Decision

India’s Infrastructure Company Machani Infra Development Corporation came up with UDRP over Machani.com. The Company has official website at www.MachaniGroup.com and was looking to upgrade to one word domain <Machani.com> through legal process of domain name dispute. But the most surprising part was that there have been only one Trademark Application ever made before any Trademark Office globally and that was not by the Complainant but the Respondent. Though Trademark or otherwise common law rights are must for any UDRP Complaint to be accepted and analysed for other UDRP Clauses.

(The above application was made before USPTO, but not pursued as a last name cannot be Trademarked unless it is well known)

But here the Infra Company came with the UDRP Complaint without any registered Trademark rights, instead claimed common law rights since 1950s when their founder Mr Machani Sommappa was awarded by Indian Government for social contribution to the society. Later, in 1970s the businesses were named as Somappa or M.G. but nowhere word Machani was used. They registered the domain name MachaniGroup.com in 2010, followed by formation of various Companies 2013 onward, that is, the evidence as to use of Machani in commercial sense was visible in 2013 only.

On the other hand, the domain registrant’s WHOIS information read name as ‘Anand K.’ and the domain registration date was June 25, 1999. Though the full name of the registrant is Mr Anand K. Machani. The same is evidence from the above USPTO Trademark record as well. But the Company showed ignorance about the full name of the Respondent.

Here, the domain registrant is protected under UDRP, as clause 4(c)(ii) provides that a domain name registrant will be held to have legitimate interests in the domain name, if:

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

Further, once you are known by the domain name, NO Bad Faith can be held against a domain registrant to have registered the domain name, back in June 1999, only because it happened to be his last / family name. The domain registrant was able to provide all the evidence as to his identity starting way back from 1997, when he was issued his first driving licence in USA. Moreover, though the domain name was passively held since last few years but it was being used for emails. Even the WHOIS email ID was based upon the disputed domain name.

In an UDRP / Domain Dispute proceedings, the Complainant / Trademark holder is required to prove all the three conditions:

1. The domain name is identical or similar to the registered Trademark under which the Complainant Company has rights otherwise has common law rights.
2. The domain registrant does not have any rights or legitimate rights in the domain name.
3. The Domain Name was registered and is being used in Bad Faith.

But the Complaint miserably failed to prove all the three conditions, and RDNH (Reverse Domain Name Hijacking) was upheld.

Though, normally denial of the Complaint does not mean that the matter would be upheld as RDNH, but he panelist was largely concerned with the fact that the Company on coming to know that domain registrant is known by the domain name, instead of withdrawing the Complaint, it pressed for the additional submissions, which even included strange arguments. Also read story at: https://domainnamewire.com/2021/06/23/indian-firm-tries-reverse-domain-hijacking-a-common-surname/

 

Complete decision is provided below:

WIPO ADMINISTRATIVE PANEL DECISION 

Machani Infra Development Corporation Private Limited v. K, Anand 

UDRP Case No. D2021-1352  

1. The Parties

 The Complainant is Machani Infra Development Corporation Private Limited, India, represented by IndusLaw, India.

The Respondent is K, Anand, United States of America (“United States”), represented by Ankur Raheja of Cylaw Solutions, India. 

2. The Domain Name and Registrar

The disputed domain name <machani.com> is registered with Network Solutions, LLC (the “Registrar”). 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 3, 2021.  On May 3, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name.  On May 3, 2021, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 6, 2021.  In accordance with the Rules, paragraph 5, the due date for Response was May 26, 2021.  The Response was filed with the Center on May 19, 2021.

On May 24, 26 and 27, 2021, the Complainant sent further communications to the Center, and on June 9, 2021 it submitted a supplemental filing, and the Respondent submitted further communications to the Center on May 25 and 26, 2021, and on June 11, 2021.

The Center appointed Assen Alexiev as the sole panelist in this matter on May 31, 2021.  The Panel finds that it was properly constituted.  The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

The Panel does not accept the supplemental filing of the Complainant.  As duly noted by the Center in response to the Complainant’s unsolicited supplemental filing, the Rules provide for the submission of a Complaint by the Complainant and a Response by the Respondent, and contain no express provision for supplemental filings by either party, while paragraphs 10 and 12 of the Rules grant the Panel sole discretion to determine the admissibility of supplemental filings (including further statements or documents) received from either Party.  As summarized in section 4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), unsolicited supplemental filings are generally discouraged, unless specifically requested by the Panel.  In all such cases, Panels have repeatedly affirmed that the Party submitting or requesting to submit an unsolicited supplemental filing should clearly show its relevance to the case and why it was unable to provide the information contained therein in its complaint or response (e.g., owing to some “exceptional” circumstance).  In the present case, the Complainant has failed to show that its unsolicited supplemental filing contains any new information that it had not been able to submit with the Complaint, especially in view of the fact that the Complainant states in its communication of May 26, 2021 that it had been preparing the Complaint for almost one year.  The Panel also notes that the Complainant’s supplemental filing, even if it had been accepted, would not have changed the Panel’s conclusions on the merits of the Complaint.  For similar reasons, the Panel will not accept the supplemental filing submitted by the Respondent.

4. Factual Background 

The Complainant is a member of the Machani Group of India, which includes several businesses in the fields of manufacturing, real estate and infrastructure, agriculture, education, investment, engineering, information technology and others.

The Complainant is the owner of the domain name <machanigroup.com> registered on December 8, 2010, which resolves to the Complainant’s main website that has been active since 2013.

 The disputed domain name was registered on June 25, 1999.  There is currently no active website at the disputed domain name.

5. Parties’ Contentions

Complainant: 

 The Complainant states that it is the flagship company of the Machani Group, which was founded in 1940 by Mr. Machani Somappa, an Indian industrialist, educationist, and social worker.  In 1954, the Government of India honoured Mr. Machani Somappa with the award of Padma Shri, the fourth highest Indian civilian award for his contributions to the society, placing him among the first recipients of the award.  In 1960, Mr. Machani Somappa established Stumpp Schuele & Somappa, a joint venture with renowned German spring manufacturers, Stumpp + Schuele.  Several other ventures of the Machani Group with the initials “MG” as part of their names were incorporated starting from 1973 and they are operating till now.  The Complainant states that the Machani Group is well known and one of the oldest family business conglomerates in India.

The Complainant claims to have unregistered trademark rights in the trademark MACHANI.  In support of this claim, it submits that ever since the Machani Group’s inception in the year 1940, the house mark and brand identity MACHANI has been continuously and extensively used and promoted to represent its diverse business offerings.  The name “MACHANI” has also been used by nine of the Group’s businesses and ventures, including the Complainant, as their trading name in the past several years.  The Complainant notes that it is also the owner of the domain names <machanirobotics.com>, <machanisomappa.com>, <machanigroup.co.in>, <machanigroup.in>, <machanigroup.co>, <machanigroup.org>, <machani.net>, <machanisvasa.com>, <machaniinfra.com>, <machaniananda.com>, <machanirobotics.in>, <machanisomappa.in>, and <machaniuniversity.com>.  As stated by the Complainant, these domain names have been acquired for the purpose of future use by and for the benefit of the different businesses of the Machani Group and its member entities.

According to the Complainant, the MACHANI trademark has acquired a distinctive character and has gained enormous popularity, reputation and goodwill in relation to the products and services provided under it, and has come to be exclusively associated and identified with the Machani Group and its Group entities among relevant section of the trade and the public in India.

The Complainant states that it approached the Respondent in an attempt to purchase the disputed domain name in 2019-2020 and offered to pay to the Respondent USD 10,000 for it, but the Respondent refused the offer.

The Complainant submits that the disputed domain name is identical to the MACHANI trademark and confusingly similar to the Complainant’s domain name <machanigroup.com>.

According to the Complainant, the Respondent has no rights or legitimate interests in respect of the disputed domain name, because the Respondent is not known by or associated with the name MACHANI, and must have been aware of the Machani Group/Complainant’s trade name and mark when it registered the disputed domain name in 1999.  The Complainant goes on to state that the Respondent has no plausible justification for registering the disputed domain name, and has not been making any legitimate noncommercial or fair use of it at least since 2015 as there is no active website at the disputed domain name.

The Complainant contends that the disputed domain name was registered and is being used in bad faith.  According to it, the name of the Respondent shows that he is an Indian or of Indian origin who has no affiliation with the name Machani or with the Machani Group and cannot deny of having knowledge of the Machani Group.  Still, the Respondent went on to create the disputed domain for himself, and is not making any legitimate noncommercial or fair use of the disputed domain name at least since 2015.

Respondent: 

The Respondent submits that the Complainant does not hold any registered trademark in the sign MACHANI and has not acquired unregistered trademark rights in it, so the Complainant has no standing in this proceeding.  The Respondent notes that the Complainant uses the word “Machani” only as the part of its name, and was incorporated in October 2010, while its domain name <machanigroup.com> was registered in December 2010.  The other companies of the Complainant’s group that have “Machani” as part of their names have been incorporated in 2010 or later, while the disputed domain name was registered in June 1999.  The Respondent points out that the Complainant admits to making use of the sign MACHANI since 2013 only, and that the Complainant does not have any common law rights in a trademark based upon its founder’s name just because its founder had “Machani” as his first name and was conferred an award for contribution to the society under the category – Public Affairs in 1954.  The Respondent notes that the Complainant’s founder was a social worker and his name was not used in trade or commerce in the early years, except for his last name “Somappa”.  According to the Respondent, there is no evidence that the Complainant has been using the unregistered mark MACHANI continuously and extensively for a long period of time to give rise to any common law rights in the trademark, and the Complainant has failed to produce evidence that it had reputation under this trademark at the time when the Respondent registered the disputed domain name.  The Respondent notes that the date of first use alone is not enough to establish common law rights in a trademark, and that in order to have common law rights, a complainant must establish secondary meaning, which the Complainant has not done, as the evidence is only from 2017 onwards, most of it being from 2019 and 2020, and there is no social media presence to show popularity among the Indian public and no proper evidence as to third party recognition.

The Respondent contends that he has rights and legitimate interests in the disputed domain name, which stem from the fact that the Respondent is commonly known by the disputed domain since his birth.  The Respondent’s full name is Anand Krishna Machani, where Machani is his last name, and that he is originally from Andhra Pradesh, India, but has resided in the United States since March 1997.  The Respondent points out that hundreds of individuals have “Machani” as their first or last name, and that it is quite common to find people with this last name in India and Kenya.

The Respondent states that on June 25, 1999, he registered the disputed domain name to secure his family name, and the “.com” generic Top-Level Domain (“gTLD”) was the only domain name extension that was available to use at the time.  The purpose of setting up the website at the disputed domain name was to make available family photos to friends and relatives in India by sharing a website link to the disputed domain name, as most of the Indian residents were not using email services in the early 2000s.  The Respondent states that his website has not been regularly maintained due to privacy issues, but he has regularly used his email account at the disputed domain name since 2000, which does not allow him to part with the disputed domain name.  The Respondent adds that in any circumstances, it is quite improbable that anyone holding a domain name based on his last name would ever sell it at any cost, as it would be used by the generations to come, and owning such a domain name is a lifetime opportunity.

The Respondent further states that in 2010, he filed a trademark application for MACHANI.COM INCORPORATED in the United States, but after receiving initial objections, he decided not to proceed with this trademark application, as he was advised that last names cannot normally be registered as trademarks unless they have already acquired a secondary meaning.

The Respondent notes that the Complainant has provided no reasons or explanation as to why or how the Respondent located in a different jurisdiction could have known of the Complainant or of its non-existent rights at the time when the disputed domain name was registered in 1999, when at that time the Complainant had no online presence and has not shown to have used the sign MACHANI in trade or commerce.

The Respondent denies having ever received a call from the Complainant with an offer to buy the disputed domain name and notes the vagueness of the Complainant’s allegations in this respect.

The Respondent submits that he has never provided any false WhoIs information or any reference to the Complainant or its competitors on its website.

The Respondent points out that the Complainant waited almost 22 years to initiate this proceeding, which is a substantial and unreasonable delay by any measure.  This long delay also raises an inference that the Complainant did not truly believe the Respondent engaged in bad faith registration, even though it is online since 2010.

According to the Respondent, given the circumstances, it is unlikely that the Complainant was not aware of the Respondent’s full name, but nevertheless went forward and filed its Complaint with the bad faith intention to hijack the disputed domain name and harass the Respondent, by making misleading and unsupported by any evidence claims of having exclusive rights in the name “Machani” and not disclosing that it is a common last name.  The Respondent requests that Panel to make a finding of Reverse Domain Name Hijacking (“RDNH”) on the basis that the Complainant, represented by counsel, knew or should have known that the Complaint will not succeed in proving at least two of the three elements under the Policy.

6. Discussion and Findings

 Pursuant to the Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the disputed domain name:

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

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

(iii) the Respondent has registered and is using the disputed domain name in bad faith.

A. Identical or Confusingly Similar

The Complainant does not claim having registered trademark rights in the sign MACHANI.  It claims having unregistered trademark rights in this sign.

As summarized in section 1.3 of the WIPO Overview 3.0, to establish unregistered trademark rights for the purposes of the UDRP, the complainant must show that its mark has become a distinctive identifier which consumers associate with the complainant’s goods and/or services.  Relevant evidence demonstrating such acquired distinctiveness includes a range of factors such as the duration and nature of use of the mark, the amount of sales under the mark, the nature and extent of advertising using the mark, the degree of actual public recognition, and consumer surveys.

The evidence submitted by the Respondent shows that this is the first or family name of hundreds of people in various countries, so it is not inherently distinctive.  For this reason, there is a greater onus on the Complainant to present evidence of acquired distinctiveness/secondary meaning.

To support its contention for having unregistered trademark rights, the Complainant has submitted copies of invoices issued by it or by its affiliates in the period starting from 2014, registration documents of the Complainant and its affiliates showing registration dates starting from 2010, printouts of archived webpages showing use of the domain name <machanigroup.com> starting from 2013, copies of undated promotional materials of the Complainant’s group, a statement of the annual promotional expenses of the Complainant starting from 2013, copies of several news articles and third party websites with dates starting from 2017.  Most of these documents were generated by the Complainant or its affiliates, apart from several articles in the media.  Some of the documents feature the sign MACHANI, while others only contain the name of the Complainant, of one of its affiliates or of one of its managers.  Most of these documents do not show the use of “Machani” as a trademark but only as a personal name or as part of a business name and they are not sufficient for a finding that the designation MACHANI as a result of its use has acquired a secondary meaning referring to the business of the Complainant.  The Complainant has not submitted any evidence from independent sources about the degree of actual public recognition of the designation MACHANI or consumer surveys that would establish that the public recognizes it as a symbol that distinguishes the Complainant’s goods and services from those of others and that it has acquired a secondary meaning exclusively referring to the Complainant.

Therefore, noting also the fact that “Machani” is a personal or family name of hundreds of persons in various countries, the Panel is not satisfied that the Complainant has established for the purposes of the Policy that it has unregistered trademark rights in the sign MACHANI, and finds that the Complainant has failed to establish the first element of the test under the Policy.

B. Rights or Legitimate Interests

The Panel finds that the Respondent has rights and legitimate interests in the disputed domain name, as the term “Machani” reflected in the disputed domain name is the Respondent’s family name.  A respondent can be found to be commonly known by a domain name under the Policy, Paragraph 4(c)(ii), where it reflects his personal name, and the respondent has submitted evidence that this is so.  See G.A. Modefine S.A. v. Mani, WIPO Case No. D2001-0537.  The fact that the WhoIs records for the disputed domain name do not reflect the full name of the Respondent does not change this conclusion, because these records sufficiently and correctly identify the Respondent, and he has shown that it has used an email account with the disputed domain name since 2001.

Therefore, the Panel finds that the Complainant has failed to establish that the Respondent does not have rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

As discussed above, the Respondent has provided evidence and has established that the disputed domain name reflects his family name and has been consistently used for a personal email account st since 2001.

The Complainant has failed to establish that it has unregistered trademark rights in the sign MACHANI, but even if it had succeeded in establishing such rights, the Complainant’s own statements and evidence show use of that sign only starting from 2010 at the earliest, which is 11 years after the registration of the disputed domain name in 1999.  There is no evidence of targeting of the Complainant by the Respondent, and no evidence that the Respondent knew or must have known of the Complainant in 1999.  As discussed in section 3.1 of the WIPO Overview 3.0, when a domain name is registered before a trademark right is established, the registration of the domain name was not in bad faith because the registrant could not have contemplated the complainant’s non-existent right.

In these circumstances, there are no reasons to find that the Respondent has acted in bad faith with the registration and use of the disputed domain name.  Therefore, the Panel finds that the Complainant has failed to establish that the disputed domain name has been registered and used in bad faith.

D. Reverse Domain Name Hijacking

The Respondent requests a finding of RDNH on the basis that the Complainant, represented by counsel, knew or should have known that the Complaint will not succeed in proving at least two of the three elements under the Policy.  According to the Respondent, given the circumstances, it is unlikely that the Complainant was not aware of the Respondent’s full name, but nevertheless went forward and filed its Complaint with the bad faith intention to hijack the disputed domain name and harass the Respondent, by making misleading and unsupported by any evidence claims of having exclusive rights in the name “Machani” and not disclosing that it is a common last name.

Paragraph 15(e) of the UDRP Rules provides that, if “after considering the submissions the panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding”.  RDNH is furthermore defined under the UDRP Rules as “using the UDRP in bad faith to attempt to deprive a registered domain-name holder of a domain name”.

Reasons articulated by panels for finding RDNH include, inter alia, facts which demonstrate that the complainant knew it could not succeed as to any of the required three elements – such as the complainant’s lack of relevant trademark rights, clear knowledge of respondent rights or legitimate interests, or clear knowledge of a lack of respondent bad faith, such as registration of the disputed domain name well before the complainant acquired trademark rights, or basing a complaint on only the barest of allegations without any supporting evidence.  Given the undertakings in paragraphs 3(b)(xiii) and (xiv) of the Rules, some panels have held that a represented complainant should be held to a higher standard.

In the present case, the Complainant has failed on all three elements of the Policy.  It has made inflated claims of having unregistered trademark rights in the sign MACHANI, but none of the supporting evidence dates earlier than 2010, which is 11 years after the registration of the disputed domain name.  This circumstance, and the lack of any evidence of knowledge and of targeting of the Complainant by the Respondent should have made the Complainant and its counsel aware that, at least on the issue of bad faith, it could not succeed.

As to the issue of rights and legitimate interests, the publicly-available WhoIs records for the disputed domain name available at the time of filing of the Complaint indeed did not show that “Machani” was the family name of the Respondent, and there was no active website at the disputed domain name.  However, the fact that the family name of the Respondent was “Machani” was stated in the Response and was substantiated with convincing evidence.  Being commonly known by a domain name or by a name corresponding to a domain name is one of the examples of having rights or legitimate interests in a domain name under the Policy, Paragraph 4(c)(ii).  The Response also denied the existence of unregistered trademark rights of the Complainant and noted the lack of evidence in this regard.

However, having received the Response, rather than withdrawing the Complaint, the Complainant attempted to submit a supplemental filing which did not dispute the evidence about the family name of the Respondent, but started with the statement that “The Respondent has not disputed or denied any of the submissions and contentions made in the complaint and is, therefore, deemed to have accepted the submissions and contentions made in the complaint”.

This conduct of the Complainant, especially considering that it is represented by counsel, merits a finding of RDNH.

7. Decision

For the foregoing reasons, the Complaint is denied.

The Panel declares that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.

Assen Alexiev
Sole Panelist
Date:  June 18, 2021

WIPO ADMINISTRATIVE PANEL DECISION

Software Koibox S.L. v. Rolling Dice Productions, Inc.

UDRP Case No. D2021-1420 

1. The Parties

 The Complainant is Software Koibox S.L., Spain, internally represented.

The Respondent is Rolling Dice Productions, Inc., United States of America, represented by Cylaw Solutions, India.

2. The Domain Name and Registrar

The disputed domain name <koibox.com> is registered with Network Solutions, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 7, 2021.  On May 7, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name.  On May 10, 2021, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 11, 2021.  In accordance with the Rules, paragraph 5, the due date for Response was May 31, 2021.  The Response was filed with the Center on May 26, 2021.

The Center appointed Warwick A Rothnie as the sole panelist in this matter on June 1, 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 record in this administrative proceeding discloses the following.

On November 30, 1999, the Respondent registered the disputed domain name.

On December 15, 1999, the Respondent’s principal incorporated a second company, Koibox LLC, in connection with a plan to operate a business making and selling cosmetics.

Between 2000 and 2007, the Respondent’s related company, Koibox LLC, used the trademark KOIBOX in relation to a line of nail polish products.  This use included promoting and selling its products from a website which the disputed domain name resolved to.

On June 8, 2001, Koibox LLC filed an application in the United States Patent and Trademark Office to register KOIBOX as a trademark in respect of cosmetics being nail polish and lip gloss in International Class 3.

On January 15, 2002, the application was successfully registered as United States Registered Trademark No. 2,529,849.

In January 2008, the registration of the company Koibox LLC was cancelled.

On August 17, 2012, the registration of the United States trademark was cancelled.

It appears from Internet searches included in the Response that the Complainant was founded in Spain in 2014.  It provides software development and related services.  From Internet searches included in the Response it appears that the Complainant aims particularly to service beauty salons and hairdressers.

On November 27, 2014, the Complainant applied to register as a trademark in Spain “koibox” in relation to computer software design services in International Class 42.  This trademark was formally registered on April 13, 2015, Spanish Registered Trademark No. 3,537,657.

In July 2015, a representative of the Complainant contacted the Respondent to inquire about the possibility of a transfer of the disputed domain name.  This approach led to the Complainant offering the Respondent “up to 200 dollars” for the transfer.  The Respondent made a counter-offer seeking USD 2,000.  After the Complainant stated its maximum was USD 500, the discussions ceased on July 7, 2015.

On July 11, 2019 (that is, four years later), the same representative of the Complainant using the same email account emailed the Respondent to inquire if the disputed domain name was for sale.  That approach received a response that the disputed domain name was available for USD 50,000 but the Respondent was open to offers.

There does not appear to have been any further dealings between the parties until the Complaint in this administrative proceeding was filed.

5. 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 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.

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 dispute between the parties that the disputed domain name is identical to the Complainant’s registered trademark (disregarding the generic Top-Level Domain component as a functional element of the domain name system).

B. Rights or Legitimate Interests 

In view of the analysis below, it is unnecessary to consider this element.

C. Registered and Used in Bad Faith

The Complaint must nonetheless fail.

It is well-established that the Complainant 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.

As noted above, the Respondent registered the disputed domain name in 1999.  So far as the record in this administrative proceeding shows, the Complainant did not even exist until sometime in 2014;  at least fourteen years later.  There is no suggestion on the record in this case that the Respondent has somehow gained some sort of advanced notice of the Complainant’s plan of the kind addressed in section 3.8.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition.  Nor is there any suggestion that “koibox” was the name or trademark of some other entity which the Complainant derives rights from.  On the contrary, as the Respondent points out, the Complainant does not address this issue.  It merely points to the redirection of the disputed domain name to a social media page, which the Complainant alleges is causing confusion, and the excessive price demanded by the Respondent to transfer the disputed domain name.

A demand for an excessive price to transfer a domain name can, in some circumstances, lead to an inference that the disputed domain name was registered in bad faith.  Likewise redirection to a social media page.  As indicated in the previous paragraph, however, that inference is simply not possible in the present case as the Complainant did not even exist when the Respondent registered the disputed domain name.  Nor, so far as the evidence in this proceeding shows, was anyone (let alone anyone from whom the Complainant derives title) using the trademark on which the Complainant relies.

In these circumstances, it is simply not possible that the Respondent registered the disputed domain name to take advantage of the (non-existent) Complainant’s (non-existent) trademark rights.

Accordingly, the Complainant cannot establish the third requirement under the Policy and so the Complaint must fail.

D. 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”.

A finding of reverse domain name hijacking does not result from mere failure of the Complaint.  This case, however, is not a case of mere failure where genuinely disputed or unknown facts have led to the Complaint being dismissed.  Bearing in mind that the Respondent registered the disputed domain name in 1999 some fourteen years before the Complainant even existed or adopted its trademark, the Complainant should have known the Complaint must fail.  Instead, the Complainant filed the Complaint, the substantive text of which consists of five paragraphs without satisfactorily addressing the fundamental requirement of registration in bad faith under the Policy.

In these circumstances, the Panel finds that the Complainant has nevertheless engaged in reverse domain name hijacking by using the Policy in a bad faith attempt to deprive the Respondent of the disputed domain name.

6. Decision

For the foregoing reasons, the Complaint is denied.

In addition, the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.

 

Warwick A Rothnie
Sole Panelist
Date:  June 14, 2021

Zohoor Al Reef Trading Company v. Adi Azar 
WIPO Case No. D2021-0302 

UDRP Decision

1. The Parties

The Complainant is Zohoor Al Reef Trading Company, Saudi Arabia, represented by Astura AARPI, France.

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

2. The Domain Name and Registrar

The disputed domain name is registered with NameBright.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 1, 2021. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 3, 2021. In accordance with the Rules, paragraph 5, the due date for Response was initially February 23, 2021. However, on February 9, 2021, the Respondent requested an extension of time due to the Covid-19 pandemic situation. On the following day, in accordance with paragraph 5(b) and 5(e) of the Rules, the Center granted the automatic four calendar day extension plus an exceptional extension of the due date for Response to March 5, 2021. The Response was filed with the Center on March 5, 2021. The Complainant made an unsolicited supplemental filing on March 17, 2021. The Respondent made an unsolicited supplemental filing on March 24, 2021.

The Center appointed Matthew Kennedy, David H. Bernstein, and Gerald M. Levine as panelists in this matter on April 30, 2021. The Panel finds that it was properly constituted. Each member of 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 manufactures and sells beauty care products, fragrances, and cosmetics. It was founded in 1993 in Saudi Arabia and operates through a retail network in the Middle East and North Africa. The initial words in the Complainant’s Arabic name may be translated as “countryside flowers”. The Complainant transliterates the word meaning “flowers” as “Zohoor” in its English name. The Complainant has obtained trademark registrations for ZOHOOR in multiple jurisdictions, including Saudi Arabia trademark registrations numbers 148709 and 148710, both for ZOHOOR, both registered on August 9, 2015, and specifying goods and services in classes 3 and 35, respectively. The Complainant has also registered its ZOHOOR trademark in Bahrain, Iran (Islamic Republic of), Jordan, Kuwait, Lebanon, Morocco, Oman, Qatar, Sudan, Tunisia, Turkey, United Arab Emirates, the West Bank, and Yemen. Until recently, the Complainant branded its business as “Zohoor Alreef” with a flower bud logo. It registered the domain name and used it in connection with a website where it provided information about itself and its products. The Complainant has also registered the domain names and . In the fall of 2020, the Complainant rebranded its business as ZOHOOR with a circular calligraphic logo. At the time of this Decision, the domain name redirects to , which the Complainant now uses in connection with its rebranded website in Arabic and English.

The Respondent was born and raised in Jordan and moved to the United States in 2004. He previously worked as a web application developer and now focuses on online marketing. At the commencement of this proceeding, he was the managing director of a company that matches homeowners and home improvement contractors. He has registered many domain names.

The disputed domain name was acquired by the Respondent at an open auction of expired domain names on December 30, 2019 for the price of USD 3,825. The disputed domain name resolves to a webpage that offers it for sale. On the webpage, the disputed domain name is displayed alongside a geometric flower logo and described as a “premium” domain name. The webpage displays two prices: USD 96,000 to “buy it now” or USD 80,000 as the minimum permissible offer.

On September 9, 2020, the Complainant contacted the Respondent regarding a possible purchase of the disputed domain name. The Respondent offered to sell it for USD 32,000, claiming that he and his partners had spent about USD 27,000 on the domain name. The Complainant’s budget was USD 20,000. The Parties failed to reach an agreement on the price.

5. Parties’ Contentions

A. Complainant

The disputed domain name is identical to the Complainant’s ZOHOOR trademark. “Zohoor” has no meaning in English in relation to the Complainant’s business. It could only refer to a first name in Arabic. “Zohoor” constitutes a fanciful and highly distinctive trademark as it does not describe the Complainant’s activity.

The Respondent has no rights or legitimate interests with respect to the disputed domain name. The Complainant has not granted to the Respondent any right to use the ZOHOOR trademark, including in the disputed domain name, and has no relationship, affiliation or connection whatsoever with the Respondent. The Respondent does not offer any goods or services under the disputed domain name. The Respondent is not commonly known by the name “Zohoor”. The Respondent is not making a noncommercial use of the disputed domain name. The mere registration of a so-called generic term gives no right or legitimate interest in the disputed domain name because it is identical to the Complainant’s trademark. Moreover, the Respondent provides no evidence that “Zohoor” spelt in Latin characters means “flower” in Arabic or is generically used to mean “flowers”. Quite to the contrary, the Respondent uses Arabic letters or “zuhur” in Latin characters to try and show that “Zohoor” is a generic spelling of “flowers”. The Respondent operates in the United States but “zohoor” has no dictionary or generic meaning in English. The Respondent alleges that he plans to use the disputed domain name for a website selling flowers. However, he provides an undated mock-up website while the disputed domain name still leads to the parking page offering it for sale for USD 96,000, which is inconsistent with the Respondent’s claimed use. Additionally, while the Respondent claims to have vast experience in selling online flowers since 2007, his own website does not mention him being active in the flowers business.

The disputed domain name was registered and is being used in bad faith. The disputed domain name is currently parked at a webpage where it is for sale for USD 96,000, which exceeds the out-of-pocket costs for its registration as contemplated by paragraph 4(b)(i) of the Policy. The Respondent has registered at least 52 domain names, some of which incorporate third parties’ widely-known trademarks filed worldwide, including <uber****.com>, <oracle*********.com> and <harlock.com>. These domain names all redirect to parking pages where they are offered for sale for prices exceeding related out-of-pocket costs. The Respondent has established a pattern of abusive registrations as contemplated by paragraph 4(b)(ii) of the Policy. The Respondent claims that he has wide experience in the registration of domain names. Under the concept of wilful blindness, the Respondent has a duty to perform basic searches to ensure he is not infringing any third parties’ rights. The top Internet search results for “Zohoor” in Latin characters refer only to the Complainant and its business. The search results for “Zohoor” in the WIPO Global Brand Database refer to the Complainant’s trademark registrations, including in Jordan.

B. Respondent

The Respondent is an entrepreneur who acquired the disputed domain name at a premium in good faith after fully understanding the generic nature of the term “Zohoor”. “Zohoor” is a first name for individuals in numerous Asian and Arab countries. It is also a generic word meaning “flowers” in Arabic. It is also a geographical place name and has been adopted by numerous businesses. It is very common for Arabic companies to use Arabic words in English letters in their businesses. “Zohoor” is basically an Arabic word written as “زهور”. The word may be represented interchangeably as “zuhur” or “zohoor”. Many people on Facebook in Jordan are named “Zohoor”. A Google search for “زهور” only returns images of flowers. A Google search for “zohoor” mainly returns results for the Complainant due to search engine optimization but there are many other references to “Zohoor” on the Internet.

The Complainant has no monopoly over the common term “zohoor”. It was not invented by the Complainant. The word “zohoor” in both Arabic and English has been adopted by innumerable businesses around the world. The Complainant’s stand-alone mark ZOHOOR was only registered in 2014 and never in the United States. “Zohoor” is a generic word. The Complainant’s own logo includes a flower while its name in Arabic translates to “flowers”. The Facebook profile “zohooronline.com” has been used for approximately ten years in Saudi Arabia to deliver flowers. Many other businesses include “zohoor” in their name because it means “flowers”.

The Respondent does have rights and a legitimate interest in the disputed domain name. This interest stems from the fact that the keyword in the disputed domain name is a common/generic Arabic word which is a first name for individuals around the world. Moreover, it has a descriptive and well-known meaning that is separate and distinct from the Complainant’s brand name. Although the Respondent registered the disputed domain name more than a year ago and left it parked, given his vast experience in the field of selling online flowers since 2007, there is no doubt that the Respondent always had future plans for the disputed domain name on its acquisition. The Respondent has already sold his existing business and is ready to hop onto the next venture as an online flower marketplace by July 2021. The Respondent may target the Arabic-American community in the United States. The Complaint admits that “Zohoor” is a first name for Arabic people. The Respondent holds many other domain names that consist of first or last names, Arabic names or Arabic/Araby words or that are related to flowers. Although the Respondent acquired the disputed domain name on January 2, 2020, due to the Covid pandemic and surrounding uncertainty, things could not progress sufficiently to launch the project regarding any flower-related domain names. The Respondent does not argue that he has made demonstrable preparations to use the disputed domain name.

The disputed domain name was not registered and is not being used in bad faith. The Respondent’s native language is Arabic and he was born and raised in Jordan so he is well aware of the meaning of the Arabic term “zohoor”. He was actively involved in the online flower business from 2008 to 2017 and the disputed domain name simply means “flowers”. The disputed domain name was registered due to its generic nature and hence registered in good faith. The Respondent had never heard of the Complainant or come across its products until September 9, 2020, when the Complainant’s IT Supply Chain Director called him and asked for a quotation. No evidence has been provided which even purports to show that the Respondent actually was aware or ought to have been aware of the Complainant. The Respondent is located in the United States, from where he has professionally operated since 2004. The Complainant does not seem to have any kind of presence in the United States and no United States trademark. Even an online search of the Jordanian trademark register shows just two registrations for ZOHOOR ALREEF and none for ZOHOOR. The Respondent denies that he registered the three other domain names highlighted by the Complainant in bad faith. The UDRP does not require a respondent to conduct trademark searches in every country of the world. The concept of wilful blindness does not apply here as the Complainant’s mark is not registered in the United States and a layman can hardly be supposed to have knowledge of the WIPO Global Trademark Database. “Zohoor” is used to refer to numerous other entities and the Complainant has only recently rebranded from “Zohoor Al Reef” to ZOHOOR.

6. Discussion and Findings

6.1 Unsolicited Supplemental Filings

The Complainant made an unsolicited supplemental filing after the filing of the Response. The Respondent then made its own unsolicited supplemental filing, prior to the appointment of the Panel.

Paragraph 10(d) of the Rules provides that “[t]he Panel shall determine the admissibility, relevance, materiality and weight of the evidence”. Although paragraph 12 of the Rules empowers the Panel, in its sole discretion, to request further statements or documents from either of the Parties, this does not preclude the Panel from accepting unsolicited filings. See Delikomat Betriebsverpflegung Gesellschaft m.b.H. v. Alexander Lehner, WIPO Case No. D2001-1447.

The Complainant made its supplemental filing to respond to certain allegations in the Response. The Respondent objects to the admission of the Complainant’s supplemental filing. However, if the Panel admits that filing, the Respondent asks the Panel to accept his own supplemental filing so that he can reply to it.

The Panel observes that the Complainant’s supplemental filing aims, in part, to respond to the Respondent’s assertion of a legitimate interest in using the disputed domain name in connection with an online flower marketplace, including the considerable amount of evidence filed along with that assertion. The Complainant could not have anticipated that assertion or that evidence at the time of the Complaint and the Panel considers that the Complainant should be given a fair opportunity to respond to it. The Respondent has taken the opportunity to reply in his own supplemental filing. Both supplemental filings were made before the appointment of the Panel, they will allow the Panel to rule on a complete factual record and they will not unduly burden the proceeding.

Therefore, the Panel exercises its discretion to admit both Parties’ supplemental filings and will take them into consideration in this decision according to their respective relevance, materiality and weight as part of the evidence on the record.

6.2 Substantive Issues

Paragraph 4(a) of the Policy provides that a complainant must prove each of the following elements:

(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 burden of proof of each element is borne by the Complainant. Given that the three elements apply cumulatively, a failure to satisfy any one element will result in the Complaint being denied.

A. Identical or Confusingly Similar

Based on the evidence presented, the Panel finds that the Complainant has rights in the ZOHOOR mark.

The disputed domain name wholly incorporates the ZOHOOR mark. The only additional element in the disputed domain name is a generic Top-Level Domain (“gTLD”) suffix (“.com”). As a mere technical requirement of registration, this element may be disregarded in the comparison between a domain name and a trademark for the purposes of the first element of paragraph 4(a) of the Policy, unless the gTLD suffix has some relevance to the comparison between the trademark and the domain name as a whole, which is not the case here. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11.

Therefore, the Panel finds that the disputed domain name is identical to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Whether the Respondent has rights or legitimate interests in the disputed domain name is a close question. The Panel notes the arguments of both Parties regarding this element, which are summarized in section 5 above. Although the parties disagree about the proper transliteration of the Arabic word زهور, which is a word meaning “flowers”, the Panel finds support in the record for “zohoor” being one appropriate transliteration. The Complainant itself shows images of flowers on its website (which is natural for a company that sells perfumes, among other cosmetics); the Respondent used a flower logo on the website at which it advertised the disputed domain name for sale even before having been contacted by the Complainant. The Panel is thus inclined to accept, on the limited record available to it, that “zohoor” is a transliteration for the Arabic word زهور, which means “flowers”.

Whether the Respondent has the right to register that transliteration is a complex question. The parties have not briefed the question of whether a respondent in the business of selling domain names consisting of dictionary words has the same right to register and sell the transliteration of a dictionary word and whether a transliteration should be treated as other foreign equivalents are. In this case, the parties have not submitted sufficient evidence to guide the Panel in its assessment of the frequency with which the word “zohoor” is written using Latin characters or the extent to which the word, written in Latin rather than Arabic characters, is understood to mean “flowers”.

Equally difficult is the assessment of the Respondent’s assertion that, if he does not sell the disputed domain name, he intends to use it to create a website to sell flowers. In support of this contention, he provided a mock-up of his planned website and asserted that he has extensive work experience in the online flower-selling industry. The Panel notes that the Respondent’s work history in the flower-selling business is not documented in the record, the Respondent’s website mock-up is undated (and is inconsistent with the Respondent’s statement to the Complainant during their settlement negotiations that he intended to franchise FTD flowers in the Arabic region), and the Respondent appears to disclaim in his supplemental filing that he is relying on his demonstrable preparations to use the disputed domain name to establish his rights and legitimate interests. Although the Panel acknowledges the Respondent’s arguments, the Respondent has not submitted the kind of evidence required to establish demonstrable preparations to use the disputed domain name for a website through which he intends to sell flowers. See generally WIPO Overview 3.0, section 2.2.

In the end, given the Panel’s findings regarding bad faith, it is not necessary to determine whether the Respondent has rights or legitimate interests in respect of the disputed domain name.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that certain circumstances shall be evidence of the registration and use of a domain name in bad faith. The first and second of these are as follows:

“(i) circumstances indicating that [the respondent has] registered or [the respondent has] acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [the respondent’s] documented out-of-pocket costs directly related to the domain name.

(ii) [the respondent has] registered the domain name in order to prevent the owner of the 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.”

The disputed domain name was acquired by the Respondent on December 30, 2019, years after the registration of the ZOHOOR trademark in Saudi Arabia and other jurisdictions.

With respect to the first circumstance set out above, there is no dispute that the Respondent is offering the disputed domain name for sale at a price much higher than the price he paid for it. The question that arises is whether the Respondent targeted the Complainant’s ZOHOOR trademark when he registered the disputed domain name.

The Parties agree that “zohoor” is not an invented word but rather a Romanized form of an Arabic first name. The evidence shows that various businesses in Arabic-speaking countries incorporate “zohoor” in their names online including, in some cases, as a Romanization of the Arabic word for “flowers”. Accordingly, the fact that the disputed domain name wholly incorporates “zohoor” with the addition only of a gTLD suffix does not, of itself, give rise to the inference that the Respondent knew of the Complainant’s mark or intended to target the Complainant.

The Complainant does not claim to have any market presence or trademark registrations in the United States, where the Respondent is resident. The Respondent declares that he had never heard of the Complainant or come across its products until September 9, 2020, when the Complainant’s IT Supply Chain Director called him and asked for a quotation for the disputed domain name. The Respondent has provided evidence of that conversation and the ensuing email exchanges. That evidence has not been contradicted.

The Complainant argues that the Respondent, as an experienced registrant of domain names, was willfully blind to the Complainant’s trademark rights because he should have known of the existence of the ZOHOOR trademark in the Middle East and North Africa through online searches prior to his registration of the disputed domain name. It is true that, under the UDRP, experienced domain name registrants have an affirmative obligation under paragraph 2 of the Policy to determine whether registration of the name would violate another person’s rights. See WIPO Overview 3.0, sections 3.2.2 and 3.2.3; Compart AG v. Compart.com / Vertical Axis, Inc., WIPO Case No. D2009-0462; mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141; Grundfos A/S v. Texas International Property Associates, WIPO Case No. D2007-1448. It is unclear whether the Respondent undertook any such due diligence in this case, prior to registering the disputed domain name. The Complainant, however, has not provided sufficient evidence to support a finding that, had the Respondent conducted reasonable due diligence prior to acquiring the disputed domain name in December 2019, he would have become aware of the Complainant’s trademark rights. The Panel has reviewed the Complainant’s evidence and notes that the results of a Google search for “zohoor”, even in October 2020, were mainly for “Zohoor Alreef”, not ZOHOOR. The top search result was the Complainant’s website, which was then associated with the domain name not . The Complainant provides screenshots of that website as it appeared in November 2020 but, given its recent rebranding as ZOHOOR, the Panel questions the probative value of this evidence as regards the brand’s online presence prior to the registration of the disputed domain name. As noted above, the Complainant holds no trademark rights in the United States, where the Respondent is resident, so a search of the United States Patent and Trademark Office database would not have alerted the Respondent to the Complainant’s rights. While a search of the WIPO Global Brand Database would have revealed the existence of the Complainant’s trademark registrations for ZOHOOR in the Middle East and North Africa, the Panel does not consider that the Respondent should be deemed to have constructive knowledge of the contents of that database. Moreover, the Respondent has credibly asserted that he registered the disputed domain name because of its value as the transliteration of the Arabic word زهور, which can be translated to mean “flowers”. On this record, the Complainant has not established that the Respondent likely registered the disputed domain name primarily for the purpose of selling it to the Complainant or a competitor of the Complainant. Accordingly, the Panel finds that the Complainant has failed to discharge its burden of showing that the Respondent knew, should have known of (or even was willfully blind to), the ZOHOOR trademark and registered the disputed domain name primarily for the purpose of selling it to the Complainant or a competitor of the Complainant as set out in paragraph 4(b)(i) of the Policy.

With respect to the second circumstance set out above, the Complainant submits that three other domain names held by the Respondent incorporate third party trademarks and establish a pattern of abusive registrations. The Panel notes that two of these other domain names incorporate trademarks that are well known in the United States. The Respondent admits that his registration of the domain name “looks prima facie wrong”, although he denies that it violates rights. The Panel also notes that the Respondent’s justification for his registration of the domain name lacks credibility. However, showing a pattern of cybersquatting against some other domain names may create an inference but is not enough by itself to establish cybersquatting against all of the Respondent’s domain names. Rather, a key element of this part of the Policy is a showing that the Respondent registered the disputed domain name in order to prevent the Complainant from reflecting its ZOHOOR trademark in a corresponding domain name. Here, the preponderance of the evidence submitted by the parties supports a finding that the Respondent registered the disputed domain name because of its transliterated and translated meaning, not in order to target the Complainant. Accordingly, this evidence is insufficient to demonstrate the existence of the circumstance set out in paragraph 4(b)(ii) of the Policy.

The Complainant has not asserted bad faith under any other circumstances listed in the Policy, nor has the Panel found any other basis to find that the Respondent registered the disputed domain name in bad faith. Therefore, the Panel does not find that the disputed domain name has been registered and is being used in bad faith. The Complainant has failed to satisfy the third element in paragraph 4(a) of the Policy.

D. Reverse Domain Name Hijacking

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”. “Reverse Domain Name Hijacking” is defined in paragraph 1 of the Rules as “using the UDRP in bad faith to attempt to deprive a registered domain-name holder of a domain name”.

The Respondent requests a finding of reverse domain name hijacking on the basis that any amount of due diligence would have shown that the Complainant could not prove at least one of the three requirements in the Policy. The Respondent argues that this is a “Plan B” case, initiated after the Complainant failed to acquire the disputed domain name in the marketplace. The Complainant’s rebranding proves that its real motive is to reverse hijack the disputed domain name.

The Complainant argues that it is inconsistent for the Respondent to offer the disputed domain name for sale and then to claim that the Complainant, as the legitimate owner of the ZOHOOR trademark, is acting in bad faith simply because it tried to resolve the matter amicably by purchasing the disputed domain name prior to launching this UDRP proceeding.

The Panel notes that the Complainant contacted the Respondent regarding a possible purchase of the disputed domain name prior to initiating this proceeding. In the Panel’s view, in the absence of further evidence of bad faith, the Complainant’s actions are consistent with a good-faith intention to obtain the disputed domain name quickly, for a reasonable price, and without an adversarial posture. Although the Panel questions the Complainant’s motive for failing to disclose to the Panel that it had rebranded in 2020, the Complaint was not obviously without merit, for the reasons set out above.

Accordingly, the Panel does not find that the Complaint was brought in bad faith or that it constitutes an abuse of the administrative proceeding.

7. Decision

For the foregoing reasons, the Complaint is denied.

Matthew Kennedy
Presiding Panelist

David H. Bernstein
Panelist

Gerald M. Levine
Panelist
Date: May 12, 2021

Portugal based Complainant Company is a Libson Stock Exchange listed media Company and has rights in the mark since 1991. Respondent Mr. Refinaldo Chilengue did not file a formal response but had responded to a Complainant’s Cease & Desist letter in January 2020 claiming use of the brand name for his newspaper since the last 20 years. The same was further evident from his social media presence, clearly evidencing the Respondent has been known by the domain name atleast since 1997. The words ‘Correio Da Manhã’ in the disputed domain name mean ‘Monring Mail’. Hence legitimate interests upheld, hence Complaint Denied ! 

Cofina Media, SA v. Refinaldo Chilengue, Sojornal

Case No. D2020-2829

1. The Parties

Reclamante is Cofina Media, SA, Portugal, represented by CCA Advogados, Portugal.

The Respondent is Refinaldo Chilengue, Sojornal, Mozambique.

2. The Domain Name and the Registration Unit

The domain name in dispute is <correiodamanhamoz.com> and is registered with FastDomain, Inc. (“Registration Unit”).

3. History of the Procedure

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 27, 2020. On October 27, 2020, the Center sent the verification request by email to the Registry Unit. registration of the disputed domain name. On October 27, 2020, the Registry Unit sent the Center a response to verify the domain name in dispute, confirming that the Respondent is the holder of the registration and providing his contact details.

The Center sent an e-mail communication to the parties in English and Portuguese on November 3, 2020 about the language of the procedure, given that the Complainant filed the Complaint in Portuguese and the language of the domain name registration agreement is English. On November 6, 2020, the Complainant submitted the Complaint translated into English.

The Center found that the Complaint meets the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Uniform Domain Name Dispute Resolution Policy Regulation (the “Regulation” ), and the WIPO Complementary Regulation for the Uniform Domain Name Dispute Resolution Policy (the “Complementary Regulation”).

In accordance with paragraphs 2 (a) and 4 (a) of the Rules, the Center formalized the notification of the Complaint and the administrative procedure was initiated on November 16, 2020. In accordance with paragraph 5 (a) of the Rules, the The deadline for sending the defense ended on December 6, 2020. The Respondent did not present a defense. Thus, on January 12, 2021, the Center notified the parties of the Respondent’s Revelation.

The Center appointed Wilson Pinheiro Jabur as the Specialist of the Administrative Panel, on January 18, 2021. The Specialist considers that the Panel was properly constituted. The Specialist presented the Term of Acceptance and the Declaration of Impartiality and Independence, as required by the Center, in compliance with paragraph 7 of the Regulations.

On January 19, 2021 the Respondent sent an e-mail communication to the Center requesting the use of the Portuguese language, and the Center then sent the Respondent the Portuguese version of the Complaint, as originally presented. The Complainant did not submit any other communications.

4. Fact Issues

Reclamante is a Portuguese media conglomerate founded in 1990, listed on the Lisbon stock exchange since 1998, currently holding five newspapers, three magazines and a cable television channel.

The CORREIO DA MORHÃ newspaper was founded in 1979 and acquired by Reclamante in 2000, printed daily in Portugal with a circulation of over 110,000 copies. Reclamante is also the broadcaster of the CORREIO DA MANHÃ TV (“CMTV”) channel in Portugal (since 2013), Mozambique and Angola (since 2014).

The Respondent owns the domain names <correiodamanha.pt> and <correiodamanhatv.pt>, among others, and the following trademark registrations (Attachments XXVI – XXXII to the Complaint):

– Portuguese registration No. 239564 for the mixed mark CORREIO DA MORHÃ, filed on February 23, 1987, registered on April 20, 1991, in class 25;

– Portuguese registration No. 440304 for the mixed mark CORREIO DA MORHÃ, deposited on October 30, 2008, registered on January 20, 2009, in classes 16 and 41; and

– Mozambican registration No. 1096903 for CORREIO DA MORHÃ registered on July 5, 2011, in classes 16 and 41.

The disputed domain name <correiodamanhamoz.com> was registered on May 18, 2016 and currently redirects users to a page displaying links to other sites.

5. Claims of the Parties

A. Complainant

Reclamante claims to be one of the most important media groups in Portugal, with its newspaper CORREIO DA MORHÃ the most read by the Portuguese, with an electronic edition dedicated to Africa and accessible in Mozambique. It also maintains that Reclamante is its television channel CORREIO DA MANHA, the Portuguese cable channel with the highest audience.

The Complainant further asserts that it sent a notification to the Respondent on November 21, 2019 (Attachments XXIII and XXIV to the Complaint) as soon as it learned of the domain name in dispute and its use by the Respondent in connection with a page that, in addition to reproducing the name CORREIO DA MORHÃ, presents a total coincidence between the scopes and contents of the sites, disseminating news under the same structure and layout of sites ( trade dress and graphic layout of news, titles, image display, lettering etc.). ).

The Respondent responded to the notification on January 31, 2020 (Attachment XXV to the Complaint) acknowledging that he used “CORREIO DA MORHÃ DE MOÇAMBIQUE” as the name of his newspaper “for more than 20 years, without any complaint, in addition to those who resemble it it is not unheard of in media titles worldwide ”.

The domain name in dispute, according to the Complainant, reproduces its brand, with the simple addition of the suffix “moz”, indicative of Mozambique, which in no way contributes to endow it with distinctiveness.

The Complainant maintains that the Respondent has no rights or legitimate interest in relation to the domain name in dispute since:

(i) the Respondent has been using the domain name in dispute in connection with a page that serves a news newspaper in a very similar way to that with which the Complainant uses its CORREIO DA MORHÃ brand, with the Respondent copying the entire concept of the model business and its trade dress ;

(ii) the Complainant has not authorized the Respondent to register or use the disputed domain name;

(iii) there is no evidence that the Respondent is commonly known or identified by the domain name in dispute.

Finally, Reclamente argues that, because it uses its CORREIO DA MORHÃ brand in connection with a 24-hour cable TV channel in Portugal, Mozambique and Angola, in addition to the significant circulation of its newspaper, it would be implausible that the Respondent did not had knowledge of the Complainant’s reputation and, when registering the domain name in dispute, had no clear intention to create confusion and practice unfair competition with the Complainant in view of the reproduction of the same business model and trade dress as the Complainant, which would constitute clear evidence that the Respondent would be seeking to take advantage of the Complainant’s well-known brand.

B. Respondent

The Respondent did not submit a formal response to the Complaint, having only sent a message by e-mail to the Center requesting that Portuguese be the language of the procedure, after the deadline for replying had elapsed.

6. Language of the Procedure

According to paragraph 11 of the Rules, the language of the procedure must be the language of the disputed domain name registration agreement. The Specialist, however, may determine that the language of the procedure is different from the language of the registration agreement in view of the circumstances of the administrative procedure.

When submitting its application for the language of the procedure to be Portuguese, the Complainant maintained that this language should be adopted in view of the Mozambican nationality of the Respondent, a country whose only official language is Portuguese; the content of the website available on the disputed domain name; there was an exchange of correspondence between the Parties, prior to the initiation of the procedure, in Portuguese and the fact that the Complainant is Portuguese.

The Respondent, on the other hand, also requested, in an extemporaneous manifestation, that the language of the procedure was Portuguese.

In view of the request, from both parties and, since both are located in Portuguese-speaking countries, the possibility of prejudice for the Respondent is not envisaged in the fact that the Procedure is adopted in Portuguese.

7. Analysis and Conclusions

Paragraph 4 (a) of the UDRP establishes the three requirements that must be fulfilled for the Specialist to determine the transfer of the domain name in dispute to the Complainant:

i. that the disputed domain name is identical or confused with a trademark over which the Complainant has rights; and

ii. that the Respondent has no rights or legitimate interests in relation to the disputed domain name; and

iii. the disputed domain name has been registered and is being used in bad faith.

The Complainant, therefore, must prove in these administrative procedures each of these three elements so that the domain name in dispute is transferred to it, in accordance with paragraph 4 (a) of the UDRP.

A. Confusing identity or similarity between the disputed domain name and the Complainant’s brand

The Complainant demonstrated to be the holder of several registrations for the brand CORREIO DA MORHÃ. This mark is reproduced in its entirety on the domain name in dispute.

The addition of the suffix “moz” is not enough to distance the disputed domain name from the Reclamante brand, given that the Reclamante brand stands out clearly in the disputed domain name. See paragraph 1.7 of the Synthesis of Opinions of the WIPO Administrative Panels on certain issues related to UDRP, third edition (“Synthesis of WIPO 3.0”).

In view of the foregoing, the Expert understands that the domain name in dispute is confused with the Complainant’s brand, with item (i) of paragraph 4 (a) of the UDRP being filled out.

B. Respondent’s legitimate rights or interests in the disputed domain name

In view of the particularities of this case and also considering that the requirements of paragraph 4 (a) of the Policy are cumulative, this Panel will address the second and third requirements jointly since this case clearly does not seem to be within the strict limits of the UDRP, as it involves issues that would be better analyzed by a court with jurisdiction to deal with the facts under discussion.

Although the Respondent did not respond to the Complainant’s allegations, there are elements in this case that indicate the potential presence of rights or legitimate interests on the part of the Respondent, namely:

i. in the Respondent’s response to the notification sent by the Complainant (Attachment XXV to the Complaint), the Respondent claims to have used the name CORREIO DA MORHÃ in his daily newspaper and website since its creation “more than twenty years ago”;

ii. the Respondent’s Facebook page (reproduced in the Complaint) contains over 5,500 likes;

iii. the channel on the social network YouTube relating to the Respondent (Appendix XXII to the Complaint) includes more than 8,500 followers;

iv. the Complainant’s complaint that the Respondent would have violated his trade dress and business model requires in-depth analysis given that several news sites appear to present similar ways of disseminating news as much as the Complainant and the Respondent, and there do not appear to be exclusive rights over the “concept” of news categorization or the use of square or rectangular photographs in conjunction with links to the full articles (the Panel remembers, for example, the pages of the Financial Times <ft.com> 1 and the Brazilian news site UOL, <uol.com.br> 2 , which have long adopted a similar display);

v. a perfunctory search conducted by the Panel corroborated the indication that the Respondent may actually be known as “Correio da Manhã” in Mozambique since 10 February 1997 3 .

In the face of such evidence, the Panel must analyze whether the Respondent’s conduct would characterize bad faith in the registration and use of the disputed domain name in the light of paragraph 4 (b) of the Policy which brings four hypotheses which, if detected by the Specialist, will characterize registration and use of domain name and bad faith:

a) have the Respondent registered the domain name for the purpose of selling, renting or transferring it to the Complainant or to third parties; or

b) have the Respondent registered the domain name to prevent the Complainant from using it as a corresponding domain name; or

c) have the Respondent registered the domain name in order to harm the Complainant’s commercial activity; or

d) when using the domain name, the Respondent intentionally tries to attract, for profit, Internet users to its website or any other electronic address, creating a situation of probable confusion with the Complainant’s distinctive sign.

Although the Complainant points out that the Respondent would have had the clear intention of creating confusion and practicing unfair competition, the Complainant did not prove, in the Expert’s opinion, that the Respondent was specifically approaching the Complainant.

To be successful, the Complainant should have demonstrated that its specific clientele and its brand were being targeted by the Respondent at the time of registering the disputed domain name. In other words, the Complainant would need to demonstrate (i) that the Respondent was aware of the Complainant or its marks before registering the disputed domain name; and (ii) that the particularities of the case in question indicate that the Respondent also intended to violate the Complainant’s specific rights, as opposed to merely benefiting from the presence and attractiveness of the disputed domain name, which does not seem to happen in this case .

In any case, as noted earlier, this is clearly not an appropriate case for the UDRP, as it involves issues that would be best handled by a court with full jurisdiction to address the facts under discussion.

7. Decision

For the reasons stated above, the Complaint must be rejected.

Wilson Pinheiro Jabur
Specialist
Date: February 1, 2021

1 Accessed on January 27, 2021.

2 Accessed on January 27, 2021.

3 The page https://www.jornalnoticias.co.mz/index.php/recreio-e-divulgacao/11081-correio-da-manha-e-prestigio-terao-sites-na-internet (accessed on January 27 of 2021) brings a news dated February 17, 2014 stating that ““ Correio da Manhã ”is a generalist electronic newspaper, but with a greater focus on Economy & Business articles, launched on the market on February 10, 1997” and that, on the 17th anniversary of the Respondent’s company, it announced the launch of new communication platforms, “namely internet pages of the digital daily ‘Correio da Manhã’”.

Hungray’s OTP Bank came up with it’s first UDRP, claiming exclusive rights to the common acronym OTP, as using various combinations, starting with OTP like OTP Bank, OTP eBiz, OTP Direct, OTP Junior, OTP Startup, etc. OTP Bank mainly has presence in European countries and has rights in Trademark OTP Bank since 1990s but applied for OTP as a Trademark in 2006. The disputed domain name <OTPGROUP.com> was registered in September 2004.

The Respondent is a well-known / serial entrepreneur from Silicon Valley of USA since late 1980s. He has over 40 patents registered in his name. see here, starting 1993. The Respondent firstly founded OnSpec Electronics, Inc. (OEI) in 1989-90 as an IBM PC applications company. It was followed by incorporation of Onspecs Technology Partners Inc. (OTP) in 1993 and OTP Software Inc. in 1996. (source)

Lastly, in India as well, it incorporated a Company by the name of Onspec Technology Partners India Private Limited on 1 September 2004 (active as on date), in the same month of registration of the domain name disputed domain name <OTPGroup.com>, clearly evidencing the purpose of the registration of the domain name.

Respondent submitted that the ‘Onspec’ as initial Company names was adopted from ‘OnSpec-OnTime-OnBudget’ – a project management concept. Otherwise also the Respondent being a computer engineer by profession used to frequently use ‘OTP’ as in ‘One Time Programmable IC Chips’, while working upon IBM Mainframe computers in early 1980s. Reference to technical term OTP is also available in one of the 2006 patent applications by the Respondent, which reads “one-time program memory (OTP). OTP is similar to write once memory, and after this one write, it cannot be modified.” Otherwise OTP being a very common term to refer to One Time Password these days, it initially used to indicate “One Time Program” in software development.

While the Complaint tried hard to press for lack of legitimate interests and Bad Faith, based upon misleading statements as follows, though not upheld by the Panel.

a) The Complainant alleged as to fake whois information, while the WHOIS was just not visible due to GDPR Policy. Highly surprizingly, being a European Bank, represented through a EU Lawyer, they themselves are well aware of the GDPR Policy.

b) Complainant also tried to dig through archive.org and present information as to a template used by the Respondent in the past, which is available here – https://demo.rockettheme.com/joomla-templates/fresco/ and tried to mislead by alleging that misleading information was provided on the website as contact information. And quite amusingly, all the proceedings were marked to the unknown email appearing in the template – noreply@fresco.com, including the decision.

c) Complainant also alleged that contacting the Respondent was impossible, though till 2018, the WHOIS was completely visible in historical whois. But the Complainant made no efforts of digging into the historical WHOIS information.

The arguments were totally denied by the Respondent, represented by Ankur Raheja of Cylaw Solutions, with proper evidence and hence the Complaint denied. Though it was not an RDNH as the website was not in active use. Though it would have been a different story, if WIPO could have appointed a Panelist from USA, that is juridiction of the Respondent, rather than Europe, where the Complainant has huge presence.

Lastly, the legtimate interests were quite visible from the documents produced from the year 1998-99 as indicated in the decision below. Moreover, the words OTP Group also appeared in the archive.org from 1999 at www.OTPSoft.com. Though a business which has been operational since early 1990s, it was not possible to produce very regular evidence from the present date but in terms of UDRP principle, the Respondent was already commonly known by the domain name before registration of the domain name… as previously held in the matter of VertexMedical.com, hence have legitimate interests.

ADMINISTRATIVE PANEL DECISION

OTP Bank Nyrt v. Swamy Venkidu

Case No. D2020-3118

The Parties

The Complainant is OTP Bank Nyrt, Hungary, represented by Danubia Legal, Hungary.

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

The Domain Name and Registrar

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

Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 19, 2020.  On November 20, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name.  On November 20, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name, which differed from the named Respondent and contact information in the Complaint.  The Center sent an email communication to the Complainant on November 23, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint.  The Complainant filed an amendment to the Complaint on November 25, 2020.   

The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 26, 2020.  In accordance with the Rules, paragraph 5, the due date for Response was December 16, 2020.  On December 15, 2020, the Center received an informal communication from an individual associated with the Respondent.  On December 16, 2020, the Respondent submitted a request for extension of the Response due date.  In accordance with paragraph 5(b) and paragraph 5(e) of the Rules, the due date for submission of the Response was extended until December 30, 2020.  The Response was filed with the Center on December 30, 2020.

The Center appointed Jane Seager as the sole panelist in this matter on January 14, 2021.  The Panel finds that it was properly constituted.  The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

Factual Background

Founded in Hungary in 1949, the Complainant is a commercial bank, operating primarily in Central and Eastern Europe.  For use in connection with the Complainant’s banking services, the Complainant is the owner of a portfolio of trademark registrations comprising the element “OTP”, including but not limited to the following: 

–    Hungarian Trademark Registration No. 134843, OTP BANK (figurative trademark), registered on May 17, 1993;  

–    European Union Trade Mark No. 005719299, OTPBANK, registered on May 2, 2008;  

–    International Trademark Registration No. 910764, OTP, registered on December 6, 2006;  and 

–    International Trademark Registration No. 910030, OTP BANK, registered on December 4, 2006. 

The Complainant is also the registrant of several domain names consisting of or incorporating its trademarks, including <otpbank.hu>, <otp.hu>, and <otpgroup.hu>.  

The Respondent is an individual based in the United States engaged in the technology sector.  The Respondent is the founder of various companies registered in California, United States, including “OnSpec Electronics, Inc.” in 1990, “OnSpec Technology Partners, Inc.” in 1993, and “OTP Software, Inc.” in 1996.  Such companies have been active in the provision of database applications, software marketing, software sales, consulting services, and various other services.  On July 7, 1997, the Respondent registered the domain name <otpsoft.com>, which became operational in 1998. 

The disputed domain name was registered on September 23, 2004.  In 2019 the disputed domain name resolved to a website featuring a website template, lacking substantive content.  At the time that the Complaint was submitted to the Center (and at the time of this decision) the disputed domain name did not resolve to an active website. 

Parties’ Contentions

Complainant

The Complainant submits that the disputed domain name is confusingly similar to trademarks in which it has rights, as well as its company name.  The Complainant submits that “OTP” is the distinctive element of the disputed domain name, and that the addition of the term “group” and the generic Top-Level Domain (“gTLD”) “.com” is insufficient to distinguish the disputed domain name from the Complainant’s trademarks and company name.  

The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name.  The Complainant states that it has not licensed or otherwise permitted the Respondent to use any of its trademarks.  The Complainant notes that there is no content on the website to which the disputed domain name resolves, and submits that the Respondent has no justified intention in using or legitimate interest in keeping the disputed domain name.  The Complainant submits that the template website previously appearing at the disputed domain name never had any connection with the term “OTP”.  The Complainant submits that the Respondent is not making any legitimate noncommercial or fair use of the disputed domain name.  The Complainant claims to be widely known in Central and Eastern Europe, and argues that the Respondent’s registration of the disputed domain name tarnishes the Complainant’s trademarks and reputation.  The Complainant further asserts that the disputed domain name creates a misleading impression of association with the Complainant.  

The Complainant submits that the disputed domain name was registered and is being used in bad faith.  The Complainant asserts that it has not authorized the Respondent to register a domain name containing the Complainant’s trademark.  The Complainant notes that there has been no content posted on the website to which the disputed domain name resolves since August 2019, and submits that the disputed domain name is being passively held, in bad faith.  In this regard, the Complainant asserts that its trademarks are widely known in Hungary as well as in Central and Eastern Europe, that the Respondent has taken active steps to conceal his identity, that the Respondent previously provided inaccurate contact information on the website to which the disputed domain name resolved, and that any actual or contemplated use of the disputed domain name by the Respondent would be illegitimate.  

The Complainant requests transfer of the disputed domain name.  

Respondent

The Respondent submits that the disputed domain name is not identical or confusingly similar to a trademark in which the Complainant has rights.  The Respondent asserts that at the time that the disputed domain name was registered, the Complainant did not own any trademark registrations in the United States, where the Respondent is located, nor did the Complainant own any trademark rights for “OTP”.  The Respondent argues that “OTP” and “OTP Group” are used by other businesses.  The Respondent asserts that “OTP” is a generic, technical, or abbreviated term and that it has been registered as a trademark by various businesses as early as 1976.  

The Respondent claims to have rights or legitimate interests in the disputed domain name.  The Respondent asserts that his companies have been commonly known by the disputed domain name.  The Respondent claims to have referred to his group of companies as the “OTP Group” since at least 1998.  The Respondent further submits that “OTP” is an acronym, standing for “one time program / programmable”, “one true paring”, or “one time password”.  The Respondent notes that there are other domain name registrations not owned by the Complainant that comprise the letters “OTP”, and that the Complainant has no exclusive right to the use of “OTP” and therefore has no standing in the present proceedings.  The Respondent submits that the Complainant has not established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.  

The Respondent submits that the disputed domain name was not registered or used in bad faith.  The Respondent asserts that, since 1998, he has been using the terms “OTP Group” in connection with at least three of the Respondent’s companies, and that as a result the Respondent has acquired goodwill in connection with the acronym “OTP”.  The Respondent submits that he did not register the disputed domain name with the Complainant in mind, and had no knowledge of the Complainant or its trademark at the time the Respondent registered the disputed domain name in 2004.  The Respondent asserts that the disputed domain name has been held by the Respondent to represent the companies owned by the Respondent in good faith.  The Respondent submits that he does not require permission from the Complainant to use the disputed domain name, as the disputed domain name is an abbreviated form of the Respondent’s company names.  The Respondent submits that he has never provided any false or misleading WhoIs or contact information, that his contact information had been redacted in the WhoIs record as a result of the implementation of the General Data Protection Regulation 2016/679 (“GDPR”), and that it was clear that the contact information displayed on the website appearing at the disputed domain name in 2018 was part of a demo version of a website template.  The Respondent submits that he did not develop the website at the disputed domain name due to other priorities.  The Respondent claims to continue to operate under the names “OTP Group” and “OTP Venture Group”, providing software application services as well as hardware semiconductor solutions.  

The Respondent requests a finding of Reverse Domain Name Hijacking (“RDNH”).  The Respondent submits that the Complainant knew or should have known that the Complainant could not succeed in proving at least two of the three elements of the Policy.    

Discussion and Findings

In order to prevail, the Complainant must demonstrate, on the balance of probabilities, that it has satisfied the requirements of paragraph 4(a) of the Policy: 

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

(ii)    the Respondent has no rights or legitimate interests in the disputed domain name;  and 

(iii)    the disputed domain name was registered and is being used in bad faith.

Identical or Confusingly Similar

The Panel finds that the Complainant has established rights in the OTP and OTP BANK trademarks, the registration details of which are provided in the factual background section above.  As stated in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.1.2, noting in particular the global nature of the Internet and Domain Name System, the jurisdiction(s) where the trademark is valid is not considered relevant to panel assessment under the first element.  Moreover, the fact that a domain name may have been registered before a complainant has acquired trademark rights does not by itself preclude a complainant’s standing to file a UDRP case, nor a panel’s finding of identity or confusing similarity under the first element.  

The disputed domain name includes the Complainant’s OTP trademark as its leading element together with the term “group” under the gTLD “.com”.  The disputed domain name may also be read as comprising the distinctive element of the Complainant’s OTP BANK trademark, i.e., “OTP”, simply substituting the term “bank” with the term “group”.  Neither the addition of the term “group” to the Complainant’s OTP trademark, nor the substitution of the term “bank” for the term “group” in the Complainant’s OTP BANK trademark prevents a finding of confusing similarity between the Complainant’s trademarks and the disputed domain name;  see WIPO Overview 3.0, section 1.8.   

The Panel finds the disputed domain name to be confusingly similar to the Complainant’s OTP and OTP BANK trademarks.  The Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.  

Rights or Legitimate Interests

While the overall burden of proof in UDRP proceedings is on the complainant, previous panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent.  As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name.  If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element;  see WIPO Overview 3.0, section 2.1.  

The Complainant’s case under the second element is founded primarily on the Respondent’s lack of substantive use of the disputed domain name, and the notion that the registration of the disputed domain name itself tarnishes the Complainant’s trademarks and creates a misleading impression of association with the Complainant.  

The Respondent, in reply, submits that he is commonly known by the disputed domain name, and that “OTP” is a descriptive term or acronym that has been adopted by many businesses across the world.  

While the Respondent has submitted evidence of having founded companies under the names “OnSpec Technology Partners, Inc.”, “OTP Software, Inc”, and others, referred to collectively by the Respondent as the “OTP Group”, the Respondent has not provided clear evidence that he or his group of companies is recognized by any third parties under the name “OTP Group”, such that the Respondent may be said to be “commonly known” by the disputed domain name – particularly as concerns the “group” appendage – pursuant to paragraph 4(c)(ii) of the Policy.  Nor has the Respondent produced any evidence of active use of the disputed domain name in connection with any descriptive meaning that could be ascribed to “OTP Group” that would otherwise confer rights or legitimate interests in the disputed domain name on the Respondent.  

Notwithstanding the above, in light of the Panel’s findings under the third element, as set out below, the Panel need not make a definitive finding in relation to paragraph 4(a)(ii) of the Policy.      

Registered and Used in Bad Faith

Bad faith under the Policy is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s trademark.  Complaints alleging the types of conduct that amount to examples of bad faith as contemplated by paragraph 4(b) of the Policy should be supported by arguments and relevant evidence.  Wholly unsupported allegations may not be sufficient to support a complainant’s case;  see WIPO Overview 3.0, section 3.1.  

The Complainant’s arguments in support of bad faith registration of the disputed domain name are founded on the notions that first, the Complainant has not granted the Respondent any authorization to register the disputed domain name containing the Complainant’s trademark;  secondly, that the Respondent has not used the disputed domain name, except in 2018 to resolve to a template website lacking substantive content, as described above;  and thirdly, that the Respondent has attempted to conceal his identity and provided false contact information on the website to which the disputed domain name resolved in 2018.  

The Panel notes that the disputed domain name was registered on September 23, 2004.  The Complainant states that it is well established in Central and Eastern Europe.  The Complainant has not described the scale of its business operations (if any) in the United States, where the Respondent is located.  Nor has the Complainant provided any evidence of trademark rights for “OTP” or any variation thereof in the United States that predate the registration of the disputed domain name.  The Complainant has not submitted any evidence of its reputation so as to support an inference of the Respondent’s likely knowledge of the Complainant or its trademark rights.  Nor is there any evidence of the Respondent’s use of the disputed domain name targeting the Complainant’s trademark such that the Respondent can be said to have had knowledge of the Complainant at the time that the Respondent registered the disputed domain name.  In terms of the nature of the disputed domain name, despite the inclusion of the Complainant’s OTP trademark in the disputed domain name, the inclusion of the term “group” does not by itself support an inference that the Respondent registered the disputed domain name in an attempt to create an association with the Complainant.  

The Respondent denies having had any knowledge of the Complainant or its trademarks at the time that the disputed domain name was registered.  The Respondent has submitted evidence of having founded companies under the names “OnSpec Technology Partners, Inc.”, “OTP Software, Inc”, and others, referred to collectively by the Respondent as the “OTP Group”.  The Respondent has also provided evidence (dating from as early as 1998) referring to his companies as the “OTP Group” in promotional correspondence with third parties.  The Respondent has also submitted evidence indicating that he has been the longstanding registrant of the domain name <optsoft.com> (registered on July 7, 1997), which has been used in connection with a website promoting the Respondent’s software and technology consulting services.  The Panel finds that the Respondent has presented sufficient evidence to provide a credible and rational explanation for the Respondent’s registration of the disputed domain name.

The Panel further finds the Complainant’s allegations that the Respondent has attempted to conceal his contact information in the WhoIs record, and that he provided false contact information on the website to which the disputed domain name resolved in 2018, to be misguided.  As noted by the Respondent, the Respondent’s details in the registrar’s publicly-available WhoIs record appear to have been redacted for reasons relating to the implementation of the GDPR.  The Respondent has provided historic WhoIs records showing that prior to May 2018, the Respondent’s name and contact information was disclosed in full in the WhoIs record for the disputed domain name.  The Panel finds that it was reasonably apparent that the website to which the disputed domain name resolved in 2018 was a template website lacking substantive content, and that the contact information displayed therein was simply placeholder contact information, not intended to mislead Internet users in any way.  

In light of the above, the Panel finds that the Complainant has failed to demonstrate that the Respondent registered the disputed domain name in bad faith.  It follows that the Respondent’s longstanding holding of the disputed domain name does not, in the circumstances of the present case, amount to bad faith vis-à-vis the disputed domain name. 

The Complainant has not satisfied the requirements of paragraph 4(a)(iii) of the Policy.  

Reverse Domain Name Hijacking (RDNH) 

The Respondent has requested that the Panel enter a finding of RDNH.  

Paragraph 1 of the Rules defines RDNH as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.”  Prior UDRP panels have consistently held that the mere lack of success of a complaint is not itself sufficient for a finding of RDNH;  see WIPO Overview 3.0, section 4.16.  

The Panel observes that the present Complaint was founded on relevant trademark rights, several of which predated the registration of the disputed domain name.  The Panel does not accept the Respondent’s submission that the Complainant knew or ought to have known that it could not succeed under any fair interpretation of facts reasonably available prior to the filing of the Complaint.  Rather, the Response raised a number of matters that the Complainant could not reasonably have been expected to be aware of at the time that the Complaint was submitted to the Center.  Despite the apparent weaknesses of the Complainant’s case, as well as its shortcomings in terms of relevant or probative evidence, there is no indication that the Complainant has unreasonably ignored established UDRP precedent, nor has the Complainant provided false evidence or otherwise attempted to mislead the Panel. 

The Panel declines to enter a finding of RDNH.

Decision

For the foregoing reasons, the Complaint is denied.

 

/Jane Seager/

Jane Seager

Sole Panelist

Date:  January 29, 2021