondent must come forward with rebuttal evidence, and if it cannot then Complainant succeeds on this limb. Here, the Panel finds that Complainant’s contentions together with Respondent’s admissions that the domain name does not presently resolve to an active website are sufficient to state a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name.

Once the burden shifts, Respondent has the opportunity of demonstrating its right or legitimate interest by showing the existence of any of the following nonexclusive circumstances:

(i) before any notice to you [respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you [respondent] (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

(iii) you [respondent] are making a legitimate noncommercial or fair use of the domain, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. The Panel notes that Respondent does not deny that the disputed domain name is currently inactive, although its proof does support the contention that for many years it was actively used. Rather, it contends that it has nonetheless continuously used the domain name for email operations. See Zero International Holding GmbH & Co. Kommanditgesellsshaft v. Beyonet Services and Stephen Urich, 2000-0161 (WIPO May 12, 2000) (“We do not accept that complainant’s contention that registration of a domain name which is only to be used for [e-mail and file transfer operations] is in some way improper and constitutes bad faith.”) Respondent additionally demonstrates that it maintains a “WordPress” blog at https://gosecure.wordpress.com and that it is presently developing a project for the website with another company located in UAE. The specifics of the project while sketchy are sufficiently spelled out in Respondent’s attachments. The Panel finds that this evidence supports Respondent’s assertion that it is making “demonstrable preparations to use” the domain name.

Respondent also contends that it was commonly known by the domain name for this extended period. It states and provides evidence that it is an established entrepreneur in the biometrics and information security field for the last 30 years.

It even sought trademark protection for “Go Secure” although did not proceed with the registration. This contention appears to be supported by the totality of evidence offered, but this is post-hoc. There is no evidence that the disputed domain name was acquired by Respondent operating with that name. The Panel finds that Respondent’s rebuttal and evidence is persuasive on the issue of rights and legitimate interests. Accordingly, Complainant has not succeeded on this element of the Policy.

Registration and Use in Bad Faith

Where complainant fails to establish an element necessary for a finding of abusive domain name registration and use it is unnecessary to proceed further in analyzing the third limb of the Policy. Here, the Panel has found that Respondent has rights or legitimate interests in the disputed domain name. See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (FORUM Sept. 20, 2002) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the
remaining element unnecessary); also Netservice, Inc. v. Ryan Howard / Howard Technologies, Ltd., FA1721637 (FORUM Apr. 17, 2017).

Accordingly, Complainant has not succeeded in proving Respondent registered and is using the disputed domain name in bad faith.

Reverse Domain Name Hijacking

Respondent alleges that Complainant has acted in bad faith and is engaging in reverse domain name hijacking by initiating this dispute. Complainant denies that there is any basis for a finding of reverse domain name hijacking.

Under Paragraph 1 of the Rules, &quot;Reverse Domain Name Hijacking&quot; (RDNH) is defined as &quot;using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name. “Paragraph 15(e) of the Rules provides that if &quot;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.”

The Panel observes that such a finding is justified where a complainant proceeds despite the fact that it knew or should have known that it did not have a colorable claim under the Policy. See Karma International, LLC v. David Malaxos, FA 1822198 (FORUM Feb. 15, 2019) (finding RDNH where complainant lacked trademark rights, came into being long after domain name was registered, and had made prior unsolicited offer to purchase domain name). It also notes that even if a panel would find that Complainant has failed to satisfy its burden under the Policy, this does not necessarily render a finding of reverse domain name hijacking. See ECG European City Guide v. Woodell, FA 183897 (FORUM Oct. 14, 2003) (“Although the Panel has found that Complainant failed to satisfy its burden under the Policy, the Panel cannot conclude on that basis alone, that Complainant acted in bad faith.”); see also Church in Houston v. Moran, D2001-
0683 (WIPO Aug. 2, 2001) (noting that a finding of reverse domain name hijacking requires bad faith on the complainant’s part, which was not proven because the complainant did not know and should not have known that one of the three elements in Policy ¶ 4(a) was absent).

The Panel notes that Respondent does have rights and legitimate interests in the disputed domain name for purposes of paragraph 4(a)(ii) of the Policy. It also notes that the disputed domain name registration predates Complainant’s first claimed rights in the GOSECURE mark for almost 16 years. Nevertheless, Complainant asserts that the disputed domain name was registered and is being used in violation of its trademark rights. It also accuses Respondent of using its email operation for phishing, but the evidence does not support this contention.
Complainant initiated these proceedings after failing to purchase the domain name in the marketplace. Its trademark came into being long after the disputed domain name was registered, and Complainant had made prior unsolicited offers to purchase the domain name. See Mechoshade Systems, LLC v. DNS Admin / Mecho Investment, FA1805001784649 (FORUM June 18, 2018) (Complainant
continued to pursue this case, including with the frivolous and demonstrably incorrect arguments that use of a Domain Name for purposes of a family email address is not a legitimate interest.”)

This case is what is sometimes referred to as a “Plan B” scenario, where a complainant attempts to purchase a domain name and then switches tactics, bringing a complaint under the Policy despite a clear inability to make the required showings. See Aether, LLC v. Aether Domains / Aether Things, Inc., FA 1739957 (FORUM Aug. 24, 2017) (finding RDNH of &lt;aether.com&gt; where complaint was brought after unsuccessful commercial negotiations); EBSCO Industries, Inc. v. WebMagic Staff / WebMagic Ventures, LLC, FA 1722095 (FORUM May 25, 2017) (finding RDNH of “novelist.com” where respondent had previously rejected multiple purchase offers from complainant).

Complainant is represented by counsel with experience in the UDRP process, who likely advised Complainant that its position was unsupportable. See Daniel Biro / RealtyPRO Network, Inc. v. Ben Kueh / Computerese, FA 1929289 (FORUM Mar. 29, 2021) (finding RDNH against unrepresented complainant, while noting that such complainants “are generally given a free pass” for purposes of RDNH).

On balance, the Panel finds that the Complaint was brought in bad faith, in an instance of reverse domain name hijacking, and constitutes an abuse of the administrative proceeding.

DECISION

Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

Accordingly, it is Ordered that the <gosecure.com> domain name REMAIN WITH Respondent.

Complainant has engaged in Reverse Domain Name Hijacking.

Ho Hyun Nahm, Esq., Chair of the Panel, and Gerald M. Levine, Ph.D., Esq., and Fernando Triana, Esq. as Panelists 
Dated: August 19, 2021 

Puma SE v. Puma, Exports Pvt Ltd [WIPO Case No. D2021-1757]

1. The Parties

The Complainant is Puma SE, Germany, represented by RNA IP Attorneys, India.

The Respondent is Puma Exports Pvt Ltd, India, represented by Cylaw Solutions, India.

2. The Domain Name and Registrar

The disputed domain name <pumaexports.com> is registered with eNom, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 3, 2021. On June 4, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 6, 2021, 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 June 15, 2021 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 amended Complaint on June 18, 2021.

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 the Respondent of the Complaint, and the proceedings commenced on June 21, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 11, 2021. The Response was filed with the Center on July 7, 2021.

The Center appointed John Swinson as the sole panelist in this matter on July 16, 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.

4. Factual Background

The Complainant is a well-known international sports footwear and apparel company based in Germany.

The Complainant owns many trademark registrations for PUMA including Indian trademark registration number 323053 in class 18 for bags made of leather, having a filing date of February 15, 1977. The earliest registration for PUMA dates back to 1948.

The Respondent is an Indian manufacturer and exporter. The Respondent makes small leather goods, such as wallets and passport covers, and when receiving a wholesale order, will export these products to certain countries in Europe including Germany. The Respondent was formed as an Indian company in June 1990 under the name Puma Exports and Import Pvt. Ltd. and changed its name to its current name in March 1996.

The disputed domain name was registered by the Respondent on September 2, 1998.

The website at the disputed domain name promotes the Respondent’s leather good products.

5. Parties’ Contentions

A. Complainant

The Complainant makes the following submissions:

The Complainant is one of the world’s leading sports brands designing, developing, selling and marketing footwear, apparel and accessories. For over 65 years, the Complainant has established a history of making fast product designs for the fastest athletes on the planet.

The Complainant coined the term PUMA in 1948 and obtained a trademark registration at that time.

The Complainant’s well known trademark PUMA is registered in a number of countries around the world, including India.

The Complainant, on its own and through its subsidiaries worldwide, is famous for manufacturing one of the most sophisticated sportswear and athletic shoes in the world.

The Complainant’s consolidated sales for the financial year 2016 were EUR 3626.7 million. Singer Rihanna is the new face of the Complainant.

The Complainant has extensively used the PUMA trademark in India since 1982. The PUMA brand is ranked at position 5th in the Top 10 shoe brands of India. By virtue of extensive use, PUMA products are immensely popular in India. The Complainant also uses the ubiquitous medium of the Internet to render and advertise its products and services.

The Complainant has rights in the PUMA mark that predates the registration date of the disputed domain name.

The disputed domain name is nearly identical to the Complainant’s PUMA trademark, save for the word “exports” which does not serve to distinguish the disputed domain name from the Complainant’s trademark.

The Respondent registered the domain name in 1998, which is several decades after the Complainant invested millions of dollars in popularizing and seeking registration of the PUMA trademark and domain name <www.puma.com>.

The Respondent has used the mark PUMA in its entirety to attract internet users and consumers for commercial gain by abusing the goodwill and reputation associated with the Complainant’s PUMA trademark.

The Respondent has no right to use the Complainant’s well-known mark PUMA as a part of its domain name as the Complainant has not authorized any such use. Unlicensed, unauthorized use of the disputed domain name incorporating Complainant’s trademark is a strong evidence that the Respondent has no rights or legitimate interests.

The fame and prior use of the Complainant’s PUMA trademark makes it extremely unlikely that the Respondent created the domain name independently. Given the prominence and well-known stature of the Complainant’s PUMA products, it is incomprehensible that the Respondent was unaware of Complainant’s PUMA trademark at the time of registering the domain name.

The Respondent’s choice of domain name is not accidental and has clearly been made to derive unfair monetary advantage by offering PUMA branded products without authorization from the Complainant.

Further allegations made by the Complainant are set out in the section below titled Reverse Domain Name Hijacking.

B. Respondent

The Respondent makes the following submissions:

The Respondent is a registered Company in India, which was incorporated on June 18, 1990 as Puma Exports and Import Pvt. Ltd. In March 1996, the Respondent was renamed to Puma Exports Pvt. Ltd.

The Respondent has been engaged in the business of manufacturing and exporting small leather products such as wallets, cardholders, passport covers, travel wallets and more similar products. This is evident not only from the existing active website at the disputed domain name but also on archive.org showing use since December 1998. The website clearly shows that the Respondent has been a supplier of high quality customized leather products and the word “PUMA” or “PUMA Exports” is nowhere used upon any products supplied.

The Respondent has been doing such export business with several companies globally for the last 31 years and exporting regular leather goods exports to Czech Republic, Poland, Germany and Russia through its logistic partner Dachser India Limited.

The word “puma” is a dictionary term to refer to a mountain lion, panther or cougar. This was the reason for adoption by the Respondent as its corporate identity, three decades ago. The Respondent was not the first business to have adopted the corporate identity as PUMA. There were 26 more companies that were formed with the brand / identity name as PUMA from 1979 until 1998 and many more were incorporated later.

The Complaint is contradictory, as it tries to claim usage since 1982 without providing any evidence in support, except for the “proposed to be used” trademarks. The Complainant’s trademarks (except one) that were applied for between 1977 until 2004 were proposed to be used.

The Complainant had established its first company in India in 2005, namely PUMA Sports India Pvt. Ltd. Moreover, an online search evidences that the Complainant entered in India in 2005-06 only.

The Complainant but never makes any reference to the popularity of the Complainant’s products in India in 1990, when the Respondent had adopted the name PUMA for the first time as its corporate identity.

The Complainant does not properly allege “bad faith registration” in relation to 1998, despite the Policy requiring both bad faith registration and bad faith use to be proved. The Respondent could not have been aware of the Complainant and its trademarks at the time of the registration of the disputed domain name.

Even the recognition of PUMA in India as a well-known mark has been very recent – since 2018 only. The Complainant falsely states that registration of the disputed domain name has been decades after the Complainant started using the trademark but fails to provide any evidence as to how the Respondent could have known about the Complainant or its brand in 1990s. The Complainant has provided no reasons or explanation as to why or how the Respondent could have known of the Complainant or its asserted rights in the year 1990. Actual knowledge of the Complainant and its trademark must exist for any finding against the Respondent.

The Complainant is represented by counsel, who is under an obligation imposed by paragraph 3(b)(xiii) of the Rules to undertake at least minimal due diligence before filing a complaint. The Complainant was already aware of the legitimate website at the disputed domain name and the name of the Respondent’s Incorporated Company. Since June 7, 2021, the Complainant has been serving other notices to the Respondent in a bid to harass a legitimate and a prior user.

The Compliant should be barred by the doctrine of Laches because the Complainant waited 22 years to initiate these proceedings – substantial, unreasonable delay by any measure and an eternity in “Internet time.”

This is not a case of cybersquatting, while the Policy’s purpose is to combat abusive domain name registrations and not to provide a prescriptive code for resolving more complex trademark disputes.

To prove bad faith registration, it must be shown that Respondent registered the disputed domain name not because of its common generic meaning, but rather specifically because it corresponded to a protected trademark.

During 1990 until 1998, the Respondent was already commonly known by the disputed domain name as business was being conducted under its corporate name. For several years now, the Respondent has been manufacturing and exporting custom made and custom logo embossed leather products for many reputed European companies. It is evident from the products displayed at the Respondent’s website that there has been no use of any brand name “PUMA”. Rather “PUMA Exports” is just a corporate identity.

Moreover, a long-standing director of the Respondent provided a sworn affidavit which stated that the Puma Exports name was selected by the Respondent because of the connection with the puma animal, that the Respondent did not have the Complainant in mind when selecting its corporate name, that the Puma Exports name was used as corporate branding and not as the branding for any product, and that the Respondent has no intention of disrupting the business of the Complainant or to confuse customers.

The Respondent requests that Panel issue finding of reverse domain name hijacking (RDNH) under Rule 15e since there is no basis for the claim and the Complainant (through its counsel) knew or should have known that before filing that Complaint, that they will not succeed in proving all three UDRP conditions. Further, where a complainant is represented by intellectual property counsel who even on rudimentary examination of Policy and its application in this area should have appreciated that complaint could not succeed, RDNH may be found. The claim was baseless.

6. Discussion and Findings

To succeed, the Complainant must demonstrate that all the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the 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.

The onus of proving these elements is on the Complainant.

Paragraph 15(a) of the Rules directs the Panel to decide the complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.

A. Identical or Confusingly Similar

There is no doubt that the Complainant has trademark rights in PUMA. This is a famous trademark.

The disputed domain name includes the Complainant’s PUMA trademark in its entirety. Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms does not prevent a finding of confusing similarity under the first element of the Policy.

The disputed domain name is confusingly similar to the Complainant’s PUMA trademark, disregarding the generic Top-Level Domain (“gTLD”) “.com”.

The Complainant succeeds on the first element of the Policy in relation to the disputed domain name.

B. Rights or Legitimate Interests

The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.

Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:

(i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or

(ii) [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the Respondent] has acquired no trademark or service mark rights; or

(iii) [the Respondent] is making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.

The onus of proving this requirement, like each element, falls on the Complainant.

Panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent.

Accordingly, it is sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case.

The Complainant has failed to make a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name.

The Respondent’s company name is “Puma, Exports Pvt Ltd”. This is evident from the website at the disputed domain name, that clearly states on the homepage “Puma Exports ℗Ltd is a OHSAS 18001: 2007 certified company by SGS. We started our leather production unit in the year 1994.” There is also a logo on the homepage that has the words “PUMA EXPORTS PRIVATE LIMITED”.

Accordingly, it is clear from a simple review of the website at the disputed domain name, unless there would be clear evidence that this statement is fraudulent, that the Respondent has been commonly known by the disputed domain name.

The Complaint does not address this aspect of the case at all.

To assist the Panel in this case, the Respondent provided documents from the Reserve Bank of India, the Income Tax Department, the Indo-German Chamber of Commerce, the Council for Leather Exports, the Government of West Bengal and the Kolkata Municipal Corporation, from the period 1990 to 2021. These documents clearly reinforce the Respondent’s position that it has been commonly known by the disputed domain name.

The Complainant fails on the second element of the Policy in relation to the disputed domain name.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the disputed domain name in bad faith.

The Respondent registered the disputed domain name in 1998, over twenty years ago.

The Complainant’s case on bad faith is that the PUMA trademark is so famous that it is inconceivable that the Respondent was unaware of this trademark in 1998, and that the Respondent registered the disputed domain name to seek “to take advantage of the goodwill accumulated by the Complainant, thus making it clear that Respondent fraudulently registered the alleged domain with dishonest intent.” The Complaint also asserts that the Respondent is selling PUMA branded leather goods.

It is however conceivable that the Respondent used the word PUMA in its company name in 1990, and then in its domain name in 1998, for reasons other than to take advantage of the Complainant and its reputation.

First, “puma” is a type of animal, a large cat. The Respondent states that it selected this term because it refers to an animal, not because of the Complainant.

Second, the Respondent is not selling PUMA branded leather goods. The goods are unbranded, or are custom-made and a branded with a customer’s logo.

Third, the Respondent is not selling sports apparel or footwear.

Fourth, the Respondent’s logo and trade dress is completely different to that of the Complainant.

Fifth, the Complainant’s Indian trademark registration does not appear to directly cover the Respondent’s goods.

Sixth, the Complainant did not enter the Indian market in a significant way until 2005.

 

The Panel finds that there is no evidence at all that suggests that the Respondent selected its company name or registered the disputed domain name to take advantage of the Complainant or the Complainant’s PUMA trademark.

There is no evidence that in 1998, the Respondent registered the disputed domain name in bad faith within the meaning of the Policy.

The Respondent is by all appearances a long-standing bona fide business.

There is no evidence that in the 23 years since 1998, the Respondent used the disputed domain name in bad faith within the meaning of the Policy.

The Panel does not make any finding as to whether or not the Respondent is infringing any of the Complainant’s trademark registrations. The Panel is not a court to decide upon civil disputes or trademark infringement. The jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Impact Bank v. Trace Hallowell, WIPO Case No. D2021-1135. The Respondent is not a cybersquatter.

The Complainant fails on the third element of the Policy in relation to the disputed domain name.

7. Reverse Domain Name Hijacking

The Respondent states that the Complainant is engaging in reverse domain name hijacking (RDNH).

Paragraph 15(e) of the 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 Rules as “using the UDRP in bad faith to attempt to deprive a registered domain-name holder of a domain name.” Panels have also referred to paragraphs 3(b)(xiii) and (xiv) of the Rules in addressing possible RDNH scenarios.

Prior panels have found RDNH where the complainant had clear knowledge of a lack of respondent bad faith such as registration of the disputed domain name well before the complainant acquired trademark rights.

The Complainant, a large multinational corporation, was represented by legal counsel. The Complainant owns a world-famous trademark. The Complainant is entitled to enforce its trademark rights and to push the penumbra of its protection, but the Complainant is not entitled to file a misleading complaint.

The Complaint included the following incorrect or misleading statements:

“The Respondent is not and has never been known by the PUMA mark/name or by any similar name.”

“The alleged domain www.pumaexports.com is being used by the Respondent to illegally offer the products under the brand PUMA.”

“The evidences filed as Annexure 9 i.e., extracts from Respondent’s website at www.pumaexports.com clearly demonstrates the illegal activities wherein Respondent is offering wallets, belts etc. using the Complainant’s registered trademark PUMA.”

“The Respondent has wrongfully registered the domain name to make illegitimate gains by providing access to infringing PUMA materials for valuable consideration to buyer/s.”

As is clear from the Respondent’s website, the Respondent is known by the PUMA name. Further, Annexure 9 in the Complainant does not in any way demonstrate that the Respondent’s products are branded as PUMA products. The Respondent’s company name includes the word PUMA, but the products themselves are clearly unbranded products or are custom logo embossed leather products made for reputable companies (e.g., for Subaru). There is nothing clearly illegal about the Respondent’s activities.

The Complaint also makes serious allegations against the Respondent, that are unsupported or exaugurated. For example:

“There are no honest business activities carried out by the Respondent through the nearly identical/deceptively similar domain name.”

“… there is no credible legitimate reason for the Respondent to have chosen the domain name in question. The Respondent’s purpose in choosing the disputed domain name was plainly to use fame of the Complainant’s PUMA mark to generate web-traffic and to confuse internet users who might be looking for the Complainant and their famous products.”

“The Respondent’s registration and use of the domain name seeks to take advantage of the goodwill accumulated by the Complainant, thus making it clear that Respondent fraudulently registered the alleged domain with dishonest intention.”

“The evidence submitted by the Complainant overwhelmingly supports the conclusion that the Respondent had registered and is using the domain name in bad faith.”

“The Respondent’s choice of domain name is clearly fraudulent and with complete knowledge that such adoption is unauthorized.”

The tenor of the Complaint is that the Respondent is a dishonest and fraudulent company is selling pirated or infringing Puma products, which at best is a massive overstatement of the Complainant’s case and at worse a false and misleading allegation. A complainant should have clear evidence before alleging dishonesty or fraud, there is no such evidence here.

In these circumstances, the panel finds the Complainant guilty of RDNH.

8. Decision

For the foregoing reasons, the Complaint is denied.

John Swinson
Sole Panelist
Date: July 30, 2021