The Complainant is Nalli Chinnasamy Chetty of Chennai, India, represented by DePenning & DePenning, India.
The Respondent is James H Park of GlimHae-Shi, Republic of Korea. 2. The Domain Name and Registrar
The disputed domain name is registered with DropC LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 18, 2017. On July 18, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 18, 2017, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 20, 2017. In accordance with the Rules, paragraph 5, the due date for Response was August 9, 2017. The Respondent submitted an informal communication on July 26, 2017; however did not submit any formal response. Accordingly, the Center notified on August 10, 2017 the Parties that it would proceed to the Panel appointment.
The Center appointed Alistair Payne as the sole panelist in this matter on August 23, 2017. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
The Complainant has operated as a silk merchant and retailer of other products from its base in Chennai, India for 88 years. It has shops in various cities in India and in selected cities in other countries such as the United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), United States of America (“United States”), Canada, Australia, Singapore and Mauritius. It trades under the mark NALLI and has operated a website for its business at since 1998 and owns numerous domain names incorporating its NALLI mark. It is the proprietor of various trade mark registrations for NALLI including a logo mark registration for NALLI in India under trade mark registration 472754, registered on February 15, 1993 and a European trade mark for NALLI under trade mark registration number 005690839, registered on February 6, 2008.
The Respondent is based in the Republic of Korea and registered the disputed domain name on April 28, 2017.
The disputed domain name resolves to a website with pay-per-click (“PPC”) links related to the Complainant’s business, some of which resolve to the Complainant’s competitors’ websites. The disputed domain name is also offered for sale for USD 2,500 on the website. 5. Parties’ Contentions A. Complainant
The Complainant submits that it owns trade mark registrations as set out above and that the disputed domain name wholly incorporates and is identical to its NALLI trade mark. It says that its mark has gained an extensive reputation amongst customers and traders in the countries in which it operates and under the Indian Trade Marks Act 1996 its NALLI mark has achieved well known status. As a consequence, it says that its mark should be given the benefit of the special status accorded to well-known marks by previous panels under the Policy.
The Complainant asserts that it has not authorised the Respondent to use its mark or to register the disputed domain name and has provided evidence of a substantial list of domain names featuring the NALLI mark that are registered in the Complainant’s name. It submits that the Respondent has illegally and wrongfully adopted the NALLI mark in order to try to create an impression of association with the Complainant and that the disputed domain name is so closely similar to the Complainant’s domain name is bound to result in consumer confusion and the Respondent trading unfairly on the goodwill attaching to the Complainant’s mark is not legitimate and has provided no evidence at all of its bona fide.
As far as bad faith is concerned, the Complainant submits that the Respondent registered the disputed domain name many years after the Complainant commenced its business under the NALLI mark. It notes that the parking page to which the disputed domain name resolves contains links to silk sarees such as “Nalli Silk Sarees”, “Nalli Sarees OnlineShopping” and some of these sites lead to third party e-commerce sites that also offer the sale of sarees and clothing and other links lead to the Complainant’s website. This says the Complainant is bound to mislead consumers into thinking that there is some association with the Complainant when there is not and that this amounts to cybersquatting. B. Respondent
The Respondent did not formally reply to the Complainant’s contentions but did send an email to the Center on July 26, 2017 in which he suggested that “nalli” is a noun in the Korean language and “is an English notation of ‘난리’ pronunciation”, and that he was willing to negotiate with the Complainant. Otherwise he would file a court action in the Republic of Korea. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant has demonstrated that it owns registered trade mark rights for its NALLI mark, in particular, in India under trade mark registration 472754 and in European Union under trade mark registration number 005690839. Although these registrations are logo marks that comprise the NALLI word mark in a fancy font, the dominant element is the word NALLI. The Panel finds that the disputed domain name wholly contains the NALLI mark and is confusingly similar to the Complainant’s registered trade marks.
Accordingly, the Complaint succeeds under this element of the Policy. B. Rights or Legitimate Interests
The Complainant has submitted that it has no affiliation with the Respondent and that it has neither permitted nor licensed the use of its NALLI mark to the Respondent. There is nothing otherwise on the record to suggest that the Respondent has used is known by the term “nalli”.
Although the Respondent suggested that “nalli” is a noun and hence a common word in the Korean language, the Respondent did not support this submission with any proper explanation or evidence. In the circumstances, as described below under Part C that the disputed domain name resolves to a website with directly conflicting commercial links, the Panel infers that the Respondent’s conduct is not legitimate.
As a result, the Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and that this case has not been rebutted by the Respondent.
The Complaint therefore succeeds under the second element of the Policy. C. Registered and Used in Bad Faith
The disputed domain name was registered in April 2017 by which time the Complainant’s business under the NALLI mark was well-established in India and various other countries, but not it would appear in the Republic of Korea. However, the Panel accepts the Complainant’s submission and evidence that its online presence was very well-established by this time and that not only did it own a significant number of domain names that included its NALLI mark, but that a search engine would have clearly pointed to its presence and the use of the term “nalli” in several countries.
The disputed domain name resolves to a parking page with PPC links. As submitted by the Complainant, these include links to silk sarees such as “Nalli Silk Sarees”, “Nalli Sarees OnlineShopping” and some lead to third party e-commerce sites in competition with the Complainant that also offer the sale of sarees and clothing. There are also links that lead to the Complainant’s website. Under paragraph 4(b)(i) of the Policy, the fact that, upon review by the Panel, the website also features an offer to sell the disputed domain name for USD 2,500, far in excess of the registration costs, only reinforces the inference that the Respondent acquired and is using the disputed domain name for its own commercial benefit.
Under paragraph 4(b)(iv) of the Policy, using a domain name to intentionally attempt to attract, for commercial gain, Internet users to a 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 of the respondent’s website or location or of a product or service on your website or location is evidence of bad faith. The Panel finds that the Respondent’s use in this case amounts to use in terms of paragraph 4(b)(iv) of the Policy and is evidence of the Respondent’s registration and use of the disputed domain name in bad faith.
Accordingly, the Complaint also succeeds under this element of the Policy. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(I) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
Alistair Payne
Sole Panelist
Date: September 3, 2017
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