The Complainant is Apollo International Limited of New Delhi, India, represented by Dua Associates, India.
The Respondent is Whois Privacy Service of Seattle, Washington, United States of America / Numan Sachwani of Richmond, Canada / Threads of Apollo Designs Ltd. of Vancouver, Canada, internally represented. 2. The Domain Name and Registrar
The Disputed Domain Name (the “Disputed Domain Name”) is registered with Amazon Registrar, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 14, 2019. On February 14, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On February 15, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 26, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed a first amended Complaint on March 1, 2019. The Complainant filed a second amended Complaint on March 8, 2019.
The Center verified that the Complaint together with the amended Complaints 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 March 12, 2019. In accordance with the Rules, paragraph 5, the due date for Response was April 1, 2019. The Response was filed with the Center on April 1, 2019. The Respondent sent additional unsolicited email communications regarding the dispute on March 1, 11, and 12, and April 2, 2019.
The Complainant sent additional unsolicited email communications on April 1 and 2, 2019. The Complainant submitted a yet further supplemental filing by email on April 8, 2019.
The Center appointed John Swinson as the sole panelist in this matter on April 25, 2019. 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 is Apollo International Limited, a company incorporated in India. The Complainant was founded in 1994 and is a manufacturer and exporter of leather products. The Complainant claims common law trade mark rights in the term APOLLO from 1995 (“Trade Mark”).
The Complainant is the owner of a domain name which incorporates the Trade Mark, being , registered on April 19, 2000.
The Respondent is Threads of Apollo Designs Ltd., a company incorporated in Canada (according to the Response and relevant email communication, Numan Sachwani is the co-owner and Chief Technology Officer (CTO) of Threads of Apollo Designs Ltd. and registered the Disputed Domain Name for the company, and Wakkas Sachwani is the founder of Threads of Apollo Designs Ltd. as well as the owner of the Disputed Domain Name). The Respondent operates a leather goods store through the website at the Disputed Domain Name. The Respondent registered the Disputed Domain Name on December 21, 2016. 5. Parties’ Contentions A. Complainant
The Complainant is a manufacturer and exporter of leather products and operates its business at the domain name . The Complainant claims common law rights in the Trade Mark because it is an internationally well-known leather company and has traded under the name Apollo Leather since 1995. The Complainant has been using APOLLO as trademark/ service mark and significant portion of the Complainant's trading style/trade name through varied means of authorized media and in relation to various activities including but not limited to leather, tyres, shipping, and cargo logistics. The types of goods offered by the Respondent at the Disputed Domain Name are similar to those offered by the Complainant.
The Respondent does not have any right to use the Disputed Domain Name as the Complainant has not authorized the Respondent to do so and the Respondent has not acquired corresponding trademark or service mark rights. The Respondent is attempting to mislead the public regarding the nature and origin of the Disputed Domain Name.
The Respondent was aware of the Complainant at the time of registering the Disputed Domain Name due to the reputation of the Complainant. The Respondent is using the Disputed Domain Name with intent for commercial gain to misleadingly divert consumers and to tarnish the Complainant’s Trade Mark by creating a likelihood of confusion with the Complainant's Trade Mark as to the source, sponsorship, affiliation, or endorsement of its web site or location or of a product or service on its web site or location. B. Respondent
The Complainant does not have any trade mark rights in the terms APOLLO or THREADS OF APOLLO.
The Respondent has rights and legitimate interests in respect of the Disputed Domain Name as the Respondent operates a legitimate business at the website at the Disputed Domain Name.
The Respondent did not register the Disputed Domain Name in bad faith as the Respondent was not aware of the Complainant at the time the Respondent registered the Disputed Domain Name. The Respondent carried out Internet searches as well as trade mark searches and was not alerted to the Complainant’s business. The Respondent and the Complainant have different target markets and would not be considered competitors. 6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:
(i) the Disputed 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 Disputed Domain Name; and
(iii) the Disputed Domain Name has been registered and is being used in bad faith.
The onus of proving these elements is on the Complainant. A. Procedural Issues
The Respondent sent many emails and the Complainant submitted a supplemental filing. The Rules do not expressly provide for additional filings and generally, panels will only accept supplemental filings in “exceptional” circumstances. The Panel has reviewed the supplemental filing, however. The additional information provided is not material to the Panel’s decision in this case and does not cause the Panel to reach a different view than that which it reached on the basis of the original Complaint or Response. B. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to the Trade Mark.
The Complainant must establish two limbs in order to be successful on the first element of the Policy:
- that it has rights in a trade mark or other relevant name; and
- that the Disputed Domain Name is identical or confusingly similar to that trade mark or name.
In relation to the first limb, the Complainant claims common law rights in the Trade Mark because it is an internationally well-known leather company and has traded under the name Apollo Leather since 1995.
To establish unregistered or common law trade mark rights for purposes of the UDRP, the complainant must show that its mark has become a distinctive identifier which consumers associate with the complainant’s goods and/or services (see RoofPro, LLC v. Privacydotlink Customer 774656 / Blue Nova Inc.,WIPO Case No. D2018-0883 and section 1.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
Relevant evidence demonstrating such acquired distinctiveness includes a range of factors such as:
- the duration and nature of use of the mark;
- the amount of sales under the mark;
- the nature and extent of advertising using the mark; and
- the degree of actual public recognition.
In this instance, the Complainant has not provided any evidence to support any of these factors. For example, the Complainant has not provided any sales figures, marketing material, figures relating to number of customers or any evidence (for example, media report or articles) to show that they are a well-known brand. It is well established that specific evidence supporting acquired distinctiveness should be included in a complaint and must be sufficient to provide that the Complainant’s name has become a distinctive identifier of the Complainant’s services (see Cara Hutson v. Ryan McSweeney,WIPO Case No. D2018-2548). In this case, the Complainant has not provided any such evidence.
Further, “Apollo” is a well-known Greek God and while arbitrary, is not a fanciful or made up term of which the Complainant would have exclusive rights. The Complainant has failed to demonstrate common law rights in the Trade Mark.
The Complainant has not established the first element of the Policy. C. Rights or Legitimate Interests
In light of the Panel's finding in relation to the first element, it is not necessary for the Panel to decide whether the Respondents have rights to or legitimate interests in the Disputed Domain Name.
However, the Respondent does have rights and legitimate interests because Threads of Apollo is part of the Respondent’s company name and it appears that the Respondent is using the Disputed Domain Name in connection with a bona fide offering of goods or services. D. Registered and Used in Bad Faith
In light of the Panel's finding in relation to the first and second element, it is not necessary for the Panel to decide whether the Respondent registered and subsequently used the Disputed Domain Name in bad faith (under paragraph 4(a)(iii) of the Policy).
However, even assuming the Complainant was deemed to have proven the ownership of common law trade mark rights in “APOLLO”, the Panel notes that there is insufficient evidence submitted by the Complainant to demonstrate bad faith registration and use on the part of the Respondent.
The Complainant has not provided any evidence that the Respondent knew or should have known of the Respondent at the time the Disputed Domain Name was registered. The Respondent submits that it undertook searches prior to registering the Disputed Domain Name and did not come across the Complainant. While the Respondent did not provide any evidence, neither has the Complainant provided any compelling evidence to the contrary in its supplemental filing. The Complainant submitted a screenshot showing its homepage as the first result of a search for “Apollo leather”, but it is not clear that such result would bar the Respondent from using “threads of apollo” without significant evidence of the Complainant’s (global) online reputation / strength of its claimed trademark rights. The Complainant has no registered Trade Mark and therefore could not have been identified by any trade mark search.
In all events the Complainant’s claims wander into broader trademark analysis which extends beyond the scope of the Policy in this case.
Further, the Respondent’s business is focused on selling to consumers rather than to other businesses and therefore the Complainant and the Respondent are unlikely to be competitors. The Complainant has not provided any evidence that the Respondent has registered the Disputed Domain Name to intentionally attempt to attract, for commercial gain, Internet users to the website by creating a likelihood of confusion with the Complainant’s Trade Mark.
Similarly, there is nothing to suggest that the Respondent registered the Disputed Domain Name for the primary purpose of selling to the Complainant, to prevent the Complainant from registering the mark or to disrupt the business of the Complainant.
Therefore, even if the Complainant did establish common law rights in the Trade Mark it has failed to establish that the Disputed Domain Name was registered and used in bad faith. 7. Decision
For the foregoing reasons, the Complaint is denied.
John Swinson
Sole Panelist
Date: May 8, 2019
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