The Complainant is Lekhraj Corp Pvt. Ltd. of Mumbai, India, represented by Bharucha & Partners, India.
The Respondent is Surekha Valbh of Orlando, Florida , United States of America ("United States"), represented by Michael L. Leetzow, P.A., United States. 2. The Domain Name and Registrar
The disputed domain name, (the "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 December 20, 2016. On December 20, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 21, 2016, 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on January 12, 2017 correcting the relevant deficiencies.
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 the Respondent of the Complaint, and the proceedings commenced on January 16, 2017. In accordance with the Rules, paragraph 5, the due date for Response was February 5, 2017. Further to the Respondent's request submitted on January 30, 2017, the Response due date was extended until February 9, 2017 in accordance with paragraph 5(b) of the Rules. The Response was filed with the Center on February 9, 2017.
The Center appointed Tony Willoughby, Pravin Anand and Frederick M. Abbott as panelists in this matter on February 28, 2017. 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.
On March 2, 2017 the Complainant submitted to the Center a Supplemental Filing with the request that it be admitted into the proceeding largely on the basis of new information obtained by the Complainant following receipt of the Response.
On March 3, 2017 the Panel issued Procedural Order No. 1 accepting the first eight paragraphs of that filing into the proceeding, those paragraphs appearing to the Panel to be responding to matters in the Response, which the Complainant could not reasonably have foreseen when drafting the Complaint. The Respondent was given an opportunity to reply and did so by way of a response filed with the Center on March 6, 2017.
These further filings have shown that the administrative and technical contact for the Domain Name (Anil), Anil's company (Avista Technologies LLC) and the Respondent are all associated. They have the same address and Anil and the Respondent share the same surname. For the purposes of this decision the Panel treats them as one and all references herein to the "Respondent" are references to all or any one of them as the context requires.
On March 14, 2017, at the request of the Panel, the Center issued a notice to the parties indicating that due to exceptional circumstances the due date for decision had been extended to March 21, 2017. 4. Factual Background
The Complainant is a company incorporated in Mumbai under the law of India. The business commenced in 1987 as a family business manufacturing and selling garments and fashion accessories through one store under the name "CottonWorld". The business has subsequently been assigned to the Complainant and now comprises 30 stores across India. It is a very substantial business in India.
The Complainant claims that its website connected to its domain name, (registered June 14, 2008), received over the six months preceding the Complaint approximately 3,000 visits originating in the United States.
The Complainant is the registered proprietor of the following Indian trade marks:
No. 51152B dated June 8, 1989 COTTON WORLD (device mark in the form of a label) for "readymade garments, hosiery, clothing, including boots, shoes and slippers, fashion accessories included in class 25"
No. 614283 dated December 20, 1993 COTTON WORLD (word mark) for "readymade garments, hosiery, clothing, including boots, shoes and slippers, fashion accessories included in class 25"
The Domain Name was created on October 11, 2003. The Respondent contends that she acquired the Domain Name in early 2009. The Domain Name is currently connected to a holding page indicating that the site is "currently under maintenance". In early 2011 it appears to have been used for a general commercial marketplace website.
On March 1, 2011 the Respondent (Avista Technologies LLC) obtained United States Trade Mark registration No. 3,926,310 COTTON WORLD (words) – application filed April 29, 2009 – in classes 35, 38 and 45 for a range of online services relating to online retail store services in the field of inter alia cotton clothing and online chat room and social networking services.
On June 22, 2015 the Respondent received an email from a Sanjay Sanju of Vijay Enterprises, a garment manufacturing company in India. He noted that the Respondent wasn't "really using" the Domain Name and expressed interest in acquiring it for USD 200. On learning that the Respondent paid "over mid 6 digits" for the Domain Name he responded "way too pricey … I'll pass !!!". In the course of the exchange, he disclosed that his "family manufacture / export garments and are partners of Cotton World Corp ". 5. Parties' Contentions A. Complainant
The Complainant contends that the Domain Name is identical or confusingly similar to its above-mentioned registered trade marks; that the Respondent has no rights or legitimate interests in respect of the Domain Name; and that the Respondent registered the Domain Name in bad faith.
In its Supplemental Filing the Complainant contends that Anil Valbh's Indian connections mean that he must have been aware of the Complainant when the Respondent registered the Domain Name and must be taken to have registered the Domain Name in bad faith. The Complainant asserts that the Respondent's failure in the Response to disclose the connection further supports a finding of bad faith. B. Respondent
The Respondent denies the Complainant's contentions.
The Respondent makes a number of points about the Complainant's trade mark registrations, but her main points are that the trade mark is descriptive and that the Complainant's rights are weak, that they are not exclusive (there being other users of the name in the United States, United Kingdom of Great Britain and Northern Ireland ("United Kingdom"), and Poland) and are restricted to India.
Generally, as to the Complainant's claims to a reputation and goodwill in respect of its trade mark, the Respondent points to the fact that all the evidence (such as it is) relates to India in 2016 and is of no assistance in assessing reputation and goodwill in earlier years.
The Respondent contends that the Complainant does not have any trade mark protection in the United States where the Respondent resides; nor does it appear to have used its trade mark in the United States. The Respondent points to the Complainant's online Shipping Policy, which indicates that not only does the Complainant not ship outside India, it does not even ship to all parts of India.
The Respondent contends that the Complainant has long known of the Domain Name and was probably aware of its existence back in 2008 when it registered its domain name, speculating that the Complainant only registered the ".net" version when it realized that the Domain Name was already registered to somebody else. The Respondent also refers to emails, which she received in June 2015 from someone whom she claims was the Complainant seeking to purchase the Domain Name. The emails are referred to in greater detail in section 4 above and, she contends, give no indication of any concern about the Respondent holding the Domain Name. The Respondent contends that it is not open to the Complainant to raise a complaint now.
The Respondent claims to have "substantial interests and businesses in the United States" and contends that she has no intention of using the Domain Name in a competitive manner with the Complainant.
The Respondent asserts that she can readily use the Domain Name without impinging upon the Complainant's rights.
The Respondent points to the Complainant's claim that it registered its domain name on June 14, 2008, but claims that from online investigations she has made, it appears that that the domain name was originally registered "on or before May 28, 2004". The Respondent is unable to verify who was the originator of that domain name. She states that the Domain Name was free for purchase all the way up to 2009 when she purchased the Domain Name. At all events she claims that the Complainant has given wrong dates in the Complaint. The Respondent also contends that the Complainant's website was not, as the Complainant contends, live in June, 2008. The Respondent produces evidence which she asserts shows that the website was not up and running until a date in 2009.
The Respondent asserts that she was unaware of the existence of the Complainant until receipt of the June 22, 2015 emails referred to in section 4 above, i.e. long after the Respondent acquired the Domain Name, and there is no evidence to indicate otherwise. The Respondent recites a large number of instances in the Complaint where the Complainant asserts knowing violation on the part of the Respondent to violate the Complainant's rights and takes exception to those allegations, asserting that all along the Complainant will have known from the June 2015 email exchange that the Respondent had no prior knowledge of the existence of the Complainant. This section of the Response concludes:
"Of these examples, the last [an allegation that the Respondent should have checked the trade mark position before registering the domain name – a simple Google search would have sufficed] is perhaps the most egregious. As noted above, a reasonable good faith effort by Complainant to verify the alleged facts and assertions, by conducting a search on the Internet Archive and through its own records, would have revealed that Respondent was unaware of the Complainant at the time the domain was registered and the statements of Complainant in the email would not have put Respondent on any type of notice. Such carelessness in this proceeding is inappropriate and should not be tolerated."
The Respondent seeks a finding of Reverse Domain Name Hijacking largely on the basis of the email exchange in June 2015, which the Respondent takes to have been an email exchange with the Complainant, but also on the basis of a number of so-called unreliable pieces of information provided in the Complaint.
In the Respondent's response to Procedural Order No. 1, the Respondent, in addition to maintaining her ignorance of the existence of the Complainant prior to the June 2015 email exchange, discloses the existence of the Avista Technologies LLC's COTTON WORLD United States trade mark registration, details of which are at section 4 above. 6. Discussion and Findings A. General
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a trade mark 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.
Moreover, in writing its decision, the Panel has to have regard to paragraph 15(e) of the Rules and in particular the following sentence namely:
"If after considering the submissions the Panel finds that the Complaint was brought in bad faith, for example in an attempt at reverse domain name hijacking or was brought primarily to harass the domain name holder, the Panel shall declare in its Decision that the Complaint was brought in bad faith and constitutes an abuse of the Administrative Proceeding."
Reverse Domain Name Hijacking is defined in paragraph 1 of the Rules as "using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name". B. Identical or Confusingly Similar
It is well-established that for the purposes of this assessment under paragraph 4(a)(i) of the Policy the jurisdiction in which the Complainant has claimed trade mark rights is an irrelevant consideration as are the categories of goods and services covered by the Complainant's trade mark rights. Accordingly, the fact that the parties may operate in different jurisdictions and in different industries is not a matter that the Panel takes into consideration under this element of the Policy, although it may be of relevance to the issues to be addressed under the second and third elements of the Policy. The test of identity and confusing similarity typically involves a simple side-by-side comparison of the Domain Name and the Complainant's trade mark.
Moreover, generic Top-Level Domain ("gTLD") identifiers are commonly ignored for the purpose of the assessment under this element of the Policy (typically the gTLD identifier serves no more than a technical purpose). Spaces in trade marks are also ignored as the domain name system does not permit the presence of spaces in domain names.
Accordingly, in this case the Panel is left to compare, on the one hand, the Domain Name at the second level () with, on the other hand, the Complainant's registered trade mark, COTTON WORLD.
The Panel finds that the Domain Name is identical to the Complainant's registered trade mark. C. Rights or Legitimate Interests
In assessing whether or not the Respondent has a right or legitimate interest in respect of the Domain Name, the Panel must first assess whether or not the Complainant has made out a prima facie case to that effect, a case calling for an answer from the Respondent.
Here the Complainant has demonstrated the existence of a relevant trade mark right pre-dating the Respondent's acquisition of the Domain Name. While the Complainant's evidence as to the reputation and goodwill associated with the Complainant's trade mark is open to discussion, the Panel is prepared to assume that by 2009 when the Respondent acquired the Domain Name the Complainant's trade mark was at least well-known in India, but is not prepared to accept that it was well-known in the United States, where the Respondent resides.
It is noted that the Complainant has produced evidence to demonstrate that the Respondent (in the person of Anil) has strong Indian connections. His Facebook page indicates that his home town is or was originally Surat in India and that he is a Charter member of the Indian American Chamber of Commerce the principal aim of which is to "facilitate commerce between the United States and India". Accordingly, the Respondent might well have had reason to be aware of the Complainant back in 2009. The Complainant has also been able to establish that the Respondent paid approximately USD 3,600 for the Domain Name, which appears to contrast with the Respondent's claim to have paid "over mid 6 digits" for it.
The Panel accepts that the Complainant has made out a prima facie case calling for an answer from the Respondent and the Respondent has provided an answer.
Significantly, the Respondent has disclosed for the first time in the Respondent's Supplemental Filing, but not in the Response, the existence of United States Trade Mark registration No. 3,926,310 COTTON WORLD (words) registered on March 1, 2011 (application filed April 29, 2009) in classes 35, 38 and 45 for a range of online services relating to online retail store services in the field of inter alia cotton clothing and online chat room and social networking services. The registration is held in the name of the Respondent's company, Avista Technologies LLC of Orlando, Florida.
How can the existence of that trade mark registration not be a complete answer to the Complaint? How can it be said that that trade mark registration does not give to the Respondent a right in respect of the Domain Name for the purposes of paragraph 4(a)(ii) of the Policy?
In the view of the Panel, the only way that the Complainant can succeed in this Complaint in the face of the Respondent's trade mark registration is to persuade the Panel that the Respondent selected the Domain Name with knowledge of the Complainant's trade mark and with the intention of taking unfair advantage of the Complainant's trade mark rights and/or causing damage to those rights.
The Respondent's answer certainly raises questions and, not least: how it was that the existence of the Respondent's trade mark registration was omitted from the Response? Moreover, if the Complainant's trade mark was as famous in India in 2009 as the Complainant claims it to have been, how is it that the Respondent with strong Indian connections can claim to have been unaware of it? The first of those questions is irrelevant to the issues that the Panel is required to address and there may be any number of reasons why it was overlooked in the preparation of the Response. As to the second of them, however, the fact is that the Complainant has produced no evidence to support its claim to the fame of the trade mark back in 2009. Indeed, the only evidence annexed to the Complaint concerns the fame of the brand in 2016.
Further, even if the Respondent had been aware of the Complainant's trade mark when the Respondent adopted the name in 2009, what was to stop the Respondent doing so? As the Respondent has pointed out there are a number of other users of the name in countries such as Poland and the United Kingdom. It is a name, which, while not so descriptive as to render it unregistrable as a trade mark, does have a strongly descriptive flavor. It is not so distinctive as to be capable of only referring to the goods of a single entity worldwide.
The Panel finds that, notably owing to the Respondent's United States trade mark registration detailed above, the Complainant has not met its burden here. D. Registered and Used in Bad Faith
In light of the Panel's finding under C above, it is unnecessary for the Panel to address this issue. However, on the evidence before the Panel, the Panel is unable to find that the Domain Name has been registered and is being used in bad faith. E. Reverse Domain Name Hijacking
Reverse Domain Name Hijacking is most commonly found where at the time of filing of the Complaint the Complainant knew or ought to have known that it could not prove one of the essential elements required by the Policy.
As to the second of those elements, namely proving that the Respondent has no rights or legitimate interests in respect of the Domain Name, the Respondent points primarily to the fact that if the Complainant had done what the Complainant asserts that the Respondent should have done when acquiring the Domain Name, namely investigate the other party's trade mark rights, the Complainant would have discovered that the Respondent had relevant rights in the form of the Respondent's trade mark registration. The Panel is not impressed by that argument. The association between the named Respondent and Anil and Anil's company, the trade mark owner, while discoverable (and eventually discovered) was not an obvious connection to be drawn when the Complainant was filed.
It was the disclosure in the Response of the June 2015 email exchange, which highlighted the potential for a connection and made it readily discoverable and the Panel accepts that that exchange may well have taken place without the knowledge of the Complainant. Certainly, the Panel is not in a position to make a positive finding that that exchange probably took place with the knowledge of the Complainant.
A point of rather more concern is the fact that the Complainant has admitted that it registered its domain name, , in the ".net" gTLD in 2008, when it learnt that the Domain Name was unavailable (i.e., was registered to a third party), which raises the question as to why it did nothing about it or, if it did, why no mention was made of it in the Complaint. However, the fact that the Domain Name may have been held legitimately by a prior owner does not of itself mean that any subsequent owner is necessarily a bona fide owner.
While the Panel accepts some of the criticisms laid at the Complainant's door by the Respondent, the Panel is not satisfied that the Complaint was launched in bad faith. 7. Decision
For the foregoing reasons, the Complaint is denied and the request for a finding of Reverse Domain Name Hijacking is also denied.
Tony Willoughby
Presiding Panelist
Pravin Anand
Panelist
Frederick M. Abbott
Panelist
Date: March 20, 2017
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