Decision

Complainant Visioner Kutus Kutus Ltd from Cyprus – Therapeutic oil supplier under the name and mark KUTUS KUTUS – Trademark KUTUS KUTUS registered in EUIPO, USPTO and UK – Respondent from Indonesia – KUTUS a generic word meaning meaning Eight – Disputed Domain Name being redirected to Varash.co.id (Varash Healing Oil) – Trademarks registered in 2019 and 2020 while disputed domain name registered since 2013 – Complaint denied as Domain Name not registered in Bad Faith

Sladana Reisinger, Visioner Kutus Kutus Ltd

v.

I. Nyoman Andi Gunawan, Eka Sriti Enterprise

WIPO Case No. D2020-2296

1. The Parties

The Complainant is Sladana Reisinger, Visioner Kutus Kutus Ltd, Cyprus, internally represented.

The Respondent is I. Nyoman Andi Gunawan, Eka Sriti Enterprise, Indonesia.

2. The Domain Name and Registrar

The disputed domain name <kutuskutus.com> is registered with CV. Jogjacamp (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 18, 2020. On September 2, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 10, 2020, 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 September 11, 2020. In accordance with the Rules, paragraph 5, the due date for Response was October 1, 2020. On September 30, 2020, the Center received an email communication from the Respondent requesting for an extension of time to file a response. On the same day, the Center granted the Respondent the automatic four calendar day extension for response under paragraph 5(b) of the Rules. The Response was filed with the Center on October 2, 2020.

The Center appointed Steven A. Maier as the sole panelist in this matter on October 9, 2020. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant is a company registered in Cyprus. It is a supplier of a therapeutic oil under the name and mark KUTUS KUTUS.

The Complainant is the proprietor of the following trademark registrations:

– European Union trademark number 017961481 for a figurative mark including the words KUTUS KUTUS, registered on January 22, 2019, in International Classes 3, 5, 21, 35 and 42;

– United States of America trademark number 5992589 for a figurative mark including the words KUTUS KUTUS, registered on February 18, 2020, in International Classes 3 and 5; and

– United Kingdom trademark number 3454984 for a figurative mark including the words KUTUS KUTUS, registered on March 27, 2020, in International Classes 3 and 5.

The disputed domain name was registered on December 18, 2013.

5. Parties’ Contentions

A. Complainant
The Complainant refers to its trademark registrations and to a number of domain names including the term “kutuskutus”. It states that the Respondent has no connection with its KUTUS KUTUS product and is using the disputed domain name to redirect to a website and Facebook page offering a competing product named “Varash Healing Oil”. The Complainant states that the Respondent’s activities are disrupting its business and have caused actual confusion to its customers. The Complainant contends that the Respondent registered the disputed domain name primarily to prevent the Complainant from reflecting its trademark in that domain name and in order to disrupt the Complainant’s business. The Complainant requests the transfer of the disputed domain name.

B. Respondent
The Respondent contends that the Complainant should not have been able to register trademarks for the term KUTUS KUTUS, as this means the number 88 in Indonesian and is regarded as a lucky number. The Respondent further submits that it owned the disputed domain name long before the Complainant was registered or had any license in respect of the KUTUS KUTUS mark.

6. Discussion and Findings

In order to succeed in the Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are:

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

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

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

A. Identical or Confusingly Similar
The Complainant is the owner of registrations for figurative trademarks which include the words KUTUS KUTUS. The date of those registrations is not relevant to the exercise of comparison for the purposes of paragraph 4(a)(i) of the Policy, and the Panel therefore finds that the disputed domain name, <kutuskutus.com>, is confusingly similar to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests
In the light of the Panel’s findings in respect of the issue of bad faith as set out below, it is unnecessary to consider whether the Respondent has rights or legitimate interests in respect of the disputed domain name.

C. Registered and Used in Bad Faith
The disputed domain name was first registered in December 2013, and there is no evidence before the Panel, or any assertion on the part of the Complainant, that the Respondent acquired the disputed domain name on any later date. The Complainant’s earliest trademark registration is dated January 22, 2019, and there is no evidence of the Complainant having used the mark KUTUS KUTUS in commerce on any earlier date. Accordingly, the Panel finds that the Respondent registered the disputed domain name over five years before the Complainant’s first use of the trademark relied upon.

In the circumstances, the Complaint cannot succeed. Regardless of the Respondent’s current use of the disputed domain name, the Policy includes the conjunctive requirement that the disputed domain name must both have been registered and been used in bad faith. Save in very limited circumstances (which have no application in this case – at least according to the evidence put before the Panel) a domain name cannot have been registered in bad faith by reference to a complainant who had no corresponding trademark rights at the date of such registration; see e.g. paragraph 3.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

The Panel therefore rejects the Complainant’s submissions that the Respondent registered the disputed domain name in order to prevent the Complainant from reflecting its trademark in that domain name and/or primarily for the purpose of disrupting the Complainant’s business: in view of the chronology set out above, the Respondent can have had no such motivation at the date of registration of the disputed domain name. The Policy cannot in these circumstances avail the Complainant, regardless of the Respondent’s current use of the disputed domain name.

The Complainant cannot therefore establish that the disputed domain name has been registered and is being used in bad faith.

7. Decision

For the foregoing reasons, the Complaint is denied.

Steven A. Maier
Sole Panelist
Date: October 19, 2020

Complainant one of the biggest Indian Jewellery Brand – Disputed Domain Registered in 2004 – Complainant came online in 2010 with similar .NET domain – Complainant holds Trademark since 2003 and promoted it’s brand 2012 onward – Passive Holding of Domain Name by Respondent – 16 years of no use, could not prove any Legitimate Interests – Held Registration not in Bad Faith – UDRP policy is of narrow scope for clear case of cybersquatting !

ADMINISTRATIVE PANEL DECISION
Kalyan Jewellers India Limited v. Antony Adam 
Case No. D2020-1615 

1. The Parties 

Complainant is Kalyan Jewellers India Limited, India, represented by Altacit Global, India.

Respondent is Antony Adam, United Arab Emirates, Represented by Cylaw Solutions, India.

2. The Domain Name and Registrar 

The disputed domain name <kalyanjewellers.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 19, 2020. On June 19, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 20, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on June 23, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on June 24, 2020.

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

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on June 30, 2020. In accordance with the Rules, paragraph 5, the due date for Response was July 20, 2020. On July 13, 2020, Respondent sent an email requesting the extension of the Response due date. On July 14, 2020, the Center granted the extension of time until July 30, 2020. On July 30, 2020, Respondent submitted the Response. On July 31, 2020, Complainant sent an email requesting to file the supplemental filings. On July 31, 2020, Respondent objected to Complainant’s attempt to request for further submission by the email. However, on August 12, 2020, Complainant filed a supplemental filing with the Center. Accordingly, the Center acknowledged the receipt of supplemental filing and proceed with the panel appointment on the same day. Respondent submitted a supplemental filing on August 17, 2020.

The Center appointed Georges Nahitchevansky as the sole panelist in this matter on August 13, 2020. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

Complainant, Kalyan Jewellers India Limited, is a company based in India that has been in the business of selling jewelry through retail showrooms and stores since 1993. Complainant owns a number of trademark registrations for logo marks with the words “kalyan jewellers” in India, Singapore, United Arab Emirates, Saudi Arabia, Qatar, Kuwait and Bahrain. While most of these registrations issued to registration after 2019, Complainant owns four trademarks in India that issued to registration between 2003 and 2006, as follows: (i) a logo registration for KALYAN JEWELLERS that was filed on June 23, 1994 and issued to registration on December 8, 2003 (No. 631593); (2) a word mark registration for KALYAN that was filed on April 27, 2004 and issued to registration on December 2, 2005 (No. 1006004); and (3) two additional logo registration for KALYAN JEWELLERS that were filed on April 27, 2001 and which issued to registration on March 4, 2005 and July 19, 2006 (Nos. 1006005 and 1006006).

Complainant also owns and uses the domain name <kalyanjewellers.net> for a website to provide information about Complainant and its jewelry, and to promote the online sales of jewelry. Complainant registered the <kalyanjewellers.net> domain name in or about March 2010.

Respondent operates a business that provides domain name registration, web hosting, and online radio setup. Respondent’s official website is at “www.webvisionindia.com”. Respondent registered the disputed domain name on October 15, 2004 and does not appear to have used the disputed domain name with an active website or page.

In November 2017, Complainant contacted Respondent in an attempt to purchase the disputed domain name. Those communications do not look to have gone beyond some back and forth about contact numbers to use. It does not appear that the parties had any substantive discussions regarding a purchase of the disputed domain name. Currently, the disputed name does not resolve to an active website or web page.

5. Preliminary Consideration Regarding the Parties’ Supplemental Filings

Neither the Policy nor the Rules provide a party with an automatic right to submit additional arguments or evidence. Under paragraph 10 of the Rules, panels enjoy broad powers for conducting administrative proceedings, provided that the parties are treated fairly and the proceedings are conducted expeditiously. Within this framework, a panel can determine within its sole discretion whether to admit or reject supplemental submissions. In exercising this discretion, many panels have made clear that additional evidence or submissions should only be admitted in exceptional circumstances, such as, by way of example, where new pertinent facts arise after the submission of the complaint or where a party could not have reasonably known of the existence, relevance or veracity of further material when it made its primary submission. See, e.g., Office Club, Ltd. v. John Adem, WIPO Case No. D2000-1480; Gordon Sumner, p/k/a Sting v. Michael Urvan, WIPO Case No. D2000-0596; The E.W. Scripps Company v. Sinologic Industries, WIPO Case No. D2003-0447; Cerulean Studios, LLC v. Hexuan Cai, WIPO Case No. D2013-0902. The Panel agrees with this position and adds that further material should only be admitted to the extent necessary in a proceeding and when such is essential in reaching a fair decision on the facts of the matter.

In the instant case, and after reviewing the Complaint, the Response and the Parties’ communications with the Center, the Panel is willing to accept Complainant’s supplemental filing as it concerns an assertion by Respondent that while the disputed domain name is registered in the name of Respondent the actual true and beneficial owner of the disputed domain name is an individual by the name of Subha Bharat who used Respondent’s reseller service in October 2004 to register the disputed domain name. Given that the Panel is willing to accept Complainant’s supplemental filing, the Panel accepts Respondent’s supplemental filing as it concerns Complainant’s assertions regarding the ownership of the disputed domain name by Subha Bharat.

The Panel notes that accepting limited portions of Complainant’s supplemental filing as set forth above is proper here given that Respondent has raised issues and facts that Complainant could not have anticipated based on the public information available concerning the disputed domain name. To not allow Complainant to respond to Respondent’s contentions that another party owns the disputed domain name, as well as the evidence provided in that regard, would be unfair and prejudicial to Complainant. Similarly, for purposes of fairness, Respondent should likewise be allowed to respond to assertions made by Complainant in its supplemental filing regarding the ownership of the disputed domain name.

6. Parties’ Contentions

A. Complainant

Complainant contends that it has strong rights in the KALYAN JEWELLERS mark on account of Complainant’s use of the mark since 1993 and Complainant’s numerous trademark registrations for the KALYAN JEWELLERS mark. Complainant maintains that on account of its promotional efforts the KALYAN JEWELLERS mark is well-known in India and in countries within the Gulf Cooperation Council (“GCC”) in the Middle-East.

Complainant asserts that the disputed domain name is identical to Complainant’s KALYAN JEWELLERS mark as it fully and solely consists of the KALYAN JEWELLERS mark.

Complainant argues that Respondent has no rights or legitimate interests in the disputed domain name as Respondent (i) registered the disputed domain name after Complainant had established rights and reputation in the KALYAN JEWELLERS mark; (ii) is not commonly known by the name “Kalyan” or “Kalyan Jewellers”; and (iii) has not acquired any trademark rights in the KALYAN JEWELLERS name and mark.

Lastly, Complainant contends that Respondent has registered and used the disputed domain name in bad faith as Respondent was likely aware of the reputation Complainant enjoys in the KALYAN JEWELLERS mark when Respondent registered the disputed domain name. Complainant further contends that Respondent has been acting in bad faith by passively holding the disputed domain name for 16 years, given that the disputed domain name cannot be used by anyone other than Complainant as the owner of the KALYAN JEWELLERS mark.

B. Respondent

Respondent rejects Complainant’s contentions. Respondent maintains that he has been in the domain name reselling business since 2002 and that the disputed domain name was registered through him on October 15, 2004 on behalf of an individual by the name of Subha Bharat who immigrated to Australia from India in mid-2004. Respondent explains that he originally registered the disputed domain name as a reseller through Net4India.com, a domain name registrar based in India, but then moved the disputed domain name and his reselling business to Directi / PDR LTd. when Net4India.com went into insolvency proceedings. The Respondent, Antony Adam, after explaining his involvement in the registration of the disputed domain name, refers to circumstances surrounding Subha Bharat (but refers to this person as the respondent).

According to Respondent, Subha Bharat, registered the disputed domain name through Respondent in 2004 in connection with her interest in jewelry making. Respondent has included a declaration from Subha Bharat in which she explains that she registered the disputed domain name as part of her jewelry making efforts and did so as a combination of two common words “Kalyan” and “jewellers.” According to Ms. Bharat (and Respondent) “kalyan” is a synonym for a meaning of Ms. Bharat’s first name, “Subha,” which in Sanskrit means “beautiful.” Ms. Bharat maintains that at the time she registered the disputed domain name she was not aware of any business in India or Australia by the name of “Kalyan Jewellers”. She also avers that she made some initial attempts to develop a website in 2004, but that nothing was ever developed. Ms. Bharat further avers that by 2006, after the birth of her second child, her jewelry making project was put on hold. Ms. Bharat further maintains that she never did anything with the disputed domain name to take advantage of any claimed trademark rights of anyone.

Respondent argues that Complainant’s Complaint should be barred by the doctrine of laches given Complainant’s 16 year delay in pursuing the disputed domain name. Respondent notes that because Complainant registered the domain name “www.kalyanjewelers.net” in 2010, and used such for its online presence, Complainant likely knew at that time that the disputed domain name was already registered to another party. Based on such delay, Respondent further argues that even if there is no laches, the long delay creates an inference that Complainant did not truly believe that Respondent had engaged in bad faith registration.

Respondent asserts that the disputed domain name is not identical or confusingly similar to a mark owned by Complainant as the disputed domain name is based on a combination of dictionary words that are not exclusive to Complainant.

Respondent contends that it has rights and a legitimate interest in the disputed domain name as Complainant does not have exclusive rights in the common words “kalyan” and “jewelers,” which have been used by numerous businesses in related fields. Respondent argues that the word “kalyan” is (i) the name of a town in India as well as a town in Southern Australia; (ii) a generic word in many Indian languages meaning “beautiful” as well as a common name in India for males and females (“Kalyani”); and (iii) is used as a trademark or business name by many companies in India. Respondent also maintains that a number of businesses use “kalyan jewellers” in their business names or as trademarks associated with their business.

Respondent reiterates that it acquired the disputed domain name in 2004 in good faith for Subha Bharat, that neither Respondent nor Ms. Bharat were aware of Complainant’s claimed mark at that time, and that the disputed domain name has never been used to refer to Complainant or its services.

Lastly, Respondent argues that it has not registered or used the disputed domain name in bad faith. Respondent reiterates that the disputed domain name is based on a combination of two common words and that Respondent registered the disputed domain name based on its common meaning. Respondent maintains that it was unaware of Complainant’s claimed rights in 2004 and that in 2004 Complainant’s claimed KALYAN JEWELLERS mark was largely unknown, particularly in Australia where Respondent and Ms. Bharat are located. In that regard, Respondent maintains that Complainant has not provided any evidence showing that it was well-known in Australia or India in 2004. Finally, Respondent urges that there is no evidence that Respondent registered the disputed domain name to take advantage of any rights Complainant might claim in the name and mark KALYAN JEWELLERS or that Respondent ever attempted to profit from the disputed domain name.

Based on the foregoing, Respondent asks that the Panel make a finding of reverse domain name hijacking against Complainant.

C. Parties’ Supplemental Filings

In its Supplemental filing, Complainant contests that Subha Bharat is the alleged owner of the disputed domain name. Complainant maintains that there is no evidence supporting this contention and that Respondent, who did not reveal that information in 2017 when contacted by email by Complainant, has at all relevant times been the owner of the disputed domain name. Complainant also argues that Subha Bharat, the alleged owner of the disputed domain name, is not commonly known by the name “Kalyan Jewellers” and does not own any trademark rights in “KALYAN JEWELLERS”, and is in fact using the name DANA Fashion Pty Limited for her current jewelry related business. Lastly, Complainant asserts that Respondent registered the disputed domain name primarily for the purpose of selling, renting or otherwise transferring it to Subha Bharat, and individual who not only masked her ownership of the disputed domain name, but who owns no rights in a KALYAN JEWELLERS mark and “might have aspired to be an competitor of the Complainant at the time of the registration of the disputed domain name in bad faith.”

Respondent’s supplemental filing in response to Complainant’s supplemental filing reasserts a number of the arguments already made by Respondent in its Response. Respondent maintains that he is not the owner of the disputed domain name and that such belongs to Subha Bharat for whom Respondent registered the disputed domain name in 2004, that the disputed domain name is a combination of two common words not exclusive to Complainant, that Complainant’s delay in bringing this proceeding for at least 10 years should bar Complainant from pursuing this proceeding and that Complainant has failed to prove its rights in the KALYAN JEWELLERS mark in 2004..

7. Discussion and Findings

Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:

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

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

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

A. Identical or Confusingly Similar

Respondent does not contest that the disputed domain name is identical or confusingly similar to Complainant’s KALYAN JEWELLERS mark. Respondent’s position is that Complainant cannot have any trademark rights in the combination of the two dictionary words “kalyan” and “jewelers,” neither of which is exclusive to Complainant. In that regard, Respondent has produced a number of examples of the use of the term “kalyan” for a variety of goods and services, including a trademark registration in India for KALYAN JEWELLERS by a party unrelated to Complainant.

That being said, Complainant has produced evidence of several trademark registrations that it owns for logo marks that include KALYAN JEWELLERS and a word mark KALYAN, some of which issued to registration before the disputed domain name was registered and others that issued to registration after the disputed domain name was registered. The Panel notes that while Respondent has provided examples of third party uses and registrations of “kalyan”, the Panel is not in a position to assess whether Complainant’s trademark registrations are somehow improper or could possibly be subject to cancellation on the basis that “kalyan” is a generic term. Indeed, if the Panel accepts that “Kaylan” means “beauty,” or an approximation thereof in Sanskrit, then such term would not be considered generic in connection with jewelry or jewelry retailing purposes for trademark registration purposes. The fact remains that Complainant owns trademark registrations in India and elsewhere for the marks KALYAN JEWELLERS and KALYAN. As the threshold for the first element is primarily to establish standing, the Panel concludes that since the disputed domain name is identical to Complainant’s registered KALYAN JEWELLERS mark, Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, the complainant must make at least a prima facie showing that the respondent possesses no rights or legitimate interests in a disputed domain name. Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393. Once the complainant makes such a prima facie showing, the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP.

In this proceeding, Respondent asserts that it registered the disputed domain name on behalf of Subha Bharat, an individual residing in Australia. In support of that contention, Respondent has submitted (i) a declaration from Subha Bharat recounting the contentions made by Respondent with respect to the registration of the disputed domain name in 2004; and (ii) a copy of what appears to be an official Australian certificate providing notice that Subha Bharat became an Australian citizen on July 17, 2007. Missing in Respondent’s submissions is any documentary evidence from 2004 showing that Subha Bharat actually used the services of Respondent to register the disputed domain name, placed an order through Respondent to do so, had an account with Respondent’s business for the registration of the disputed domain name or made a payment to Respondent for the registration of the disputed domain name. The only documentary evidence that connects Ms. Bharat to the disputed domain name is an undated invoice from Respondent’s Webvisionindia.com company to Ms. Bharat for the annual domain name registration fee for the disputed domain name from October 15, 2019 through October 15, 2020. Notably missing are any other invoices concerning the disputed domain name since 2004.

Complainant argues that there is no evidence showing that Subha Bharat is in fact the owner of the disputed domain name and that Respondent is an unrelated acquirer of the disputed domain name.

There is no dispute that Respondent has owned the disputed domain name since October 15, 2004 and that the disputed domain name since October 2004 has not been used, per se, with an active website or business. The open question before the Panel is whether Respondent is the actual owner of the disputed domain name or is holding the disputed domain name beneficially for Subha Bharat. The Panel, however, does not have to resolve that question in determining whether Respondent or Subha Bharat have a legitimate interest in the disputed domain name. The existence of a beneficial holder does not permit the registrant (in this case Respondent) to disclaim use by a beneficial holder. (See, merely by way of illustration, ICANN’s Registrar Accreditation Agreement at section 3.7.7.3.)

Respondent maintains that “Kalyan Jewellers” is merely a combination of two dictionary words that is not unique to Complainant. While Respondent has provided much evidence that “kalyan” is a word and name in various Indian dialects, the name of towns in India and Australia, and is used in a number of trademark registrations and business names in India, the fact remains that Complainant has provided much evidence that at least as of the date of the filing of the Complaint, Complainant has trademark rights in KALYAN JEWELLERS and some reputation in connection with Complainant’s jewelry related services. Indeed, Respondent implicitly acknowledges as much by arguing that searching for “Kalyan Jewellers” on Google or otherwise on the Internet at this time would be pointless given Complainant’s extensive marketing efforts and use of well-known brand ambassadors to promote its brand, products and services. Based on what the parties have submitted, it appears to the Panel that while “kalyan” has a common meaning it also has a trademark significance as part of KALYAN JEWELLERS for Complainant’s jewelry services.

The remaining question then is whether Respondent has made a bona fide use of or has a legitimate interest in the disputed domain name. That assessment is typically made in the present with a view to the circumstances prevailing at the time of the filing of the Complaint. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at section 2.11. Here, while Respondent has owned the disputed domain name for 16 years, there is no evidence that Respondent or Subha Bharat have ever used the disputed domain name in connection with jewelry, the sale of jewelry or a bona fide business. Complainant asserts that the disputed domain name has been suspended for many years and Respondent asserts that the name has not been used apart for a six month period in 2008 and 2009 when Respondent put up a web page at the disputed domain name offering to sell the disputed domain name.

Given the Parties’ respective claims, the Panel in its discretion under its general powers pursuant to paragraphs 10 and 12 of the UDRP Rules has for the benefit of the Parties has reviewed archival website pages for the disputed domain name that are available through the Internet Archive at “www.archive.org” and “www.domaintools.com”. WIPO Overview 3.0, section 4.8. The Panel has confirmed that in 2008 Respondent did post a web page offering the disputed domain name for sale. The Panel notes that in 2016 and 2017 there was a page posted at the disputed domain name that had the header “Do I need hosting.” The page generally provides information regarding the usefulness of web hosting and includes statements about becoming a “member” and obtaining a web hosting account. The Panel also notes that on August 28, 2019 there was a mock-up website posted at the disputed domain name with the title “Jewelry Store”.

In totality, it appears that there has been some use of the disputed domain name to promote hosting services and that Respondent (or Subha Bharat) recently contemplated use of such with a website to sell jewelry, or at least put of website content to give that appearance. Given Complainant’s existing trademark rights in KALYAN JEWELLERS for the sale of jewelry, Respondent’s use of the disputed domain name to promote hosting services, presumably through Respondent, and for a possible competing jewelry store appears to be, and would be, opportunistic at this point. Indeed, Respondent asserts that Subha Bharat is now intending to enter the jewelry business and has registered a company in May 2020 by the name of DANA Fashion Pty Limited. Clearly, the fact that Ms. Bharat is using a different name for her jewelry business suggests a recognition that using “Kalyan Jewellers” to sell jewelry could be problematic in light of Complainant’s rights in KALYAN JEWELLERS.

As an aside, it should be noted that Respondent’s assertion that Ms. Bharat “has all the rights to adopt a business name reflecting her own name” is misplaced. Apart from the fact that Ms. Bharat’s name is not “Kalyan” but “Subha” (although they may share an underlying common meaning in Sanskrit), the fact remains that as a matter of trademark law there are limitations on the use of one’s name when such is done to take advantage of the established rights of another party in a particular area. For instance, a person by the name of “Joe Disney” would not be acting legitimately if he suddenly opened up an amusement or entertainment facility by the name of “Disney” in light of the prior rights of The Walt Disney Company. Similarly, given the current rights of Complainant in KALYAN JEWELLERS for Complainant’s jewelry business, it would likely not be legitimate for Respondent to suddenly adopt that name to sell jewelry in competition with Complainant.

Given that Respondent has owned the disputed domain name for 16 years and has recently used the disputed domain name to promote web hosting services, and more recently for an apparent possible jewelry store, belies Respondent’s claims of having a legitimate interest in the disputed domain name at this point. Simply put, Respondent has not done anything with the disputed domain name in 16 years that would suggest that Respondent is using (or intends to use) the disputed domain name for a legitimate business. The more recent uses make it more likely than not that Respondent (or Subha Bharat) is now attempting to profit from the disputed domain name from its association with Complainant and its KALYAN JEWELLERS mark.

Given that Complainant has established with sufficient evidence that it owns rights in the KALYAN JEWELLERS mark, and given Respondent’s above noted actions, the Panel concludes that none of the circumstances of paragraph 4(c) of the Policy are evident in this case and that Complainant has made out its case under this element.

C. Registered and Used in Bad Faith

Under Paragraph 4(a)(iii) of the Policy, a complainant must establish the conjunctive requirement that the respondent registered and used a disputed domain name in bad faith. The assessment of whether a disputed domain name was registered in bad faith has to be assessed at the time of the registration of the disputed domain name, which in this case is October 15, 2004.

Complainant claims that it has developed strong rights in the KALYAN JEWELLERS name and mark and that it has used the mark KALYAN JEWELLERS since 1993. In support of those contentions, Complainant relies on a 1994 application it filed in India for the KALYAN JEWELLERS mark that issued to registration in 2003 and on applications it filed for KALYAN JEWELLERS and KALYAN in 2001 and 2004 respectively. Complainant also relies on evidence it has submitted regarding the extensive promotional efforts undertaken by Complainant in regards to its KALYAN JEWELLERS mark, such as through celebrity brand ambassadors.

The Panel has reviewed the evidence submitted by Complainant and as already noted has concluded that Complainant has likely developed strong rights in the name and mark KALYAN JEWELLERS in at least India and some of the GCC countries. However, the evidence submitted by Complainant shows use and promotional efforts for the KALYAN JEWELLERS mark after 2009. What is clear from the evidence before the Panel, Complainant made a significant push with regard to its KALYAN JEWELLERS mark after 2009 and has made extensive promotional efforts in the last several years. Moreover, it appears that Complainant’s use of the Internet to promote Complainant’s KALYAN JEWELLERS jewelry services only started after 2010. What is lacking in the record is evidence of what Complainant was doing with the KALYAN JEWELLERS mark on or before October 15, 2004, how the mark had been promoted or what its notoriety or public recognition might have been at that time. Thus, on the record before the Panel the question is whether Respondent was acting in bad faith in October 2004 based on the fact that Complainant had obtained a logo trademark registration in India for KALYAN JEWELLERS in 2003 (although filed in 1994).

Respondent, in this case, has provided much evidence that the term “kalyan” is a common term in a number of Indian dialects, is used as a first name, is the name of towns in India and Australia, and is used as part of a number of business names and trademark applications and registrations. Respondent has also provided some evidence that there are other uses of “Kalyan Jewellers” in India by parties unrelated to Complainant and which in one case goes back to at least 1983. Respondent (as well as Ms. Bharat) also asserts that it registered the disputed domain name in October 2004 because it believed it was a common term and that it was not aware of Complainant’s claimed rights in KALYAN JEWELLERS. As Complainant has provided no evidence regarding the use of the KALYAN JEWELLERS mark and/or the extent of such use or notoriety of the KALYAN JEWELLERS name and mark prior to October 2004, it is difficult to assess almost 16 years after the fact whether Respondent was trying to take advantage of rights Complainant might have had in KALYAN JEWELLERS or was merely registering a domain name based on a combination of two common terms, whether for himself or on behalf of another party. Indeed, there is no evidence in the record showing that Respondent or Ms. Bharat’s explanation for registering the disputed domain name might be pretextual given the common meaning of “kalyan”, such as evidence showing, for example, that (i) “Kalyan Jewellers” was more likely than not perceived by consumers to be a brand of Complainant in 2004; (ii) Respondent or Ms. Bharat had an established pattern of registering domain names based on the marks of others; or (iii) made use of the disputed domain name after registering it to take advantage of Complainant’s then exiting rights in KALYAN JEWELLERS or to profit from the disputed domain name.

That Respondent may now want to profit from the disputed domain name in bad faith in light of the reputation that Complainant has now developed in the KALYAN JEWELLERS name and mark, does not in and of itself prove without more that Respondent originally registered the disputed domain name in bad faith in October 2004, particularly if the term “kalyan” was simply perceived as a common term at that time with no particular trademark significance relating to Complainant.

In sum, Complainant has failed to establish that it is more likely than not that Respondent registered the disputed domain name in bad faith in October 2004 in order to take advantage of Complainant’s claimed rights in the KALYAN JEWELLERS mark. Given that (i) the disputed domain name was registered many years ago and before Complainant seems to have had some notion of a strong reputation in its marks; (ii) the term “kalyan” has a common meaning; (iii) Complainant has provided no evidence regarding its use or reputation in the KALYAN JEWELLERS mark on or before 2004; (iv) there is no evidence that Respondent has a history or pattern of cybersquatting or taking advantage of the marks of others in bad faith ; and (v) there is no evidence Respondent sought to profit in some way from the disputed domain name after registering it, Complainant has failed to establish that Respondent more likely than not registered the disputed domain name in bad faith in October 2004 to take advantage of Complainant’s KALYAN JEWELLERS mark. As such Complainant’s complaint fails.

The Panel notes that some of Respondent’s contentions and reliance on the fact that “kalyan” is also used in town names and in other business names appears to “overdo” the claimed justification for Respondent having registered the disputed domain name in the first place (and could be seen as a post hoc justification for Respondent having registered the disputed domain name). To be sure, though, these other uses of “kalyan” when viewed in the totality of the evidence that is before the Panel regarding Complainant’s claimed rights in 2004, takes this case out from the more narrow “clear cut” cybersquatting scenarios contemplated by the Policy. The Complainant is, of course, free to challenge Respondent’s claims in court where a fuller record can be developed.

D. Reverse Domain Name Hijacking

Respondent has requested that the Panel make a finding of Reverse Domain Name Hijacking in this proceeding. Section 15(e) of the Rules give instruction to panels in this regard: If after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.

In this case, while the Panel has concluded that Complainant did not establish bad faith registration of the disputed domain name by Respondent, the question is whether it was objectively unreasonable for Complainant to bring this proceeding.

Given that Complainant owned a logo trademark registration in the KALYAN JEWELLERS mark in India that predated the registration of the disputed domain name, it does not at all appear unreasonable that Complainant would seek to take action against the disputed domain name. While Complainant has failed to make out its case for the reasons explained above, that does not in itself establish that Complainant brought the Complaint in bad faith and with no objective basis. As such, the Panel declines to make a finding of reverse domain name hijacking.

8. Decision

For the foregoing reasons, the Complaint is denied.

Georges Nahitchevansky
Sole Panelist
Date: August 27, 2020

====================================

On Similar grounds of narrow scope of policies, earlier this year Bennet & Coleman lost in an attempt to gain ENOW.in Read here 

ARBITRATION AND MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION UNDER UDRP
Veena Kumaravel v. Daegu Law Auction
Case No. D2019-2508

1. The Parties

Complainant is Veena Kumaravel, India, represented by DePenning & DePenning, India.

Respondent is Daegu Law Auction, Republic of Korea, represented by CyLaw Solutions, India.

2. The Domain Name and Registrar

The disputed domain name <naturals.com> (the “Domain Name”) is registered with Megazone Corp., dba HOSTING.KR (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 14, 2019. On October 14, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 16, 2019, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.

On October 24, 2019, the Center notified the Parties in both English and Korean that the language of the registration agreement for the Domain Name is Korean. On October 25, 2019, Complainant requested for English to be the language of the proceeding. On October 29, 2019, Respondent consented to English as the language of the proceeding.

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 Respondent of the Complaint, and the proceedings commenced on November 7, 2019. In accordance with the Rules, paragraph 5, the due date for Response was November 27, 2019. The Response was filed with the Center on November 25, 2019.

The Center appointed Christopher S. Gibson as the sole panelist in this matter on December 10, 2019. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

Complainant is a beauty salon chain with over 650 outlets in India, launched (according to Complainant) in 1991. Services include a unisex salon, the Naturals lounge (premium salon), the Naturals W (women salon), and Page 3 (luxury salon). Complainant has a training academy at its beauty salons called the Naturals Training Academy, to educate individuals in hair and beauty care. The Academy also equips students with technical skills, communication techniques, and client management skills. Complainant’s business model is focused on women entrepreneurship and it has 600 women franchise partners, providing jobs for more than 15,000 trained women. Complainant has expanded its footprint in overseas markets, such as Singapore and Sri Lanka.

In 2017, Complainant’s Naturals Training Academy partnered with Dream Wellness Institute, a division of CADD Centre Training Service Pvt Ltd, to expand its professional training courses on beauty, hair and makeup. The CADD Centre runs a network of customer-aided design training centers in 24 countries and this partnership facilitates Complainant’s use of technology to innovate ways to expand its presence in other countries.

Complainant states it has a customer base of over 3,000,000 customers from all age groups and diverse social backgrounds. Complainant has launched several beauty care products under the trademark NATURALS, which are available in Complainant’s outlets.

Complainant states it commenced using the NATURALS mark in 1991. However, since Complainant, as a policy, does not archive documents for more than 5 years, it is unable to produce documents dating back to the 1990s.

Complainant relies on the NATURALS trademark, claiming statutory and common law rights. Complainant refers to the following Indian trademark registration and application, which claim first use commencing in 1999:

Country Trademark Class Number Goods
India NATURALS 42 Registration No. 1414842
(registered on July 29, 2008) Services provided by beauty salons, cosmetic research, dress designing, fashion information, hair implantation, hairdressing salon, health manicuring, massage, physiotherapy, physical therapy included in class 42
India NATURALS 3
Application No. 3795334
(application date
April 3, 2018; opposition pending)
Cosmetics and nail polish

Complainant states it has advertised its NATURALS mark through mass media, including print and electronic media, and through participation in the fairs and exhibitions. The brand NATURALS is endorsed by several well-known personalities in the field of entertainment and fashion. Use of the keyword NATURALS in search engines produces webpages of Complainant among the leading links. In April 2019, Complainant’s Naturals Salon & Spa entered the Guinness Book of World Records for having 386 models perform in a single show.

Respondent is Daegu Law Auction, whose owner name is Mr. Deock-Ho Kang. Respondent has provided a business registration certificate to show this relationship. Respondent states that any reference to Respondent includes Deock-Ho Kang.

The Domain Name was registered on September 5, 2001 and currently resolves to a page saying it is suspended due to non-payment of the DNS fees.

5. Parties’ Contentions

A. Complainant

(i) Identical or confusingly similar

Complainant states its NATURALS brand has an excellent reputation and patronage not only from its customers, but also in the beauty and fashion industry, and for the role played by Complainant in job creation. Complainant states that in view of its widespread use with the general public, the NATURALS mark has garnered secondary meaning in the market, which is exclusively associated with Complainant. Moreover, Complainant states that the NATURALS mark is considered well-known in India and neighboring jurisdictions. The brand NATURALS expressed on particular products and services brings across the reputation and goodwill associated with the quality of products manufactured, marketed and serviced by Complainant.

Complainant claims that the Domain Name is identical to a trademark in which it has rights. The Domain Name incorporates Complainant’s well-established trademark NATURALS in its entirety.

(ii) Rights or legitimate interests

Complainant submits that Respondent is trying to take advantage of the goodwill and reputation associated with its NATURALS trademark, although Respondent has no connection with Complainant. Complainant has not licensed or otherwise permitted Respondent to register the NATURALS mark, nor has Complainant permitted Respondent to use any domain name incorporating the mark.

Complainant states that the Domain Name incorporates Complainant’s NATURALS mark in its entirety, and contends such use of the Domain Name is considered evidence of bad faith registration and use under the Policy. The Domain Name will give unsuspecting visitors the impression that it has been authorized by Complainant.

(iii) Registered and used in bad faith

Complainant claims that the Domain Name was registered and is being used in bad faith.

Complainant states that an innocent consumer is bound to be misled by the Domain Name registered by Respondent. Complainant contends that, in view of the facts and circumstances in this case, registration of the Domain Name without seeking prior concurrence, approval or permission from Complainant amounts to passing off by Respondent. Complainant asserts that the intention of Respondent appears to be to commit fraud and mislead consumers by unfair and dishonest means.

Complainant states that by virtue of the widespread use and reputation of the NATURALS trademark, members of the public and the trade are bound to associate the Domain Name with Complainant and would get a wrong impression that Respondent is associated with Complainant. This will result in confusion in the minds of the public and the trade about the Domain Name’s source, sponsorship, affiliation or endorsement.

Complainant asserts that it is undoubtedly Respondent’s motive to register the Domain Name comprised of a popular trademark to clandestinely negotiate for transfer of the same for consideration. Complainant claims Respondent exemplifies a habitual cybersquatter engaged in a pattern and practice of registering domain names in bad faith for the purpose of monetizing on such registrations. Complainant states that it approached Respondent in good faith through the Sedo broker service to purchase the Domain Name for reasonable consideration. In response, Complainant was requested to pay EUR 50,000 for the Domain Name. Complainant urges that this escalated price quoted by Respondent demonstrates bad faith and mala fide in registering and holding the Domain Name.

Complainant contends that “inaction” is within the concept of bad faith, as supported by the provisions of the Policy: paragraph 4(b) of the Policy identifies, without limitation, circumstances that are evidence of registration and use of a domain name in bad faith. One of these circumstances, paragraph 4(b)(iv) involves a positive action post-registration undertaken in relation to the domain name (i.e., using the domain name to attract customers to a website or other online location), while the other three circumstances contemplate either action or inaction in relation to a domain name. Furthermore, Complainant states that it must be recalled that the circumstances identified in paragraph 4(b) are “without limitation” – that is, paragraph 4(b) expressly recognizes that other circumstances can be evidence that a domain name was registered and is being used in bad faith.

Complainant states the particular circumstances of this case, which lead to this conclusion, are, inter alia:

– Complainant’s well-established NATURALS mark has a strong reputation and is widely known, as evidenced by its use since 1991.

– Respondent has provided no evidence of any actual or contemplated good faith use of the Domain Name.

– Respondent is attempting to monetize the Domain Name by transferring the same to any buyer who is willing to pay an escalated cost of EUR 50,000. Such an act by Respondent proves bad faith and is a gross infringement of Complainant’s trademark rights.

– Taking into account all of the above, it is impossible to conceive of any plausible actual or contemplated active use of the Domain Name by Respondent that would not be illegitimate; instead such use would infringe Complainant’s rights, such as through the tort of passing off, infringement of consumer protection legislation, or infringement of Complainant’s rights under the law.

Complainant further states that the use and existence of Domain Name will cause damage to Complainant’s business and reputation, and to customers and the general public. Any misrepresentation caused on account of the Domain Name would result in confusion and deception in the minds of customers. In this regard, domain names are emerging corporate assets and have evolved as a fulcrum of a company’s visibility and marketing operations. Business transactions will soon be carried out only through Internet addresses rather than street addresses, post boxes or faxes. Complainant states that it will not be able to effectively pursue its business plans on the Internet unless the registration of the Domain Name is held by Complainant. Complainant states it is the legitimate owner of the domain names <naturals.in> and <naturals.lk>, through which it undertakes business and promotional activities. In view of the Domain Name’s registration, Complainant stands to lose financially and faces the imminent risk of dilution of brand value associated with the mark NATURALS.

Complainant submits that the facts above establish the legitimate rights of Complainant to the transfer of the Domain Name bearing its well-known trademark. Therefore, in the interest of justice and in the interest of the public at large, the Domain Name should be transferred to Complainant.

B. Respondent

Respondent submitted a lengthy Response with attachments, which is summarized below. Respondent states he is an entrepreneur from the Republic of Korea, having registered the Domain Name on September 5, 2001 in good faith, after understanding the generic nature of the term “natural” and combining it with the letter “s”, as ordinarily used to indicate the plural tense.

Respondent claims that the Complaint is baseless, vexatious and devoid of merit. Respondent does not admit any of the grounds contained in the Complaint except those, which are expressly admitted below.

(i) Identical or confusingly similar

Under its first submission, Respondent claims that the word “naturals” is a generic, descriptive term and that Complainant has provided insufficient evidence to show that NATURALS has generated secondary meaning, even in Indian market.

Respondent states that the word “naturals” either alone or in combination with other terms has been adopted by innumerable businesses around the world. Respondent has provided evidence showing more than 5,000 trademarks including the word “naturals” registered around the world, as well as over 10,000 domain names that include “naturals”. Respondent claims that “naturals” is a generic word and contends that it has been widely held that where a domain name is a generic or descriptive term, it is difficult to conclude that there is a deliberate attempt to confuse. Further, because generic words are incapable of distinguishing one provider from another, trademark protection is denied to them.

Respondent observes that Complainant’s NATURALS trademark was registered in India in 2008, with an application filed in 2006 under Class 42 as a device/design mark, while Complainant also has a pending application listed as “Advertised” and with the status “opposed” since August 17, 2018. Respondent claims this application has no value to these UDRP proceedings. Complainant’s website at <naturals.in> was registered in 2005, but was not active until 2007, according to the Archive.org website (“www.archive.org”); that is, Complainant did not have an online presence and could not have appeared in Republic of Korean search engine before this date.

Respondent has submitted evidence that Respondent obtained a registered wordmark for NATURALS in the Republic of Korea in 2008, based on an application filed in 2007.

Respondent claims that while Complainant has provided details about its company, including figures as to the number of employees and franchises, this has been presented without evidence. Complainant has also referred to its Naturals Training Academy and its partnership with the CADD Centre since 2017 and that the CADD Centre has a presence in 24 countries. However, Respondent emphasizes that this partnership is just two years old and no formal documents have been presented. Moreover, the list of countries does not include the Republic of Korea.

Respondent argues that while Complainant claimed its mark NATURALS has been widely promoted, Complainant submitted only a few advertisements issued in a local newspaper from October 2008. These advertisements refer to locations within India. Further, a screen shot of Complainant’s website (on Archive.org) from early 2009 evidences the limited area of operation mostly within the South Indian state of Tamil Nadu, except to include Cochin in the neighboring state of Kerala. Further, while Complainant refers to celebrity endorsements, Respondent, on searching about those images, found that they mostly relate to year 2013 onwards, as Ms. Kareena Kapoor was appointed as Complainant’s brand ambassador in 2014. Respondent states that another article presented by Complainant is just a press release from Complainant’s site; Respondent contends there does not seem to be media recognition for Complainant’s brand.

Respondent emphasizes that while Complainant claims to be in existence since 1991, it has provided no evidence in this regard. Complainant applied for its trademark for the first time in 2006 and advertisements from 2008 were appearing in a local newspaper in the state of Tamil Nadu, India. Respondent claims the falsity of the reference to 1991 is demonstrated by Complainant’s trademark records (submitted by Complainant), which show “User Detail” dated as of January 1, 1999.

Respondent further contends there is no proper evidence presented as to the existence of the NATURALS mark since 1999 or 2001, which points to the lack of popularity of the brand in the initial years. The only evidence provided by Complainant is a reference to the year 2001 on a private website <hellybeautyparlour.in>, which looks like it is related to Complainant as it carries Complainant’s mark as a website logo. However, Respondent states that the domain name <hellybeautyparlour.in> was registered recently in March 2019 and cannot be referred to as a media article. Respondent argues that a neutral media article should have been presented from a famous website, not just from a local website that seems to be under the indirect control of Complainant.

Respondent observes that Complainant refers to a search result from Google, searched from Chennai, India (where Complainant is located), which shows local results from Chennai in the top preferences. Respondent states that Google is not a preferred search engine in the Republic of Korea, where Naver is called the Google of the Republic of Korea. The search results from Naver for the keyword “naturals” include no reference to Complainant.

Respondent denies that NATURALS has generated secondary meaning even in Indian market, as searching Google from Gurgaon in the northern Indian state of Haryana, India produces the first result for “Naturals Ice Cream” and the first page of results does not have direct reference to Complainant’s website at <naturals.in>. Further, the entry by Complainant in the Guinness Book of Records was done in April 2019, not in 2001.

Furthermore, in reference to the international exposure referred to by Complainant and abstracts of media exposure, Respondent argues that Complainant provides just screenshots from its own website at “www.naturalsacademy.com”, which was launched in 2017 and seems to be in association with the CADD Centre. The exact information produced by Complainant is available on this website.

(ii) Rights or legitimate interests

Respondent contends that the Panel must find that Respondent has a total lack of any rights or legitimate interests in the Domain Name, not merely that Complainant has a purported “better” rights or legitimate interests.

Respondent states the term “naturals” is a generic, longstanding and ubiquitous descriptive term referring to something that is related to nature, and can be referred to by the combination of the dictionary term “natural” and the letter “s”. This combination can suggest many different meanings, such as natural solutions, natural skin, natural stone, natural styling, natural spark, natural spa, natural selection, natural scene, natural shot, natural seeds, and so on. The generic nature of this keyword is illustrated by the number of domain names and trademark registrations globally for the keyword “naturals”.

Contrary to Complainant’s contentions, Respondent contends that it has rights and legitimate interests in the Domain Name. This interest stems from the fact that the Domain Name is wholly comprised of common English dictionary word, with a suffix “s”. Respondent states that when combined, as in “naturals”, it has a descriptive and well-known meaning that is wholly separate and distinct from Complainant’s brand name. Respondent asserts that it has long been held that when a domain name is descriptive, the first person to register it in good faith is entitled to the domain name, and this is considered a legitimate interest.

Respondent states that there are over 10,000 domain names registered that include the keyword “naturals”. Respondent claims Complainant has no monopoly over this common term and it was not invented by Complainant. Respondent has provided evidence of numerous businesses around the world using the mark, brand or name “naturals”, either alone or in combination with other words, in various fields such as food, health and beauty. Even in India, where Complainant’s application under Class 3 is pending, Respondent states that a third-party had submitted an application for trademark for the mark NATURALS in 1995 (trademark application no. 673530), which shows that Complainant has no exclusive rights to the mark.

Respondent submits that he had no knowledge of Complainant at the time he registered the Domain Name in 2001. Complainant has not provided proper evidence as to its existence or the popularity of its brand in 2001, even in India, while the Domain Name was registered by Respondent far away in the Republic of Korea. Therefore, Respondent claims Complainant cannot argue that it was known outside of its state of origin, i.e., Tamil Nadu, India even until 2009, or in the Republic of Korea, the location of Respondent. Further, Respondent could not have searched the Indian trademark database in 2001, firstly, because that database was not online, and secondly, even if it had been, Complainant had applied for its trademark only in 2006 and therefore did not exist in the trademark database in 2001. In addition, Complainant had no online presence in 2001. There was no way Respondent could have known of Complainant’s existence in 2001.

Further, while Complainant states its NATURALS mark is well-known in India and neighboring jurisdictions, Respondent asserts that “neighboring jurisdiction” could only mean Sri Lanka, where Complainant has a website at “www.naturals.lk”, which seems to have been registered in 2018. Respondent argues that Complainant’s reference to a presence in Singapore is not supported by any evidence. The store locator on the <naturals.in> website provides for locations in India where Complainant seems to have major presence.

Respondent states that it registered the Domain Name on September 5, 2001 with the intention to use it in a legitimate business. Respondent claims this point is supported by a screenshot of Respondent’s website from Archive.org dated January 25, 2003, which read as follows:

“Dear people offered,
We have a plan to use this name for our business.
However recently a lot of people have offered to us for it, we have changed our minds.
This name may be sold.
E-mail: kang@umbrella.co.kr
URL:”

Respondent states that he had a legitimate business purpose for the Domain Name, but then decided that it could be sold because he was receiving a lot of offers. Respondent states that he listed the Domain Name for sale on Sedo for valuation purposes, which is evident from an Archive.org screenshot dated May 1, 2007. Respondent contends that speculating in generic domain names is considered a legitimate interest, as long as the proof establishes that the respondent either has rights or legitimate interests in the domain name, or the complainant is unable to prove bad faith registration and use. Though the Domain Name was never sold, Respondent received numerous queries, and one of these offers was referenced in an article at “www.DomainInvesting.com”.

Respondent claims, however, that in the back of his mind he still had serious business plans and as a result, in 2007 applied for a trademark with the Korean Intellectual Property Office. Respondent states that the trademark certificate shows registration in the owner’s name, Deock-Ho Kang, on August 6, 2008, and evidences demonstrable preparations to use the Domain Name and hence a legitimate interest.

Respondent states that a webpage for the Domain Name was put up around 2009, with a screen shot visible through Archive.org, which makes reference to natural sources, drug treatment, women’s fitness, etc. Respondent further states that later, more serious plans for the Domain Name were developed in the form of a business plan, a copy of which was submitted by Respondent. The business plan is 13 pages and provides information as to the planned uses for the Domain Name as a nature friendly brand, including health food, fashion, organic and beauty products. Since the business plan was developed, Respondent claims he made efforts to raise funds for a startup, but it never materialized.

From 2014 onwards, the DNS services for the Domain Name were suspended by the service provider and a notice appeared for the Domain Name in the Korean language. The notice appeared until October 2019, when it changed and the Domain Name now has another notice in the Korean language that translates into English as “This page does not exist”. Respondent states that, in any case, there was never any reference to Complainant on the webpage displayed at the Domain Name.

Respondent recently filed for a trademark under classes 18, 30, 31, and 32, dated October 22, 2019. Respondent states that these classes relate to the proposed business plan. Respondent claims he can still pursue the legitimate interest as laid down in the business plan, given the generic nature and wide use of the keyword in the Domain Name.

Further, while Complainant refers to the case, CADD Centre Training Services Pvt Ltd v. Jeff Park, WIPO Case No. D2015-1008, Respondent argues this case is not applicable. The domain name there, <caddcentre.com>, was linked to a website with sponsored links and the term “Cadd Centre” is not a dictionary word or combination of generic words.

Respondent concludes that Complainant has not made a prima facie case that Respondent lacks a right or legitimate interest in the Domain Name, especially as Complainant’s rights post-date registration of the Domain Name. Respondent asserts that Complainant’s attempt to acquire the Domain Name in the aftermarket demonstrates Respondent’s legitimate interest in the Domain Name. Respondent decided to acquire an inherently valuable Domain Name because it was available for registration, five years before Complainant’s trademark was applied for in India.

(iii) Registered and used in bad faith

Respondent contends that both bad faith registration and use must be proven for Complainant to prevail. If a domain name was registered in good faith, it cannot, by changed circumstances, the passage of years or intervening events, later be deemed to have been registered in bad faith.

Respondent contends that to prove bad faith registration, it must be shown that Respondent registered the Domain Name, not because of its common generic or descriptive meaning, but rather because it corresponded to Complainant’s trademark. Respondent claims this reflects the requirement under Policy that in order to find bad faith registration and use, a respondent must have targeted the complainant or its trademark, or at least had the complainant in mind, when registering the disputed domain name.

Respondent denies that the fact the Domain Name incorporates Complainant’s trademark is evidence of bad faith. Respondent emphasizes that he could not have targeted Complainant’s trademark when registering the Domain Name, because Complainant’s trademark did not exist at the time of the Domain Name’s registration in 2001. Respondent argues that Complainant’s existence at that time is doubtful given the evidence produced with the Complaint. Complainant’s trademark was applied for in 2006 and registered in 2008. If Complainant did exist, it had no reputation outside the state of Tamil Nadu in Southern India. Respondent contends that Complainant has provided no information about its services or where they were offered, and no evidence of any advertisements, marketing spend and sales volumes in various countries around the world at the relevant time. Simultaneously, Respondent also had its trademark registered in the Republic of Korea in 2008; if Complainant had any presence in the Republic of Korea, it should have opposed Respondent’s trademark application.

Thus, Respondent asserts there is no evidence to support Complainant’s contention that the Domain Name was registered because of Complainant. There has been no evidence provided that purports to show that Respondent was aware of, or ought to have been aware of, Complainant. Respondent contends that if Complainant fails to produce evidence of its reputation as it existed at the time Respondent registered the Domain Name, the inference must be that it had none. Respondent claims the evidence demonstrates that “naturals” is widely used for its descriptive value.

Respondent contends that false allegations have been levelled against him. Respondent denies that his motive for registering the Domain Name was to sell it for compensation because it was comprised of a trademark. Respondent claims it is shocking that Complainant is trying to label Respondent as a cybersquatter, without producing a single piece of evidence. Respondent challenges Complainant to show proof of any prior UDRP proceeding brought against Respondent.

Respondent states that he did not approach Complainant for the sale of the Domain Name. Instead, Complainant approached Respondent through the Sedo brokerage service for purchase of the Domain Name and Complainant was quoted EUR 50,000 by Sedo. Respondent contends that it has already been submitted that speculating in domain names is a legitimate interest. Respondent states that Sedo may have quoted the price on Respondent’s behalf and he cannot recall this particular communication. In any case, the name of the interested party holding any trademark never came to Respondent’s knowledge.

Respondent contends that Complainant knew Respondent had legitimate rights in respect of the Domain Name and brought this proceeding only because it was unhappy with the price quoted. There is nothing “fraudulent” in responding to a commercial enquiry for purchase of a domain name. Respondent has received numerous unsolicited inquiries and offers from third parties desiring to purchase the Domain Name. At no time did Respondent solicit the sale from Complainant; it was the other way round. The complainant tried to purchase the Domain Name via an agent on an unknown date at the Sedo platform. Under the UDRP, the position is clear that responding to requests to purchase is not considered bad faith. Further, Respondent states that reference to Complainant’s trademark is absent on the online parking page. Therefore, Respondent did not target Complainant either at the time of registration or, in any case, the Domain Name is not being used in bad faith now.

Respondent asserts that Complainant’s delay in taking action against Respondent over the past 18 years raises the inference that Complainant did not believe that the Domain Name was registered or used in bad faith. Respondent concludes that Complainant slept on its rights and filed the Complaint only after it was unsuccessful in purchasing Domain Name from the independent broker.

(iv) Reverse Domain Name Hijacking

Respondent seeks a finding of reverse domain name hijacking (“RDNH”), contending there is no basis for Complainant’s claim and Complainant (through its counsel) knew or should have known this before filing the Complaint. Respondent claims that Complainant cannot make a prima facie case that Respondent lacks any rights or legitimate interests in the Domain Name, as Complainant’s rights post-date registration of the Domain Name. Further, Complainant provides no proper evidence of registration and use of the Domain Name in bad faith.

Respondent submits that the Complaint has been brought with an intent to hijack the Domain Name from Respondent, as Complainant knew Respondent had legitimate rights in respect of the Domain Name. This is evident from the Complaint where it states “Complainant has not licensed or otherwise permitted Respondent to register the mark ‘NATURALS’”. Respondent asserts that this proves Complainant had knowledge of Respondent’s trademark and of Respondent’s legitimate interests, as the WhoIs shows the year of registration for the Domain Name as 2001.

Respondent states that due diligence would have shown that Complainant could not prove two of the three requirements under the Policy, and that this is a “Plan B” case, calculated to steal a highly valuable and
long-held Domain Name from its rightful owner after failing to acquire it in the marketplace.

6. Discussion and Findings

In order to succeed in its Complaint, Complainant must demonstrate that the three elements set forth in paragraph 4(a) of the Policy have been satisfied. These elements are that:

(i) the Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;

(ii) Respondent has no rights to or legitimate interests in respect of the Domain Name; and

(iii) Respondent has registered and is using the Domain Name in bad faith.

A. Identical or Confusingly Similar

The Panel finds that Complainant has established rights in the NATURALS trademark, based on its trademark registration in India and use of the mark in connection with its business in India. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.2.1 (“Where the complainant holds a nationally or regionally registered trademark or service mark, this prima facie satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case.”)

Further, although Respondent has emphasized that Complainant owns a design mark rather than a word mark in India, the Panel determines that the Domain Name is identical or confusingly similar to the textual elements of the NATURALS mark, as the Domain Name incorporates the mark in its entirety. WIPO Overview 3.0, section 1.7 (“This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name”).

Accordingly, the Panel finds that the Domain Name is identical or confusingly similar to a trademark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Regarding the second element of the Policy, WIPO Overview 3.0, section 2.1, states that “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”.

Here, Complainant has submitted that Respondent is trying to take advantage of the goodwill and reputation associated with Complainant’s NATURALS trademark, although Respondent has no connection with Complainant. Complainant has indicated that it has not licensed or otherwise permitted Respondent to register the NATURALS mark, nor has Complainant permitted Respondent to use any domain name incorporating the mark. Complainant alleged that the Domain Name incorporates Complainant’s
well-established trademark NATURALS in its entirety and that such use of the Domain Name is considered evidence of bad faith registration and use under the Policy. Complainant asserts that Respondent is a cybersquatter and that it was Respondent’s motive to register the Domain Name comprised of a popular trademark to negotiate to sell the Domain Name for an escalated price.

The Panel observes that a number of Complainant’s allegations were successfully rebutted by Respondent. In his Response, Respondent indicated that he registered the Domain Name as a descriptive word in 2001, well before Complainant had established any trademark rights, or at least well before Respondent had knowledge, or ought to have had knowledge, of Complainant and its NATURALS trademark rights in India. Complainant applied for its trademark in India in 2006 and was granted registration in 2008, after Respondent registered the Domain Name in 2001. The Panel finds that Complainant has provided insufficient evidence that its NATURALS mark was well known including outside of India, at least at the time when the Domain Name was registered. The Panel finds, on the balance of the probabilities, that Respondent did not register the Domain Name in 2001 because it incorporated Complainant’s NATURALS mark in its entirety and primarily for the purpose of selling it to Complainant for valuable consideration in excess of Respondent’s out-of-pocket costs.

Respondent contends that his right or legitimate interest in the Domain Name stems from the fact that the Domain Name is wholly comprised of the common English word “natural”, along with the letter “s”. Respondent claims that the first person to register a dictionary word in good faith as a domain name is entitled to it, and this is considered a legitimate interest. However, WIPO Overview 3.0, section 2.10.1 provides in relevant part that

“Panels have recognized that merely registering a domain name comprised of a dictionary word or phrase does not by itself automatically confer rights or legitimate interests on the respondent; panels have held that mere arguments that a domain name corresponds to a dictionary term/phrase will not necessarily suffice. In order to find rights or legitimate interests in a domain name based on its dictionary meaning, the domain name should be genuinely used, or at least demonstrably intended for such use, in connection with the relied-upon dictionary meaning and not to trade off third-party trademark rights.”

Thus, Respondent being the first in time to register the word “naturals” does not necessarily or automatically confer any rights or legitimate interests in respect of the Domain Name.

Respondent states that he registered the Domain Name with the intention of using it in a legitimate business. That intention apparently later changed, as Respondent admitted that he had decided, at least for a period of time, to sell the Domain Name. However, Respondent claims that speculating in generic domain names is considered a legitimate interest, as long as a domain name is not registered or used in bad faith. Respondent further states that in 2007, he had serious business plans and as a result, he applied for the Republic of Korean trademark. Respondent claims this 2007 trademark evidences demonstrable preparations to use the Domain Name and hence a legitimate interest. Respondent further states that he later developed a business plan and made efforts to raise funds for a startup, but this never materialized. Finally, Respondent admits that from 2014 onwards, the DNS services for the Domain Name were suspended by the service provider and the webpage for the Domain Name has a notice in the Korean language that translates into English as “This page does not exist”.

WIPO Overview 3.0, section 2.11, indicates that “Panels tend to assess claimed respondent rights or legitimate interests in the present, i.e., with a view to the circumstances prevailing at the time of the filing of the complaint”. Respondent has admitted that from 2014 until the present, the Domain Name has not been used. At most, it was apparently listed for sale during certain periods on the Sedo domain brokerage website. Respondent’s lack of use for the last five years does not reflect any rights or legitimate interests in the Doman Name.

Respondent points to its recent application for a trademark, filed on October 22, 2019. However, that application was made after the Complaint in this case was filed on October 14, 2019. WIPO Overview 3.0, sections 2.12.1 and 2.12.2, provide in relevant part that while panels “have recognized that a respondent’s prior registration of a trademark which corresponds to a domain name will ordinarily support a finding of rights or legitimate interests in that domain name”, the “existence of a respondent trademark does not […] automatically confer rights or legitimate interests on the respondent. For example, panels have generally declined to find respondent rights or legitimate interests in a domain name on the basis of a corresponding trademark registration where the overall circumstances demonstrate that such trademark was obtained primarily to circumvent the application of the UDRP or otherwise prevent the complainant’s exercise of its rights (even if only in a particular jurisdiction).” Given the circumstances in this case, in which Respondent filed for a trademark after the Complaint was filed by Complainant, this recent application does not give rise to any rights or legitimate interests in the Domain Name.

In the case at hand, there is no evidence that Respondent is trying to trade off on Complainant’s NATURALS trademark. At the same time, however, the Panel determines, based on the record in this case, that Respondent has not shown any rights or legitimate interests in the Domain Name.

Accordingly, the Panel finds that the second element of the Policy has been satisfied.

C. Registered and Used in Bad Faith

The third element of paragraph 4(a) of the Policy requires that Complainant demonstrate that Respondent registered and is using the Domain Name in bad faith. WIPO Overview 3.0, section 3.1, states that “bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark”.

Here, the Panel concludes, based on the entire record in this case, that Complainant has failed to establish that Respondent registered and used the Domain Name in bad faith.

First, based on the record and as discussed above, the Panel finds that there is no evidence that Respondent was aware of Complainant and its NATURALS trademark when registering the Domain Name in 2001. The Domain Name was registered well before Complainant applied to register its NATURALS trademark in India in 2006. Further, there is no evidence that Complainant’s NATURALS mark was known in the Republic of Korea. See Sadig Alakbarov v. Yuxue Wang, WIPO Case No. D2019-2253 (“Above all, there is no basis from this record on which to find that Respondent targeted Complainant or its GREENMOOD mark. Respondent acquired the Domain Name in 2012, two years before Complainant was formed and at least two years before Complainant used that mark in commerce. There is no evidence that Complainant’s mark is known at all in Australia. Complainant’s mark was not registered until 2018, and only in the European Union.”)

Further, as to Respondent’s use of the Domain Name, there is no evidence that it was used in bad faith. Respondent provided some evidence – a previous trademark registration in the Republic of Korea dating from 2008 and a business plan – of his efforts to use the Domain Name in connection with what would amount to a bona fide offering of goods or services if realized. Although Respondent has not used the Domain Name since 2014, there is no evidence that Respondent made any efforts to target Complainant and its NATURALS trademark through use of the Domain Name at any time. The Panel rejects the argument that listing the Domain Name, which is comprised of the English descriptive word “naturals”, with the Sedo domain brokerage, amounts to bad faith use. Further, Respondent did not approach Complainant to sell the Domain Name; rather, the evidence indicates that Complainant approached the Sedo service to receive a price quote.

Finally, the Panel also rejects Complainant’s argument that Respondent’s “passive holding” of the Domain Name amounts to bad faith. See Sadig Alakbarov v. Yuxue Wang, supra. In the circumstances of this case, where the Domain Name corresponds to a descriptive word and Respondent has not engaged in any activity that might be suggestive of bad faith (e.g., such as providing false contact details, targeting a distinctive well-known trademark, or a pattern of cybersquatting), Respondent’s passive holding of the Domain Name is not evidence of bad faith.

Accordingly, Complainant has failed to satisfy the third element of the Policy.

D. Reverse Domain Name Hijacking

Respondent requests that Complainant be found to have engaged in reverse domain name hijacking (“RDNH”). The Panel finds, on the entire record, that this is not a case of RDNH.

Paragraph 15(e) of the Rules provides that, if “after considering the submissions the panel finds that the complaint was brought in bad faith, for example in an attempt at [RDNH] 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”.

Panels have found that the mere lack of success of a complaint is not itself sufficient for a finding of RDNH. In this case, the Panel finds that Complainant satisfied two of the three elements under the Policy. Complainant seems to have been convinced that, while it has trademark rights in its NATURALS mark, Respondent was only using the Domain Name for the purpose of offering it for sale to Complainant at an amount clearly in excess of Respondent’s out-of-pocket costs. The file does not show that Complainant knew or should have clearly known that it could not succeed under any fair interpretation of facts reasonably available prior to the filing of the Complaint and before receiving Respondent’s Response.

7. Decision

For the foregoing reasons, the Complaint is denied.

Christopher S. Gibson
Sole Panelist
Date: January 5, 2020

Spanish Fashion Company – Scalpers Trademark in EU and worldwide – Respondent from US, resides in Taiwan, China – Plural form of a Dictionary word – Legitimate Interest not assessed as no Legitimate Interest found – Complaint attempted to purchase – Respondent owns over 100 Domain Names – Respondent registered the domain name before Complainant acquired Trademark Rights – Reverse Domain Name Hijacking Upheld

Scalpers Fashion, S.L. v. Dreamissary Hostmaster [WIPO Case No. D2019-2937]

1. The Parties

The Complainant is Scalpers Fashion, S.L., Spain, represented by CASAS ASIN, Spain.

The Respondent is Dreamissary Hostmaster, United States of America (“United States”), represented by Muscovitch Law P.C., Canada.

2. The Domain Name and Registrar

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

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 4, 2019. On December 4, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 5, 2019, 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 proceeding commenced on December 10, 2019. In accordance with the Rules, paragraph 5, the due date for the Response was December 30, 2019. Upon request from the Respondent, the due date for the Response was automatically extended to January 3, 2020, pursuant to the Rules, paragraph 5(b). Upon further request from the Respondent, and taking into account the Respondent’s stated reasons for that request, and considering the objection of the Complainant, the due date for the Response was further extended to January 10, 2020, in accordance with the Rules, paragraph 5(e). The Response was filed with the Center on December 31, 2019.

The Center appointed Sebastian M.W. Hughes, Luis Miguel Beneyto Garcia-Reyes, and Adam Taylor as panelists in this matter on January 16, 2020. The Panel finds that it was properly constituted. Each member of the Panel has submitted a 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

A. Complainant
The Complainant is a company incorporated in Spain in 2007 and carrying on business since 2008 as a fashion company under the trade mark SCALPERS (the “Trade Mark”).

The Complainant is the owner of numerous (word and device mark) registrations for the Trade Mark in Europe and in various jurisdictions worldwide, including European registration No. 6748578, with a registration date of September 29, 2008.

B. Respondent
The Respondent is a United States citizen originally residing in California and now living in Taiwan, Province of China. The Respondent is a speculator and trader in, and the owner of a large number of, domain names comprising dictionary words.

C. The Disputed Domain Name
The disputed domain name was registered on September 15, 1997.

D. Use of the Disputed Domain Name
The Respondent has previously used the disputed domain name to generate pay-per-click revenue by resolving the disputed domain name to websites with sponsored links relating to the sale of tickets.

At the time of the filing of the Complaint, the disputed domain name was resolved to a parking page hosted by the Registrar.

5. Parties’ Contentions
A. Complainant
The Complainant contends that the disputed domain name is confusingly similar or identical to the Trade Mark; the Respondent has no rights or legitimate interests in respect of the disputed domain name; and, the disputed domain name was registered and is being used in bad faith.

B. Respondent
The Respondent contends that he has rights and legitimate interests in respect of the disputed domain name; and the disputed domain name was not registered and has not been used in bad faith. The Respondent contends that he registered and subsequently used the disputed domain name as it contains the plural form of the dictionary word “scalper” – meaning “someone who buys things, such as theatre tickets, at the usual prices and then sells them, when they are difficult to get, at much higher prices”.1

The Respondent requests that the Panel make a finding of reverse domain name hijacking.

6. Discussion and Findings

The Complainant must prove each of the three elements in paragraph 4(a) of the Policy in order to prevail.

A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the Trade Mark acquired through use and registration.

The disputed domain name incorporates the entirety of the Trade Mark (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7). Excluding the generic Top-Level Domain (“gTLD”) “.com”, the disputed domain name is identical to the Trade Mark.

The fact that the disputed domain name was registered before the Complainant acquired rights in the Trade Mark is immaterial for the purpose of the first element under paragraph 4(a) of the Policy (see WIPO Overview 3.0, section 1.1.3).

The Panel therefore finds that the disputed domain name is identical to the Trade Mark.

B. Rights or Legitimate Interests
In light of the Panel’s finding in Section 6.C. below, it is not necessary for the Panel to address the second limb under paragraph 4(a) of the Policy. If it were necessary, the Panel considers that the Respondent’s registration and use of the disputed domain name in respect of the dictionary meaning of the word “scalpers” comprised therein – to generate pay-per-click revenue by way of sponsored links corresponding to its dictionary meaning – would give rise to a finding in the Respondent’s favor under the Policy.

C. Registered and Used in Bad Faith
The Complainant’s submissions regarding bad faith are as follows:

“It is well established that the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding, specially taking into account the distinctiveness and reputation of the Complainant’s mark […]

The Respondent intends to take advantage of the good-faith and fame acquired by my client in recent years, as well as disrupt its business activity. The Complainant is a well-known company, with reputation acquired all over the world in the fashion industry and has tried in many occasions to negotiate the buy of the domain with the Respondent. To every attempt to reach an agreement, the Respondent has always answered asking for an exorbitant amount of money. It should be noted that, in a first approach from the Complainant, the Respondent tried to sale the domain name for [USD] 150,000, an excessive offer taking into account that a domain name can be acquired from [EUR] 10 […]

Subsequently, the legal representation of the Complainant approached again to the Respondent in order to reach an amicable agreement. However, the Respondent’s answer to this proposal was to increase the price for the domain, offering it for [USD] 195,000. To ask for such a disproportionate price can only be taken as a sign of the Respondent bad faith […]

Besides this, it should be brought to the Panel’s attention that the Respondent is owner of more than one hundred Domain Names […] which is an obvious indication that the Respondent follows an abusive pattern of registration of trademarks owned by third parties in order to sell them afterwards to companies for enormous amounts of money, practice commonly known as Cybersquatting Speculative, and widely considered as an indication of bad faith […]”

Where a domain name has been registered before a complainant has acquired trade mark rights, only in exceptional cases would a complainant be able to prove a respondent’s bad faith (see WIPO Overview 3.0, sections 1.1.3 and 3.8). This is not such an exceptional case.

The Respondent registered the disputed domain name more than 10 years before (1) the date of incorporation of the Complainant; and (2) the Complainant’s asserted date of first use of the Trade Mark. In such circumstances, and in light of the evidence filed by both parties in this proceeding, there is no basis for a finding that the Respondent targeted the Complainant’s then non-existent Trade Mark at the time he purchased the disputed domain name.

For all the foregoing reasons, the Panel concludes that the disputed domain name has not been registered in bad faith.

Although it is not necessary to address bad faith use (the requirement for the Respondent to establish bad faith registration and use under the third limb of paragraph 4(a) being conjunctive), the facts demonstrate that the only use made by the Respondent of the disputed domain name has been in respect of the dictionary meaning of the word “scalpers” comprised therein. Accordingly, there is also no basis for a finding of bad faith use.

D. Reverse Domain Name Hijacking
Paragraph 15(e) of the Rules provides that, if “after considering the submissions the [p]anel 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 [p]anel 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 (“RDNH”) is furthermore defined under the Rules as “using the UDRP in bad faith to attempt to deprive a registered domain-name holder of a domain name”. (See WIPO Overview 3.0, section 4.16).

Panels have consistently found that the mere lack of success of a complaint is not in itself sufficient for a finding of RDNH.

The Panel considers that, in the present proceeding, the following factors support a finding of reverse domain name hijacking against the Complainant:

(i) the disputed domain name was registered by the Respondent long before the Complainant obtained relevant rights in the Trade Mark;

(ii) the Complainant’s legal representatives have unreasonably ignored established UDRP panel positions set out in WIPO Overview 3.0;

(iii) the Complaint was filed after two unsuccessful attempts to purchase the disputed domain name, the first initiated by the Complainant in August 2017, and the second by the Complainant’s legal representatives in June 2019; and

(iv) the Respondent’s legal representatives wrote to the Complainant’s legal representatives after the filing of the Complaint, on December 16, 2019, pointing out that, in light of the undisputed facts, a finding of bad faith registration and use was impossible, and inviting the Complainant to withdraw the Complaint.

In light of the above, the Panel agrees with the Respondent that the Complainant has filed the Complaint after an unsuccessful attempt to acquire the disputed domain name from the Respondent, and where the legally represented Complainant filed the Complaint without having any plausible basis for establishing, in particular, bad faith registration and use.

In all the circumstances, the Panel makes a finding of reverse domain name hijacking against the Complainant.

7. Decision
For the foregoing reasons, the Complaint is denied.

Sebastian M.W. Hughes
Presiding Panelist

Luis Miguel Beneyto Garcia-Reyes
Panelist

Adam Taylor
Panelist
Dated: January 30, 2020

Source: https://www.wipo.int/amc/en/domains/search/text.jsp?case=D2019-2937