The Complainants are HSIL Limited, Somany Home Innovation Limited / SHIL Ltd and Brilloca Limited, India, represented by Manav Gupta, India.
The Respondent is GOTW Hostmaster, Get On The Web Limited, United Kingdom (“UK”), represented by John Berryhill, Ph.d., Esq., United States of America. 2. The Domain Name and Registrar
The disputed domain names The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 16, 2020. On December 16, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 16, 2021, 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 January 4, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 28, 2021. The Response was filed with the Center January 28, 2021. The Center appointed Luca Barbero, Shwetasree Majumder, and Richard G. Lyon as panelists in this matter on February 25, 2021. 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. The due date for Decision was extended to at least April 6, 2021. 4. Factual Background The first Complainant is an Indian company specialized in the manufacturing and sale of goods such as sanitary ware products, kitchen appliances, and container glass products under the trademarks HSIL, HINDUSTAN SANITARYWARE & INDUSTRIES LTD, HINDWARE, HINDWARE ITALIAN COLLECTION, HINDWARE ARE, HINDWARE PREMIUM, and H VITREOUS. The first Complainant was originally known as Hindustan Twyfords but subsequently changed its name to Hindustan Sanitaryware & Industries Ltd and, in 2009, to HSIL Ltd. The second Complainant was incorporated on September 28, 2017 and produces and sells air purifiers, water purifiers, water heathers, air coolers, kitchen products, home appliances, and products of allied nature. On April 1, 2018, the first Complainant demerged, vesting into two sister companies: the second Complainant M/s Somany Home Innovation Ltd and the third Complainant Brilloca Ltd. The demerger implied the transfer of assets, liabilities, rights, and claims such as trademarks and domain names, though the three companies remained closely related corporate entities with a common legal interest in the trademarks jointly owned by the Complainants. At the time of the drafting of the Decision, the first Complainant is recorded as owner of the following trademark registrations according to the information displayed in the online database of the Indian Trademark Registry: - Indian trademark registration No. 1291806 for HSIL (figurative mark), registered on June 22, 2004 in international class 37; - Indian trademark registration No. 1291807 for HSIL (word mark), registered on June 22, 2004 in international class 40; - Indian trademark registration No. 1291808 for HSIL (word mark), registered on June 22, 2004 in international class 42. The Complainants have provided evidence of ownership of the Indian trademark registration No. 595609 for A SOMANY ENTERPRISE (figurative mark), registered on April 27, 1993, in class 16, currently recorded in the name of the first Complainant. The Complainants are the owners, amongst others, of the domain name The Respondent is a UK registered company, established on October 7, 1998 and has since provided web development and other web related services for clients, including web developments of its own, with the aim of assisting small businesses in obtaining visibility on the internet, concentrating at first on the health club and leisure facilities market. In addition to the main site at “health-club.net”, the Respondent registered a number of short, acronymic domain names for use with locally-targeted results. The disputed domain names The Complainants state that they are one of the largest Indian manufacturers of sanitaryware products with a dominant one third of the market share in the industry. The Complainants claim that the first Complainant is more commonly known by its acronym “Hsil” and that the second Complainant is more commonly known by its acronym “Shil”. The Complainants also state that the first and the second Complainant are publicly listed companies and trading on the Bombay Stock Exchange and National Stock Exchange in India under their acronyms “Hsil” and “Shil”. The Complainants further assert that the Indian Trademark Office has refused third-party applications for trademarks corresponding to “Hsil” and “Shil” since they are considered well-known trademarks of the Complainants, and that they obtained favorable decisions from the New Delhi High Court in trademark infringement cases. The Complainants point out that the first Complainant is a “household name not only in India but also globally for the last several decades”, that the second Complainant uses “the registered Trademark and the surname/family name of the Founder/Promoter and Directors of the Complainants, in its corporate names” and that “in the public perception, the mere mention of the name/marks HSIL/SOMANY/SHIL relates the members of the trade as well as customers solely to the Complainants”. The Complainants further contends that even a cursory search on Google would have revealed the existence of the Complainants and, as such, the Respondent had to be aware of the same. The Complainants contend that disputed domain names The Complainants state that the Respondent has no rights or legitimate interests in respect of the disputed domain names, as the acronyms “Hsil” and “Shil” would correspond, respectively, to their registered trademark HSIL and to the common law mark SHIL, used by the Complainants for years to conduct their business. The Complainants also indicate that the Respondents are in no way connected to the Complainants, nor have they ever been authorized or allowed by the Complainants to make use of the trademarks or domain names associated with the Complainants. Moreover, the Complainants contend that the Respondent has never been commonly known by the disputed domain names, nor has it ever traded under the trademarks HSIL or SHIL, does not provide any goods or services under said domain names, nor does it hold any trademark rights in the trademarks HSIL or SHIL. With reference to the bad faith requirement, the Complainants assert that, given the reputation and renown of the trademarks HSIL and SHIL, upon registering the disputed domain names, the Respondent was acting in bad faith as it was no doubt aware of the Complainants and their reputation yet they deliberately registered the disputed domain names with the bad faith intent of profiting from selling the domain names for an amount exceeding the out-of-pocket costs (USD 26.000 each), or of misleading internet users into thinking that the Respondent was in any way connected, endorsed, affiliated, or sponsored by the Complainants. The Complainants further contend that, should the disputed domain names not be transferred to the Complainants, they could be used in a confusing, illegal or damaging manner, harming the Complainants’ reputation. B. Respondent The Respondent denies all the Complainants’ allegations. The Respondent highlights that it registered the disputed domain names in 1999, whilst the first Complainant was named “Hsil Ltd” in 2009 and the first filing of any HSIL trademark on which the Complainants rely date back to 2004. The Respondent also points out that the Complainants never applied for registration of any SHIL mark as an acronym of the second Complainant’s name Somany Home Innovation Ltd, that such company was incorporated only in 2017 and that the Complainants do not claim to have established an online presence prior to 2008. The Respondent further submits that the Complainants falsely included “SHIL Ltd” as an abbreviated form of the second Complainant’s name, since there appears to be no “SHIL Ltd” and the ten registered trademarks in India consisting or comprising of the component SHIL do not belong to the Complainants. With reference to rights or legitimate interests in respect of the disputed domain names, the Respondent underlines that both the domain names were registered in 1999 and that this alone should establish a clear right of priority relative to any evidence of a trademark advanced by the Complainants. The Respondent states that both the disputed domain names The Respondent also underlines that, when it started out in 1998, its business plan already involved the acquisition, development and branding of a number of three and four-letter domain names as local directories and guides in the UK. The Respondent further claims that the use of the disputed domain names in connection with the “health‑club.net” directory network in the early aughts, not only predates any evidence of Complainants’ trademark rights in India but also had nothing to do with the goods and services offered by the Complainants as the Complainants have no business in the UK tourism or tourist business, let alone in the health and sporting facilities business which is the purpose for which the disputed domain names were registered. Thus, the Respondent contends that it used the disputed domain names for a bona fide offering of goods and services and there would have been no reason to be aware of the Complainant at the time of registration. In relation to the Complainants’ allegation concerning the offer for sale of the disputed domain names, the Respondent submits that it is entitled to maintain and/or dispose of its legitimately acquired business assets on whatever commercial terms it sees fit and underlines that it did not register the domain names in 1999 purely for speculative value as domain names per se but deemed that the registrations were consistent with a program of development of acronymic domain names for the above-mentioned purposes. The Respondent further highlights that it never used the disputed domain names for anything to do with the Complainants’ products such as ceramic toilets and kitchenware etc. and has in no way attempted to trade on the Complainants’ reputation, has never attempted to pass itself off as the Complainants, nor has it ever used the disputed domain names to divert consumers to competitive offerings of similar goods or services in which the Complainants collectively trade. With reference to the circumstances evidencing bad faith, the Respondent indicates that bad faith cannot be found where a domain name was registered prior to the establishment of the trade or service mark at issue and that in this case, the Complainants have shown no evidence of a trade or service mark pre-dating registration of either disputed domain name by the Respondent. The Respondent further submits that its registration was entirely consistent with its well-documented business plan involving health and sporting guides in the UK and that the Respondent was unaware of any of the Complainants or their claimed marks until it received the Complaint. Moreover, the Respondent emphasizes that the Complainants’ claim in the trademark SHIL formed in 2017 cannot conceivably have been the basis of the Respondent’s registration of the disputed domain name The Respondent further underlines that the letters “hsil” and “shil” are by no means exclusive or famously associated solely with the Complainants as even a Google search may demonstrate, rebuts the Complainants’ claim that offering the disputed domain names for sale can as such be deemed to indicate that the disputed domain names were registered or are being used in bad faith, and states that, in any case, there is no evidence of the fact that the Respondent has registered or is using the disputed domain names in bad faith. 6. Discussion and Findings 6.1. Preliminary procedural issue: consolidation of multiple Complainants Paragraph 10(e) of the UDRP Rules grants a panel the power to consolidate multiple domain name disputes. At the same time, paragraph 3(c) of the UDRP Rules provides that a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder. Multiple complainants may bring a consolidated complaint against a single respondent if: (i) the complainants either have a specific common grievance against the respondent, or the respondent has engaged in common conduct that affected the complainants’ individual rights in a similar fashion; and (ii) it would be equitable and procedurally efficient (see Section 4.11.1 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). As mentioned above, the first Complainant – which is still mentioned as trademark owner in connection with the trademark registrations for HSIL on which the Complainants rely – demerged in 2018 into two sister companies, i.e., the second Complainant (whose acronym would correspond to “Shil”) and the third Complainant, and such demerger implied the transfer of assets, liabilities, rights and claims such as trademarks and domain names. Based on the records, the Panel is satisfied that the Complainants are closely related corporate entities with a common legal interest in the trademarks and names jointly owned by the Complainants and reproduced in the disputed domain names. Moreover, the Panel finds that it would be equitable and procedurally efficient to proceed to a single decision. 6.2 Substantive Issues According to paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” Paragraph 4(a) of the Policy directs that the Complainants must prove each of the following: (i) the disputed domain names registered by the Respondent are identical or confusingly similar to a trademark or service mark in which the Complainants have rights; (ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and (iii) the disputed domain names have been registered and are being used in bad faith. A. Identical or Confusingly Similar The Complainants rely on word and figurative trademark registrations for HSIL filed in India in 2004 but, besides citing the trademark details, have not submitted the related trademark registration certificates as attachments to the Complaint. However, a search on the online database of the concerned Trademark Office revealed that such trademarks, quoted in Section 4 above, are currently actually registered in the name of the first Complainant. As stated in section 1.1.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the fact that a domain name may have been registered before a complainant has acquired trademark rights does not by itself preclude a complainant’s standing to file a UDRP case, nor a panel’s finding of identity or confusing similarity under the first element. Moreover, as highlighted in section 1.7 of the WIPO Overview 3.0, the first element functions primarily as a standing requirement, and the threshold test for confusing similarity typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name. In the case at hand, the trademark HSIL is entirely reproduced in the disputed domain name In view of the above, the Panel finds that the Complainant has demonstrated that the disputed domain name Based on the records, the Complainants never applied to register the trademark SHIL. The Complainants claim to have common law rights in such trademark as it would correspond to the acronym of the second Complainant “Somany Home Innovation Ltd” by which the company would be commonly known. As indicated in section 1.3 of the WIPO Overview 3.0, “To establish unregistered or common law trademark 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. Relevant evidence demonstrating such acquired distinctiveness (also referred to as secondary meaning) includes a range of factors such as (i) the duration and nature of use of the mark, (ii) the amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public (e.g., consumer, industry, media) recognition, and (v) consumer surveys. […] Specific evidence supporting assertions of acquired distinctiveness should be included in the complaint; conclusory allegations of unregistered or common law rights, even if undisputed in the particular UDRP case, would not normally suffice to show secondary meaning”. The Panel has reviewed the documents and statements submitted by the Complainants in detail and notes that the Complainants have not submitted evidence highlighting the use of the sign SHIL either online or offline apt to demonstrate that the sign has become a distinctive identifier which consumers associate with the Complainants and their products and services. The Panel notes that even if this were the case, the Complaint would fail on other grounds. In view of the above, the Panel finds that the Complainants have failed to demonstrate that the disputed domain name The Complainants must prima facie show that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Respondent may establish a right or legitimate interest in the disputed domain names by demonstrating in accordance with paragraph 4(c) of the Policy any of the following: “(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or (ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or (iii) you are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.” As with each Policy element, the ultimate burden of proof rests on the Complainants. The Complainants’ registered rights and unregistered or common law rights (if any) in HSIL/SHIL are clearly subsequent to the registration of the disputed domains. The Complainants have not submitted any evidence to prove their allegation that Complainant No.1 “Hindustan Sanitaryware & Industries limited” which was incorporated in 1969, was popularly known by the acronym HSIL. Admittedly, Complainant No.1 was renamed to “HSIL Limited” only on March 23, 2009 and Complainant No. 2 Somani Home Innovation Ltd. was incorporated in 2017. Hence, the disputed domain names were both registered before the Complainants acquired any alleged trademark rights in HSIL/SHIL. The Complainants have not made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domains. The Respondent has rebutted the Complainant’s contentions, highlighting that it registered the disputed domain names in 1999, before the alleged filing and use of the Complainants’ trademarks HSIL and SHIL. Unlike the Complainants, the Respondent has provided documentary evidence to support its contentions, including correspondence to use as acronyms for the expressions “Sports/Health in London” and “Health/Sports in London” and with the purpose of using them in the Respondent’s health-club scheme related to the Respondent’s main website at “health-club.net”. The Respondent has also submitted, as Annexes G and H to the Response, pre-complaint evidence of use of the disputed domain names in connection with its business plan, namely web archive extracts of the websites at the disputed domain names from November 15, 2002 and September 27, 2001. The Panel finds that the documents provided qualify as evidence of genuine use and credible sign of pursuit of the Respondent’s business plan. In view of the above, contrary to the Complainants’ conclusory cybersquatting allegations against the Respondent, the Panel notes that the Respondent has instead shown demonstrable use or preparations to use the disputed domain names in connection with a bona fide offering of goods and services. See section 2.2 of the WIPO Overview 3.0. Therefore, the Panel concludes that the Complainants have failed to prima facie demonstrate that the Respondent has no rights and legitimate interests in the disputed domain names according to paragraph 4(a)(ii) of the Policy and that, on the other hand, the Respondent has satisfied the defense under paragraph 4(c)(ii) of the Policy. C. Registered and Used in Bad Faith Paragraph 4(a)(iii) of the Policy requires that the Complainants prove that the disputed domain names were registered and are being used by the Respondent in bad faith. As highlighted above, the disputed domain names were registered in 1999, many years before the first Complainant’s filing of the trademark applications for HSIL in India (in 2004) and the registration of the Complainants’ domain names containing HSIL (in 2005) as well as long before the first claimed use of the SHIL acronym by the second Complainant. Moreover, as stated above, the Complainants have no registered trademark rights in SHIL. Furthermore, based on the records, no evidence has been submitted to demonstrate that the first Complainant was popularly known by the acronym HSIL. Admittedly, the first Complainant was in fact renamed to ‘HSIL Limited’ only on March 23, 2009 and the second Complainant in 2017. Hence, the disputed domain names were both registered before the Complainants acquired any rights in HSIL and SHIL. Therefore, the Respondent could not have been aware of the Complainants and their trademarks at the time of the registration of the disputed domain names (see section 3.8.1 of the WIPO Overview 3.0). In addition to the above, the Complainants did not provide any evidence to show that the disputed domain names were ever used to target the Complainants or their business. It does not appear from the circumstances of the present case that the disputed domains were registered in anticipation of trade mark rights by the Complainants. The disputed domains were registered several years before the Complainants accrued trademark rights in HSIL/SHIL. In such a scenario, registration of the disputed domains and/or their use cannot be held to be in bad faith (section 3.8.1 of the WIPO Overview 3.0). Moreover, the Complainants’ assertion that the disputed domain names are registered in bad faith, is essentially based only on the fact that Respondent is today offering the disputed domain names for sale. However, the Complainants made no allegation and provided no proof that the Respondent ever offered to sell either disputed domain name to any Complainant and there is no element from which the Panel could infer that the Respondent registered the disputed domain names with the intention to sell them to the Complainant or trade off their trademark rights. Previous panels have found that aggregating and holding domain names (usually for resale) consisting of acronyms, dictionary words, or common phrases can be bona fide and is not per se illegitimate under the UDRP (section 2.1 of the WIPO Overview 3.0). In view of the above, the Panel finds that the Complainants have failed to demonstrate that the Respondent registered or used the disputed domain names in bad faith according to paragraph 4(a)(iii) of the Policy. D. Reverse Domain Name Hijacking Paragraph 15(e) of the Rules provides that, 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”. 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”. The Panel also bears in mind that the Complainants in this case are represented by counsel and, therefore, they should be held to a higher standard (see section 4.16 of the WIPO Overview 3.0). The Panel concludes that the Complainants’ actions constitute Reverse Domain Name Hijacking for the following reasons: i) the Complainants, which are represented by counsel, should have appreciated the weakness of its case and the fact that the acronyms “Hsil” and “Shil” encompassed in the disputed domain names could not be exclusively referable to the Complainants, as claimed in the Complaint without any supporting evidence. Given the undertakings in paragraphs 3(b)(xiii) and (xiv) of the UDRP Rules, past panels have held that a represented complainant should be held to a higher standard; ii) the Complainants knew or should have known that the Respondent was not acting in bad faith, especially considering the disputed domain names were registered long before the Complainants acquired trademark rights for the acronym “hsil” and the asserted common law rights for the acronym “shil”; iii) the Complainants should have carried out a minimal due diligence that would have disclosed the fact that the Complainants would not have succeeded in any way under any fair interpretation of the available facts before the filing of the Complaint; iv) the Complainants have not provided evidence to substantiate the critical elements of their case. See Bigfoot Ventures LLC v. Shaun Driessen,WIPO Case No. D2016-1330; the Complainants also appear to ignore settled Policy precedents on a number of issues as highlighted in the sections 6.2.B and C above. v) the Complainants have also provided false information about the inability for any third party to register the acronym “Shil” through the Indian Trademark Office “owing to its well-known status and enormous goodwill” since, as demonstrated by the Respondent (Annex A to the Response), third parties managed to secure trademark registrations for signs identical or similar to SHIL in India. Moreover, the Complainants, through its counsel, attempted to give the impression that the Delhi High Court has upheld the Complainants’ rights in HSIL and SHIL but the supporting documents filed as Annexes P-10 to the Complaint do not pertain to the trademarks HSIL and SHIL but to the Complainants’ trademark HINDWARE. Moreover, a Court order submitted in such Annex does not pertain to a trademark dispute but to a design dispute. In sum, the Complainant’s professional representative betrays an alarming unfamiliarity with the UDRP and the two decades of precedent under it, to the point of including the Registrar as a respondent merely for performing its non-discretionary function of registering an available domain name. Such conduct in any court would result in a swift dismissal and appropriate sanctions for wasting the parties' and the court's time. This Panel is limited to a find of abuse, which it readily imposes. 7. Decision For the foregoing reasons, the Complaint is denied. The Panel also finds that the Complaint was brought in bad faith in an attempt at Reverse Domain Name Hijacking and constitutes an abuse of the administrative proceeding. Luca Barbero Shwetasree Majumder Richard G. Lyon 1 “A panel may undertake limited factual research into matters of public record if it would consider such information useful to assessing the case merits and reaching a decision.” paragraph 4.8 of the WIPO Overview 3.0.
Presiding Panelist
Panelist
Panelist
Date: April 4, 2021
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