The Complainant is M/s Lenskart Solutions Private Limited, of India, represented by Saikrishna & Associates, India.
The Respondent is Mohit Tangri, of United Arab Emirates (“UAE”), represented by ATB Legal Consultancy FZ LLC, 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 May 4, 2021. On May 4, 2021, the Center transmitted by email to AE Domain Administration (.aeDA) a request for registrar verification in connection with the disputed domain name. On May 5, 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 May 11, 2021. In accordance with the Rules, paragraph 5(a), the due date for Response was May 31, 2021. The Respondent submitted a Response on May 31, 2021. The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on June 9, 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 Originally named Valyoo Technologies Private Limited, the Complainant was incorporated as a company in India on May 19, 2008. The Complainant is an optical prescription eyewear retail chain which specializes in the manufacturing, marketing, and retail of varied eyewear, including sunglasses, eyeglasses, computer glasses, and contact lenses. In 2010, the Complainant adopted the brand name “Lenskart” and changed its name to Lenskart Solutions Private Limited. As of September 2019, the Complainant has physical stores in over 70 cities in India and manufacturing facilities in Delhi, India and Zhengzhou, China, which manufacture over 300,000 eyeglasses per month. The Complainant also has an online presence including mobile application-based eyewear sales on the Android and IOS platforms. The Complainant is the owner of a variety of registered trademarks for the LENSKART mark, registered in a variety of territories globally, including India, United States of America, UAE, China, Singapore, Japan, Philippines, Russia, Switzerland, Brazil, Malaysia, South Africa, and Sri Lanka. The earliest such trademark appears to be Indian Registered Trademark no. 2889509 for a figurative mark consisting of a spectacles device below which is the word LENSKART in a lower case stylized typeface, filed on January 22, 2015, in class 9. In the UAE, where the Respondent is based, the Complainant has three registered trademarks for a similar device mark, namely nos. 311969, 311970, and 311971. These were supplied without translations and the Panel does not read Arabic, but as far as the Panel can identify from machine translation, each of these was filed on May 30, 2019 and registered on August 19, 2019, and said marks cover classes 9, 35, and 44 respectively. The disputed domain name was registered on April 1, 2017. Although the Complainant’s submissions refer to the Respondent’s intent to gain from sponsored listings, there is no evidence of such listings before the Panel, and the Complainant’s own screenshot shows an NXDOMAIN return for the disputed domain name, i.e., that there appears to be no website configured. The Respondent is an Indian national who has been resident in the UAE since 2016. The Respondent is engaged in the business of consultancy services in the field of forex trading and states that it intends to use the disputed domain name in connection with a forex business named “lenskart”. The Respondent has produced an undated financial model which it describes as a business plan and states that this was prepared for its proposed “lenskart” business. The model shows cashflow over a five year plan from 2017 to 2022 and refers to revenue from school students and own trading. The Respondent provides a list of six trainees/students, one each with commencement dates of 2017, 2018, and 2019 respectively, and three with a commencement date of 2021. Five of these are based in Dubai and one in India. The Respondent also provides evidence indicating that it has personal debt, which it says results from the raising of initial capital in furtherance of its business. The Respondent adds that it suffered a loss and could not launch the “lenskart” business as expected. On March 3, 2021, an employee of the Complainant wrote to the Respondent by email stating “We are looking for [the disputed domain name]. Are you willing to sell? If yes, what’s the price?” The Respondent replied to this email on March 4, 2021, stating “Good Day, [the disputed domain name] is for sale, the estimated asking price is USD 1 Million.” On March 20, 2021, the Complainant’s employee indicated that the Complainant was not interested in the disputed domain name at the quoted price and the Respondent thanked him for his reply. 5. Parties’ Contentions A. Complainant The Complainant contends as follows: Identical or confusingly similar The disputed domain name consists of the Complainant’s trademark LENSKART in its entirety. It is identical to the Complainant’s corporate and trading name. This enhances public confusion by misrepresenting that the disputed domain name is used for the operations of the Complainant in the UAE. The Complainant’s trademark also forms part of its URL at multiple domain names including Rights and legitimate interests LENSKART is a coined and fanciful term. It is a distinctive source identifier of the Complainant’s goods and services. It is inherently distinctive, has acquired immense goodwill and is a valuable commercial asset of the Complainant. The Respondent has registered the disputed domain name on or after 2017, subsequent to its adoption by the Complainant, which dates from 2010. The Complainant registered the domain name Registered or used in bad faith The disputed domain name was registered primarily to obtain illegitimate consideration from the Complainant or a competitor. The Respondent has parked the disputed domain name to gain from sponsored listings. The Respondent is gaining illegitimate online reputation from the disputed domain name and is creating a likelihood of confusion among Internet users that the Respondent has some association with the Complainant. The Respondent has hidden its complete residential address and contact details on the WhoIs service, which is indicative of bad faith. The Respondent is a professional squatter who has continuously engaged in registering well-known trademarks as domain names. The Respondent demanded USD 1 million for the disputed domain name when contacted by the Complainant’s IT team on March 3, 2021. The disputed domain name is an instrument of fraud and deception which was registered for illegal gain. The disputed domain name prejudices substantial consumer interest. B. Respondent The Respondent contends as follows: The Respondent registered the disputed domain name to launch a business providing consultancy, advisory, networking, funding, and training in the field of forex with the name “lenskart”. The term is a combination of “lens” and “kart”, and these elements in various combinations are commonly used for business names of forex businesses, such as “www.forexlens.com” and “forexkart”. The Respondent has designed a logo for its proposed business and registered the disputed domain name on April 1, 2017, renewing it every year thereafter. Identical or confusingly similar The Complainant had not applied for the LENSKART mark in the UAE when the disputed domain name was registered, nor had it advertised or promoted the same in that location. According to the press, in January 2021, the Complainant was only planning to open a retail store in Dubai “soon”. The Complainant applied for its mark in the UAE in 2019. The disputed domain name is not similar to the Complainant’s mark as the “spectacles” device in said mark is quite prominent. The word “kart” is a common term within e-commerce businesses in India and is generic, as is the word “lens”. More than 15 e-commerce businesses use the term “kart” as a suffix for their business name. The Complainant cannot claim to have coined or to have exclusivity over the term “lenskart”. Rights and legitimate interests The Respondent registered the disputed domain name in furtherance of its business and took loans and invested in trading to achieve its initial capital of USD 500,000. The Respondent could not launch the forex business as expected but the fact that it has taken loans and invested in trading proves demonstrable preparations to use the disputed domain name in connection with a bona fide offering of services. The Complainant has strong financial capabilities by virtue of its financial statements from 2019 to 2020 yet failed to launch a single retail store in the UAE and had no genuine business interests there, in contrast to the Respondent, who failed to commence its “lenskart” business due to genuine financial difficulties. The Complainant had no registered trademark in the UAE until 2019. The Parties will be targeting different customers and the Respondent’s use of the disputed domain name will in no way collide with the Complainant’s business interests. The Respondent has no intent to misleadingly divert the Complainant’s consumers or to tarnish the Complainant’s mark. Registered or used in bad faith The Respondent did not register the disputed domain name with a primary intention to sell it to the Complainant or a competitor. The Complainant approached the Respondent with a proposal on March 3, 2021. The Respondent quoted a price which it thought would compel the purchaser to withdraw from their proposal in order to avoid the nuisance of such inquiries. If the Complainant had been sure that it had the rights to the disputed domain name, it would not have approached the Respondent in the first instance. The prior purchase of the disputed domain name and the Respondent’s intention to use it for its business are clear from the submitted documents. The Respondent has five trainees in Dubai and one in India, whom he was actively training for the last 4 years. The Respondent’s business plan and loan liability have been demonstrated and these prove the Respondent had no plan to sell the disputed domain name to the Complainant or to disrupt its business. The Complainant has failed to produce evidence supporting its allegation that the Respondent is a professional domain name squatter who has continuously indulged in this practice. Such allegation is false and baseless, and is refuted by the list of referrals which the Respondent has made as a broker partner and/or by its list of students. 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. 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 LENSKART registered trademark as described in the factual background section above. Contrary to the Respondent’s submissions, the consensus of previous domain name decisions1 is that, for the first element assessment, the relied-upon trademark need not predate the registration date of the disputed domain name or be in force in the Respondent’s territory, although these matters may be relevant to the second and third element assessments. Equally, the fact that the mark may be made up of dictionary words or that the Complainant might not necessarily have exclusivity in the use of an included word has no bearing on the confusing similarity assessment. It is necessary that such rights are in existence at the time the Complaint is filed (see section 1.1.3 of the WIPO Overview 3.0) and that is the position in the present case. The comparison to be made here is therefore between the second level of the disputed domain name, “lenskart” and the Complainant’s mark. The mark is figurative in nature, containing both a design and a word element. Design elements are largely disregarded for the purpose of assessing identity or confusing similarity under the Policy. However, where the design elements comprise the dominant portion of the relevant mark, such that they effectively overtake the textual elements in prominence, the trademark registration may be held to be insufficient by itself to support standing under the Policy (see section 1.10 of the WIPO Overview 3.0). Here, the Complainant’s mark contains a drawing of a pair of spectacles, below which is the word “lenskart” in stylized typeface. The Respondent states that the design is “quite prominent”. However, although the design element is slightly larger in height than the word element, they are the same width, and the Panel does not consider that there is any basis for arguing that the former is more prominent than the latter or overtakes the textual element in any respect. The Panel is content that the word element is easily severable from the design element. This allows an alphanumeric comparison to be made between the second level of the disputed domain name and the word element of the Complainant’s mark, showing that the two are identical. In all of these circumstances, the Panel finds that the Complainant has relevant rights in a trademark and that the disputed domain name is identical to the Complainant’s mark. The requirements of Section 6(a)(i) of the Policy have therefore been satisfied. B. 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 decisions under the Policy 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. The Complainant has submitted that its mark is a coined and fanciful term, which is a distinctive identifier of the Complainant’s goods and services and has acquired goodwill as a valuable asset. The Complainant also notes that it adopted the mark some seven years before the disputed domain name was registered, that the Respondent does not appear to have made a bona fide offering of goods or services under the mark and has never been known either by it or by the disputed domain name. The Panel is satisfied that these submissions, taken together, constitute the requisite prima facie case. In 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 falls under section 6(c)(i) of the Policy, in that the Respondent seeks to show that it has made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services before any notice to it of the dispute. The Respondent states that it decided to launch a forex consultancy business named “lenskart”, which is said to be an appropriate name because the elements “lens” and “kart” are frequently used for forex businesses. The Respondent produces supportive evidence, namely the registration record for the disputed domain name, screenshots of two forex businesses with names respectively using “lens” or “kart” not both terms together, the design of a logo for the Respondent’s business, details of the Respondent’s trainees/students, a document described as the Respondent’s “business plan”, and a credit report and statement showing the Respondent’s loan liabilities. In the first instance, the Panel is skeptical of the Respondent’s submission regarding its reasoning for allegedly selecting the disputed domain name for a forex business. The Respondent says that the combination of “lens” and “kart” are frequently used in the names of such businesses, hence it came up with the word “lenskart”. Two examples are produced in support of this claim, namely forex businesses which use the terms “forexlens” and “forexkart” respectively. First, the Panel notes that only two examples are offered. The Panel would have expected to see many more of these, given that the assertion is of a widespread or common use. Secondly, and of more significance, contrary to the Respondent’s choice, both of the examples which have been put forward adopt the prefix “forex” with an additional word, rather than simply using the other words in combination as in “lenskart” (or even “kartlens”). The second word in each of these examples serves to qualify the key word “forex” and the Panel can see that this could make what might be seen as a descriptive portmanteau for a forex business. However, in the absence of the word “forex”, neither of the words “lens” or “kart” appear to the Panel to bring such a business to mind and the Respondent has not evidenced that they are in common use for that purpose. In these circumstances, none of the Respondent’s evidence serves to support the Respondent’s claims on this topic. The Respondent produces a copy of its proposed logo for is alleged business. The Panel is not satisfied that this may be held to be demonstrable preparations to use the disputed domain name before notice to the Respondent of the dispute. Importantly, the logo itself is not dated and no communications have been provided which would separately evidence its date of creation, such as, for example, instructions given to a graphic designer, or issued to a trademark attorney or lawyer from the perspective of intellectual property protection. The Respondent’s details of its business are similarly lacking in dated references to the disputed domain name or a name corresponding thereto. For example, the list of students is exactly that. There is no evidence that the named individuals were enrolled on any kind of program by any business whatsoever, let alone by a business named “lenskart” or operating under the disputed domain name. The material which the Respondent describes as a “business plan” is simply a single sheet of figures which mentions no business name and does not refer to the disputed domain name. To the Panel’s mind, a business plan, particularly one which was seeking substantial capital funding as the Respondent contends, would more probably than not contain a detailed narrative explaining the nature and rationale of the business. Furthermore, in order to be supportive of the Respondent’s case to a material extent, such a plan would also have had to mention either the disputed domain name or a name corresponding thereto as a proposed or potential business name. Lastly, the Respondent’s credit history and account statement relate to the Respondent’s personal affairs and do not appear to mention any business activity, let alone the alleged business name “lenskart”. In all of these circumstances, the Respondent has failed to rebut the Complainant’s prima facie case that it has no rights or legitimate interests in the disputed domain name and accordingly the requirements of Section 6(a)(ii) of the Policy have been satisfied. C. 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. On the latter topic, the Respondent focuses on the fact that the Complainant had no registered trademark or any trading activity in the UAE when the disputed domain name was registered in 2017. In some cases, these circumstances might suggest that the Respondent came upon the disputed domain name independently of the Complainant’s rights, having had no notice of them. However, in the present case, the Panel rejects that notion. The Respondent does not deny prior knowledge of the Complainant’s rights anywhere in its case. Such a denial would in any event have been unlikely to have been accepted by the Panel. The Respondent makes it clear that it became resident in the UAE in 2016. The Respondent is an Indian national. The Complainant might have had no presence in the UAE in 2017 when the disputed domain name was registered but it seems to the Panel, and this is not disputed by the Respondent, that the Complainant already had a substantial presence in India by that date. The Complainant’s business had been trading for some seven years by that point. The Response accepts that the Complainant is a substantial business in India and the Respondent even produces the Complainant’s recent accounts to illustrate this fact. The Respondent does not seek to argue that the Complainant’s substantial market penetration or physical store presence in India post-dates the registration date of the disputed domain name. In these circumstances, the Panel finds on the balance of probabilities that the Respondent had knowledge of the Complainant and its rights at the point when it registered the disputed domain name. There are two opposing explanations for the Respondent’s conduct in the correspondence. The Respondent says that it acted as it did in order to avoid the “nuisance” of the Complainant’s inquiry about the disputed domain name. In other words, the Respondent asks the Panel to believe that it told the Complainant that the disputed domain name was available for sale when it was not and fixed a price upon it in order to make the Complainant go away. The Complainant, on the other hand, says that the Respondent registered the disputed domain name in order to sell it to the Complainant at a price exceeding its out of pocket costs, presumably being aware that the Complainant would ultimately seek to expand its business to the UAE. On the Respondent’s scenario, it had plans of almost four years’ standing to use the disputed domain name for its business, given that it allegedly consisted of a typical description used in the forex world, and no intention whatsoever of selling it. Yet it immediately replied to the Complainant’s approach that the disputed domain name was for sale and fixed a price. On the Complainant’s scenario, however, the Respondent was well aware of the Complainant and its rights by 2017. The Respondent is an Indian national and does not deny such knowledge. It is reasonable to infer that, with the benefit of such knowledge, the Respondent could have anticipated the Complainant’s expansion into the UAE in due course, whereby the disputed domain name would be of interest to the Complainant. Most importantly, of the two scenarios, only the Complainant’s case explains why the Respondent has been unable to produce any dated evidence of its alleged preparations to use the disputed domain name for a forex business beyond the fact of registration of the disputed domain name itself. The Complainant’s case also provides the more credible explanation for the Respondent’s swift reaction to the initial approach from the Complainant. In these circumstances, the Panel considers on the balance of probabilities that there are circumstances indicating that the Respondent registered the disputed domain name primarily for the purpose of selling it to the Complainant who is the owner of the trademark, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain name. The Panel therefore finds that the disputed domain name was registered and used in bad faith in terms of Section 6(b)(i) of the Policy. 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 that the disputed domain name was both 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 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”).
In conclusion, while there is some limited evidence that the Respondent may have made some preparations to operate a forex consulting and training business in the UAE at some point, there is nothing on the present record to support the Respondent’s contention that it made demonstrable preparations to use the disputed domain name or a name corresponding thereto in connection with any such business – and in particular one that did not trade off the Complainant’s mark – before any notice to it of the dispute. The Respondent goes on to argue that the fact that the Complainant had no registered trademark or any trading activity in the UAE when the disputed domain name was registered is also supportive of its case. The Panel will deal with these matters in the next section.
On the question of intent to target the Complainant’s rights, the Panel considers that the correspondence between the Parties is of critical significance in this particular case. The Respondent asserts that it registered the disputed domain name for its alleged “lenskart” business and had no intent to sell it to anyone, pointing out that the initial approach came from the Complainant to the Respondent and not the other way around. For the reasons previously described, the Panel is skeptical of the claim that the disputed domain name was genuinely registered for that purpose. The disputed domain name strikes that Panel as an unlikely name for a forex business and the Respondent has failed to provide adequate evidence to the contrary. Furthermore, when the Complainant approached the Respondent to enquire about the disputed domain name, the Respondent immediately replied positively, stating that it was available for sale, and fixing a notably high price upon it.
Sole Panelist
Date: June 23, 2021
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