Complainant is MAS S.A.S. of Sabaneta, Colombia, represented by Rodriguez Azuero Contexto Intelectual, Colombia.
Respondent is Joseph Kattampally of Plano, Texas, United States of America (“United States”), represented by Steven Rinehart, United States. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 28, 2016. On November 29, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 30, 2016, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on December 1, 2016. In accordance with the Rules, paragraph 5, the due date for Response was December 21, 2016. The Response was filed with the Center on December 20, 2016.
The Center appointed Stephanie G. Hartung as the sole panelist in this matter on December 29, 2016. 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 company registered under the laws of Colombia whose business is the production, marketing, export and sale of women clothing under the MAAJI trademark. Complainant has provided evidence that it is the registered owner of numerous trademarks relating to the designation “maaji”, inter alia:
- Word-/device mark MAAJI SWIMWEAR, Canadian Intellectual Property Office (“CIPO”), Registration No. TMA910,237, Registration Date: August 4, 2015, Status: Active;
- Word mark MAGIC OF MAAJI, China Trademark Office (“CTPO”), Registration No. 14103788, Registration Date: May 7, 2015, Status: Active;
- Word-/device mark MAAJI SWIMWEAR, European Union Intellectual Property Office (“EUIPO”), Registration No. 007560402, Registration Date: October 7, 2009;
- Word-/device mark MAAJI, Trademarks Registry Intellectual Property Department of Hong Kong, Registration No. 303413763, Registration Date: May 19, 2015, Status: Active;
- Word-/device mark MAAJI, Autonomous Service of Intellectual Property Venezuela (“SAPI”), Registration No. P297498, Registration Date: July 28, 2009, Status: Active.
Respondent is a resident of the United States. He registered the disputed domain name on September 25, 2001, which, by the time of the rendering of this decision, redirects to a standardized parking page set up by the Registrar.
Complainant requests that the disputed domain name be transferred to Complainant. Respondent requests that the Complaint be denied and that the Panel finds for a case of Reverse Domain Name Hijacking. 5. Parties’ Contentions A. Complainant
Complainant asserts that the disputed domain name is identical to its MAAJI trademarks.
Complainant also claims that Respondent has no rights or legitimate interests in respect of the disputed domain name since (1) there is no evidence of Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name, in connection with a bona fide offering of goods or services, (2) there is neither evidence that Respondent owns any trademark rights in the word “maaji”, or any other similar word, nor that Respondent, as an individual, business, or other organization, has been commonly known by the disputed domain name, (3) MAAJI is a well-known brand of women clothing, registered in a wide range of countries worldwide, that has participated since 2014 in important catwalks, international trade shows and recognized fashion fairs, as well as has appeared since 2009 in several important fashion magazines, (4) when typing in the word “maaji” in search engines such as Google, the top results (including Google Images) relate to Complainant and its business, however, in no case to Respondent, and (5) Respondent has been passively holding the disputed domain name for over 15 years, thereby restraining Complainant, who is broadly known by the disputed domain name, from using the very same, which consequently disrupts and harms Complainant’s business by diverting potential customers away from Complainant’s authentic website.
Finally, Complainant argues that the disputed domain name was registered and is being used by Respondent in bad faith since (1) even though Respondent has never taken any active steps to sell the disputed domain name or to contact Complainant, the fact that there is no activity on the website under the disputed domain name for the past 15 years constitutes enough evidence of the domain name being used in bad faith, and (2) although Respondent is not using the domain name, he has been renewing it on different occasions which only allows one single inference, namely that Respondent has been retaining the disputed domain name for over 15 years, restraining Complainant, who is broadly known thereunder, from reflecting its MAAJI brand in the very same. B. Respondent
Respondent points to the fact that the disputed domain name was created as early as in 2001 and that all of Complainant’s MAAJI trademarks are either pending or issued only after 2009 with a first-use in commerce date of 2007, thus at least six years after the disputed domain name’s registration.
Respondent claims rights or legitimate interests in respect of the disputed domain name since (1) the word “maaji” is a transliteration of the Indian term for “mother”, therefore is a generic expression subject to extensive use by over one billion people, (2) Respondent is not using the term “maaji” because of its “value as a [confusingly similar] trademark”, but because of its attraction as a dictionary word or common term, (3) Respondent has never attempted to sell Complainant’s products or to trade on Complainant’s goodwill, and (4) the use of a common word domain name related to the descriptive or generic meaning of the domain name and its services constitutes use in connection with a bona fide offering of goods or services.
Moreover, Respondent points to the fact that he had no knowledge of Complainant when registering the disputed domain name already 16 years ago, which is why the Complaint must fail because no finding of bad faith registration can be made.
Respondent also raises the defense of laches, pointing to the fact that Complainant has waited 16 years since the registration of the disputed domain name to bring this UDRP action.
Finally, Respondent requests the Panel to find for a Reverse Domain Name Hijacking based on the fact that Complainant attempted to rob Respondent of the disputed domain name which Complainant knew is not only a generic word for “mother” in India, but also a domain name which has been registered 16 years ago by Respondent without action from Complainant and a domain name which was registered nearly seven years before Complainant even began the use of its MAAJI trademarks. 6. Discussion and Findings A. Identical or Confusingly Similar
The Panel concludes that the disputed domain name is at least confusingly similar to the MAAJI trademarks in which Complainant has shown to have rights.
It has become a consensus view among panelists (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.2), that the application of the confusing similarity test under the UDRP will typically involve a straight forward visual or oral comparison of the concerned trademark with the alphanumeric string in the disputed domain name and that the test is satisfied if the relevant trademark would generally be recognizable as such therein. Also, there is consent that the applicable generic Top-Level Domain in a disputed domain name would usually be disregarded under the identity or confusing similarity test (see again: WIPO Overview 2.0, paragraph 1.2). In the case at hand, the disputed domain name incorporates the distinctive element of all the MAAJI trademarks, namely the term “maaji”, in its entirety, the result being that the MAAJI trademarks are easily recognizable as such in the disputed domain name.
Therefore, the first element under the Policy set forth by paragraph 4(a)(i) in the case at hand is fulfilled.
In this context, it should also be mentioned that the registration of a domain name before a complainant acquires trademark rights in a name does not prevent a finding of identity or confusing similarity under the UDRP, since the latter makes no specific reference to the date on which the holder of the trademark or service mark acquired rights (WIPO Overview 2.0, paragraph 1.4). However, as will be laid out in more detail under Section 6.C below, in such circumstances – as in the case at hand – it is difficult for the complainant to prove that the domain name was registered in bad faith under the third element of the UDRP. B. Rights or Legitimate Interests
The Panel is further convinced that on the basis of both parties’ contentions, Respondent apparently has neither made use of the disputed domain name in connection with a bona fide offering of goods or services, nor has Respondent been commonly known by the disputed domain name, nor can it be found that Respondent makes a legitimate noncommercial or fair use thereof without intent for commercial gain.
It is undisputed between the parties that Respondent so far has not made use of, or demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services, but simply has not used the disputed domain name at all. Also, there is no reason to believe that Respondent’s name somehow corresponds with the disputed domain name and Respondent does not appear to have any trademark rights associated with that name. Finally, UDRP panels have recognized that the mere registration of a domain name, even one that is comprised of a confirmed dictionary word or phrase, may not of itself confer rights or legitimate interests in a disputed domain name (see WIPO Overview 2.0, paragraph 2.2).
Accordingly, Complainant has established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. Now, the burden of production shifts to Respondent to come forward with appropriate allegations or evidence demonstrating to the contrary (see WIPO Overview 2.0, paragraph 2.1). In the case at hand, however, Respondent did not provide any reasonable explanations or contentions at all as to why he needed to rely on the term “maaji” as a domain name. The Panel has well noted Respondent’s assertion to have used the disputed domain name “because of its attraction as a dictionary word or common term”. Still, the Response lacks any information whatsoever as to what kind of use this should have been.
Consequently, Respondent failed to bring forward the least evidence on his possible rights or legitimate interests in the disputed domain name and so did not even challenge the prima facie case set up by Complainant. Merely failing to rebut Complainant’s case on this second element does not however necessarily mean that Respondent was acting in bad faith vis-à-vis Complainant, as discussed below.
Therefore, the Panel finds that Complainant has also satisfied paragraph 4(a)(ii) and, thus, the second element of the Policy. C. Registered and Used in Bad Faith
Now it remains for the Panel to examine whether or not Respondent has registered and is using the disputed domain name in bad faith.
It is also undisputed between the parties that none of Complainant’s MAAJI trademarks were registered before 2009 with a first-use in commerce date in 2007, thus at least six years after the disputed domain name’s registration by Respondent in 2001. Also, neither the Complaint nor the Response or any other information available to the Panel from the case file induce any reason for the Panel to believe that Respondent had knowledge (or even should have had knowledge) of Complainant or the existence of a MAAJI trademark when registering the disputed domain name as early as in 2001. The Panel, therefore, is willing to apply the UDRP panels’ consensus rule that when a domain name is registered by the respondent before the complainant’s relied-upon trademark right is shown to have been first established, the registration of the domain name would not have been in bad faith because the registrant could not have contemplated the complainant’s then non-existent right (see WIPO Overview 2.0, paragraph 3.1). In this context, the Panel has also well noted Complainant’s assertion that – since the introduction of Complainant’s MAAJI trademarks on the women fashion market on or after 2007 – Respondent has been renewing the disputed domain name on different occasions which for Complainant only allows one single inference, namely that Respondent has been retaining the disputed domain name for over 15 years, restraining Complainant, who is broadly known thereunder, from reflecting its MAAJI brand in the very same. Still, it is again undisputed between the Parties that Respondent so far made no use whatsoever of the disputed domain name (neither before nor after Complainant’s introduction of the MAAJI trademarks in 2007) and that Respondent never attempted to sell Complainant’s products or to trade on Complainant’s goodwill under the disputed domain name or even contacted Complainant in respect of the disputed domain name (e.g., in order to sell it to the latter). Consequently, there is no reason for the Panel in the case at hand to find bad faith registration of the disputed domain name in contrast to the general rule set out above according to which bad faith is not be found if the disputed domain name was registered clearly before the complainant’s trademark rights were acquired.
Therefore, the Panel finds that the third element under the Policy as set forth by paragraph 4(a)(iii) is not fulfilled and that, accordingly, Complainant has not satisfied all of the three requirements of paragraph 4(a) of the Policy. Consequently, the Panel does not need to examine the defense of laches raised by Respondent in more detail. D. Reverse Domain Name Hijacking
Finally, the Panel has considered whether it would be appropriate as per Respondent’s request to make the finding of Reverse Domain Name Hijacking against Complainant. Under paragraph 15(e) of the Rules, a panel is obliged to state in its decision any conclusion it might reach that complainant has brought the complaint in bad faith (for example in an attempt of Reverse Domain Name Hijacking), or primarily to harass the domain name holder. The Rules define “Reverse Domain Name Hijacking” as “using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name”.
Thereafter, the Panel is not persuaded that the circumstances of this case justify the finding of Reverse Domain Name Hijacking. Apparently, there is no hard evidence that Complainant was ill motivated in lodging the Complaint. In the circumstances of this case, the mere fact that Complainant waited seven years from the registering of its MAAJI trademarks until the filing of this Complaint alone does not necessarily demonstrate that Complainant attempted to deprive Respondent of the disputed domain name. Moreover, in fact it remains unanswered up until now as to why Respondent ever registered the disputed domain name as it still rests in the dark what motivation Respondent had in the acquisition of the disputed domain name apart from – to put it in the Respondent’s own words – “its attraction as a dictionary word or common term”. Accordingly, this case was not so hopeless that it should not have been brought before a UDRP panel for a decision. 7. Decision
For the foregoing reasons, the Complaint is denied. However, the Panel also denies Respondent’s request for a finding of Reverse Domain Name Hijacking.
Stephanie G. Hartung
Sole Panelist
Date: January 12, 2017
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