The Complainants are Kent RO Systems Limited, India and Mahesh Gupta, India, represented by Vutts & Associates LLP, India.
The Respondent is Iqbal Khan, Al Tareeq Allamee Tr. Est, United Arab Emirates (“UAE”). 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 6, 2021. On April 6, 2021, the Center transmitted by email to AE Domain Administration (.aeDA) a request for registrar verification in connection with the disputed domain name. On April 7, 2021, AE Domain Administration (.aeDA) 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 UAE Domain Name Dispute Resolution Policy for – UAE DRP approved by .aeDA (the “Policy”), the Rules for UAE Domain Name Dispute Resolution Policy – UAE DRP (the “Rules”), and the Supplemental Rules for UAE Domain Name Dispute Resolution Policy – UAE DRP (the “Supplemental Rules”). In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 13, 2021. In accordance with the Rules, paragraph 5(a), the due date for Response was May 3, 2021. The Center received an email communication from the Respondent on April 14, 2021 and two additional email communications on April 16, 2021. The Complainants submitted a supplemental filing on April 17, 2021. On the same date, the Respondent submitted a supplemental filing. The Center notified the commencement of Panel appointment process on May 5, 2021. The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on May 12, 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 Background The Complainants are engaged in a range of business activities, notably the manufacture and supply of water purifiers. The second Complainant is the Chairman and Managing Director of the first Complainant and is an inventor responsible for some of the inventions marketed by the first Complainant. The Complainants submitted extensive evidence showing that in one legal format or another, encompassing partnerships and limited companies, the Complainants and their predecessors in interest have carried on business under the name “Kent” in India since 1988. In the remainder of this Decision, the Complainants will be referred to as “the Complainant” for convenience. The Complainant today is one of the largest manufacturers of water purifiers in India and its KENT branded products are available in some 59 countries including the United Arab Emirates, where the Respondent is based. The Complainant’s turnover in the UAE in 2019-2020 was INR 837.6 billion. The Complainant’s distributor in the UAE is Aqua Care Trading LLC of Dubai, UAE. In total, the Complainant has a distribution network of over 4,000 distributors, 16,000 dealers, and over 600 direct marketing franchises. The Complainant has received multiple awards for its products from 2006 to date. The Complainant works with various celebrities as brand ambassadors to promote its products. The Complainant’s official websites are found at “www.kent.co.in” and “www.kentrosystems.com”. The Complainant’s KENT trademark is registered in multiple jurisdictions, including Indian trademark registration no. 1442714 for the mark KENT registered on April 5, 2006, and Indian trademark registration no. 883459 for the mark KENT R-O WATER MAKER, registered on October 26, 1999. The disputed domain name was registered on July 14, 2020. Although various emails have been submitted by the Respondent in response to the notification of the Complaint, little is known regarding the Respondent itself. No formal Response was filed. The registrant name as verified by the Registrar suggests that the Respondent may be an individual, while the organization name field appears to be part of an address rather than an entity name. Furthermore, the content of the Respondent’s emails, all of which were unsigned apart from the final one, which was signed “Team Aqua Pure UAE”, suggest that the Respondent may have registered the disputed domain name on behalf of a company named Aqua Pure Water Treatment Equipment Trading LLC with an address in Dubai, UAE. The website associated with the disputed domain name is entitled “Kent RO UAE | Kent RO System in Dubai, Sharjah, UAE”. It features images of the Complainant’s brand ambassador and the Complainant’s “Kent Elite II”, “Kent Pearl”, and “Kent Superb” products, among others. The “About Us” section of the website states “Kent RO Systems is expert in Sales, Services & AMC company with a vision to make the world a healthy and a happy place. Pioneers in bringing the revolutionary Reverse Osmosis (RO) technology to UAE, Kent RO started its operations from Dubai, UAE in 2012”. There are at least two further “About Us” sections giving different descriptions, namely “Kent RO Systems Limited is a 21st century healthcare products company[…]” and “Kent RO Systems Limited is a 21st century social insurance items organization[...]”. Each of these sections notes that “Kent RO started its operations from Dubai, UAE in 1999”. Visitors to the Respondent’s website are invited to obtain a callback or to make contact to “speak to one of our advisers”. With its initial email, the Respondent provided an undated letter bearing to be on letterheaded notepaper from the Complainant’s said distributor in the UAE which stated “Dear Customer(s), / Please be advised that the Kent products which are been sold to M/s Aqua Pure Water Treatment Equipment Trading LLC is all genuine and can confirm that it is originating from Kent RO Systems from India. / Looking forward to your valuable comments and orders all time. / Thanking you, / Best Regards, / For: [illegible signature] / (Aqua Care Systems) / Distributor of Kent Products”. In its supplemental filing, the Complainant produced a letter on letterheaded notepaper bearing to be from its said distributor in the UAE, dated April 17, 2021, which stated that said distributor had not authorized M/s Aqua Pure Water Treatment Equipment Trading LLC and/or Mr. Iqbal Khan in the UAE to sell or distribute the products of Kent RO Systems Limited, India, in the UAE. The letter also confirmed that said distributor had not issued any letter to M/s Aqua Pure Water Treatment Equipment Trading LLC and/or Mr. Iqbal Khan on its letterhead nor had authorized either of them to register any domain name containing the KENT mark. In response to the Complainant’s supplemental filing, the Respondent produced a letter on letterheaded notepaper from a company named Aqua Life Water Treatment Equipment Trading LLC headed “AUTHORISED DISTRIBUTOR LETTER” and stating that Aqua Pure Water Treatment Equipment Trading LLC “has the responsibility to promote, distribute, sale and offer technical assistance for KENT RO PURIFIERS and They Can do Promote on Digital marketing with Kentrouae.ae & Other website related to business. This agreement is valid until December-2022 [...].” Along with said letter, the Respondent produced a copy in Arabic of UAE registered trademark no. 321740 for KENT HEALTHY WATER RO SYSTEM. In exercise of its powers in terms of paragraph 10 of the Rules, the Panel has conducted limited factual research into matters of public record in order to verify said trademark via the “WIPO Global Brand Database”. Said trademark appears prima facie to be valid, having been filed on December 5, 2019 and registered on March 5, 2020. The registrant name is in Arabic, which the Panel does not read, although machine translation suggests that the owner of said mark may be Aqua Life Water Treatment Equipment Trading LLC. 5. Parties’ Contentions A. Complainant In summary, the Complainant contends as follows: Identical or confusingly similar The Complainant’s KENT trademark is incorporated in the disputed domain name in its entirety. This is sufficient to establish that the disputed domain name is confusingly similar to the Complainant’s mark. The top-level suffix “.ae” should be disregarded for the purposes of comparison. The presence of KENT and “kent ro” (also found in the Complainant’s domain names) in conjunction with descriptive elements results in an inevitable association with the Complainant. The Complainant’s mark has achieved notoriety and significant reputation and goodwill by virtue of sales in the UAE, such that it is likely that consumers searching for “kent ro” in the UAE would believe there is a real connection between the disputed domain name and the Complainant. The Respondent is relying on such confusion to profit from the disputed domain name. Rights and legitimate interests The Respondent’s sole motivation is to trade off the immense recognition of the Complainant’s mark. The disputed domain name is providing unauthorized products and services in the name of the Complainant’s company. There is an absence of any commercial relationship between the Parties which would allow the Respondent to use the Complainant’s mark. The Respondent is not sponsored or affiliated in any way with the Complainant, nor commonly known by the disputed domain name. The Complainant has not licensed or given permission to the Respondent to use the Complainant’s trademark in any manner. The Respondent’s website has copied the picture of the Complainant’s brand ambassador, the famous Indian actor Hema Malini. The sole purpose for registration of the disputed domain name is to profit illegitimately from its association with the Complainant by relying on consumer confusion. Registered or used in bad faith The Respondent’s primary purpose for registering the disputed domain name is to benefit from the Complainant’s reputation and goodwill through misleading the Complainant’s consumers to believe that the Respondent’s products and services are those of the Complainant. The Respondent’s activities are intended to draw consumers away from the Complainant’s official websites. The fact that the Respondent is providing unauthorized products and services referencing the Complainant’s business demonstrates that the Respondent had knowledge of the Complainant’s mark and intended to disrupt or profit from the Complainant’s business. The Respondent has copied the exact names of the Complainant’s products on the website associated with the disputed domain name. The Respondent has not included any disclaimer on its website regarding its non-existing relationship with the Complainant. The Respondent has intentionally attempted to attract, for commercial gain, Internet users to the disputed domain name by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the product or service on the corresponding website. The Complainant’s reputation and goodwill has spread across the world, and it has substantial exports to the UAE. A mere glance at the Respondent’s website makes it evident that the Respondent is attempting to portray an association with the Complainant for a sizable monetary benefit. B. Respondent The Respondent did not reply to the Complainant’s contentions in a formal Response but rather in three emails to the Center. However, the Respondent’s contentions may be gleaned, as follows: The Respondent is an authorized dealer for KENT products in the UAE. The Respondent has a letter of authority from Aqua Care Trading LLC (as described in the factual background section above) and asserts that this provides rights to sell such products both online and offline. The Respondent is doing nothing illegal as it is a duly licensed business in the UAE which is selling KENT products. The Respondent has invoices for its purchases of the products concerned (the Panel notes that no such invoices were produced). If a domain name is available on a registrar’s site, the Respondent has the right to purchase this. The Complainant should have planned for this eventuality and acquired the necessary domain names in advance. There is no law for this issue and the Complainant is pressuring the Respondent unethically and illegally to give up its domain name. It is not possible to seek a domain name transfer after the fact. If the Complainant has a genuine intellectual property claim, it should commence action against the Respondent in the appropriate forum in the UAE with advisers qualified in the jurisdiction. The administrative proceeding is not genuine as the various correspondents have not provided identification and the Complainant, Kent India, is not joined in said correspondence. If the Respondent’s authorization letter is alleged to be fake, formal evidence of same should be produced and written clarification should be sought from the Complainant’s office in India. C. Complainant’s Supplemental Filing The Complainant produces a letter from its existing distributor in the UAE, as described in the factual background section above, confirming that it did not issue the letter produced by the Respondent. D. Respondent’s Supplemental Filing The Respondent is duly authorized to trade in the UAE as Aqua Pure Water Treatment Equipment Trading LLC. There are multiple KENT Product Suppliers in the UAE. The Respondent is authorized to trade in KENT products in the UAE by Aqua Life Water Treatment Equipment Trading LLC, the holder of a KENT registered trademark. The Respondent produces a copy of the registered trademark and authorization letter described in the factual background section above. 6. Discussion and Findings To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 6(a) of the Policy have been satisfied: (i) the disputed 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 disputed domain name; and (iii) the disputed domain name has been registered or is being used in bad faith. A. Preliminary Issues – Parties’ Supplemental Filings According to paragraph 12 of the Rules, the Panel may request, in its sole discretion, further statements or documents from either of the Parties. Unsolicited supplemental filings are generally discouraged. Panels have repeatedly affirmed that the party submitting or requesting to submit an unsolicited supplemental filing should clearly show its relevance to the case and why it was unable to provide the information contained therein in its complaint or response. In the present case, each of the Parties’ supplemental filings contains a response to matters and evidence raised by the other party which could not reasonably have been anticipated. In particular, the Response asserted that the Respondent is duly authorized by the Complainant’s official distributor in the UAE. The Complainant seeks to reply to that submission by producing a letter from said distributor contradicting this. The Respondent then seeks to reply in turn by producing a letter from an alternative entity in the UAE, indicating that it is duly authorized by such entity. The Respondent also produces what appears to be a registered trademark in the UAE which appears to be owned by such entity. The Panel is satisfied that the issues raised are relevant to the case. Insofar as the Parties’ supplemental filings deal with these matters, therefore, the Panel considers that it is reasonable for them to be admitted and considered along with the Complaint and Response. This is consistent with the general powers of the Panel as articulated in paragraph 10 of the Rules, particularly the provision that the Panel shall ensure that the Parties are treated with equality and that each is given a fair opportunity to present its case. B. Identical or Confusingly Similar The first element of the Policy functions essentially as a standing element in which the Complainant must demonstrate that it has rights in a trademark which is identical or confusingly similar to the disputed domain name when compared to it, typically on a straightforward side-by-side basis. The country code Top-Level Domain (“ccTLD”) “.ae” is generally disregarded in such comparison. The Panel finds that the Complainant has rights in its KENT and KENT R-O WATER MAKER registered trademarks. Comparing these to the second level of the disputed domain name, it may be noted that the KENT trademark is wholly incorporated therein, as is the dominant portion of the KENT R-O WATER MAKER trademark, absent the dash or hyphen, such punctuation being of no particular distinguishing quality. Likewise, the additional letters in the disputed domain name “uae” are of no distinguishing quality as they merely represent a geographic identifier for the United Arab Emirates. The Respondent does not take any particular issue with the question of identity or confusing similarity in the Response or in its supplemental filing. In all of these circumstances, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s mark. The requirements of Section 6(a)(i) of the Policy have therefore been satisfied. C. Rights or Legitimate Interests Section 6(c) of the Policy lists several ways in which the Respondent may demonstrate rights or legitimate interests in the disputed domain name: “[…] Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Section 6(a)(ii): 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 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”. The consensus of previous domain name decisions1 is that a complainant may establish this element by making out a prima facie case, not rebutted by the respondent, that the respondent has no rights or legitimate interests in a domain name. In the present matter, the Panel finds that the Complainant has established the requisite prima facie case. The Complainant asserts that there is no commercial relationship between the Parties allowing the Respondent to use the Complainant’s mark, that the Respondent is not sponsored or licensed by, or affiliated in any way with the Complainant and is not commonly known by the disputed domain name. The Complainant adds that the Respondent is trading off the recognition of the Complainant’s mark to profit illegitimately from an apparent association with the Complainant by relying on consumer confusion. The Complainant points to the fact that the Respondent is using its product names and imagery on the website associated with the disputed domain name and that this also features the Complainant’s brand ambassador. The Complainant also asserts that the Respondent’s alleged authorization from the Complainant’s distributor is false and presents evidence from such distributor supporting this. In all of these circumstances, the burden of production shifts to the Respondent to bring forward relevant evidence of its rights or legitimate interests in the disputed domain name. The Respondent’s case is somewhat confused, although the essence appears to be that the Respondent is selling the Complainant’s genuine product in the UAE. However, beyond this principal assertion, the Respondent’s case becomes self-contradictory. Initially, the Respondent states that it has authority for its activities from the Complainant’s distributor and produces a letter to this effect. The Complainant produces a letter from its distributor in response, which confirms that it did not write the Respondent’s letter of authority and did not confer any authority on the Respondent to sell the Complainant’s products. Faced with this clear rebuttal of its case, the Respondent changes tack and submits that it has authority from an unrelated entity which holds a different KENT trademark. While the Panel might have accepted the Respondent’s position on this topic in respect of one or other of the explanations it has put forward, it cannot accept both. The presence of these contradictory submissions renders the Respondent’s case incredible as regards its assertion of rights and legitimate interests in the disputed domain name. Further and in any event, even if the Panel were to accept that the Respondent was selling the Complainant’s genuine products under an appropriate authorization, as it asserts, the Respondent would still have been unable to meet all necessary elements of the “Oki Data” test, being a relevant authority and consensus view of panels dealing with cases of alleged resellers of a complainant’s goods under the related Uniform Domain Name Dispute Resolution Policy (“UDRP”), (see section 2.8 of the WIPO Overview 3.0). Notably, the website associated with the disputed domain name does not accurately and prominently disclose the registrant’s relationship with the trademark holder. On the contrary, as noted in the factual background section above, no less than three different descriptions of the Respondent’s business are provided on its website and each of these suggests that the Respondent is the Complainant itself rather than simply a dealer in the Complainant’s goods. The fact that the Respondent suggests in the alternative that it might be authorized by a different trademark holder does not take its case any further. The Respondent’s website content is clearly referable to the Complainant and to no other entity, given that it includes the Complainant’s product names, imagery and brand ambassador. In all of these circumstances, the Panel finds that the Complainant has proved that the Respondent has no rights or legitimate interests in the disputed domain name and accordingly that the requirements of Section 6(a)(ii) of the Policy have been satisfied. D. Registered or is Being Used in Bad Faith Section 6(b) of the Policy provides four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration or use of a domain name in bad faith: “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 ii) you have Registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding Domain Name, provided that you have engaged in a pattern of such conduct; or iii) you have Registered the Domain Name primarily for the purpose of disrupting the business of a competitor; 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”. In general terms, for bad faith registration to be made out under the Policy, some form of targeting of the Complainant’s rights must be demonstrated and at least the fact that the Respondent had the Complainant or its rights in mind at the point when it registered the disputed domain name. In the Panel’s opinion, such knowledge and targeting are evident in the facts and circumstances of the present case. The Respondent clearly knew of the Complainant’s rights based on its adoption of the Complainant’s KENT mark (and partial adoption of the KENT R-O WATER MAKER mark) in the disputed domain name in connection with the sale of products named identically to those of the Complainant and featuring, on the associated website, the Complainant’s images of such products and of its brand ambassador. The Complainant asserts that the Respondent registered the disputed domain name in order to create a likelihood of confusion with the Complainant’s marks to the source, sponsorship or endorsement of the Respondent’s website. The Respondent’s website content appears to bear this out. The Respondent’s explanation of its conduct swings between an alleged authorization from the Complainant’s official distributor and an alleged authorization from an entirely different entity which appears to hold an alternative registered trademark in the UAE. As the Panel noted in the preceding section, the Respondent’s two assertions on its alleged authorization are mutually incompatible. Taken together, they cannot give rise to any credibility on the Respondent’s part regarding its insistence that it registered the disputed domain name on a bona fide basis as a reseller of the Complainant’s goods. Furthermore, the Respondent’s informal Response lacks the necessary certification of completeness and accuracy required by paragraph 3(b)(xiv) of the Rules and therefore requires to be treated with caution in the weighing of the Parties’ cases. In all of the above circumstances, a finding of registration in bad faith is indicated. The website associated with the disputed domain name has been used in a way which suggests that it is operated either by the Complainant itself, or at least by a party which represents the Complainant on an official basis in the UAE. Neither of these things are true and the fact that the Respondent has produced two alternative and incompatible explanations for its conduct suggests that it has and had no good faith motivation in respect of its use of the disputed domain name. In the Panel’s opinion, such use will inevitably lead to confusion on the part of Internet users looking for the Complainant or an authorized distributor of the Complainant’s products. In the circumstances of the present case, this indicates a finding of use in bad faith. Despite the fact that the Respondent evidently takes issue with the present proceeding, in registering the disputed domain name, the Respondent agreed to submit to the mandatory administrative proceeding requirements under the Policy. These form part of its registration agreement with the registrar of the disputed domain name (see clause 9 thereof). The Respondent’s incidental procedural objections are of no significance. For example, there is no basis for the Respondent’s argument that the Complainant’s authorized representative is not entitled to represent the Complainant. The Complainant does not require to file the Complaint directly on its own behalf rather than via its representative. Equally, the Policy does not require the Complainant to provide a specific form of identification of the Respondent’s choosing. Nevertheless, the Panel is mindful of the fact that in addition to providing its various emails in answer to the Complaint, the Respondent made particular emphasis of its submission that it was ready and willing to defend a case brought against it in an appropriate national forum. In terms of paragraph 6(k) of the Policy, the mandatory administrative proceeding requirements do not prevent either of the Parties from submitting the dispute to a court of competent resolution before or after the present proceeding is concluded. The Respondent’s access to a national forum in this regard is therefore preserved should it wish to take this course of action. For the requirements of section 6(a)(iii) of the Policy to be made out, a Complainant need only prove registration in bad faith or use in bad faith, as these are expressed in the alternative. In the present case, for the reasons set out above, the Panel finds both that the disputed domain name was registered and that it has been used in bad faith. The requirements of section 6(a)(iii) of the Policy have therefore been satisfied. 7. Decision For the foregoing reasons, in accordance with paragraphs 6(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name Andrew D. S. Lothian 1 The Panel notes that while there are minor differences between the .ae Policy and the UDRP, where appropriate, it draws on consensus views expressed in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Sole Panelist
Date: May 26, 2021
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