UDRP Perspectives has been updated with new perspectives on the topics of Trademark Infringement and Reputation, written by Igor Motsnyi and Zak Muscovitch. UDRP Perspectives welcomes you to review current jurisprudence as it relates to these two important topics or on any of the 50 topics that it covers. The goal of UDRP Perspectives is to provide guidance in the application of the UDRP through up-to-date case law and commentaries. Whether you are a UDRP Panelist looking for inspiration and guidance, counsel looking for helpful case citations and insight, or a party looking to better understand the nature and scope of UDRP, UDRP Perspectives can be a useful resource. If you are a Panelist and you share a perspective with the authors, you are welcome to join the growing ranks of Panelists who cite UDRP Perspectives in their decisions.
www.UDRPperspectives.org
We hope you will enjoy this edition of the Digest (vol. 5.3) as we review these noteworthy recent decisions with expert commentary. (We invite guest commenters to contact us):
‣ Issues Sound in Trademark Infringement But Are Beyond Scope of Policy (personalisationcreation .com *with commentary)
‣ Panel Makes Affirmative Finding of Respondent’s Legitimate Interest (kmine .com *with commentary)
‣ Panel Cannot Act Nec Ultra Petita Nec Infra Petita (editorial-wsj .com *with commentary)
‣ Indian Complainant Tries to Grab a Domain Name in Legitimate Use (etnow .com *with commentary)
‣ Second RDNH for Complainant Who Went After Surname (nallifinancialservices .com *with commentary)
Issues Sound in Trademark Infringement But Are Beyond Scope of Policy
PlanetArt, LLC v. Norma Murphy / Personalisation Creation, NAF Claim Number: FA2412002129774
<personalisationcreation .com>
Panelist: Mr. Steven M. Levy, Esq.
Brief Facts: The Complainant is in the business of offering custom gifts for sale, including but not limited to blankets, ornaments, coasters, drinkware, clothing, and photography gifts. It has provided these goods since 1990 under the trademark PERSONAL CREATIONS for which it has obtained registrations in the United States, Canada, Ireland, the United Kingdom, Switzerland, and the European Union. The Complainant’s website is hosted at the domain name <personalcreations .com>. The disputed Domain Name was registered on June 30, 2024, and resolves to a website offering similar items for sale that may be personalized with names selected by customers.
The Complainant alleges that the Respondent does not make a bona fide offering of goods or services where it offers custom gifts and services that are substantially identical to and compete with those offered by the Complainant. The disputed Domain Name was registered and is used in bad faith based on its disrupting the business of a competitor and where the Respondent is intentionally seeking to attract customers to its website, for commercial gain, by creating a likelihood of confusion with the Complainant’s mark.
The Respondent failed to submit a Response in this proceeding.
Held: Both offer for sale, items that may be personalized with names selected by customers including blankets, ornaments, drinkware, clothing, and photography gifts. Further, both sites display images of their products in a series of square images that are four across and aligned in rows down the page. However, there are also a number of significant differences between the websites. Of particular interest to the Panel is a message on the Respondent’s website that states (in summary): “I’m Norma, a mom of 3 who turned my love for crafting and personalizing items into a business, allowing me to support my family while staying present for my kids.”
The Policy was created to address clear cases of cybersquatting but the present case does not appear to fit that mould. Rather, based on a preponderance of the above evidence, the Panel cannot conclude that the Respondent is not making a bona fide offering of goods or services based on its apparent operation of an actual business providing customizable items. It recognizes, however, that the present case creates factual and legal issues that may sound in trademark infringement but that are beyond the scope of the Policy as such disputes are only subject to resolution through other venues such as the courts which have available tools that can gather and sift through more comprehensive evidence.
In light of the Panel’s finding in the previous section, a detailed analysis of Policy 4(a)(iii) is not warranted here. However, the Panel notes that, while the Complainant submits a copy of its Ireland Trademark Registration, it does not provide information or evidence of the extent of its business or brand reputation in the country where the respondent resides. This leaves open a question of whether Respondent knew of and specifically targeted Complainant’s trademark in bad faith when it registered and used the disputed Domain Name. Policy 4(b)(iv) specifically requires an intention to create a likelihood of confusion with an asserted mark.
Complaint Denied
Complainant’s Counsel: Thomas P. Burke of PlanetArt, LLC, California, USA
Respondent’s Counsel: No Response
Case Comment by ICA General Counsel, Zak Muscovitch:
Notably, the Panel found that while there may be a case for trademark infringement, this case was not a “clear case of cybersquatting” that was within the proper scope of the Policy. The Panel stated in particular that, “the present case creates factual and legal issues that may sound in trademark infringement but that is beyond the scope of the Policy as such disputes are only subject to resolution through other venues such as the courts which have available tools that can gather and sift through more comprehensive evidence.”
What makes a case sound in trademark infringement rather than in cybersquatting? The Panel relied upon three criteria in particular. The Panel found that despite the Respondent employing a similar Domain Name with goods and services similar to the Complainant’s;
- There was no evidence of whether the Respondent was aware of and specifically targeted the Complainant’s trademark, i.e. there was an absence of evidence of intention and the Policy requires an intention to create a likelihood of confusion with an asserted mark;
- The Complainant was unable to prove that the Respondent was not making a bona fide offering of goods or services since the Respondent was operating an actual business, even if the business was similar to the Complainant’s; and
- The Respondent’s website did not appear to deceitfully pass itself off as the Complainant’s website in terms of look and feel, and included a message to visitors identifying the Respondent in an apparently genuine manner.
The Panel thereby quite rightly determined that although the Complainant may have a case in trademark infringement against the Respondent, this was not a clear case of cybersquatting that the Policy was intended to address and the issue could be brought by the Complainant in court where it belonged.
Panel Makes Affirmative Finding of Respondent’s Legitimate Interest
K-Mine Ltd v. Alagesh, Kmine Info Solutions Limited, WIPO Case No. D2024-4540
<kmine .com>
Panelist: Mr. Robert A. Badgley
Brief Facts: The Complainant was formed under the laws of England and Wales on October 7, 2022. The Complainant claims: “K-MINE was developed over 20 years ago and used as a name before the practical and factual registration with intellectual property authorities.” The Complainant further refers to three trademarks in the Complaint including Ukrainian word mark K-MINE, Reg. No. 199874, registered on June 10, 2015 (expired: October 21, 2023); Australian trademark July 4, 2023; and an International registration (July 4, 2023). However, there is no evidence either regarding the extent to which the Complainant’s K-MINE mark is renowned or the Complainant’s use of that mark back in 2013 or 2014. The Respondent acquired the Domain Name on December 30, 2014, and resolves to its business website. The Respondent had also registered the domain name <kmine .co> on November 30, 2013.
The Complainant further argues “The Respondent does not have the right to use our registered trademark as our trademark was registered a long time ago, the Respondent does not have the registered trademark and is easily able to change his domain name and his approach to business.” It appears from the record that the Complainant, via a broker, approached Respondent and offered to purchase the Domain Name for US $400, which offer Respondent declined. The Respondent contends “there is simply no evidence whatsoever to support the complainant’s limited contention that the Domain Name was registered/acquired because of the non-existent complainant in 2014. The Complainant’s failure to allege ‘bad faith registration’ is unsurprising since it is a chronological impossibility given the fact that the Domain Name was registered long before the Complainant obtained trademark rights.”
Held: The Panel concludes, on the record presented here, that the Respondent has a legitimate interest in the disputed Domain Name. There is simply no basis in the record for the Panel to conclude that the Respondent was aware of the Complainant or its trademark K-MINE when it acquired the Domain Name in 2014. There is evidence in the record that the Respondent has been using its business name “Kmine Info Solutions” since at least 2016 in connection with its business. The Respondent’s explanation for choosing “Kmine” as part of its business name is plausible, and not contradicted or undermined by anything in the record. The Panel concludes, on the record provided here, that the Complainant has failed to prove bad faith registration and use under the Policy.
RDNH: The Panel declines to find RDNH against the Complainant here, largely because it does not appear that the Complainant knew or suspected that its case was foredoomed. Rather, the Complaint here failed primarily because there was an insufficient effort made to prove an essential element, namely, that the Respondent targeted the Complainant’s mark when registering the Domain Name. The Complainant asserts that its mark has been in use for 20 years, but the evidence of use presented is a registration certificate showing a November 3, 2021 priority date, and a 2015 Ukrainian registration for a mark that expired in 2023.
It should have been easy for the Complainant to provide evidence of its use of the K-MINE mark prior to the date of the Domain Name’s registration in 2014, but such evidence was lacking in this record. Further, as noted above, the Complainant asserts that its mark is “well-known,” but the Complainant provides no evidence to support that claim. Put another way, it appears that the Complainant might have made out a stronger case if it had provided a more robust record, even if the outcome of this case had remained the same. That bespeaks a poor presentation, rather than an abuse of this proceeding or an attempt to harass the Respondent.
Another minor consideration weighing against an RDNH finding is the fact that the Respondent’s website is fairly rudimentary and contains some grammatical and spelling errors. While such shortcomings do not necessarily undermine one’s claim to be operating a legitimate business, they might lead one in the Complainant’s position to suspect that the Respondent’s website was merely pretextual, rather than genuine. In sum, although it is a close call, the Panel declines to make an RDNH finding here, largely because the Complainant, represented by counsel, presented a shoddy case that probably could have been much stronger (even if the result were the same).
Complaint Denied
Complainant’s Counsel: LAWA LEGAL LTD, UK
Respondent’s Counsel: Cylaw Solutions, India
Editor’s Note: Ankur Raheja, the Editor of the UDRP Digest, represented the respondent in this proceeding through his law firm, Cylaw Solutions.
Case Comment by ICA General Counsel, Zak Muscovitch:
Notably, the Panelist rightly made an affirmative finding of the Respondent’s legitimate interest in this case. As I have previously written in this Digest and as discussed in UDRP Perspectives at 2.1, Panels are often tempted to skip over determining whether a Respondent has rights and a legitimate interest. This is sometimes done for reasons of judicial economy, as strictly speaking a case can be dismissed on one prong of the three-part test and therefore the decision need not address any additional, extraneous grounds. Nevertheless, Panelists should generally make an affirmative finding of rights and legitimate interest if the facts so warrant, due to the implicit obligations of Rule 4(c).
Paragraph 4(c) of the Policy expressly entitles a Respondent to “prove” its rights and legitimate interests and implicitly directs a Panel to make such a finding if so proven:
“How to Demonstrate Your Rights to and Legitimate Interests in the Domain Name in Responding to a Complaint.
…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 Paragraph 4(a)(ii):…” [emphasis added]
In the case at hand, the Respondent was able to demonstrate its rights and legitimate interest pursuant to Paragraph 4(c)(i), namely that “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”. Indeed, the Panel noted that “there is evidence in the record that Respondent has been using its business name “Kmine Info Solutions” since at least 2016 in connection with its business” and further, expressly noted that, “Respondent is vested with a legitimate interest in the Domain Name pursuant to the above-quoted Policy paragraph 4(c)(i)”. This is exactly how legitimate interest should be handled in such circumstances, in compliance with the requirements of the Policy.
One thing that was unclear to me from the decision however, was how the Complainant could have had any trademark rights which pre-existed the 2014 registration of the Domain Name, when apparently the Complainant by its own admission, “was formed under the laws of England and Wales on October 7, 2022”. The Panel noted that “there is no basis in the record to support a finding that Respondent had Complainant and its K-MINE mark in mind when registering the Domain Name in 2014”, which is surely true if the Complainant was not even incorporated until 2022 and its trademark registrations all post-date the Domain Name registration by many years. This issue becomes even more pronounced when RDNH is discussed, as the Panel found that the Complainant was guilty of a “poor presentation rather than an abuse of this proceeding or an attempt to harass Respondent”. Ostensibly the Panel believed that the Complainant could have possibly marshalled evidence of longstanding trademark rights which pre-existed the Domain Name registration, but failed to do so. Although that does indeed rather frequently occur, it does not fully explain the chronology which involves a very recent incorporation of the Complainant company.
Lastly, congratulations to the Digest’s Editor-in-Chief, Ankur Raheja, for successfully representing the Respondent.
Panel Cannot Act Nec Ultra Petita Nec Infra Petita
Dow Jones & Company, Inc. v. Stephen Ojo, NAF Claim Number: FA2412002129776
<editorial-wsj .com>
Panelist: Mr. Richard Hill
Brief Facts: The Complainant, since its founding in 1882, along with its predecessors and related entities like News Corporation, has become a globally recognized provider of news and business information. One of its key properties is the newspaper published under THE WALL STREET JOURNAL and WSJ marks, first issued in 1889 and renowned worldwide. The Complainant asserts rights in the mark WSJ through its registration in the United States in 2009. In fiscal year 2024, the newspaper had a monthly average of over 4,250,000 subscribers globally, including over 3,785,000 digital subscribers. The WSJ services include coverage of national and international news and analysis, commentary, and opinions on a wide range of topics, including business developments and trends, economics, financial markets, investing, science and technology, lifestyle, culture, and sports.
The Complainant alleges that the disputed Domain Name is redirected to the Complainant’s official website at <wsj .com> and is used in emails to impersonate the Complainant, including its employees or other personnel. The Respondent had actual knowledge of the Complainant’s rights to the WSJ mark prior to registering the disputed Domain Name. The Complainant cites UDRP precedents to support its position. The Respondent in an informal Response stated “I am writing to formally apologize for my involvement with the domain name. I understand that my actions may have caused confusion or concern regarding the brand and intellectual property of Dow Jones & Company… I am committed to ceasing any involvement with the aforementioned domain and will take all necessary steps to ensure that there are no further associations with your esteemed company.”
Held: The Panel interprets the Respondent’s email to the Forum as indicating consent to transfer the disputed Domain Name. Thus, in the present case, the parties have both asked for the domain name to be transferred to the Complainant. In accordance with a general legal principle governing arbitrations as well as national court proceedings, this Panel holds that it cannot act nec ultra petita nec infra petita, that is, that it cannot issue a decision that would be either less than requested, or more than requested by the parties. Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.
See Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Forum Jan. 13, 2004); see also Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Forum Jan. 9, 2003) (transferring the domain name registration where the respondent stipulated to the transfer); see also Disney Enters., Inc. v. Morales, FA 475191 (Forum June 24, 2005) (“[U]nder such circumstances, where Respondent has agreed to comply with the Complainant’s request, the Panel felt it to be expedient and judicial to forego the traditional UDRP analysis and order the transfer of the domain names.”).
Transfer
Complainant’s Counsel: AJ Schumacher of Kelly IP, LLP, District of Columbia, USA
Respondent’s Counsel: Self-represented
Case Comment by ICA General Counsel, Zak Muscovitch: Interestingly, the Panel determined that it had “no scope to do anything other than to recognize the common request [of the parties], and it has no mandate to make findings of fact or of compliance (or not) with the Policy”.
Will a Respondent’s consent to transfer a Domain Name post-commencement always result in a transfer order without determination of the issues? Its an interesting question. Where both parties ‘get what they asked for and what they want’, it is “expedient and judicial to forego the traditional UDRP analysis and order the transfer of the domain name”, as cited by the Panelist from the aforementioned Disney case. But did the Complainant get ‘everything it asked for’? Ostensibly the Complainant asked for transfer but also asked for findings on each of the three UDRP elements. In some cases, a Complainant may very well want and demand such an analysis and findings, particularly where its pre-commencement resolution efforts went unanswered by a respondent or where a Complainant wants to build a solid record of wrongdoing for use against the respondent or other respondents in future cases. On the other hand, there is a good argument that there should be a simpler way of transferring a domain name on consent without a decision on the merits, as was effected in this case. The question though is whether the Complainant actually consented to such a transfer without a decision on the merits given that although the Complainant asked for transfer, there is no indication that it had expressly agreed to waive the substantive findings. Moreover, if both parties are even deemed to have consented to the transfer without substantive findings, what should happen if a Panelist finds that a Complaint doesn’t even qualify under the UDRP, for example, if the Complainant doesn’t even have a trademark but the unwitting Respondent agrees to hand over the Domain Name? Is a UDRP Panel even empowered to Order a transfer in a case that is beyond the scope of the UDRP?
Indian Complainant Tries to Grab a Domain Name in Legitimate Use
Bennett, Coleman & Co. Ltd. v. Entertainment Technology Press Ltd, WIPO Case No. D2024-4988
<etnow .com>
Panelist: Mr. W. Scott Blackmer
Brief Facts: The Indian Complainant is a part of The Times Group, an Indian media, entertainment, and communication conglomerate that includes The Times Network in television and its digital arm, <etnownews .com> (registered in 2017). One of the Group’s newspapers is The Economic Times, which has been published since 1961 and branded since 1998 as both THE ECONOMIC TIMES and ET. The Complainant’s “ET Now” television channel broadcasts business news in India. The Complainant has ET, ET NOW, and related trademark registrations in India and other jurisdictions, including ET (word) in India, registered on July 23, 2003; ET NOW (word) in India registered on January 21, 2008; ET NOW (figurative) in the United Kingdom registered on December 28, 2012. The disputed Domain Name was created on December 9, 1998, and resolves to the Respondent’s website headed “etnow entertainment technology news on web”.
The Complainant alleges that due to the continued usage of the Mark THE ECONOMIC TIMES / ET for more than 63 years and its popularity amongst the members of the public in India as well as globally, the said mark/name has acquired a secondary meaning. The Complainant further alleges that the registration of the disputed Domain Name is “a clear case of cybersquatting” and that the Respondent “has registered the disputed Domain Name primarily for the purpose of interfering with and disrupting the business of the Complainant.” The Respondent contends that we launched <etnow .com> in 2008, short for ‘Entertainment Technology News on Web,’ and have been operating the website at <etnow .com> for 16 years, publishing daily articles on entertainment technology. The Respondent denies any allegations of irregularity and requests the immediate dismissal of this dispute.
Held: The Panel finds substantial evidence that the Respondent has used the disputed Domain Name since at least June 2000, with evidence suggesting registration as early as December 1998. This would have to be considered used in connection with a bona fide offering of goods or services consistent with the Policy, paragraph 4(c)(i) unless the Complainant offered persuasive evidence in support of its claim that the Respondent chose the disputed Domain Name to capitalize on the reputation of the Complainant’s ET mark. However, the evidence in the case file, as presented, does not indicate that the Respondent’s aim in registering the disputed Domain Name in 1998 or at least by 2000, when the first archived instances of the Respondent’s website appeared, was to profit from or exploit the Complainant’s trademark. The Respondent was incorporated as “Entertainment Technology Press Limited” in September 1999 and was publishing a website associated with the disputed Domain Name and headed “etnow” by at least June 2000.
The Complainant by its own account started branding THE ECONOMIC TIMES as ET only in 1998 and obtained Indian trademark registrations starting in 2003. The Complainant did not obtain ET NOW trademark registrations in India and the United Kingdom until 2008. The Complainant operates a website at <etnownews .com>, but this domain name was not registered until 2017. The Complainant supports its claim to global recognition of the ET mark by referring to collaboration and syndication agreements with foreign publications, embassies, and airlines, but this does not necessarily equate with wide consumer recognition or warrant the conclusion that “the public at large associates the trademark ET NOW with the Complainant alone”, and certainly not as early as 1998 or 2000.
In sum, it does not appear that the Complainant’s ET NOW mark was established by the time the Respondent registered or acquired the disputed Domain Name. The available evidence also indicates that the Complainant was at that time only beginning to use the then unregistered ET mark, chiefly in the Indian market, and it was not yet part of a domain name. The Respondent had already incorporated a publishing company for which “ET” was an abbreviation, and by 1999 or 2000 the Respondent was using the disputed Domain Name for an associated website. The Complainant bears the burden on this point, and it is simply more probable on these facts that the Respondent in the United Kingdom selected the disputed Domain Name in reference to its company name rather than to the Complainant’s new branding for its Indian business publications.
Complaint Denied
Complainant’s Counsel: Inttl Advocare, India.
Respondent’s Counsel: Internally Represented
Case Comment by Newsletter Editor, Ankur Raheja:
In December 2024, we featured an article in this digest titled: “The Case of Ekart .com and UDRP Disputes by Indian Companies” which was about how some Indian companies take the UDRP route to attempt to upgrade their Internet presence to a premium .com domain name. This case presents another example. The Indian Complainant currently operating at <etnownews .com> (registered in 2017) filed this UDRP against the Domain Name <etnow .com> (registered in 1998), which was already in legitimate use by a UK-based Company “Entertainment Technology Press Limited.” The Panel held the Respondent’s use to be in connection with a bona fide offering of goods or services, consistent with the Policy, Paragraph 4(c)(i). Notably, in 2020, the same Complainant apparently attempted to grab the Domain Name <enow .in> but failed under the INDRP as well.
Interestingly, this week, the Complainant also filed another UDRP over the domain name <timesnow .com> before WIPO, see here. The Domain Name <timesnow .com> (registered: 2001) does not resolve but is owned by Times Media Limited, UK as per the WHOIS information. The Complainant is currently using the domain name <timesnownews .com> (registered: 2008). We will keep an eye on this upcoming decision.
Second RDNH for Complainant Who Went After Surname
Nalli Chinnasami Chetty v. Jennifer Nalli, WIPO Case No. D2024-3556
<nallifinancialservices .com>
Panelist: Mr. Steven A. Maier
Brief Facts: The Indian Complainant is a manufacturer of clothing, readymade garments, fashion accessories and textiles under the name and trademark NALLI, and operates a website at <nalli .com>. The Complainant owns numerous trademark registrations for the mark NALLI in various jurisdictions including India (May 27, 1987); and the United States (April 17, 2001). The disputed Domain Name was registered on July 3, 2024, and the webpage reads “We’re under construction. Please check back for an update soon.” The Complainant argues that the name NALLI, although based on its founder’s first name, is arbitrary in connection with its business, and that the trademark has acquired distinctiveness and a substantial commercial reputation in India and internationally.
The Complainant further alleges that given the widespread scope of the Complainant’s business activities, the Respondent would “definitely” have been aware of the Complainant and its trademark. In the light of such awareness, the Respondent should be assumed to have registered and used the disputed Domain Name on the basis of opportunistic bad faith. In an informal response, the Respondent contends that her surname was Nalli and she has worked in financial services in the private funds sector for 15 years. The Respondent further contends that she registered the disputed Domain Name in connection with a new business, providing outsourced financial services, and intended to use the disputed Domain Name initially for email purposes.
Held: “Nalli” is the surname of the Respondent, who is engaged in providing financial services, and she registered the disputed Domain Name in connection with an intended business in that area. The Panel finds in the circumstances that the Respondent has rights or legitimate interests in the disputed Domain Name, by virtue of having been commonly known by the name “Nalli” and operating in the financial services sector, and that there is no evidence to indicate that she registered the disputed Domain Name in order to target the Complainant’s trademark rights.
Further, the Panel adds for the record that it finds no basis upon which to conclude that the Respondent registered or has used the disputed Domain Name in bad faith. The Panel does not accept that the Respondent was “definitely” aware of the Complainant’s trademark and business when she registered the disputed Domain Name, and even if that were the case, the Panel finds that the Respondent registered and has used the disputed Domain Name in connection with her own name and legitimate business, and not in an attempt to take unfair advantage of the Complainant’s trademark rights.
RDNH: In this case, the identity of the Respondent, including her surname “Nalli”, became apparent to the Complainant on September 11, 2024, the date that the registrant information provided by the Registrar was provided to the Complainant. Furthermore, in the correspondence between the Parties referred to above, the Panel has seen no evidence of the Complainant disputing or in any manner responding, to the Respondent’s submissions that “Nalli” was her surname and that she was legitimately engaged in business in the financial services sector.
The Complainant in this matter is professionally represented and should in the view of the Panel have become aware by virtue of these matters that its claim was misconceived and had no reasonable prospect of succeeding. The Panel finds in the circumstances that the Complaint was brought (or at any rate continued) in bad faith and constitutes an abuse of the administrative proceeding.
Complaint Denied (RDNH)
Complainant’s Counsel: De Penning & De Penning, India
Respondent’s Counsel: Kalamaras Law Office, LLC, United States
Case Comment by Newsletter Editor, Ankur Raheja: This is not the first instance in which this Complainant from India has faced a reverse domain name hijacking ruling under similar conditions, where the Respondent’s surname was Nalli, see here (WIPO Case No. D2019-2642) regarding the disputed domain name <nalligroup .com>. In this <nalligroup .com> decision, the Panel noted that it would have been appropriate for the Complainant to withdraw its Complaint, for, “once the privacy shield was lifted through the Registrar Verification”, at that point the Complainant and its counsel knew that they could not possibly succeed on any fair interpretation of the facts in this case. Moreover, as the Panel noted to its credit,
“By filing an amended Complaint and repeating the same arguments that were in the initial Complaint, the Complainant and its counsel abused the WIPO administrative process in an attempt to obtain the disputed domain despite the inconvenient fact that the Respondent was Mr. Nalli. Rather than address that point, the Complainant and its counsel simply repeated the same arguments, baldly asserting that Mr. Nalli could have no plausible reason for registering the disputed domain name <nalligroup.com> other than to usurp the Complainant’s goodwill. The Complaint was therefore completely devoid of any facts or arguments that could support a finding that the Respondent lacked rights or legitimate interests in the disputed domain name.”
Moreover, in this it was evident that the Respondent was recognized by the Domain Name, despite its recent registration and the existence of a valid trademark registration in the Respondent’s jurisdiction. The Panel rightly states: “The Complainant in this matter is professionally represented and should in the view of the Panel have become aware by virtue of these matters that its claim was misconceived and had no reasonable prospect of succeeding.”
About the Editor:
Ankur Raheja is the Editor-in-Chief of the ICA’s new weekly UDRP Case Summary service. Ankur has practiced law in India since 2005 and has been practicing domain name law for over ten years, representing clients from all over the world in UDRP proceedings. He is the founder of Cylaw Solutions.
He is an accredited panelist with ADNDRC (Hong Kong) and MFSD (Italy). Previously, Ankur worked as an Arbitrator/Panelist with .IN Registry for six years. In a advisory capacity, he has worked with NIXI/.IN Registry and Net4 India’s resolution professional.