19th Mar 2011
WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Indian Oil Corporation Limited v. Whois IDentity Shield c/o Nameview Inc./ Vertical Axis Inc.
Case No. D2010-2001
1. The Parties
The Complainant is Indian Oil Corporation Limited of New Delhi, India, represented by Scriboard Advocates & Legal Consultants, India.
The Respondent is Whois IDentity Shield c/o Nameview Inc./ Vertical Axis Inc. of St. Michael, and Christ Church, Barbados, represented by ESQwire.com Law Firm, United States of America.
2. The Domain Name and Registrar
The disputed domain name <indianoil.com> is registered with Fabulous.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 22, 2010. On November 22, 2010, the Center transmitted by email to Nameview Inc. a request for registrar verification in connection with the disputed domain name. On November 25, 2010, Nameview Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 26, 2010 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on November 26, 2010. The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced November 29, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was December 19, 2010. The Response was filed with the Center on December 19, 2010.
The Center appointed J. Nelson Landry, Frederick Mostert and The Hon Neil Brown QC as panelists in this matter on February 2, 2011. The Panel finds that it was properly constituted. Each member of 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 Complainant is a large Indian petroleum company, the largest commercial undertaking in India and a Fortune 500 company. It was formed in 1959 under the name Indian Oil Company Ltd and has extensive interests in refining, fuel stations, petroleum products and related activities in India. It also has a subsidiary company in Mauritius and one in Sri Lanka and a number of joint ventures and other activities overseas. It uses IndianOil both as a trade name or trademark in its business.
The Complainant operates a website at “www.indianoil.co.in” and “www.iocl.com” on which it promotes its business.
The Respondent registered the disputed domain name on December 28, 2001, and it currently resolves to a website at “www.indianoil.com”.
Subsequent to the filing of the Complaint on November 22, 2010, and of the Response on December 19, 2010, on December 25, 2010, while the domain name was locked, the domain name registrar Nameview Inc. was changed to a new registrar Fabulous.com.
The change of Registrar came to the attention of the Center on February 28, 2010.
5. Parties’ Contentions
The Complainant alleges that the disputed domain name <indianoil.com> should no longer be registered with the Respondent, but that it should be transferred to the Complainant.
It contends that this should be done because, within the meaning of paragraph 4 of the Policy, the disputed domain name is identical or confusingly similar to the Complainant’s trademark for INDIANOIL, that the Respondent has no rights or legitimate interests in the domain name and that the domain name has been registered and subsequently used in bad faith. The Complainant maintains that it can prove all three of these requirements and that the appropriate remedy is to transfer the disputed domain name to the Complainant.
In support of its case on the first of these three elements, the Complainant contends that it has both a registered trademark and common law trademark rights for INDIANOIL. In support of the former it relies on a certificate from the Indian Trade Marks Registry to the effect that the trademark for INDIANOIL had been renewed for ten years from May 20, 2007.
In support of its claim for common law trademark rights, it contends that the trademark INDIANOIL has been in extensive, continuous and uninterrupted use since the year 1959 in relation to the Complainant’s business. In support of that contention the Complainant says that the trademark INDIANOIL has been used by the Complainant on stationery, sales promotional material and in advertisements, that it has been displayed prominently and that it has been the focus of the Complainant’s business, as a result of which the trademark is understood and associated by consumers in India as the trademark of the Complainant denoting its goods, services and business.
It then says that it is self-evident that the disputed domain name <indianoil.com> is identical or confusingly similar to the INDIANOIL trademark, as the spelling of the word in the domain name is the same as the spelling of the word in the trademark.
The Complainant then contends, to establish the second element that the Respondent has no rights or interests in the disputed domain name because it is not commonly known by the name Indian Oil and the Complainant has not licensed or otherwise permitted the Respondent to use the trademark or to apply for a domain name incorporating it.
Finally, the Complainant contends that the disputed domain name was registered and is being used in bad faith. It contends that this is so because the Respondent clearly knew of the existence of the INDIANOIL trademark and the prior rights of the Complainant in the trademark when it registered the disputed domain name, for the trademark had been extensively used by the Complainant in its business and acquired distinctiveness and been understood and associated by consumers in India as well as overseas as the trademark of the Complainant denoting its goods, services and business.
It also contends that the disputed domain name is being used by the Respondent to host an unauthorized website which is in itself bad faith and a clear attempt to misuse the disputed domain name. Moreover, the Complainant claims such is the distinctiveness of the trademark that its use in a domain name must result in immense confusion and deception in the trade, leading to passing off. In particular, the disputed domain name is bound to lead customers and users to infer that the products or services it is used to promote have an association or nexus with the Complainant.
Moreover, it is said that the Respondent’s use of the INDIANOIL trademark in its domain name is an infringement, a violation of the Complainant’s rights in the trademark, misrepresentation and unfair competition, all of which are evidence of bad faith registration and use.
The Respondent denies that the disputed domain name should be transferred to the Complainant for the following reasons.
First, it contends that with respect to the Complainant’s allegation that it has a registered trademark for INDIANOIL, the Respondent denies that this is so and contends that a mere certificate of purported renewal of such registration is not evidence of the registration. As to the allegation that the Complainant has common law trademark rights to INDIANOIL the Respondent similarly denies that this is so. It submits that at best the trademark claimed is a generic mark which cannot acquire secondary meaning. Alternatively, it is descriptive and that, here also, secondary meaning could not be established as the public do not see the trademark as the exclusive source of Indian Oil.
The Respondent next contends that it has a right or legitimate interest in the disputed domain name as IndianOil is a geographically descriptive term composed of the name of the country of India followed by the generic word “oil”. The Respondent argues such a descriptive word used in a domain name will give rise to a legitimate interest provided that it has been registered without targeting the Complainant. In the present case, it continues, there is no evidence that the Respondent targeted the Complainant and the whole of the evidence is to the contrary. The evidence is that the Respondent had no knowledge of the Complainant or its trademark and that it did not register the disputed domain name to target the Complainant. Indeed, the Respondent notes it has registered many other domain names incorporating “India”, “Indian” or “oil”, giving rise to an inference that the Respondent was not targeting the Complainant, but was registering domain names in good faith because of their descriptive content and value. The Respondent also contends it uses the disputed domain name to post generic links and not links devoted to the Complainant or its products.
The Respondent argues that the disputed domain name was not registered or used in bad faith. That is so, the Respondent contends, because there is no evidence of bad faith registration or use and all of the evidence is to the effect that it was merely registering a domain name embodying a descriptive term and one that embodies the name of a geographic entity, which is not an act of bad faith. For the Respondent notes that to be held to have been motivated by bad faith there must be evidence that it was so motivated, whereas the evidence is that it did not know of the Complainant or its alleged trademark.
Moreover, the Respondent argues the fact that the Complainant has brought the Complaint more than 9 years after the disputed domain name was registered suggests that the Complaint is barred by laches or at least that even the Complainant did not believe that the Respondent was motivated by bad faith.
Finally, the Respondent puts forth the argument that not only is the claim without merit, but the Complainant must have known that it would not be able to prove bad faith registration and use. As a result, it believes those facts and all of the circumstances justify a finding of reverse domain name hijacking, which should be made.
In a supplemental submission, which the Panel has considered and taken into account, the Complainant takes issue with the Respondent’s contention that the claim was barred by laches. The Complainant contends that the principle involved is that claims under the UDRP are not barred by laches and that in any event it has not been shown that the delay was unreasonable or that the Respondent had suffered prejudice as a result of the delay, two requisites to establishing a defence based on laches. The Complainant cited Indian and United States authorities in support of its general position.
With respect to the Complainant’s claim to a registered trademark, it then contended that the Respondent had admitted that the disputed domain name was confusingly similar to the Complainant’s “registered trademarks.”
On the issue of common law trademark rights, the Complainant reiterated its submission that the disputed domain name had become a distinctive identifier associated with the Complainant as the producer of the oil described as IndianOil and that the long use by the Complainant of the name IndianOil had given it acquired distinctiveness and hence common law trademark protection in the term.
On the issue of rights and legitimate interests in the disputed domain name, the Complainant contends that the disputed domain name was merely being used to direct Internet users to a parked page which is not a legitimate use of a domain name. The Respondent’s bad faith was further illustrated by the fact that the parked page carried links to the Complainant’s competitors and also by the fact that the Respondent could have discovered the significance of the Complainant had it conducted proper searches.
The Complainant also contends with respect to the issue of bad faith that geographically descriptive marks are also protected if they have acquired distinctiveness and secondary meaning, which is the case with the Complainant’s trademark. Moreover, the Complainant’s trademark is a famous trademark of many years standing and its fame is such that the Respondent must have known of it when it registered the disputed domain name. It must also be inferred from the same circumstances that the Respondent registered the disputed domain name to target the Complainant.
Bad faith registration should also be inferred from the Respondent’s lack of a website, contact details or presence in the United States and the use of a privacy shield.
Bad faith use can also be concluded from the use of the parking site to which the disputed domain name resolves, which is tantamount to passive holding and hence bad faith use.
The Complainant also contends that no case has been made out to justify a finding of reverse domain name hijacking.
The Respondent also filed a supplemental submission which the Panel has considered and taken into account.
In that submission, the Respondent noted that, despite its request that the Complainant should file a certificate of registration of the trademark relied on, it had not done so and that consequently, there was no evidence of the trademark.
With respect to the Complainant’s case for a common law trademark, the Respondent re-iterated its submission that such a case had not been made out on the evidence.
The Respondent also contended that each UDRP case should be decided on its own facts and that previous decisions should not influence the Panel in making a finding on the issue of bad faith, but that if previous decisions were to be considered, the Panel should take into account cases where the Respondent had prevailed.
The Respondent also contended that its use of a Privacy Service for registering the disputed domain name did not indicate bad faith.
Additional representations by the parties
Further to the exchange of the first set of submissions reported hereinabove, it came to the attention of the Center that on December 25, 2010, the Registrar, previously named in the Complaint, Nameview Inc., had been replaced by a new registrar, Fabulous.com and that there had also been changes in the registrant identity and contact details.
On March 1, 2011, pursuant to a communication by the Case Manager to both registrars, the registrar Fabulous.com confirmed that the disputed domain name was locked and the original registrant details were restored as of the date of filing of the above referenced proceedings and the Respondent represented that the domain name would return to the first registrar. Although the original registrant details appear to be restored as of the date of this Decision, the domain name remains registered with the registrar Fabulous.com.
Pursuant to said change of registrar and notice to the parties, further submissions were made by each of the parties.
Supplemental Response by the Complainant
In a supplemental response, which the Panel has considered and taken into account, the Complainant contends that the transfer of the disputed domain name to another registrar represents deceptive, fraudulent and misleading activities by the Respondent and that such a transfer is contrary to the injunctive command in paragraph 8(a) of the Policy which prohibits such transfer to another holder during a pending administrative proceedings and thus constitutes “cyber flying”.
On the issue of bad faith, the Complainant further contends that these activities point towards a bad faith attitude on the part of the Respondent which had already been raised in the previous supplemental Response and that the transfer of the disputed domain name to another registrar is, in the present case, an attempt to circumvent the “mutual jurisdiction” clause, referring, in particular, to paragraph 3(b)(xiii) of the Rules.
Furthermore, having observed that there were false details in the registrant’s record such as the e-mail address “email@example.com” and the telephone number “+000.0000000000”, the Complainant represents this as an attempt to mislead the Panel and as constituting evidence of abuse of the process of law and of the UDRP proceedings.
In respect of the unsworn declaration by a representative of the Respondent, the Complainant represented that upon considering its unsworn character and the absence from the declaration of the letterhead of the Respondent, the said declaration is without merit and should be disregarded.
Supplemental Reply by the Respondent
The Respondent represents that the address in the WhoIs record was incorrect and is the result of an error rather than the expression of a malicious intent in the transfer to the new registrar
In respect of the change of registrar, the Respondent contends that this change was within a change in respect of a group of domain names, not specific to the disputed domain name and without intent to affect the proceedings but rather in the context of a corporate reorganization and that the registrant remained the same although a privacy service was used. The Respondent represented that the disputed domain name would shortly be transferred back to the registrar Nameview Inc.
In respect of the unsworn character of the declaration by the representative of the Respondent and his or her change of title, the Respondent confirmed the representative’s new title and submitted that the same representative had in the past provided similar declarations in UDRP proceedings which had been accepted by panels and offered to submit a notarized declaration if the Panel so desired.
6. Discussion and Findings
Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
The Panel also notes that the onus is on the Complainant to make out its case and that past UDRP panels have said many times that a complainant must show that all three elements of the Policy have been made out before any order can be made to transfer a domain name.
However, as the Panel will illustrate later, it is possible to draw inferences from the evidence that has been submitted and in some cases from silence.
The Panel therefore turns to discuss the various issues that arise for decision on the facts as they are known.
For the Complainant to succeed it must prove, within the meaning of paragraph 4(a) of the Policy, that:
(i) [The] domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) [The respondent] has no rights or legitimate interests in respect of the domain name; and
(iii) [The domain name] has been registered and is being used in bad faith.
It is to be noted that paragraph 4 of the Policy provides that the Complainant must prove that each of the three elements is present. As these are civil proceedings the standard of proof in each case is the balance of probabilities. The Panel will therefore deal with each of these requirements in turn.
Comments on the evidence submitted by the parties
Prior to discussing the submissions and evidence of the parties in respect of the three issues herein, the Panel upon considering the nature of the evidence submitted by the parties, wishes to remind the parties that notwithstanding the fact that these proceedings are summary in nature, submissions and evidence in these proceedings should be more than mere affirmations unsupported by specific evidence, particularly in respect of key issues.
In respect of the Complainant, the Panel felt that it could have provided further evidence of its rights under trademark registrations and of its submission that the use by the Respondent of the domain name and the website to which it resolved was to direct Internet visitors to competitors of the Complainant. In particular, it could have provided documentary evidence of trademark registration and evidence of specific products and competitors allegedly promoted on the Respondent’s website.
In respect of the Respondent, although it relied on the lack of documentary evidence by the Complainant of its trademark registration, it would have been useful had it provided specific evidence of the date and number of domain names involved in the change of registrar and explained what appear to be inconsistencies in addresses in respect of the transfer of the domain names to a different registrar. The Panel would also have benefitted from having a sworn declaration from its representative, although the Panel notes that one was offered by the Respondent if required.
A. Identical or Confusingly Similar
The Complainant relies on both a registered trademark and a common law trademark and it is well established that it may do so, as the Policy requires it to make out “a trademark or service mark” which may, of course, be a registered or unregistered mark. That principle is stated in decisions such as Imperial College v. Christophe Dessimoz, WIPO Case No. D2004-0322, where the panel observed: “With regard to the first question, it is undisputed and accepted practice, that paragraph 4(a)(i) of the Policy refers merely to a “trademark or service mark” in which the complainant has rights, and does not expressly limit the application of the Policy to a registered trademark or service mark. Further, the WIPO Final Report on the Internet Domain Name Process (The Management of Internet Names and Address: Intellectual Property Issues, April 1999), from which the Policy is derived, does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names. It is therefore open to conclude that the Policy is applicable to unregistered trademarks and service marks.” (The British Broadcasting Corporation v. Jaime Renteria, WIPO Case No. D2000-0050; see also MatchNet plc. v. MAC Trading, WIPO Case No. D2000-0205; Emmanuel Vincent Seal trading as Complete Sports Betting v. Ron Basset, WIPO Case No. D2002-1058).”
It must then be considered if the Complainant has made out either or both of the two trademark rights contended for.
The Panel is not satisfied on the balance of probabilities that the Complainant has made out its case for a registered trademark. The Complainant has made a number of assertions that it has a registered trademark for INDIANOIL, but it has not produced a certificate of registration of such a trademark or any other official document or printout evidencing what rights in the trademark the Complainant is granted, but merely a certificate of renewal of registration. It may seem like a quibble to reject this aspect of the Complainant’s case, but it is not so and the Panel rejects it for the following reasons.
First, the Panel was provided with a certificate of purported renewal of registration that has the word ‘INDIANOIL’ inserted in handwriting, is undated, is partly cut off and does not have the name of the Complainant appearing anywhere on the certificate. The Panel is unable to determine from this document what the actual trademark claimed is, the rights granted in the trademark, and the owner.
The Panel has already pointed out that each of the three elements must be proved by evidence and it is not sufficient merely to assert that one specific element is present without adducing the best evidence available to prove it.
Secondly, the Respondent is entitled to see the strengths and weaknesses of the case against it and it is at least conceivable that the alleged trademark is a geographically descriptive mark where the trademark owner has been required to disclaim the words ‘Indian’ and ‘Oil’ as trademark owners are often required to do in analogous cases. It may also have been registered as a design trademark and, in the material submitted, the name IndianOil is frequently juxtaposed with a logo. Neither of these questions can be answered by the limited material put before the Panel in the form of a purported certificate of the renewal of a registration. Some of these matters were examined by one of our number in La Société des Bains de Mer et du Cercle des Etrangers à Monaco v. Easthaven Ltd, WIPO Case No. D2010-1167.
Thirdly, this issue is not one of mere formality, but a live issue in dispute in the proceedings, for the Respondent in the Response challenged the lack of evidence of the registered trademark and put the Complainant on notice that it should rectify the deficiencies in its case and that it, the Respondent, was putting the Complainant to its proof. The Complainant responded by filing a supplemental submission, but merely repeated its assertions and did not adduce any evidence of registration of the trademark.
Accordingly, the Panel concludes that the Complainant has not established that it has a registered trademark.
The Panel is, however, satisfied that the Complainant has made out its case for an unregistered trademark in India for the term INDIANOIL. The Panel has reached this conclusion because the evidence is to the effect that there has been at least 40 years of use of the term INDIANOIL as a trademark to indicate certain petroleum products as being the products of the Complainant between 1959 and 2001 when the disputed domain name was registered by the Respondent. Moreover, it appears from the evidence that although the name has frequently been used with or as part of a logo, on other occasions it has been used without a logo, as can be seen from illustrations in a book of photographs of the history of the company over the previous 50 years, called The Story in Pictures, a publication that was adduced in evidence Exhibit H.
Furthermore, according to the evidence, the Complainant operates a network of 17606 fuel stations, presumably less in 2001, yet most likely still the largest in India, one of said stations with the Trademark being shown in a photograph at page 44 of said book Exhibit H. Accordingly, there has been use of the trademark with a logo and as the trademark alone.
No survey evidence was tendered, but against that there is other significant evidence, namely a corporate life of 50 years, the volume of sales, the ranking of the Complainant within the top businesses in India and other considerations as well.
On balance, and without other evidence to rely upon to the contrary, the probability is that the trademark was initially descriptive, but that it acquired some distinctiveness, even if it was not as famous as the Complainant contends, particularly in 2001 when the disputed domain name was registered.
It should not be taken from this finding that the Panel is of the view one way or another that the trademark or the name of the Complainant was known widely outside India or that businesses or individuals domiciled outside India should be fixed with knowledge of either and certainly not in 2001, where its fame may have been quite different from its fame in 2010. It is true that the Complainant is a large company and on the Fortune 500 list and it is also true that the Complainant has joint ventures which have resulted in overseas activities. However, the Panel has been presented with little or no evidence showing that, outside India, the expression “IndianOil” would be taken to mean oil products of the Complainant, either as a trade name or a trademark.
Nevertheless, as it is often said that this element of the Policy is a comparatively low threshold and as it is more frequently said that the requirement is for “a trademark or service mark in which the complainant has rights”, no matter in what country the trademark has arisen, the Complainant has established a trademark for the purposes of the Policy.
Accordingly, the Panel concludes on the balance of probabilities that the Complainant has rights in a trademark, an essential element to be established under the Policy and that the trademark is a common law trademark for INDIANOIL.
The Panel also finds that the disputed domain name is identical to the trademark and that accordingly the Complainant has made out the first of the three elements that it must establish.
B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
But by virtue of paragraph 4(c) of the Policy, it is open to a respondent to establish its rights or legitimate interests in a domain name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [the respondent] 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 [the respondent] (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 [the respondent] 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.
Thus, if the Respondent proves any of these elements or indeed anything else that shows it has a right or legitimate interest in the disputed domain name, the Complainant will have failed to discharge its onus and the Complaint will fail.
It is also well established that, as it is put in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions (“the Overview”) that a complainant is required to make out a “prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.”
Accordingly, the first question that arises is whether the Complainant has made out a prima facie case. In seeking to do this, the Complainant first relies on the facts that it has not licensed or otherwise permitted the Respondent to use “its service mark [sic] ‘IndianOil’ or to apply for any domain name incorporating this trademark”. The Panel accepts this evidence as being correct. The Complainant also relies on the fact that the Respondent is not commonly known by the name “IndianOil” and this is self-evidently the case. In addition to this, the Complainant has established that it has a common law trademark in a name to which the disputed domain name is identical. Taken together, these considerations show that the Complainant has made out a prima facie case that the Respondent has no right or legitimate interest in the disputed domain name.
The next question that arises is whether the Respondent has rebutted the prima facie case and thus shown that it has a right or legitimate interest in the disputed domain name.
The Respondent seeks to rebut the prima facie case against it by relying heavily on the fact that the disputed domain name consists of two words, one being an adjective fashioned from the name of a geographical entity, namely ‘indian’ and the other being a generic word, namely ‘oil’. As such, this gets the Respondent off to a good start, because the development of UDRP jurisprudence has been in the direction of recognizing the legitimate interest of a domain name registrant who invokes the name of a country or state in a domain name and also the right of a registrant who merely uses a common, dictionary or, as sometimes arises, a generic word that is open to all comers and over which no one else can have superior rights. Like everything else, this proposition is subject to exceptions and they will be considered later. But in the absence of exceptions the jurisprudence has, if anything, encouraged rather than discouraged the use of these groups of words in domain names.
Thus, in the case of geographic entities, the principle has been recognized in Neusiedler Aktiengesellschaft v. Vinayak Kulkarni, WIPO Case No. D2000-1769, Port of Helsinki v. Paragon International Projects Ltd,, WIPO Case No. D2001-0002, Excmo, Cabildo Insular de Tenerife and Promocion Exterior de Tenerife, S.A. v. Jupiter Web Services Limited, WIPO Case No. D2003-0525, Consejo de Promoción Turistica de México, S.A. de C.V. v. Latin America Telecom Inc., WIPO Case No. D2004-02042 , Junta de Andalucia Consejeria de Turismo, Comercio y Deporte, Turismo Andaluz, S.A. v. Andalucia.Com Limited, WIPO Case No. D2006-0749 and Costas Spiliadis v. Nicholas Androulidakis, NAF Claim No. FA0708001072907.
In the case of generic words, the trend has been the same. Thus, the author David Lindsay of International Domain Name Law, ICANN and the UDRP has been able to say: “Where a respondent registers a generic term as a domain name and there are no indications of bad faith, then the respondent will have rights or legitimate interests in the domain name…Another way to state this principle is that the first person to register a generic term as a domain name in good faith will have legitimate interests in that domain name. This effectively focuses attention on the intention of the respondent in registering and using the disputed domain name. As the panelists expressed this point in Jet Marques v. Vertical Axis, Inc. [, WIPO Case No. D2006-0250]: mere registration of a generic word as a domain name will not be sufficient in and of itself to create a ‘legitimate interest’, if the respondent’s substantial intention was to capitalize on the complainant’s trademark interest.”
In the present case, as the geographical entity has been put into the form of an adjective to qualify the noun ‘oil’ the combined effect of the two words is really to create a generic expression. Accordingly, the use of that generic expression in the disputed domain name will give rise to a right or legitimate interest unless the Respondent has disqualified itself by evidence suggesting that it was intending “to capitalize on the complainant’s trademark interest.” This sometimes is put as whether the respondent was targeting the complainant or whether it was acting in bad faith. In other words, the legitimate interest does not arise automatically, for, as the WIPO Overview puts it:
“2.2 Does a respondent automatically have a legitimate interest in a domain name comprised of a generic (dictionary) word(s)?
Consensus view: If the complainant makes a prima facie case that the respondent has no rights or legitimate interests, and the respondent fails to show one of the three circumstances under Paragraph 4(c) of the Policy, then the respondent may lack a legitimate interest in the domain name, even if it is a domain name comprised of a generic word(s). Factors a panel should look for when determining legitimate use would include the status and fame of the mark, whether the respondent has registered other generic names, and what the domain name is used for (a respondent is likely to have a right to a domain name “apple” if it uses it for a site for apples but not if the site is aimed at selling computers or pornography). (Emphasis added).
402 Shoes, Inc. dba Trashy Lingerie v. Jack Weinstock and Whispers Lingerie[, WIPO Case No.] D2000-1223, Transfer
Classmates Online, Inc. v. John Zuccarini, individually and dba RaveClub Berlin[, WIPO Case No.] D2002-0635, Transfer
Emmanuel Vincent Seal trading as Complete Sports Betting v. Ron Basset[, WIPO Case No.] D2002-1058, Transfer
Owens Corning Fiberglas Technology, Inc v. Hammerstone[, WIPO Case No.] D2003-0903, Transfer
However: If a respondent is using a generic word to describe his product/business or to profit from the generic value of the word without intending to take advantage of complainant’s rights in that word, then it has a legitimate interest.
Allocation Network GmbH v. Steve Gregory[, WIPO Case No.] D2000-0016, Denied
Porto Chico Stores, Inc. v. Otavio Zambon[, WIPO Case No.] D2000-0270, Denied
Asphalt Research Technology, Inc. v. National Press & Publishing, Inc. D2000-1005, Denied
Gorstew Limited v Worldwidewebsales.com[, WIPO Case No.] D2002-0744 among others, Denied”
The essential question, therefore, is whether it has been established or can be inferred from the evidence that the Respondent was targeting the Complainant and its trademark, acting in bad faith towards it or capitalizing on the Complainant’s trademark interest.
In answering this question, the Panel is content to apply the indicia referred to in the Overview and, in the interest of consistency in decision making, those applied by the unanimous three person panel that decided Jet Marques v. Vertical Axis, Inc. (supra).
Applying those tests, it must first be said that the evidence shows that the Complainant’s trademark must be very well known in India, but there is little evidence presented to show us the renown of the trademark outside of India. On the balance of probabilities, the Panel’s view is that the standing of the trademark outside India is probably similar to the standing of the trademark in Jet Marques v. Vertical Axis, Inc. (supra), and that the following statement by the panel in that case is, mutatis mutandis, equally applicable in the present case, on the evidence produced to the Panel:
“3. The Complainant’s evidence of the use of the trademark outside France is insufficient to establish the reputation outside that country for which the Complainant contends. The Panel accepts that the trademark may be known by those engaged in the travel industry, but the Respondent does not appear to fit into that category. The Respondent’s website appears to do little more than provide a platform for sponsored advertisements provided by others, with the Respondent deriving click-through revenue in exchange for providing that service.”
Accordingly, the standing of the Complainant’s trademark per se, although significant, is not such as would justify the Panel in concluding that a registrant outside India and not engaged in the petroleum industry would probably have been aiming at or targeting the Complainant when it, the Respondent, registered an entirely generic expression as a domain name.
Secondly, the evidence is that the Respondent has registered many other generic names, over 280, including many that are combinations of the adjective Indian and a noun, such as <indiangasolineprices.com>, <indiantrees.com>, <indiancorn.com>, <indianbeers.com>, <indianjewelry.com> and many which are the combination of a geographical entity fashioned into an adjective together with the noun ‘oil’, such as <egyptianoil.com> and <albertaoil.com>. This practice, especially given that it is the Respondent’s business to register such names, not only tends to suggest that it was probably not targeting the Complainant, but makes it inherently unlikely that it was doing so.
Thirdly, judging by the use the Respondent made of the disputed domain name and the website to which it resolved, it was not targeting the Complainant. The website to which the disputed domain name resolves is a parking page with links to all of the blandishments of modern life from dating services to finance and motor cars and is clearly designed to be a generalist site to which users will find their way while searching, as they do, for generic websites that promote general goods and services.
In this regard, the Panel notes the allegation of the Complainant that the website has links to the Complainant’s competitors which are said to constitute strong evidence that the Respondent really was targeting the Complainant. The Panel cannot see how this can be so. Even on the screenshot of the Respondent’s home page exhibited to the Complaint there were no links to apparent competitors of the Complainant and there are none such on the website as it presently appears. In any event, the Panel finds that on this issue, cited as a criterion by both of the Overview and Jet Marques v. Vertical Axis, Inc. (supra), there are no links to competitors of the Complainant and nothing to suggest that the Complainant was targeted by the Respondent. The links are essentially generic themselves and, contrary to the Complainant’s submissions, this is an entirely legitimate use of the internet and the domain name system, provided that the registrant does not transgress on the rights of others.
A further point made by the panel in Jet Marques v. Vertical Axis, Inc. (supra), was as follows:
“4. In the English language, the Domain Name is a generic or descriptive expression. The Respondent says that it is in the business of acquiring such names that have either expired or been deleted, and the Panel has no reason to disbelieve that statement. Indeed, the earlier decisions under the Policy in which the Respondent has been a party appear to confirm that description of its business. Leaving aside any other considerations, it is therefore plausible that the Respondent may have chosen the Domain Name for no better reason than that it was a relatively short, common word English expression which had recently become available and was thought to have some value.”
Those remarks are equally applicable to the present case and tend to suggest that the Respondent’s explanation is plausible.
In addition, the Respondent has provided its own evidence that it did not know of the Complainant or its trademark and that it did not register the disputed domain name to target the Complainant. In the particular factual circumstances of this case noted previously, the Panel is inclined to the view that the Respondent did not know of the Complainant’s trademark at the time of registration.
Accordingly, the Panel finds that the Respondent has rebutted the prima facie case against it and has shown a right or legitimate interest in the disputed domain name.
C. Registered and Used in Bad Faith
The Complainant must prove on the balance of probabilities both that the disputed domain name was registered in bad faith and that it is being used in bad faith: Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
Further guidance on how to implement this requirement is to be found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which shall be evidence of the registration and use of a domain name in bad faith, although other circumstances may also be relied on, as the four circumstances are not exclusive. The four specified circumstances are:
(i) circumstances indicating that [the respondent has] registered or [has] 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 [the respondent’s] documented out-of-pocket costs directly related to the domain name; or
(ii) [the respondent] has 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 [the respondent] has engaged in a pattern of such conduct; or
(iii) [the respondent] has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] website or other on-line location, by creating a likelihood of confusion with the complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] website or location or of a product or service on [the] website or location.
In the Panel’s view the facts as it has found them do not bring the case within the provisions of paragraph 4(b)(i) of the Policy. The Panel has found that the Respondent has in essence registered a generic expression, along with over 280 others, and that its primary intention, which it has carried out, was to earn income from the display of links to generic goods and services and to make money by that means. Each case must, of course, be decided on its own facts, but the whole of the Respondent’s modus operandi, acknowledged as legitimate in UDRP decisions, such as Hotel Plaza Limited, Parkroyal Hospitality Management Pte Ltd. (PHM) v. DomainWorks Inc./PARKROYAL.COM c/o Whois IDentity Shield/Vertical Axis, Inc., WIPO Case No. D2008-1760, and similar decisions cited by the Respondent, is consistent with that finding.
Nor do the facts bring the case within paragraph 4(b)(ii), for the Respondent has not registered the disputed domain name to prevent the Complainant from reflecting its trademark in a corresponding domain name, but for the purpose just described, namely to make money by soliciting trade on the Internet.
The Complainant may be relying in part on paragraph 4(b)(iii), but seems to make its main thrust on bad faith by relying essentially on paragraph 4(b)(iv) and on the general notion of bad faith. The essence of such a case is whether the Respondent entered upon this exercise with the intention of damaging the Complainant, its trademark and its commercial interests, knowing that its domain name could potentially confuse Internet users looking for the Complainant and divert business away from them or whether it was engaged in the legitimate exercise of registering a domain name to add to its stable, with the purpose of acquiring a domain name that would attract Internet users seeking the wide range of goods and services that people look for on the Internet. The answer to this question largely consists of whether the Respondent acted in good or bad faith.
Reaching conclusions on such issues is difficult when the UDRP process is essentially one of summary judgment without the advantage of being able to examine witness testimony and have it tested by the usual forensic processes. Accordingly, UDRP panels are forced to look at the minutiae of cases to see what if any factors tilt the scales one way or the other.
In the present case, on the Complainant’s side is the fact that the disputed domain name contains the same words as make up the Complainant’s trademark. However, the Panel wishes to observe here that the Complainant may be reading too much into this and too hasty in assuming that any reference to Indian Oil must now be taken as a reference to the Complainant. Thus, for example, the statement appears in the Complaint that “The name/mark IndianOil has acquired unique importance and is associated with the Complainant. A mere mention of the said name/mark establishes an identity and connection with the Complainant and none else.” That statement seems to be based on a Google search conducted in 2010 and it tells us nothing about the status of the name in 2001 when the domain name was registered.
On the other hand, the Complainant is a large company well known in India. There is however less, apart from passing references to the Complainant’s joint ventures overseas, that supports the notion that the trademark is famous or well-known world-wide. In particular, for a finding of bad faith the question is: would the Complainant and its trademark be known to people outside India, in particular in Barbados where the Respondent is based, so that it could be assumed that the Respondent must have been motivated by bad faith towards the Complainant? Furthermore this possible renown outside of India may come predominantly from its trade name rather than the trademark, while in UDRP cases it is only rights based on the latter which are considered.
On the Respondent’s side are the facts that the Complainant must be less well known outside India, that the Respondent acquired the name when it fortuitously came up for sale, that the disputed domain name consists of ordinary words over which no-one has a monopoly, that it has regularly registered generic domain names to aim at or do damage to the Complainant and that it has used the disputed domain name to conduct a legitimate business. All of these factors tend to tilt the scales in favour of the Respondent and are inconsistent with its having acted in bad faith. Stripped to its real essence, this proceeding is one where the Respondent has run a pay-per-click site of a general nature by using a generic domain name and promoting goods and services that are not associated with the Complainant’s industry. That is not evidence of bad faith.
Nor is it evidence of bad faith that the Respondent used a Privacy Service, as the reasons for using one are valid and its use has not prevented the Complainant from prosecuting this claim.
The question then arises whether the transfer of the domain name to another registrar despite the locked status should offset or reverse this finding of a lack of bad faith on the part of the Respondent in registration or use of the disputed domain name. What is clear is that the transfer could not have that effect nine years previously, when the disputed domain name was registered.
It has also been noted by the Panel that no particulars have been given of the alleged bulk transfer of domain names and that the current status and registrar for some of other of the 280 domain names apparently transferred had a different transfer date, leaving the Panel in some doubt about the extent and detail of the transfers.
While the Respondent offered to file a notarized declaration by a representative of the Respondent, the Panel, having itself verified that some domain names specifically mentioned herein had in fact been the subject of a change of registrar, did not consider it necessary to request said notarized declaration.
This change of registrar and the variation in the dates of transfer leave the Panel in some doubt as to the size and nature of the transfers, but it is not in this Panel’s view capable of constituting a basis for reversing its finding of absence of bad faith in the use of the domain name nor its finding of a right or legitimate interest in favour of the Respondent in this case.
Although the proceedings have been prolonged to the extent of allowing two additional and exceptional exchanges of written representations to provide additional and necessary evidence, the Panel hopes and urges that such a situation should remain unique.
The Panel upon considering the facts and the parties’ behaviour herein does not see in the present circumstances a reason to reach any conclusions other than to invite parties involved in UDRP proceedings to adduce sufficient and relevant evidence in future proceedings.
Accordingly, the Panel finds that the disputed domain name was not registered or used in bad faith.
On the question of laches, the Panel merely wishes to say that as a result of the decision in The New York Times Company v. Name Administration Inc. (BVI), NAF Claim No. FA1349045, laches is “a valid defence in any domain dispute where the facts so warrant.” In the present case, however, the Panel is of the view that the case should be decided on the substantive issues already expounded and that it is unnecessary to go into a long discussion on whether the facts warrant a finding on the issue of laches.
Stripped to its real essence, this proceeding is one where the Respondent has run a pay-per-click site of a general nature by using a generic domain name and promoting goods and services that are not associated with the Complainant’s industry. That is not evidence of bad faith.
Reverse Domain Name Hijacking
In the present case, there have been points in support of both sides and, although the Panel has given careful consideration to the issue of reverse domain name hijacking and although such an order should always be kept in reserve and available to be used in appropriate cases, the Panel’s view is that it should not make such an order in this case.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Complaint is denied.
J. Nelson Landry
The Hon Neil Brown QC
Dated: March 29, 2011