The Complainant is Nalli Chinnasami Chetty, India, represented by M/s. De Penning & De Penning, India.
The Respondent is Sambbasivam Nalli, Nalli’s SILKS SARI CENTRE, India, represented by CHADHA & CHADHA, Advocates, India.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 10, 2021. On June 10, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 11, 2021, 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 June 18, 2021 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 June 25, 2021.
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 July 1, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 21, 2021. On July 20, the Respondent requested for an extension of 30 days to submit a Response. On August 2, 2021, the Center granted an extension of 10 days until August 12, 2021. The Response was filed with the Center August 12, 2021. On September 8, 2021, the Complainant filed its unsolicited Supplementary Filing.
The Center appointed Shwetasree Majumder, Maninder Singh, and Vinod K. Agarwal as panelists in this matter on September 15, 2021. On September 15, 2021, the Respondent requested that if the Panel were to accept Complainant’s supplemental filing, an opportunity be also provided to the Respondent to file its rebuttal.
On September 17, 2021, the Center received an email communication from Maninder Singh requesting for his Recusal. On September 20, 2021, the Center informed the Parties of the Recusal. On September 30, 2021, the Center informed the Parties of Notification of Panel Appointment, and Pravin Anand was appointed as a panelist in this matter. 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.
On October 7, 2021, the Panel decided to allow two weeks to submit a Supplemental Filing for the Respondent. Accordingly, the Respondent was requested to submit a Supplemental Filing by October 21, 2021. The Center received the Respondent’s Supplementary Filing on October 21, 2021.
4. Factual BackgroundThe Complainant and Respondent have common ancestry and both share a common surname NALLI.
The Complainant is carrying on a business of manufacturing and marketing goods such as clothing and readymade garments under the mark NALLI. The Complainant has registered the mark NALLI in several countries including India, for example Indian trademark No. 472754 NALLI, filed on May 27, 1987.
The Respondent too has been using the mark NALLI in relation to manufacturing and trading of silk sarees and textile piece goods. The Respondent also has trade mark registrations for figurative mark NALLI’S, filed on September 10, 1993.
There are several legal proceedings pending between the Complainant and Respondent in various forums in India such as trade mark oppositions, appeals, writ petitions including the suit for infringement and passing off before the Bombay High Court, all with respect to the mark NALLI.
The Complainant’s rights in its trade mark NALLI have been recognized in a previous WIPO decision, being M/s Nalli Chinnasami Chetty v. Nalli’s Silks Sari Centre,WIPO Case No. D2009-0664. In the said case, the present Respondent’s domain name
The Complainant is carrying on a business of manufacturing and marketing various goods such as clothing. The Complainant is the first adopter and the original proprietor of the trade mark NALLI. The Complainant is also doing business through its website “www.nalli.com”. The said domain name was registered on April 28, 1998. The Complainant claims the usage of the trade mark NALLI since 1928. The Complainant has provided evidence of having registered the trade mark NALLI in several countries including India.
The Complainant’s rights in its trade mark NALLI have been recognized in a previous WIPO decision, being M/s Nalli Chinnasami Chetty v. Nalli’s Silks Sari Centre,WIPO Case No. D2009-0664, wherein the domain name
The Respondent and Complainant have a common ancestor, late Shri Nalli Chinnasamy Chetty who is also the grandfather of the Respondent. Both, Respondent, and Complainant share a common surname NALLI.
In or around 1956, Mr. Nalli Chinnasamy Chetty, during his lifetime started a business under the name of Nalli Chinnasamy Chetty & Co., along with Respondent’s father. The mark NALLI has been continuously used by the Respondent in relation with manufacturing and trading of silk sarees and textile piece goods. The Respondent for the past several years earned goodwill and reputation in the market in the said business. The Respondent started another firm in 1981 under the name “Nalli’s Silks Sari Centre” which is also been in operation since. The Respondent has submitted sales and advertisement figures for its business under the mark NALLI.
Respondent argues that it has an absolute right to use their own surname for any kind of business. The Respondent has secured trade mark registrations for NALLI in several countries including India. The earliest trade mark registration is the Indian trade mark No. 366240, filed on September 17, 1980 and although this stands removed from the Registrar of Trade Marks, the Respondent indicated that he has filed an appeal against the order of the Registrar of Trade Marks. The Respondent does have an Indian trade mark registration No. 606409 for the figurative mark NALLI’S filed September 10, 1993 claiming use since the year 1981.
The Respondent has relied on the WIPO decision in Nalli Chinnasami Chetty v. Anthony Nalli, FourPoints Multimedia Corp,WIPO Case No. D2019-2642, where the Panel found of Complainant guilty of reverse domain name hijacking where the disputed domain name was
i. The Complainant did not disclose to the Panel about the concurrent use of the mark NALLI and NALLI’S by the Respondent for many years.
ii. The Complainant has concealed the fact that they had entered into a co-existence agreement with the Respondent’s sister concern in Singapore and had entered settlement deed for registration of mark NALLI in a stylized manner to such concern. The proceedings before Singapore High Court, clearly show concurrent use of the said mark and coexistence of the two entities in the world market for over 2 decades.
iii. The Complainant is not the exclusive owner of the mark NALLI as there are multiple proceedings pending against the Complainant before different forums including the one pending before the Bombay High Court.
iv. Being subject matter of ongoing court proceedings, Complainant’s list of marks should not be the basis of a finding as their validity is under question.
v. In the previous WIPO decision, the domain name
The Complainant has admitted to the common ancestry of the Complainant and the Respondent and has given details thereof in a family tree.
The Complainant submits that the Respondent is not entitled to use his surname as a trade mark but only as a surname. The Complainant has argued that by virtue of a Settlement Deed dated January 19, 1948 executed by Mr. Nalli Chinnaswamy Chetty, the Complainant is the sole owner and proprietor of the trade mark NALLI.
Complainant has not denied the multiple legal proceedings between the Parties which have been brought to this Panel’s attention by the Respondent. It is the Complainant’s case that “while there are several legal proceedings pending between the parties in various forums such as oppositions, appeals, writ petitions including the suit for infringement and passing off filed by the Complainant against the Respondent before the Bombay High Court with respect to the mark NALLI, the Respondent has deliberately registered the present domain name recently in order to create multiplicity of proceedings”.
D. Respondent’s Supplementary FilingRespondent has denied that by virtue of the registered Settlement Deed executed by Mr. Nalli Chinnaswamy Chetty, the Complainant is the sole owner and proprietor of the mark NALLI. In respect to the Settlement Deed relied upon by the Complainant, the Respondent has stated that it was not the intention of Mr. Nalli Chinnaswamy Chetty to exclusively grant any right over word NALLI.
The Respondent has alleged that the Complainant has not proven its alleged exclusive right over the mark NALLI to the exclusion of Respondent being from the same common ancestor.
The Respondent has submitted that the proceedings are still pending before Intellectual Property Appellate Tribunal and the High Court on the issue of Respondent’s right to use the mark NALLI and that the Complainant is trying to mislead the present Panel by providing misleading statements.
The Respondent has submitted a copy of Complainant’s affidavit which was filed before the Singapore High Court. The Respondent further states that in the affidavit, the Complainant has accepted that “the name NALLI has thus become common to all members of the Nalli family and is freely used by all such members.”
6. Discussion and FindingsUnder paragraph 4(a) of the Policy, the Complainant must prove, each of the following three elements required hereunder by a preponderance of evidence:
i. the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant 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.
A. Identical or Confusingly SimilarParagraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The requirements of paragraph 4(a) of the Policy are conjunctive. A consequence of this is that failure on the part of a Complainant to demonstrate one element of the Policy will result in failure of the complaint in its entirety. Accordingly, in light of the Panel’s finding below on registration and use in bad faith, it is unnecessary for the Panel to address the issue of the Complainant’s rights in the mark NALLI.
B. Rights or Legitimate InterestsLikewise, in light of the Panel’s finding below it is unnecessary for the Panel to address the topic of the Respondent’s rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad FaithAs the above factual recitation makes it clear that this is not a garden-variety cybersquatting case. In fact, it is not a cybersquatting case at all. The only arguable reason that the Complainant is seeking relief in this forum is that the property at issue is a domain name. This Panel finds that it will be prudent for a court of competent jurisdiction in India, such as the Bombay High Court, where various disputes inter se the Parties are already pending to adjudicate the rights of the Parties in the mark NALLI.
There are far wider issues which have been placed before the Panel in the present case. These issues, whether characterized as being of a commercial or a family law nature, are not suited for resolution under the Policy, which is designed to address clear cases of abusive cybersquatting (see, for example, the observations of prior UDRP panels in The Thread.com, LLC v. Jeffrey S. Poploff,WIPO Case No. D2000-1470, Kurt Garmaker d/b/a “Repitition Miniature Schnauzers” v. Hilde Haakensen, Axcium Design,WIPO Case No. D2015-0993, and IL Makiage Cosmetics (2013) Ltd. v. Mark Rumpler / Mordechai Rumpler / Domains By Proxy, LLC,WIPO Case No. D2015-2311).
In these circumstances, the Complaint under the Policy must fail. In reaching that conclusion, the Panel takes no position on the merits of any wider dispute between the Parties. The Complainant remains free to seek remedies in other fora and the Panel notes for completeness that the present finding is confined to the Policy and that it does not seek to influence any such subsequent proceedings, should they be raised.
7.DecisionFor the foregoing reasons, the Complaint is denied.
Shwetasree Majumder
Presiding Panelist
Pravin Anand
Panelist
Vinod K. Agarwal
Panelist
Date: November 24, 2021