WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION M/s Nalli Chinnasami Chetty v. Nalli's Silks Sari Centre Case No. D2009-0664 1. The Parties
The Complainant is M/s Nalli Chinnasami Chetty of Chennai, Tamil Nadu, India, represented by DePenning & DePenning, India.
The Respondent is Nalli's Silks Sari Centre of Mumbai, Maharashtra, India, represented by Chadha & Chadha, Advocates, India. 2. The Domain Name and Registrar
The disputed domain name is registered with Network Solutions, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 19, 2009. On May 19, 2009, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the disputed domain name. On May 19, 2009, Network Solutions, LLC 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 27, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was June 16, 2009. The Response was filed with the Center on June 15, 2009.
The Center appointed Harini Narayanswamy as the sole panelist in this matter on June 22, 2009. 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.
On July 6, 2009, the Complainant sent a request by email to the Centre, for filing supplemental submissions in reply to the Respondent's Response. By Administrative Procedural Order No.1, dated July 6, 2009, the Complainant was allowed to file its supplemental submission by July 13, 2009, and the Respondent was given time to respond to the Complainant's supplemental submissions by July 22, 2009. The parties filed their respective supplemental submissions on the specified dates. 4. Factual Background
The Complainant is a leading silk sari1 and clothes retailer in Chennai. NALLI is the Complainant's name and style and is also its trademark. The Complainant owns the Indian trademark registration 903811B for NALLI in class 25. It also owns the domain name , which was registered on April 28, 1998 for its online transactions.
The Respondent, Nalli's Silks Sari Center, Mumbai, as the name suggests, is also in the sari retail business. It has registered two Indian trademarks, which are NALLI (1981), bearing registration number 366240B in class 24 with respect to textile piece goods including saris, and NALLI with Device (1993), registration number 606409 in class 24 with respect to silks and textiles. The Respondent registered the domain name in dispute , on August 9, 1999. 5. Parties' Contentions A. Complainant
The Complainant states it was founded in 1928 and it is a prior adopter and user of the NALLI name. It uses the name in connection with its diverse clothing business and it has show rooms all over the world. The Complainant has provided figures for its sales from 1964 till 2008 and states that it has an annual turnover of Rupees 450 Crores (one Crore is 10,000,000). The Complainant contends that it promotes it mark extensively in all media, through its website, product campaigns, events, press, and client newsletters.
The Complainant alleges that the disputed domain name is identical or confusingly similar to its trademark. It fears the use of its mark by the Respondent in a similar business will infringe and dilute its mark and lead to loss of its business. The Complainant states it was the first to conceive, adopt and use NALLI as its corporate name, its trademark and as its domain name, therefore the Respondent is not an honest adopter of the mark. As the disputed domain name was registered after the launch of the Complainant's website, the public is likely to be deceived and misled by the disputed domain name which is visually and phonetically similar to the Complainant's mark. The Respondent's website till recently, shows that it is still under construction.
The Complainant asserts that the Respondent has no rights or legitimate interests in the domain name. It argues that the Respondent adopted the mark much after the Complainant had established considerable reputation in the NALLI mark. The Complainant further believes that the Respondent is not known by the name NALLI and that the domain name has been registered to take advantage of the Complainant's mark due to its prominent presence on the Internet and to divert Internet users, which may tarnish the reputation and goodwill of the Complainant.
The Complainant alleges bad faith registration and use of the disputed domain name, as the Respondent ought to have been aware of its well-known mark at the time of registration. The Respondent being in a similar area of business, it can mislead the public to believe that the Complainant has endorsed the site, as no license or authorization has been given to the Respondent to use its mark in the disputed domain name. The Complainant concludes by stating that it has opposed the Respondent's trademark registrations and requests for transfer of the disputed domain name. B. Respondent
The Respondent denies the Complainant's allegations and puts forward the following arguments: “Nalli” is a common surname in India and in other parts the world therefore the Complainant is not entitled to claim exclusive rights in the NALLI name. The Respondent relies on UDRP and other decisions to support its contentions. It has also furnished as evidence search lists from Google and Face book showing names of people and invoices of some businesses using the name “Nalli”.
The Respondent states that Duraswami Saroja, the mother of Nalli Sambasivam, the proprietor of the Respondent, Nalli's Silk Sari Center, is the owner of the NALLI trademark 366240B in class 24. Further, the Respondent contends that the Complainant has been aware of the Respondent's use of the trademark since at least about 1995, but has not revealed this information in its Complaint.
The Respondent asserts that it has used the NALLI mark since 1981 and owns copyright for a stylized manner of writing NALLI and has foreign trademark registrations in New Zealand, Singapore, Nepal, Bhutan, and Malaysia. The Respondent states that it has acquired goodwill and reputation in the NALLI mark for the goods sold through its shop “Nalli's Silk Sari Center” due to its continuous use of the mark for a period of about 28 years.
The Respondent states that the Complainant had opposed its trademark application 366240B in class 24, which was dismissed, and that the Complainant had filed a caveat in the Bombay High Court on February 14, 1996. It claims that as the Complainant's trademark was filed only subsequent to registration of the disputed domain name, the Complainant is not entitled to claim rights in the disputed domain name. The Respondent argues that as the Complainant has not initiated any infringement or passing-off action against the Respondent, it is therefore guilty of acquiescence, delay and laches.
The Respondent further asserts that the Complainant has concealed a settlement between the parties for a concurrent registration of the NALLI mark in Singapore. Under the terms of the Settlement Deed, an associated company of the Respondent, named Nalli Pte Ltd., was allowed the use of the stylized mark NALLI with Device and the Complainant was allowed the use of the NALLI mark in Singapore. As the disputed domain name is being used by the Respondent to promote the products of Nalli Pte Ltd., it states that the present Complaint violates the Singapore Deed of Settlement.
The Respondent states that its marks are registered in class 24 for saris, while the Complainant's trademark is for clothing under class 25, and that there are several pending disputes between the parties, which has been concealed by the Complainant. The balance of convenience lies in its favor, states the Respondent, as there has been no instance of confusion of its use of the NALLI mark since 1981 or its use of the disputed domain name since 1999. Supplemental Submissions of the Parties Complainant's Supplemental Contentions
The Complainant asserts that its mark had acquired fame and secondary meaning prior to the Respondent's use of the mark in commerce and the Respondent's use is not a bona fide or honest use. The Complainant distinguishes the cases relied on by the Respondent, and has raised several grounds for their inapplicability to the facts in the present dispute and also alleges that the Respondent has intentionally omitted the first ten results of Internet searches, which show the Complainant's prominence.
The Complainant states that it has opposed the Respondent's trademark application No. 606409, which was dismissed. It has filed an appeal before the Intellectual Property Appellate Board, where a stay of the Registrar's order has been granted pending the appeal. The Complainant states it had filed an opposition to the Respondent's other trademark No. 366240B, which was dismissed for procedural reasons and not on merits and it has presently filed a rectification for the same trademark. The Complainant states that the Respondent's copyright is only for the artistic work and not for the word NALLI and states that it is initiating proceedings against the copyright registration.
The Complainant contends that it has not intentionally concealed any information in the Complaint, as alleged by the Respondent, and maintains that it interpreted the paragraph 5 of the Policy and paragraph 3(ix) of the Rules as discouraging additional details of other disputes between the parties in the present Complaint. The Complainant claims that the Respondent's foreign registrations are not relevant to the present dispute and the Complainant on its part has filed evidence of its own foreign trademark registrations, orders from trademark proceedings in the United Kingdom of Great Britain and Northern Ireland and orders received through its website .
The Complainant claims there was no delay in filing the present Complaint, as it first became aware of the Respondent's domain name in February 2008. It further contends that the defense of acquiescence is not relevant to these proceedings and states its reason for not preferring an infringement action against the Respondent was to avoid conflicting decisions from different forum. It doubts the veracity of the Respondent's sales figures, which are not certified by an auditor, and points out that the Respondent has not stated its legal relationship with Nalli Pte Ltd., but admits giving consent to the entity Nalli Pte Ltd. to use the trademark only in Singapore and not worldwide.
The Complainant files additional documents of its promotional expenses, a diagram of a family tree and documents to show how it came to acquire the shop and hence the mark. It states that in the year 2001, it adopted another trademark NALLI 100 and mentions that it owns yet another trademark, 472754 in Class 24, which is the subject of a court proceeding and did not therefore mention this trademark in the Complaint. One of its the partners', states the Complainant's was conferred the Padmashri Award for his contribution to national trade and industry.
The Complainant has filed an email which it received from a third party as evidence to show the Respondent is an imposter and a copy of a consumer complaint about the Respondent's sub-stand goods as evidence of user confusion and tarnishing of its mark due to the Respondents use of its mark. The Complainant claims that it has several domain names whereas the Respondent has only one domain name. Finally the Complainant argues that disuse of the disputed domain name is bad faith. As evidence of the Respondent's website still being under construction and not being used, the Complainant has filed a print out of the Respondent's webpage to show such disuse. C. Respondent's Reply to Supplemental Submissions
The Respondent's reply is essentially a repetition of the contentions it had put forward in its initial response but with a few additional arguments. The significant arguments made in its supplemental filings are: The Complainant's NALLI mark is always used with a suffix CHINNASAMI CHETTY or “Silk Sarees” in the Complainant's invoices, therefore the Complainant ought to claim exclusive rights in the name CHINNASAMI CHETTY rather than in the NALLI mark. The Respondent further argues that others who use the NALLI name invariably use suffixes with the NALLI name to distinguish it from others, examples of such use, according to the Respondent are, Nalli Emporium, Nalli Saree House and Nalli G. Natrajan.
The Respondent alleges that the Complainant has “fabricated and forged” documents, as the dates (April 1997) shown on some of the Complainant's invoices were prior to registration of the domain name in April 1998, but these invoices display the Complainant's website . The Respondent claims honest concurrent use and states that the pending challenges made against its trademarks should not be a ground for ignoring the Respondent's rights.
The Respondent states that present dispute ought to be stayed, in line with the reasoning given by the Complainant for not pursuing infringement actions against the Respondent (The Complainant's reasoning in the supplemental submissions being that, if it pursued infringement action against the Respondent, it may give rise to conflicting decisions in different forum). The Respondent therefore requests for a stay of the present proceedings till the issue of the trademark rights are decided through court action.
The Respondent has stated that Nalli Pte Ltd., an entity to which the Complainant has consented for a concurrent trademark application, is the Respondent's sister concern. (The Respondent has however not provided any documents to prove its relationship with Singapore entity Nalli Pte Ltd.).
The Respondent states that the appeal filed before the Intellectual Property Appellate Board is “in fructuous”, as the certificate of registration for the relevant trademark has been already been issued by the Trademark office. It states that it has filed a writ petition challenging the decision of the Appellate Board. The Respondent argues that its trademarks applications are in a different class, which is in class 24 and differs from that of the Complainant's trademark application, which is in class 25.
The Respondent distinguishes the cases relied on by the Complainant on numerous reasons for the inapplicability of those cases to the facts in the present dispute and refers to additional cases to support its arguments.
The Respondent requests that the Complaint be rejected and denied. 6. Discussion and Findings Preliminary Procedural Issues: Supplemental Submissions
Unsolicited supplemental filings under paragraph 12 are generally not encouraged by panels in UDRP cases, however if the respondent raises issues which the complainant has not addressed, Toyota Jidosha Kabushiki Kaisha d/b/a Toyota Motor Company v. S&S Enterprise Ltd., WIPO Case No. D2000-0802 or if the respondent's arguments could not have been reasonably anticipated by the complainant, Plaza Operating Partners, Ltd. v. Pop Data Technologies, Inc. and Joseph Pillus,WIPO Case No. D2000-0166; Document Technologies v. International Electronic Communications, Inc., WIPO Case No. D2000-0270, an opportunity to rebut any such unexpected factual assertions made by the respondent may be allowed at the discretion of the panel, Pacific Fence & Wire Co. v. Pacific Fence and Jim Paradise, WIPO Case No. D2001-0237.
Based on a request made by the Complainant to answer the Respondent's allegations, the Panel decided to allow supplemental submissions which were required in order to clarify the statements made in the Respondent's response. Accordingly, by Procedural Order 1, the Panel allowed the Parties to file supplemental submissions. Laches
The Respondent has argued that the Complainant is barred from claiming any remedy under the equitable doctrine of Latches, as the dispute has been filed after a period of about ten years of registration of the domain name. The Policy does not stipulate any limitation and it has been held in several UDRP cases that latches cannot be pleaded as a defense in UDRP proceedings due to the injunctive nature of the remedy for trademark violations. See Deutsche Telekom AG v. Oded Zucker,WIPO Case No. D2004-0749.
Further, if the Complainant's mark is found to be a well established mark with longstanding extensive use, delay in filing the Complaint need not be fatal to the Complaint. See The E.W. Scripps Company v. Sinologic Industries,WIPO Case No. D2003-0447. (Delay of seven years of the domain name registration) and Villeroy & Boch AG v. Whois Data Shield/Hong Kong Names LLC.,WIPO Case No. D2008-1300. (Delay of about eight and a half years of the domain name registration).
The Policy requires the Complainant to establish three elements under paragraph 4(a) to obtain the remedy of transfer or cancellation of the disputed domain name.
(i) The domain name registered by the Respondent is identical or confusingly similar to a mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) The domain name was registered and is being used in bad faith by the Respondent. A. Identical or Confusingly Similar
The first element under paragraph 4(a) requires the Complainant to establish that the domain name registered by the Respondent is identical or confusingly similar to a mark in which it has rights.
A complainant's rights in the trademark can be established in UDRP proceedings by filing evidence of the volume of sales and the advertisement under the mark. See Amsec Enterprises, L.C. v. Sharon McCall, WIPO Case No. D2001-0083. Numerous cases have held that the Policy gives protection to common law rights as well as registered trademark rights. SeekAmerica v. Tariq Masood and Solo Signs, WIPO Case No. D2000–0131.
The Complainant has provided evidence of its sales turnover and its promotional expenses under the mark from the year 1964 till 2008. The timing of the Complainant's trademark registration is irrelevant when the Complainant has established it has strong common law trademark usage prior to applying for trademark registration The Chip Merchant, Inc. v. Blue Star Electronics d/b/a Memory World, WIPO Case No. D2000-0474. The critical date is the date of the Complainant's first use of the mark in commerce; the record shows the Complainant has claimed use for its trademark registration from January1935. The Panel therefore finds no merit in the Respondent's arguments that its registration of the disputed domain name prior to Complainant filing for trademark registration deprives the Complainant of rights or legitimate interests. The Panel finds that the Complainant has demonstrated it's longstanding use and rights in the NALLI mark and recognizes the Complainant's extensive use of the NALLI mark, prior to it's filing for registered trademark rights.
The Respondent has argued that NALLI is a common personal name that lacks distinctiveness and therefore others are entitled to use it in their business. While the Panel agrees with the Respondent's argument that an individual has a right to use his or her name in connection with a business, that right is however not an absolute or unfettered right. It is restricted by any prior trademark right of others who have previously used their names in connection with specific goods and services and have acquired prior rights in the name as a trademark. See for instance Société pour l'oeuver et la memorie d'Antoine de Saint Exupéry - Succession Saint Exupéry - D'Agay v. The Holding Company,WIPO Case No. D2005-0165.
Numerous decisions have recognized that personal names are protectable as trademarks if it is established with sufficient evidence that the name has acquired secondary meaning due to its use in commerce. See for instance Peter Frampton v. Frampton Enterprises, Inc.,WIPO Case No. D2002-0141. This has been recognized in the case of writers, artists or other performers see Julia Fiona Roberts v. Russell Boyd,WIPO Case No. D2000-0210, and also for businessmen, Kotak Mahindra Bank Limited v. Richard Brown,WIPO Case No. D2008-0243, and for businessmen who have used their personal names in their company names, see R. E. ‘Ted Turner' and Ted Turner Film Properties LLC v. Mazen Fahmi,WIPO Case No. D2002-0251, where the dissenting panel found that name “Turner” used in the names of a number of Ted Turner's companies had common law trademark rights. In the present case the Complainant has clearly demonstrated its well-established rights prior to the Respondent's adoption of the NALLI mark.
As far as confusing similarity of the disputed domain name with the mark, the Panel finds that the domain name incorporates the NALLI mark in its entirety and the letter “s”. Adding a single letter “s”, usually signifies the plural and does not distinguish the domain name from the mark, see Deutsche Telekom AG v. Vision Computer S.L.,WIPO Case No. D2001-1240, (comparing the domain name with the mark T-MOBILE). Inclusion of the letter “s” does not eliminate the visual and phonetic similarity to the mark, Playboy Enterprises International, Inc. v. Tom Baert,WIPO Case No. D2007-0968. ( compared with the trademark PLAYBOY). Mere change from singular to plural or vice versa is not sufficient to avoid confusing similarity, particularly where circumstances show that the Respondent was aware of the Complainant's mark, i2 Tehnologies Inc v. Richard Alexander Smith,WIPO Case No. D2001-0164. The Panel therefore finds that the disputed domain name is confusingly similar to the Complainant's NALLI mark.
The Complainant has accordingly satisfied the requirements under the first element of the Policy paragraph 4(a). B. Rights or Legitimate Interests
The second element under paragraph 4 (a) of the Policy requires the Complainant to make a prima facie showing that the Respondent lacks rights and legitimate interests in the domain name. Once such a prima facie case is made, the burden shifts to the Respondent to demonstrate rights and legitimate interests in the domain name. See 2.1 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions.
The Complainant argues that the Respondent has no rights in the domain name, as the Respondent's use of the mark in the domain name is not a bona fide or honest adoption but takes advantage of the long standing prior rights of the Complainant in the NALLI mark and its prominent presence on the Internet. The Respondent on its part has claimed rights in the NALLI name as a family name and claims use of the trademark for a period of about twenty-eight years.
The Respondent can establish rights and legitimate interests in the domain name, under Paragraph 4(c) of the Policy if one of these circumstances are found present:
(i) Before any notice of the dispute the Respondent's use of, or demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with a bona-fide offering of goods or services; or
(ii) The Respondent as an individual, business or other organization has been commonly been known by the domain name, even if no trademark rights have been acquired by the Respondent.
(iii) The Respondent uses the domain name for legitimate noncommercial of fair use purposes, without intent for commercial again to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The key words in paragraph 4(c)(i) are “bona-fide offering”, as distinguished from a mere offering. A bona-fide offering implies use by an honest adopter of the mark. See FINAXA Société Anonyme v. Vitalie Popa,WIPO Case No. D2004-0873. The expression “bona fide” in paragraph 4(c)(i) is sufficient to prevent a Respondent who knowingly adopted a well-known trademark as a domain name from claiming the benefit of mere use or demonstrable preparations to use the domain name in connection with an offering of goods or services prior to notice of a dispute. See Paule Ka v. Paula Korenek, WIPO Case No. D2003-0453.
The term “demonstrable preparations” are subject to interpretation of the expression “bona fide” in paragraph 4(c)(i). Scania CV AB v. Leif Westlye,WIPO Case No. D2000-0169. In discussing the application of paragraph 4(c)(i), it is well established that it is meant for clear cases of non-infringing use by the Respondent. Not every prior use to in domain name disputes constitutes a bona-fide use: Madonna Ciccone p/k/a v. Dan Parisi and "M", WIPO Case No. D2000-0847. Whether the Respondent had adopted the trademark and business name in good faith as an honest adopter may involve complex issues of fact, and the Policy may not in all such cases be the most appropriate forum for evaluating such issues. In the present case, the Panel agrees with the Respondent's submission that its trademark rights can be determined in a defended hearing in court or before the appropriate authority.
The Panel in the present dispute has the jurisdiction to determine whether there was an honest adoption of the mark in connection with domain name in dispute, based on all the material and facts in the present dispute. The evidence here shows that the Respondent has offered goods using the NALLI'S name for a period of about twenty-eight years, which raises the question whether the use by the Respondent can be termed bona-fide for purposes of the Policy. The Panel finds the record shows the Respondent started his business in sari retailing and filed for the registration of the NALLI mark in the year 1981. It is unlikely that the Respondent was unaware of the fame and the pre-existing rights of the Complainant's mark when it adopted the name in the same area of business of saris retailing. Further, the Respondent has filed for trademark registration in the same year in which it started its business with obviously no prior use of the NALLI mark. The Complainant has opposed the trademark registrations of the Respondent. These circumstances indicate that the use of the mark by the Respondent may not be bona-fide use.
The Respondent has also raised the plea of acquiescence to establish its rights and relies on the Madras High Court decision, Kerala Jewellers, Madras v. Kerala Jewellers, Trichy PCT (Supp.) 91) 681 (Mad) where the court discussed acquiescence and quoted from the Supreme Court decision in Power Control Appliances v. Sumeet Machines Pvt. Ltd. (1994) 2 SCC 448.
Acquiescence is the failure to take action against the infringing party or otherwise indicating that nothing will be done about the infringing action. The evidence on record here shows the Complainant has taken measures to oppose the Respondent's trademarks by filing oppositions, rectification and appeals where necessary, to protect its mark. The Panel's observations are only based on the evidence furnished by the parties and does not purport to render any conclusive finding on acquiescence, which can be made only by an appropriate authority with a full hearing, as the Policy is meant for dealing with cases of abusive domain name registrations and not for resolving complicated trademark disputes between the parties.
The Respondent's arguments under paragraph 4(c)(ii) is its adoption of the NALLI name for its business, which is a common personal name that others are entitled to use it in their business. As previously discussed in the section on “Confusing Similarity”, any claims to such use by the Respondent is restricted by prior trademark rights of the Complainant who had well established rights in the mark in connection with similar goods. In the present case the Respondent has admittedly been using the mark in similar or overlapping areas of business in direct competition with the Complainant. Such adoption and use of the mark in the domain name does not confer legitimate rights. See Billerbeck Schweiz AG v. Peter Billerbeck,WIPO Case No. D2001-0825. See W. & G.Foyle Limited v. Foyle's Books Limited,WIPO Case No. D2000-1544.
The Respondent has claimed that it is a concurrent user of the NALLI mark. The concurrent use of a single trademark by more than one person is recognized under trademark law and in domain name jurisprudence but with several caveats. The areas, particularly geographic area of such usage should be clearly defined in order to avoid confusion in concurrent use, and there must be good faith and honest adoption of the mark.
In UDRP decisions concurrent rights are generally recognized in instances of honest adoption, without any prior knowledge of the Complainant's mark. See Lockheed Martin Corporation v. The Skunkworx Custom Cycle,WIPO Case No. D2004-0824. Where the parties were located in two separate countries and the adoption was found to be honest, concurrent use was recognized. See Micro Electronics, Inc. v. MicroCenter,WIPO Case No. D2005-1289. In completely different products or areas of business such as beer and diamonds legitimate concurrent use was found, Brasserie Almaza S.A.L v. Orbyt,WIPO Case No. D2004-0799. It is therefore well established that the basic test for concurrent use is honest adoption. Further in territories of expansion a junior user of a concurrent trademark right has to prove bona-fide use to show rights; bona-fide use also requires placing of disclaimer to avoid consumer confusion.
The Panel also notes that the evidence filed by the Respondent shows the Complainant's consent for a concurrent use registration of its mark in favor of Nalli Pte. Ltd.. The Complainant's consent as per the Deed of Settlement is limited to the jurisdiction of Singapore and only allows the Respondent the use of a device mark and not a word mark. Given the Global nature of the Internet, the Panel cannot interpret this consent as the Respondent's overall concurrent rights in all territories, particularly when there are pending oppositions to the Respondent's trademark applications. The preponderance of evidence and the facts and circumstances of the present case therefore precludes a finding regarding the Respondent's concurrent use rights for the purposes of this domain name dispute.
Some relevant factors considered by previous UDRP panels in assessing concurrent rights are: Prior trademark rights of the parties determined by the length of use and the fame associated with a well-known mark in the country, the quantum of sales turnover over a period, see Scania CV AB v. Leif Westlye, supra, the likelihood of the respondent's knowledge when adopting the mark or circumstances to show that the respondent knew or had knowledge of the complainant's mark The Chip Merchant, Inc. v. Blue Star Electronics/b/a Memory World, supra , or where the domain name registration was made long after the Complainant had established its rights, The Chip Merchant, Inc. v. Blue Star Electronics d/b/a Memory World, supra, prior panels have declined finding concurrent rights in favor of the respondent in such cases.
The Panel finds, for the reasons discussed, the Complainant has established the requirements under paragraph 4(a)(ii) of the Policy that the Respondent lacks rights and legitimate interests in the domain name. C. Registered and Used in Bad Faith
The third element under paragraph 4(a) requires the Complainant to establish that the domain name was registered and used in bad faith by the Respondent.
Paragraph 4 (b)(iv) makes reference to circumstances indicating bad faith if the registration and use of the domain name is made with an intention to attract, for commercial gain, Internet users to the website or other online location by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website or location. The Respondent in the present case has chosen a domain name that is confusingly similar and virtually identical to the trademark of a leading sari retailer, and uses the domain name to promote similar products. The class of goods, for the trademark application whether the goods are sold under class 24 or class 25 is not significant when there is an overlap of goods and users are likely to be misled by such use.
The Respondent has argued that it has shown twenty eight years of legitimate use and the Complainant has challenged the Respondent's trademark registration only after a period of fourteen years of use. Can the Respondent's unchallenged use of the mark for fourteen years be termed acquiescence on the part of the Complainant when the circumstances show the Respondent's adoption of the mark was questionable in the first place? Adoption and use of another's mark for an extended period of time cannot convert such use to good faith use if there are circumstances, to show that the Respondent had knowledge of the mark prior to its adoption. Previous panels have found such circumstances can be found if there is an existence of family ties or knowledge of the fame of the mark due to similar line of business. Passage of time and unchallenged use cannot cure the initial dubious adoption of the mark in such cases. See W & G Foyle Limited v. Foyle's Books Limited, Supra .
The Panel finds that the Respondent's adoption of the domain name has been long after the Complainant has established its rights in the mark. Furthermore the Respondent's offering of products is in direct competition with the Complainant's products and the Complainant has provided evidence of the user confusion. The Panel finds in the circumstances of this case, the domain name was registered by the Respondent with an intention to make commercial gains from the Complainant's goodwill and to attract Internet users to the Respondent's website by creating a likelihood of affiliation with the Complainant's well-known mark.
The Respondent has argued that Complainant's consent for concurrent use in Singapore is a legitimate reason for the Respondent's use the Complainant's mark in the domain name. The Panel finds that the Complainant's consent for concurrent use is limited to the jurisdiction of Singapore and restricts the Respondent's use to a device mark. The consent was obtained after the domain name registration. If the Panel were to interpret this consent as conferring legitimate right in favor of the Respondent it would lead to a paradoxical situation where the Respondent's use of the domain name prior to obtaining the Singapore consent would be in bad faith and the use after the consent would be in good faith.
In any event, the Panel is not convinced that the Respondent as a junior concurrent user can claim global rights to use the mark in a domain name over the Complainant's objection due to a consent settlement in a specific territory. Use of the mark in the domain name is considered as giving the mark global reach through the Internet. The Panel finds for the reasons discussed, that the consent for concurrent use obtained by the Respondent, subsequent to the registration of the disputed domain name, does not give legitimate rights to the Respondent to use the mark in the disputed domain name.
The mere registration or ownership of trademarks by the Respondent does not of itself necessarily confer legitimate interests under the Policy. See Madonna Ciccone, p/k/a Madonna v. Dan Parisi and "M",WIPO Case No. D2009-0847. The overall circumstances should demonstrate that the domain name was registered in good faith for the purpose of making bona fide use of the mark in the jurisdiction where the mark is registered. The chronology of events is an important factor to determine the Respondent's good faith registration and use. See BECA Inc. v. CanAm Health Source, Inc.,WIPO Case No. D2004-0298. The chronology of events here shows the Respondent had adopted the mark and applied for trademark registration much after the Complainant's extensive use of the NALLI mark for several decades. Further, the domain name was registered after the Respondent was put on notice of the Complainant's opposition to its trademarks. From this it can be inferred that the Respondent had prior knowledge of the Complainant's mark prior to its adopting the mark and prior to its registering the disputed domain name. These factors indicate bad faith registration and use of the domain name to attract Internet users to the Respondent's website or other online location by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement under paragraph 4 ( b) (iv) of the Policy.
In view of all of the above, the Panel finds that the Complainant has on the present record met the burden of proving bad faith registration and use under paragraph 4(a)(iii) of the Policy.
The Panel also wishes to note that the complex fact pattern of the present dispute and many of the issues raised by the parties appear to be beyond the scope of these proceedings, under the Policy and may require determination on a full record of the evidence by the competent authorities i.e. Trademark Office and courts. The findings by the Panel are not to be viewed or construed as deciding the parties trademark rights, which is the realm of the Trademark Offices and the courts.
The Respondent has requested for a stay of these proceedings till a court decision has been given regarding the Respondent's rights. In view of the fact that court proceedings concerning the disputed domain name per se do not appear to have been commenced at this stage, and in light of the Panel's substantive findings above, the Panel declines to exercise its discretion to suspend or terminate the proceedings under paragraph 18 of the Rules. Even if court proceedings had or were to be commenced concerning the disputed domain name, naturally the present administrative decision under the Policy would not constrain that court's ability to reach its own conclusion on the merits. 7. Decision
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant.
Harini Narayanswamy
Sole Panelist
Dated: July 25, 2009
Full & Egal Universal Law Academy