The Complainant is Oravel Stays Private Limited, India, represented by Fidus Law Chambers, India.
The Respondent is Perfect Privacy, LLC, United States of America / Kannan, Vijayakumar, India, represented by Cylaw Solutions, India. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 14, 2019. On August 14, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, 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 August 19, 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 an amended Complaint on August 22, 2019, which also remedied an administrative deficiency that the Center notified on August 19, 2019. 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 August 23, 2019. In accordance with the Rules, paragraph 5, the due date for Response was September 12, 2019. On September 5, 2019, the Respondent’s representative requested an automatic four calendar day extension for response under paragraph 5(b) of the Rules. The Respondent was granted the automatic extension of time on September 6, 2019, rendering the due date for the Response September 16, 2019. The Response was filed with the Center on September 13, 2019. The Center appointed Harini Narayanswamy as the sole panelist in this matter on September 19, 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. In order to have a more complete file, the Panel issued a Procedural Order on October 30, 2019, requesting the Complainant to provide evidence of use of its OYO LIFE mark prior to the registration of the disputed domain name. The parties were provided time to make their submissions and the date for the decision was extended. 4. Factual Background The Complainant is in the business of budget hotel aggregation and also operates hotels under the OYO trademark. The Complainant owns a number of registered trademarks for the OYO mark and its variants in India and other countries. Some of its India registered marks are; OYO registration number 3578829, registered on June 26, 2017, for the goods and services in class 39, OYO ROOMS registration number 3578835, registered on June 26, 2017, for the goods and services in class 39, OYO TOWNHOUSE registration number 3470864, registered on January 31, 2017, for the goods and services in class 43 and OYO STAYS registration number 2989067, registered on June 19, 2015, for the goods and services in class 42. The Complainant has registered the domain names The Respondent has submitted an affidavit stating that he is a software engineer and is employed in the health industry since 2005. The Respondent is the registrant of the domain names The Complainant states it was founded by Ritesh Agarwal who received the Thiel Fellowship Award in 2013 and was featured in the Forbes 30 Under 30 in Consumer Tech in 2016. The Complainant contends that it is South Asia’s largest hotel chain and its business covers 800 cities and 23,000 hotels in India, Nepal, China, Malaysia, Indonesia, United Kingdom, United States of America, United Arab Emirates, Japan, and Turkey. The Complainant contends that it is backed by investors such as Soft Bank Group, Lightspeed India and Sequoia Capital among others. The Complainant states it has received international and national accolades; Winner of the 2017 Real Innovation Award 2017 by the London Business School, Top 10 Most Innovative Companies of the World by Fast Company, India Honourees 2018, ET Start-Up of the year 2018, India’s Most Promising Hotel Network (Holiday IQ Better Holiday Awards 2017), NDTV Dream Chaser of the Year (2016), IAMAI Digital Start-up of the Year (2016), Business Today’s list of India’s Coolest Start-Ups (2016), ranked by LinkedIn as one of the top employee attractors in India for three consecutive years 2016, 2017 and 2018. The Complainant has provided evidence of its registered trademarks for the OYO mark and its variants in countries such as China, Singapore, United Kingdom, United Arab Emirates, Nepal, Kuwait, Bahrain, and Saudi Arabia. The Complainant states its mobile application for OYO, which is used by its customers to book hotels and other services was launched in May 2015, and it has 10 million downloads from the Play Store. The Complainant states that its OYO LIFE brand offers long term fully managed accommodation primarily meant for young professionals and students and is one of the largest such service with 25,000 beds signed and 20,000 or more beds live, across nine Indian cities. The Complainant claims that OYO LIFE employs more than 1,000 people and has about 2,000 people developing multiple solutions across seven development centres globally. The Complainant states the domain name The Complainant requests for transfer of the disputed domain on the grounds that: (i) the disputed domain name is identical or confusingly similar to trademarks in which it has rights (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 by the Respondent. B. Respondent The Respondent has submitted a response in which he states that he is currently vice-president at PeerHealth. The Respondent alleges that he registered the disputed domain name in good faith by combining two generic terms “oyo” (Japanese term for application) and “life”. The Respondent adds that there are over 1,500 domain names in the “.com” generic Top-Level Domain (“gTLD”), that start with “oyo”. The Respondent argues that three letter words could have many interpretations and refers to the case SK Lubricants Americas v. Andrea Sabatini, Webservice Limited,WIPO Case No. D2015-1566, where it was observed that three letter acronyms is likely to be of general application to many interested parties and no one party is likely to be able to claim a monopoly in all fields of activity. The Respondent further argues that “oyo” is a ubiquitous term and there are various connotations of the term “oyo”, such as: Oyo is a city and a state in Nigeria, the Oyo Empire was established in Nigeria in the 12th century, Oyo town is in the Democratic Republic of Congo, there is Oyo river in Indonesia and Oyo music album by the American singer Angelique Kidjo. The Respondent rebuts the Complainant’s claim that “oyo” is a coined term and states that the Complainant’s tag line “On Your Own” is derived from an Internet slang. The Respondent argues that other parties have trademark registrations for OYO or “oyo” formative names, such as OYO-On Your Own trademark was first adopted by Spykar Lifestyles Pvt Ltd and it has used “oyo” for its company name, Oyo Lifestyle Pvt Ltd. Similarly, Oyo Corporation of Japan has pending trademark registrations in several jurisdictions including India. The Respondent argues that the Complainant’s OYO marks are registered under classes 35, 39, 42, and 43, whereas the area of relevance to the Respondent is health-care. He claims that prior to obtaining the disputed domain name, he searched under class 44 for health-care and found no marks corresponding to OYO LIFE. The Respondent argues that the Complainant lack rights due to the generic nature of the OYO and OYO LIFE marks. The Respondent states there are various ways in which the combination of terms “oyo” and “life” could be translated in Japanese and one such meaning is “Application of Life”. A Google search for “Application of Life” returns 12,400.000 results, mostly related to software and healthcare and states that he had acquired the disputed domain name for its generic meaning and that he also owns other domain names in his portfolio with the suffix “life”. The Respondent states that the disputed domain name was registered for use in future business operations and that buying a generic domain name does not require a certificate of intent, vision document, mission statement to be submitted by the Respondent. At the time of registration of the disputed domain name, the Respondent states there was no company, operations, website, applications or trademarks pending with the name “oyo life” or the mark OYO LIFE. The Respondent asserts that the combination of “oyo” and “life” was coined by the Respondent two months before the Complainant conceived its OYO LIFE mark. The Respondent argues that the Complainant seems to have conceptualized “Oyo Life” on January 29, 2019, and applied for trademark on April 26, 2019, while the disputed domain name was registered on November 27, 2018. The Respondent also argues that the Complainant lack rights in the OYO LIFE trademark, as its trademark applications are still pending. The Respondent adds that the Complainant had filed trademark applications in 2019, under class 44 for POWER STATION BY OYO, WORKFLO BY OYO and SIGNATURE STAYS BY OYO, but no application was made for OYO LIFE in 2018. The Respondent argues that under the second requirement, it is sufficient that a respondent shows a legitimate right or interest and it is not required that he should have a better right. The Respondent argues that speculating in domain names is lawful and to prove bad faith registration and use it is necessary for the Complainant to show that the Respondent’s intent was to take advantage of the Complainant’s mark. At no time prior to the registration of the disputed domain name, was the Respondent aware of the Complainant or its OYO LIFE mark and argues that the Complainant has provided no evidence of advertisement, marketing spends, sales volume at the date of registration of the domain name, further the evidence of media coverage submitted is from February 2019. The Respondent states that he did not approached the Complainant to sell the disputed domain name but instead was approached by a person from the Complainant’s organization. The Respondent has filed screen-shots of the text messages exchanged and he states the text messages were followed up by anonymous calls and argues that responding to calls does not constitute bad faith. Further, as the parking page has no reference to the Complainant’s trademark, the Respondent argues that there is no evidence of targeting the trademark. The Complainant states that around the date the Complainant applied for the trademark OYOLIFE in Japan, the legal notice was issued to the Respondent. The Respondent requests a finding of Reverse Domain Name Hijacking. Parties Submission to the Panel’s Procedural Order 1. The Panel by Procedural Order 1, dated October 30, 2019, requested the Complainant to provide evidence of use of the OYO LIFE mark prior to November 27, 2018, the date of registration of the disputed domain name. The procedural order specified that such evidence should have been readily available to the public, to establish the Complainant’s use of the OYO LIFE mark. The Complainant in reply to the procedural order, stated there was no evidence of use of the mark for the period mentioned in the procedural order. The Respondent replied and reiterated that evidence of media coverage for the mark OYO LIFE is only after February 2019. The Respondent then drew the Panel’s attention to media reports stating OYO LIFE has completed a year in October 2019, but the Complainant had operated under the brand OYO LIVING from October 2018 till January 2019. 6. Discussion and Findings The Policy under paragraph 4 (a) the Complainant is required to establish three elements to obtain the remedy of transfer of the disputed domain name, these are: - The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and - The Respondent lacks rights or legitimate interests in the disputed domain name; and - The disputed domain name was registered and is being used in bad faith by the Respondent. A. Identical or Confusingly Similar The first element requires the Complainant to establish the disputed domain name is identical or confusingly similar to a trademark or a service mark in which it has rights. The Complainant has provided evidence of its registered trademarks for the OYO mark which establishes its trademark rights for purposes of paragraph 4(a)(i) of the Policy. See Section 1.2.1 WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition(WIPO Overview 3.0). The Complainant has also provided evidence of use of the OYO LIFE mark in commerce, such evidence include marketing promotions of its mark, news reports, articles and write-ups referring to the Complainant’s trademark OYO LIFE, that show third-party recognition of its mark. In view of the Complainant having filed sufficient material to establish its common law rights in OYO LIFE mark, the Complainant is found to have demonstrated its unregistered rights or common law rights in the OYO LIFE mark. The Panel finds that the disputed domain name reflects the Complainant’s marks, namely its house mark OYO and the OYO LIFE mark and the disputed domain name is found confusingly similar to the trademarks in which the Complainant has rights. The Complainant has fulfilled the first requirement under paragraph 4(a) of the Policy. B. Rights or Legitimate Interests The second element under paragraph 4(a) of the Policy requires the Complainant to make a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has the opportunity to rebut the Complainant’s contentions and demonstrate rights or legitimate interests in the disputed domain name. The Complainant has argued that the Respondent is not using the disputed domain name in connection with a bona fide offering and has merely parked it. The Complainant has further argued that its house mark OYO is not a dictionary word and is an invented mark and it is likely that the Respondent has registered the disputed domain name for the fame related to its OYO mark. The Complainant has also argued that the paragraph 4(c) provisions do not apply to the present case, and the Complainant has not authorised or licensed the Respondent to use its mark. The Respondent has rebutted the Complainants statements and has claimed rights and legitimate interests in the disputed domain name arguing that it combines two dictionary terms. The Respondent has also rebutted the Complainant’s claims of the OYO mark being an invented word and has argued that “oyo” is a word that has many connotations in different languages around the world and other companies have also adopted the OYO mark and “oyo” formative names. The Panel has noted the Respondent’s arguments rejecting the Complainant’s claim that its OYO mark is an invented mark. Based on the submissions and evidence provided by the Respondent the Panel acknowledges that it is likely that the OYO trademark could have been adopted by other entities prior to the Complainant’s adoption of its OYO mark and also notes that there are geographical and other names and meanings for the term “oyo”. The Panel is therefore inclined to agree with the Respondent’s submission, that the Complainant’s claim of its OYO mark being a coined or invented term is imprecise. However, this would not be sufficient in itself to consider that the Respondent has rights or legitimate interests. Regarding the Respondent’s other argument, that the disputed domain name consists of dictionary terms, it is a well settled proposition that a domain name that is comprised of dictionary terms or phrases does not itself automatically confer rights or legitimate interests on a respondent. In order to find rights or legitimate interests in a domain name based on its dictionary meaning, the domain name should be genuinely used, or at least demonstrably intended for such use, in connection with the relied-upon dictionary meaning. See Section 2.10.1, WIPO Overview 3.0.1 It is well established that mere arguments or conclusory statements that the domain name corresponds to a dictionary term or phrase will not suffice. A respondent is required to provide evidence to support its contention of use in accordance with the dictionary meaning of the term. The Respondent has not provided any such evidence of actual use or proposed used that would correspond to the dictionary meaning of the terms “oyo” and “life”. The Respondent has merely mentioned that the disputed domain name has been acquired for future use and that among the many interpretations for the terms used in the disputed domain name, “Application of Life” is one such interpretation. The Respondent then goes on to state, that a Google search for the term would return 12,400.000 results, which are mostly related to the field of software and healthcare. This, in the Panel’s view, does not demonstrate any actual use of the disputed domain name by the Respondent or provide any specific information about any contemplated use of the disputed domain name by the Respondent that corresponds to the dictionary meaning of the words used in the disputed domain name. It is well established, that “propose to use” or “intended future use” of a disputed domain name, is not a sufficient defence, unless such statements are supported with proper evidence. The Panels finds, based on the submissions made by the Parties that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith The third element requires the Complainant to establish the disputed domain name has been registered and is being used in bad faith by the Respondent. The Complainant has alleged that the Respondent has registered the disputed domain name to derive advantage from the fame and goodwill associated with its OYO and OYO LIFE marks. The Complainant has also argued that the Respondent has an obligation to search and ensure that the disputed domain name does not violate existing trademark rights. The Respondent on the other hand has argued that the disputed domain name was registered in good faith as it combines two dictionary terms and that he proposes to use it for some future business. The Respondent has also questioned the Complainant’s rights in the OYO mark on the ground that “oyo” is a dictionary term. There is little or no merit in such an argument, as the evidence shows the Complainant is the registered proprietor of the OYO trademark, which is widely and extensively used and has acquired rights in said mark within India and in other countries much prior to the registration of the disputed domain name. The Complainant has presented compelling evidence to establish that its OYO mark is reputed, widely known and widely used. Under these circumstances, it is implausible that the Respondent was unaware of the Complainant’s rights in the OYO mark. More importantly, due to the absence of concrete material of the Respondent’s exact intention behind the registration of the disputed domain name, it is reasonable to infer that the disputed domain name was registered to take advantage of the reputation associated with the OYO mark. Furthermore, it is well established that a dictionary term combined with a well‑known mark under the circumstances, amounts to registration and use of the domain name in bad faith. The Respondent has also argued that the Complainant appears to have conceptualized “Oyo Life” on January 29, 2019, whereas the disputed domain name was registered on November 27, 2018. Evidence filed by the Complainant, shows a report published in a leading newspaper2 , that the Complainant has initiated OYO LIFE in October 2018. However, as rightly mentioned by the Respondent, the articles and newspaper reports filed by the Complainant are dated February 2019 onwards. Further, based on the Complainant’s reply to the Procedural Order 1, the Panel finds that the Respondent’s registration of the disputed domain name is likely to have been without knowledge of the Complainant’s OYO LIFE mark. Nevertheless, the key issue here is whether the disputed domain name was registered and used in bad faith with respect to the Complainant’s OYO mark, as the Complainant’s OYO LIFE mark is just a variant of its long-standing OYO house mark. Given the wide use of the Complainant’s OYO mark and as discussed in the previous section, the Respondent has not demonstrated or provided convincing evidence as to how the Respondent proposes to use the disputed domain name within the generic meaning of the terms, the Panel finds the registration of the disputed domain name was in bad faith. Under the circumstances discussed, when the disputed domain name is not being used by the Respondent, passive holding amounts to bad faith use. Furthermore, any future contemplated use of the disputed domain name by the Respondent which contains the OYO mark is likely to mislead the public as to its origin, source or affiliation. The Panel finds that the Complainant has fulfilled the third element under paragraph 4 (a) of the Policy, that the disputed domain name has been registered and is being used in bad faith. Reverse Domain Name Hijacking The Respondent has requested for a finding of Reverse Domain Name Hijacking (“RDNH”), which is defined under 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”. The Panel does not find any circumstances or evidence that indicate the present Complaint has been brought in bad faith by the Complainant or that the Complaint has been made in abuse of the Policy or any circumstances to find RDNH. 7. Decision For the foregoing reasons, the Panel orders that the disputed domain name Harini Narayanswamy 1 “2.10.1 Panels have recognized that merely registering a domain name comprised of a dictionary word or phrase does not by itself automatically confer rights or legitimate interests on the respondent; panels have held that mere arguments that a domain name corresponds to a dictionary term/phrase will not necessarily suffice. In order to find rights or legitimate interests in a domain name based on its dictionary meaning, the domain name should be genuinely used, or at least demonstrably intended for such use, in connection with the relied-upon dictionary meaning and not to trade off third-party trademark rights.” 2 Economic Times February 25 2019 “Launched in October 2018, Oyo Life offers fully managed independent residential units”.
Sole Panelist
Date: November 14, 2019
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