The Complainant is Lyca Productions Private Limited, India, represented by Eshwars - House of Corporate and IPR Laws, India.
The Respondent is Louis Caous, Netherlands, self-represented.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 25, 2021. On October 25, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 25, 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 November 4, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 25, 2021. The Respondent submitted a response on November 13, 2021. The Complainant submitted a supplemental filing on November 23, 2021.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on November 26, 2021. 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 BackgroundThe Complainant is a film and media production company first organized under Indian law in 2007, originally as “Gnanam Productions Private Limited”, with a registered office in Chennai, India. It is part of the British-headquartered Lyca Group of companies, which operates in fields as diverse as telecommunications, entertainment, healthcare, and financial services. The Complaint and supplemental filing variously state that the Lyca Group has been using LYCA trade names and marks since 2003 or 2006. These include Lycamobile (an international mobile telephone prepaid service that has been doing business in the Netherlands, where the Respondent resides, since 2006), LYCAHEALTH, LycaRadio, LycaDilse, LYCACHAT, LYCATALK, LYCATEL, LycaTV, LYCAFLY, LYCAMONEY (now inactive), Lycadigital, Lycalotto, and Lycaremit. The Complaint states that the Lyca Group collectively serves “over 15 million consumers in at least 23 countries”.
According to the Complaint, the media and entertainment services of the Lyca Group began using the name “Lyca Productions” in 2006, but the Complaint attaches no supporting documentation for this assertion. The record does include a “Fresh Certificate of Incorporation Consequent upon Change of Name”, documenting the change of the Complainant’s name to “Lyca Productions Private Limited” on October 30, 2013. The Complaint explains that the name change was meant to emphasize the Lyca Group’s LYCA brand.
The Complainant describes its business as “production, distribution and marketing of cinematographic films, including feature films, motion pictures, advertisement films, television serials, music videos etc., for world-wide exploitation on all formats.” The record includes evidence of Indian and international publicity and media recognition of the Complainant from 2014 through 2021, referring to “Lyca” or “Lyca Productions”. The Panel notes that the Wikipedia article on “Lyca Productions” refers to the Complainant being “established” in 2014 and provides a history of productions and distribution only from 2014 onward. This is consistent with the description in the “About Us” page on the Complainant’s website at “www.lycaproductions.in”:
“Lyca Productions is an Indian entertainment company, which was established by Subaskaran Allirajah in 2014. A subgroup of Lycamobile, the production studio has been involved in the production and distribution of films made in South India.”
The Complaint includes a list of nearly 200 other “lyca” formative domain names held by the Lyca Group in addition to the one associated with the Complainant’s website. These are used for other businesses in the Lyca Group or redirect to the websites of those businesses.
The Complainant holds several Indian trademark registrations, including Registration Number 4490996 (registered April 24, 2020) for LYCA PRODUCTIONS as a word mark. Another member of the Lyca Group, Pettigo Comercio Internacional Lda (“Pettigo”), which owns many LYCA marks listed in an annex to the Complaint, holds European Union Trademark Number 013470208 (registered March 31, 2015) for LYCA PRODUCTIONS as a word mark. A letter of authorization in favor of the Complainant is included in the record. One of the earlier registrations held by Pettigo is for LYCA as a word mark, European Union Trademark Registration Number 004658951 (registered September 20, 2006).
The Registrar reports that the Domain Name was registered on March 19, 2011 and that it is registered to the Respondent Louis Caous, an individual in the Netherlands. The Response attaches invoices showing that the Respondent purchased the Domain Name in March 2011 and renewed the registration through the present time. The Response states that the Respondent is in the “software and web design business” and planned to use the Domain Name for a company with the same name, based on “the first two letters of his girlfriend’s last name (LY) and his own last name CAous”. The Response supports this statement by attaching an extract from the Netherlands Chamber of Commerce Trade Register (Uittreksel Handelsregister Kamer van Koophandel) showing that the Respondent registered the business “Lyca Productions” as a sole-proprietorship (“Eenmanszaak”) on May 21, 2013, giving an address in Purmerend, North Holland, Netherlands. The Response also attaches an extract showing the registration of the business “ANHLY the key to beauty” at the same address in Purmerend, North Holland, by Lan Anh Ly on July 26, 2011; the Response identifies this as the Ms. Ly whose name forms part of the Domain Name. Both business registrations were shown as valid in November 2021 when accessed for the record in this proceeding.
The Respondent states that the Domain Name has been used continuously for business email addresses in the Respondent’s software and web design business. The Domain Name was also used for a time for a multi-page website in Dutch and English advertising the business of “Lyca Productions”, offering “Custom Software” and “Web Design”. The Response attaches a screenshot of this website (the “Respondent’s website”) from August 2018. The Panel notes that similar screenshots from 2018 and 2019 found through the Internet Archive’s Wayback Machine. The Response states that the Respondent ceased advertising its business under the name “Lyca Productions” after December 2019 but continues to use the Domain Name for email relating to “software maintenance subscriptions, support and business proposals”.
The Complainant discovered that the Domain Name was registered but not used for an active website. The Complainant contacted the Respondent by email in June 2021 and demanded the transfer of the Domain Name, referring to the Complainant’s trademarks. The Respondent indicated that he had not planned to sell the Domain Name but might do so for the “right price”. The Complainant offered to reimburse the Respondent’s registration costs, and later offered to reimburse “maintenance costs” as well. The parties did not reach an agreement, and this proceeding followed.
5. Parties’ Contentions A. ComplainantThe Complainant argues as follows:
“the Respondent has purchased the disputed domain name being very well aware of the fact that it contains the Lyca Mark belonging to the Lyca Group, and around the same time that the Lyca Group was looking to rename its business in India, the Respondent purchased the disputed domain name. It is also important to note that the Lyca Group, through Lycamobile B.V., has been conducting business in the Netherlands as well, which prima facie evidences the fact that the Lyca Group has been conducting business under the well-known trademark and service mark Lyca in the Netherlands, which in turn clearly establishes the fact that the Respondent was aware of the existence of the usage of the mark Lyca in the Netherlands, being the country in which the Respondent is domiciled.”
“Moreover, the fact that the Respondent has taken an uncompromising stance on this issue suggests that he has been waiting all along for the Complainant to approach him with a huge sum of money in exchange for the disputed domain name.”
The Complainant argues that there is no evidence that the Respondent has been commonly known by a corresponding name or has used the Domain Name for a bona fide commercial offering or noncommercial fair use. Instead, the Complainant characterizes the Respondent’s choice of the Domain Name as “opportunistic bad faith” in an effort to extort an excessive purchase price from the Complainant. As the Respondent has not put the Domain Name to use, the Complainant cites the “passive holding” doctrine articulated in Telstra Corporation Limited v. Nuclear Marshmallows,
WIPO Case No. D2000-0003 (Telstra).
The Complainant also argues that the Panel should infer bad faith from the Respondent’s use of a domain privacy service, but it appears that the Complainant misapprehends the facts in this instance. The registration details in the Registrar’s WhoIs database were “Redacted for Privacy”, as is somewhat customary nowadays, primarily in reaction to data protection laws. The Complainant was able to contact the registrant through the Registrar, and the Registrar has identified the registrant in this proceeding.
In its supplemental filing, the Complainant emphasizes its earlier-established LYCA mark and argues that the Respondent must have been aware of it when it registered the Domain Name. The Complainant argues that because the Response acknowledges that the Respondent stopped doing business as “Lyca Productions” after 2019, there was no reason to hold the Domain Name and refuse to transfer it to the Complainant other than for “unjust enrichment”, which is proof of the Respondent’s bad faith.
B. RespondentThe Respondent does not challenge the Complainant’s trademark rights but observes that the Complainant did not apply to register LYCA PRODUCTIONS marks until 2014, which is after the Respondent registered the Domain Name and also registered the “Lyca Productions” business name in the Netherlands. The Respondent denies choosing the Domain Name (and other “lyca” formative domain names registered at about the same time) to target the Complainant, which is not a competitor. Instead, the Domain Name was chosen as a composite of the Respondent’s name and his girlfriend’s and was to be used for the Respondent’s software and web design business. The Respondent later registered that business with the Dutch Chamber of Commerce. The Respondent operated an associated website for a time and continues to use the Domain Name for business email.
6. Discussion and FindingsParagraph 4(a) of the Policy provides that in order to divest a respondent of a domain name, a complainant must demonstrate each of the following:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Under 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”.
6.1 Preliminary Matter: Supplemental FilingThe Complainant submitted a supplemental filing. Neither the Rules nor the Supplemental Rules make provision for supplemental filings, except at the request of the panel (see Rules, paragraph 12). Paragraph 10 of the Rules enjoins the panel to conduct the proceeding “with due expedition”. Therefore, UDRP panels are typically reluctant to countenance delay through additional rounds of pleading and normally accept supplemental filings only to consider material new evidence or provide a fair opportunity to respond to arguments that could not reasonably have been anticipated. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.6.
The Panel disregards efforts to re-argue points in Complaint, but the Panel accepts the supplemental filing here to the extent it addresses the Respondent’s discussion of the facts surrounding the registration and use of the Domain Name, because those are facts that were not previously available to the Complainant.
6.2 Substantive Issues A. Identical or Confusingly SimilarThe first element of a UDRP complaint “functions primarily as a standing requirement” and entails “a straightforward comparison between the complainant’s trademark and the domain name”. See WIPO Overview 3.0, section 1.7. The Complainant or affiliates hold trademark registrations for LYCA and LYCA PRODUCTIONS as word marks. The Domain Name is identical to LYCA PRODUCTIONS and confusingly similar to LYCA. As usual, the generic Top-Level Domain (“gTLD”) “.com” is disregarded as a standard registration requirement. See id. section 1.11.2.
Accordingly, the Panel finds that the Domain Name is confusingly similar to the Complainant’s mark for purposes of the Policy, paragraph 4(a)(i) and concludes that the Complainant has established the first element of the Complaint.
B. Rights or Legitimate InterestsParagraph 4(c) of the Policy gives non-exclusive examples of instances in which a respondent may establish rights or legitimate interests in a domain name, by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s 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) that the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial 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.
Because a respondent in a UDRP proceeding is in the best position to assert rights or legitimate interests in a domain name, it is well established that after a complainant makes a prima facie case, the burden of production on this element shifts to the respondent to come forward with relevant evidence of its rights or legitimate interests in the domain name. See WIPO Overview 3.0, section 2.1.
The Complainant has established trademark rights, a lack of permissive use, and the absence of an associated website at the time of this proceeding. This shifts the burden to the Respondent.
The Response demonstrates that the Respondent made use of the Domain Name in connection with a bona fide offering of software and web design services, with an associated website, in 2018 and 2019, with a corresponding registered business name. This activity could normally suffice to establish rights or legitimate interests under the Policy, paragraph 4(c)(i) and (ii), except that the Response acknowledges that the “Respondent ended his[] business activities on 2019-12-31” and as is summarized in the WIPO Overview 3.0, section 2.11, “Panels tend to assess claimed respondent rights or legitimate interests in the present, i.e., with a view to the circumstances prevailing at the time of the filing of the complaint.” At this time, the Respondent is not operating a business called “Lyca Productions” and does not indicate plans to do so in the future, much less offer evidence of “demonstrable preparations” as contemplated by paragraph 4(c)(i) (see id., section 2.2). The fact that there are business correspondents who still communicate with the Respondent via email at addresses using the Domain Name relating to “software maintenance subscriptions, support and business proposals” does however show use of the Domain Name sufficient to rebut the Complainant’s prima facie case.
In any event, as noted in WIPO Overview 3.0, section 2.11, “Panels will often also consider any evidence of previous legitimate use under the third UDRP element.” That consideration follows in the next section and is dispositive of the Complaint without the necessity of reaching a decision on the second element.
C. Registered and Used in Bad FaithThe Policy, paragraph 4(b), furnishes a non-exhaustive list of circumstances that “shall be evidence of the registration and use of a domain name in bad faith”, including the following (in which “you” refers to the registrant of the domain name):
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or …
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.
The Respondent could hardly have targeted the Complainant’s LYCA PRODUCTIONS mark, because the Respondent registered the Domain Name in March 2011, before the Complainant began operating as “Lyca Productions”, applied for a mark, or registered a corresponding domain name, and four years before the Complainant’s affiliate obtained the first trademark registration for LYCA PRODUCTIONS. The Complainant infers bad faith because the Domain Name registration was “around the same time that the Lyca Group was looking to rename its business in India”, but of course this is highly speculative. The Complainant offers no evidence of the Respondent’s insider knowledge or examples of media coverage in 2011 about such a name change, which did not occur until more than two years later. See WIPO Overview 3.0, section 3.8.2 (domain names registered in anticipation of trademark rights). A Dutch software and web design consultant would have no particular reason to be au courant with the Tamil film industry gossip. Absent evidence to the contrary, the Respondent’s reasons for choosing the Domain Name must be considered more credible than the Complainant’s theory.
Unsurprisingly, the Complainant’s supplemental filing shifts to an argument that the Respondent must have had the Lyca Group’s LYCA trademark in contemplation when registering the Domain Name in 2011. The Complainant claims that this mark was in use as early as 2003. In any event, an affiliate had LYCA registered as a European Trademark by 2006, and Lycamobile was offering service in the Netherlands by then. It is possible but not inevitable that the Respondent was aware of LYCA as a mark. The Respondent did not compete in the telecommunications business, and it is not clear that the LYCA mark would attract business to a small software consultancy. The Respondent claims a different motivation for registering the Domain Name. The Response demonstrates that the Respondent actually registered a business with a corresponding name and had a plausible reason for choosing that name, based on the names of two individuals who have used parts of their names as business names. The Response documents that the Respondent also registered other domain names corresponding to the business name “Lyca Productions”:
Over the course of a decade, the Respondent did not park the Domain Name for competitive advertising or contact the Complainant to sell the Domain Name or the other “lyca” domain names. The Respondent established a business with a corresponding name and actually operated an associated website, which it closed down at the end of 2019, retaining email use of the Domain Name. This is not a typical Telstra passive-holding case, then, as the Complainant asserts. See WIPO Overview 3.0, section 3.3. The Respondent planned use of the Domain Name, made use of it for a website, and continues to use it for business email. And it is not the case that there is “no conceivable” legitimate use of the Domain Name other than by the Complainant; the Respondent had and has a valid Dutch business registration for “Lyca Productions”, for example, antedating the Complainant’s LYCA PRODUCTIONS trademark registrations.
The Panel finds that the Respondent’s conduct with respect to the Domain Name and the other “lyca” formative domain names is more consistent with the Respondent’s explanation of original intentions and changed business plans, as opposed to the Complainant’s narrative.
The Panel concludes that the Complainant has not established the third element of the Complaint.
7. DecisionFor the foregoing reasons, the Complaint is denied.
W. Scott Blackmer
Sole Panelist
Date: December 20, 2021