Complainant is Nalli Chinnasami Chetty, India, represented by De Penning De Penning, India.
Respondent is Zhuxin Peng, China.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 24, 2021. On November 24, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 26, 2021, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. The Center sent an email communication to Complainant on November 26, 2021 regarding the clarification of a compliance matter, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on November 29, 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 Respondent of the Complaint, and the proceedings commenced on December 3, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 23, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 29, 2021.
The Center appointed Clive L. Elliott Q.C. as the sole panelist in this matter on January 20, 2022. 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 BackgroundComplainant is a father and son partnership firm having its office in Chennai, India. Complainant manufactures and markets various goods such as clothing and readymade garments, fashion accessories, and textile goods under the trade mark NALLI (“Complainant’s Mark”). Complainant’s Mark has been used on Complainant’s products since 1935.
Complainant is the registered owner of Complainant’s Mark in a number of jurisdictions, including:
Jurisdiction Registration No. Registration Date/Valid until Date ClassIndia
423857
July 2, 1984
12
United States
2444608
April 17, 2001
24, 25
European Union
001373786
March 7, 2005
24, 25
Australia
602236
May 12, 1993
25
Canada
TMA482448
September 11, 1997
24
Sri Lanka
67348
July 12, 2023
24
Singapore
T1203648D
March 16, 2012
35, 40, 42
Mauritius
15764/2014
September 5, 2023
14
New Zealand
761744
December 3, 2013
14
United Kingdom
1518192
November 10, 2029
25
Complainant operates its business through its website “www.nalli.com” which was registered on April 28, 1998.
According to the publicly available WhoIs, the Domain Name was registered on October 19, 2021. Complainant provided evidence that the Domain Name resolved to a website offering goods in the same business area as Complainant. At the time of the Decision, the Domain Name does not resolve to an active website.
5. Parties’ Contentions A. ComplainantComplainant states that it has devoted enormous amounts of time, effort, and energy into promoting and advertising Complainant’s Mark in print and online media and, as a consequence, Complainant’s Mark is identified solely with Complainant. Complainant goes on to state that its rights in Complainant’s Mark has also been recognized in previous WIPO decisions.
Complainant contends that the Domain Name is confusingly similar to Complainant’s Mark in that it contains Complainant’s Mark in its entirety with the addition of the letter “o”. Complainant asserts that despite the addition of the letter “o” there is still a high degree of similarity between the Domain Name and Complainant’s Mark, which may induce members of the public and trade into believing that Respondent has a trade connection or relationship with Complainant, when it does not.
Complainant states that Respondent is not licensed or otherwise permitted to use Complainant’s Mark or to apply for any domain name incorporating Complainant’s Mark.
Complainant goes on to claim that the Domain Name has been registered in bad faith, especially taking into account Complainant’s reputation and goodwill, incessant use and registration of Complainant’s Mark in India and foreign jurisdictions, and as such Respondent ought to have known of Complainant’s rights in Complainant’s Mark. Further, Complainant claims that Respondent intends to misrepresent an association with Complainant and divert Internet users at the Domain Name to competing goods.
B. RespondentRespondent did not reply to Complainant’s contentions.
6. Discussion and Findings A. Identical or Confusingly SimilarComplainant has provided evidence of various trademark registrations for Complainant’s Mark.
The Domain Name reproduces Complainant’s Mark in its entirety, along with the letter “o”. As such, Complainant’s Mark is clearly recognisable in the Domain Name. The addition of the letter “o” does not prevent a finding of confusing similarity.
The Domain Name is therefore confusingly similar to Complainant’s Mark.
The first ground under the Policy is made out.
B. Rights or Legitimate InterestsComplainant submits that Respondent is not licensed or otherwise permitted to use Complainant’s Mark or to register any domain name incorporating Complainant’s Mark. The Panel finds that Complainant has put forward a prima facie case that Respondent lacks rights or legitimate interests in the Domain Name. That is, as it has not used the Domain Name in connection with a bona fide offering of goods and services, nor a legitimate noncommercial or fair use.
In the absence of any permission or authorisation from Complainant to use Complainant’s Mark, along with Respondent’s failure to respond to Complainant’s allegations, the Panel accepts the argument that use of the Domain Name by Respondent is likely to result in consumers being confused into believing that the Domain Name is connected to Complainant, when that is not the case.
Under the circumstances, the Panel concludes that the Domain Name was not registered and has not been used for any legitimate noncommercial or fair purpose.
Respondent has not rebutted Complainant’s prima facie case that Respondent lacks rights or legitimate interests in the Domain Name.
Accordingly, the second ground under the Policy is made out.
C. Registered and Used in Bad FaithComplainant submits that the Domain Name has been registered in bad faith, given Complainant’s reputation and goodwill, and due to its incessant use and registration of Complainant’s Mark in India and foreign jurisdictions. On that basis, Complainant argues that Respondent knew or should have known of Complainant’s rights in Complainant’s Mark.
In the absence of any attempt to refute this allegation and in light of Complainant’s long-standing use of Complainant’s Mark, the Panel is satisfied that the Domain Name was registered in bad faith.
Complainant provided evidence that the Domain Name previously resolved to a website offering competing goods without any explanation of the relationship (or lack thereof) with Complainant. In the context of this case, it appears that Respondent has used the Domain Name in bad faith by intentionally attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s Mark.
Furthermore, the Panel notes that the Domain Name does not currently resolve to an active website. In that regard, whether or not the Domain Name resolves to any active website is not determinative. Past UDRP panels having noted that the word bad faith “use” in the context of Policy paragraph 4(a)(iii) does not require a positive act on the part of a respondent and that passively holding a domain name may constitute bad faith use: See Telstra Corporation v. Nuclear Marshmallows,WIPO Case No. D2000-0003.
Complainant has therefore established the third ground under the Policy.
7. DecisionFor the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name
Clive L. Elliott Q.C.
Sole Panelist
Date: February 3, 2022