The Complainant is TV Sundram Iyengar and Sons Limited of Madurai, State of Tamil Nadu, India, represented by DePenning & DePenning, India.
The Respondent is P.A. Gordon of Bellevue, Washington, United States of America, represented by ESQ PC, United States of America. 2. The Domain Name and Registrar
The disputed domain name (the "Domain Name") is registered with Wild West Domains, LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 16, 2014. On May 16, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 16, 2014, 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 sent an email communication to the Complainant on May 21, 2014 inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on May 28, 2014.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced May 28, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was June 17, 2014. The Response was filed with the Center on June 17, 2014.
On June 30, 2014, the Complainant filed a Supplemental Filing to the Center, to which the Respondent replied on July 7, 2014. The Panel exercised its discretion to admit both Supplemental Filings.
The Center appointed Nicholas Smith, Harini Narayanswamy and The Hon Neil Brown Q.C. as panelists in this matter on July 29, 2014. The Panel finds that it was properly constituted. Each member of the Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
The Complainant is the holding company of the TVS group and is an automotive dealership and distributorship company in India. The Complainant was established in 1911 and is named after its founder Thirukkurungudi Vengadam Sundram Iyengar. The Complainant has more than 150 outlets and sells approximately 6,000 vehicles and services around 600,000 vehicles per annum. Furthermore the Complainant also distributes spare parts in India. The TVS group employs more than 40,000 people worldwide and has an annual turnover in excess of USD 4 billion.
The Complainant owns the registered trademark no. 109706 for a figurative mark consisting of the letters "TVS" inside a rhombus (the "TVS Mark"). The TVS Mark was first registered on April 25, 1945 in India for goods in class 11, including the marketing and providing of goods and services for others via websites and apps. The Complainant has also registered other variants of the TVS Mark including registrations in the United Kingdom of Great Britain and Northern Ireland in 2012 and 2013.
The Domain Name was created on June 5, 1997. It currently resolves to a website (the "Respondent's Website"), which is a parking page with a number of what appear to be "pay-per-click" links including links for various types of televisions, such as "flat-screen televisions" and "plasma screen televisions". The Respondent's website also contains the statement "BUY THIS DOMAIN This domain may be for sale. For more information please contact…". The Respondent's Website does not refer to the Complainant in any way. 5. Parties' Contentions A. Complainant
The Complainant makes the following contentions:
(i) that the Domain Name is identical or confusingly similar to the Complainant's TVS Mark;
(ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
The Complainant is the owner of the TVS Mark having registered the TVS Mark on April 25, 1945. The Domain Name is identical to the TVS Mark.
There are no rights or legitimate interests held by the Respondent in respect of the Domain Name. The Respondent illegally and wrongfully adopted the well-known TVS Mark with the intention to create an impression of an association with the Complainant despite having no connection with the Complainant
The Domain Name was registered and is being used in bad faith. The purpose and intent of the Respondent in adopting the Domain Name is to cash in on the name, fame, reputation and image and goodwill of the Complainant which has been built up assiduously over the last 100 years. The Domain Name is bound to deceive the public and create a mistaken identity with the Complainant. The conduct of the Respondent suggests that it has registered the Domain Name for the purpose of selling it for a profit. Furthermore the Respondent has acted in bad faith by passively holding the Domain Name, despite the strong reputation of the TVS Mark and that it is not possible to conceive any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate. B. Respondent
There is absolutely no basis for transferring the Domain Name. The Respondent registered the Domain Name in June 1997 because the Domain Name was an available 3 letter domain name. At that time the Respondent also acquired and for the same reason. The Respondent had no knowledge of the Complainant at the time it registered the Domain Name in 1997. It cannot be argued that the TVS Mark was known outside its specific industries or in the United States (the location of the Respondent) in 1997. In 1997, when the Respondent registered the Domain Name he could not have conducted a search on Google because Google did not exist and he could not have searched the Indian Trademark Database at that time. Indeed, there is virtually no way the Respondent could have known of the Complainant's existence in 1997.
The Complainant misleadingly claims that it has exclusive rights to this common 3-letter combination "tvs". As with any 3-letter combination, the possible acronym meanings are limitless. It is well-established that, like common words, anyone is entitled to register domain names incorporating letter combinations to which a Complainant does not have exclusive rights, and the Respondents' legitimate interest is established. Indeed the Complainant ignores the fact that "tvs" commonly refers to televisions or "TVs."
The Respondent's legitimate interest is bolstered by the fact that it uses the Domain Name in connection with the bona fide provision of advertising services. The Respondent is not alone in having such a business model and it is an accepted and not unusual practice. See e.g. Instrumentation Northwest, Inc. v. INW.com c/o Telepathy, Inc.,WIPO Case No. D2012-0454 and Rocky Mountain Health Maintenance Organization, Incorporated v. Domain Administrator / PortMedia, NAF Claim No. 1418881. It has been held that the use of 3-letter domain names in connection with pay-per-click advertising establishes a legitimate interest.
Over the last 17 years the Respondent has used the Domain Name for a site advertising mostly televisions, and has not made any reference to the Complainant. The Complaint seems to argue that the Respondent had "constructive knowledge" of the Complainant's mark because of its "widespread use" and the fact that the Complainant is "one of India's largest industrial conglomerates". There is no logic to the allegation that the Respondent (a U.S. resident) targeted the Complainant when he acquired the Domain Name in 1997. Absent proof that the Respondent had knowledge of Complainant's mark and intended to target the Complainant when it registered the Domain Name, the Complaint must fail.
Furthermore the Respondent registered the Domain Name in June 1997. The Complaint was filed over 17 years later, a substantial delay by any measure. The Complainant does not explain why it waited so long to initiate the Complaint. This long delay bars the Complaint under the doctrine of laches, which has been recognized under the Policy. Even if the Panel does not deny the Complaint on the basis of laches, the long delay also raises an inference that the Complainant did not truly believe the Respondent engaged in bad faith registration.
There simply is no evidence demonstrating that the Respondent targeted the Complainant's trademark when he registered the Domain Name in 1997. The Complainant filed the Complaint to hijack the Domain Name from its rightful owner and gain exclusive use of a combination of 3 letters, used by millions of people worldwide to refer to televisions. This lack of any evidence that the Respondent targeted a trademark, and the likelihood that the Complainant was aware the evidence was lacking when it filed the Complaint, establishes reverse domain name hijacking. Accordingly, because the Complainant has brought forth a case with no basis, and which it must have known had no basis, the Panel should find that the Complainant has abused the proceedings and, accordingly, issue a decision finding that the Complainant has engaged in reverse domain name hijacking. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant has the burden of proof in respect of the following three elements:
- (i) The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- (ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
- (iii) The Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
To prove this element the Complainant must have trade or service mark rights and the Domain Name must be identical or confusingly similar to the Complainant's trade or service mark.
The Complainant is the owner of the TVS Mark, having registrations for the TVS Mark as a trademark in India. The TVS Mark, while a figurative mark, contains as its dominant elements the letters "TVS", which are the only elements of the mark reproducible in a Domain Name. As the Domain Name is identical to the elements of the TVS Mark that can be reproduced in a domain name, the Panel finds that an Internet user familiar with the TVS mark may be caused to wonder whether the Domain Name has a connection with the TVS Mark. The Panel finds that the Domain Name is confusingly similar to the TVS Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
The Panel notes that the system of domain name registration is, in general terms, a "first come, first served system" and, absent pre-existing rights which may be applicable to impugn a registration, the first person in time to register a domain name would normally be entitled to use the domain name for any legitimate purpose it wishes.
There is no evidence at all before the Panel to suggest that at the time the Domain Name was first registered (in 1997) the Respondent registered it in contemplation of the Complainant. There is no evidence that at the time of registration the reputation of the TVS Mark extended beyond India, or that the Respondent, who appears to have engaged in a pattern of registering 3-letter marks, registered it in contemplation of the Complainant. The evidence before the Panel strongly suggests that the Respondent has not used the Domain Name to target the Complainant or in contemplation of the Complainant; rather the advertisements on the Respondent's Website almost exclusively relate to televisions, an abbreviation of which is "TVs". To the extent that the Respondent's Website has made reference to the Complainant's products the Panel accepts that such use is not significant compared to the considerable evidence that the Respondent's website primarily contains advertisements relating to televisions.
Accordingly there is no material before the Panel which would lead to a conclusion that the Respondent lacks a right or legitimate interest in the Domain Name. However, during the 17 years the Domain Name has been held by the Respondent, the only evidence of any apparent use of the Domain Name is for a pay-per-click advertising service, not for any business that offers goods or services referable to the Domain Name. Given the Panel's finding that the Respondent has not registered and used the Domain Name in bad faith (see below), the Panel concludes that in these circumstances it is not necessary to make a finding under this element of the Policy. C. Registered and Used in Bad Faith
The Policy, paragraph 4(b) provides that for the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to the Complainant who is the owners of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or
(ii) the Respondent has registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 or of a product or service on the Respondent's website or location. (Policy, paragraph 4(b))
The registration and use requirements of paragraph 4(a)(iii) of the Policy are conjunctive, and a complainant bears the burden of proof on each. Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. If either of the required elements is not established, the Complaint must fail. Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270 (denying transfer of the Domain Name because the Complainant failed to prove bad faith registration).
The Domain Name has been registered for 17 years. "The longer the time a disputed domain name has been registered, the more difficult it is for a complainant to prove bad faith registration". AVN Media Network, Inc. v. Hossam Shaltout,WIPO Case No. D2007-1011. The only explanation for the Complainant's delay in filing a complaint about the Domain Name appeared to be the fact that Indian companies have only paid attention to domain name issues in the past 5 years, a fact that conflicts with its repeated assertions that the Respondent knew of the Complainant in 1997. Although the Panel's decision in this case does not rest simply on the passage of time between registration of the Domain Name and the Complainant's assertion of its rights, it is a fact that the Panel cannot ignore.
There is no evidence that the Respondent has engaged in a pattern of conduct of registering domain names (including the Domain Name) to prevent trademark owners from registering a corresponding domain name. Rather, it appears that the Respondent has registered a number of domain names that correspond to 3-letter acronyms in the early days of the Internet. Such conduct does not imply that the Respondent was registering domain names to prevent trademark owners from registering corresponding domain names, rather the Panel accepts the Respondent's evidence that he registered them for the inherent value in the short domain names. Nor is there any evidence that the Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor: the Complainant and the Respondent are not competitors.
The Panel finds that the Complainant has not satisfied the burden of proof to show that either:
a) the Respondent registered the Domain Name to intentionally attempt to attract, for commercial gain, Internet users to its 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
b) that the Respondent has registered the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to the Complainant.
Firstly, the Domain Name has been registered for more than 17 years, and there is no evidence that the Respondent has ever attempted to sell the Domain Name to the Complainant (as opposed to a general offer to sell the Domain Name). An offer to sell a Domain Name, by itself, is not evidence of bad faith, rather it has to be accompanied by evidence that the Domain Name was registered or acquired primarily for the purpose of selling to the Complainant or a competitor of the Complainant.
The Panel finds that the Complainant has not established that the Respondent was aware of it at the time it registered the Domain Name. There is no evidence before the Panel that the Respondent was aware of the Complainant in 1997, such as extracts from the Respondent's Website close to the time of registration that refer to the Complainant or communications from the Respondent. Nor has the Complainant established that the TVS Mark was so well known that the Respondent must have been aware of it and registered the Domain Name in contemplation of it. In fact there is no evidence that the Complainant had any presence outside India in 1997, or indeed any time prior to 2012. There is no other evidence suggesting that the Complainant should have been aware of the Respondent. The Panel accepts the Respondent's argument that in 1997, it would not have been possible for the Respondent to have searched the Indian Trademark database (or indeed any trademark database) online, or search for the Complainant on the Internet: It is unclear if the Complainant had an Internet presence in 1997 and in any event search engines, such as Google, did not exist then. In short, absent a particular connection with India, or the Complainant's industry (neither of which is in evidence), it is not clear how the Respondent could possibly be aware of the Complainant at the time he registered the Domain Name.
In certain cases UDRP panels have inferred that a domain name was registered in bad faith if there is no explanation, or other logical reason for the registration of the domain name other than to take account of any confusion with the complainant. Such cases often arise if the complainant's trademark is a coined word. This is not such a case. The Respondent has given evidence of his reason for registering the Domain Name, namely because of its inherent value as a three-letter .com domain name and because it is commonly understood to be the short form for "televisions" or "T.V.s". This evidence is supported by the fact that in 1997 the Respondent registered other three-letter domain names and because the Domain Name has been used to host advertisements for televisions. The Panel finds this evidence more persuasive than the submission by the Complainant that the Respondent, who is based in the United States, registered the Domain Name to target the Complainant, despite the fact that, by its own admission, the Complainant had no interest in the Domain Name until 2013.
In this case, there is insufficient evidence for the Panel to reach a conclusion that the Complainant had such a reputation in its TVS Mark in 1997 that the registration of the Domain Name was in contemplation of the Complainant, rather than for the inherent qualities of the Domain Name. Furthermore, given the fact that the Domain Name consists of a three-letter word commonly used as an abbreviation for "television", it is highly likely that the Respondent registered the Domain Name for a purpose other than to take advantage of the confusion between the TVS Mark and the Domain Name. As such the Complainant has not satisfied its burden of showing that circumstances that bring the case within the provisions of paragraph 4(b) of the Policy exist, or other facts showing that the Respondent registered the Domain Name in bad faith. D. Laches
The Respondent, in its Response also raises the question of laches. The Panel notes that the Domain Name has been registered for 17 years, during that time the Complainant has been an active business. This Panel's view is that delay in filing a complaint is not an automatic bar to a complaint, but nor can it be ignored, for all the facts must be taken into account in all UDRP proceedings and a decision made in the light of all the circumstances of the individual case.
In the present proceeding the Panel does not make a finding as to whether the Complainant is barred from commencing or succeeding in the proceeding under the ground of Laches. This is for two reasons. Firstly as the Panel has found that the Respondent has not registered and used the Domain Name in bad faith and the Complainant therefore cannot succeed on the merits it is not necessary to make finding. Secondly the Panel finds the Complainant's explanation that it has only been aware of the existence of the Domain Name since 2013 as it was when the Complainant became interested in acquiring the Domain Name plausible. However the Panel notes the contradictory nature of the Complainant's submissions, namely that the Respondent registered the Domain Name in 1997 in bad faith to cash in on the reputation of the Complainant, yet the Complainant itself did not even consider it necessary to obtain a domain name that reflected the TVS Mark until 2013 or shortly beforehand. E. Reverse Domain Name Hijacking
Paragraph 15(e) of the Policy provides that if after considering the submissions the panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.
In Jazeera Space Channel TV Station v. AJ Publishing aka Aljazeera Publishing,WIPO Case No. D2005-0309, the majority of the three-member panel noted that the onus of proving that a complainant has acted in bad faith is on the Respondent, and that mere lack of success of the complaint is not of itself sufficient to constitute reverse domain name hijacking. The majority in Jazeera went on to note that:
"Allegations of reverse domain name hijacking have been upheld in circumstances where a respondent's use of a domain name could not, under any fair interpretation of the facts, have constituted bad faith, and where a reasonable investigation would have revealed the weaknesses in any potential complaint under the Policy (see Goldline International, Inc. v. Gold Line,WIPO Case No. D2000-1151). See also Deutsche Welle v. DiamondWare Limited,WIPO Case No. D2000-1202, where an allegation of reverse domain name hijacking was upheld in circumstances where the complainant knew that the respondent used the at-issue domain name as part of a bona fide business, and where the registration date of the at-issue domain name preceded the dates of the complainant's relevant trademark registrations."
The panel in Yell Limited v. Ultimate Search,WIPO Case No. D2005-0091 noted that whether a complainant should have appreciated at the outset that its complaint could not succeed will often be an important consideration.
In the view of the Panel this is a Complaint which has a number of significant issues. The Domain Name in question was registered in 1997. There is very little evidence presented in the Complaint that suggests the Domain Name was ever targeted at the Complainant. Rather the content of the Respondent's Website suggests that the Domain Name resolved to a generic pay-per-click website, with most advertisements relating to televisions or "TVs" which reflect the Domain Name. The Complainant is a well-established company and no doubt has a significant reputation, but it appears, on the evidence before the Panel, that that reputation is limited to the Indian subcontinent. In particular, it is unclear if the Complainant had any reputation outside India in 1997, at the time of the registration of the Domain Name, let alone that the TVS Mark was so well-known that the Respondent's registration must have been made with the TVS Mark in mind.
Despite the weaknesses in its position, the Complaint is replete with numerous assertions that the Respondent engaged in illegal or fraudulent behaviour. Examples of such assertions include:
"The respondent wrongfully and fraudulently adopted and registered the impugned domain name www. to utilize the name and reputation attached to the well-known mark 'TVS' without having any rights thereto and in spite of having knowledge about the complainant and the reputation associated with 'TVS'."
"The facts and circumstances in the present case prove beyond doubt that the Registration of the impugned Domain name by the Respondent amounts to "passing off" with a manifest intention to commit fraud to mislead innocent and gullible customers by resorting to unfair and dishonest trade practices.
"The conduct of the respondent leaves no doubt as to its unscrupulous motive and illegal intentions and the Complainant is apprehensive that the respondent is in active search of an assignee of the impugned domain name and would sell the same and make illegal profit."
While acknowledging that a party in a UDRP proceeding has the right to present its case in any manner it sees fit, the Panel is concerned by the repeated assertions in the Complaint, seemingly without any evidentiary basis, that the Respondent is engaging in illegal behaviour or attempting to commit fraud. This language is unnecessary and not condoned by the Panel.
While noting that the Complainant's case has significant weaknesses and that its conduct in making numerous unsupported assertions of fraud and illegal behaviour is not condoned by the Panel, the Panel does not make a formal finding of Reverse Domain Name Hijacking. This is not a case where the complainant's mark post-dates the registration of the domain name, or where it is immediately obvious that the respondent used the at-issue domain name as part of a bona fide business (in particular the Panel acknowledges that the Respondent's Website has referred to the Complainant's products). The Panel does not find that the Complaint was brought in bad faith. Nevertheless the Panel remains concerned at the decision to commence proceedings in such circumstances and the unsupported assertions contained in the Complaint. 7. Decision
For the foregoing reasons, the Complaint is denied.
Nicholas Smith
Presiding Panelist
Harini Narayanswamy
Panelist
The Hon Neil Brown Q.C.
Panelist
Date: August 11, 2014
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